DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 34 recites “means for determine…; means for generating…; means for generating”. As best understood by the specification (see para. [0041-45] of the published specification), a processor will be construed as being performed by a processor for the purposes of examination.
Claim 35 recites “means for generating…; means for updating”. As best understood by the specification (see para. [0045-46] of the published specification), a processor will be construed as performing the steps for the purposes of examination.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 34, 36, and 38 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “inputs indicative of a menstrual cycle progression, wherein the menstrual cycle progression includes a follicular phase and a luteal phase, and wherein the changes in the skin state include a decrease in sebum production and moisture retention in the follicular phase and an increase in sebum production in the luteal phase” in lines 3-7, but lacks support in the specification. It is unclear how the inputs, e.g., menstrual cycle progressions, follicular phase, etc., leads to determining the changes in skin state, e.g., decrease in sebum, etc., because the specification merely states that the computational circuitry performs such determination without providing how it is done, e.g., algorithm, formulas, etc. Further clarification required. The same issues are found in Claims 34, 36, and 38.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 8-13, and 28-38 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recite “inputs indicative of a menstrual cycle progression, wherein the menstrual cycle progression includes a follicular phase and a luteal phase, and wherein the changes in the skin state include a decrease in sebum production and moisture retention in the follicular phase and an increase in sebum production in the luteal phase” in lines 3-7, but is indefinite. How is the determination made based on the inputs? Is there a calculation made by the computational circuitry? Clarification required. The same issues are found in Claims 34, 36, and 38.
Claims 8-13 recite “determine onset of changes” in line 2, but lacks proper antecedent basis because claim 1 has already recited the limitation. It appears the rejection can be overcome by amending to recite --determine the onset of the changes--. The same issue applies to Claim 28, line 3.
Claims not listed are rejected by virtue of claim dependency.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 8-13, 28-29, and 32-37 are rejected under 35 U.S.C. 103 as being unpatentable over Dattner (US 20220051794- Previously cited) in view of Shinichi et al. (JP 2000051154- Previously cited), hereinafter Shinichi, and Marinkovich et al. (US 20120321759- Previously cited), hereinafter Marinkovich.
Regarding claims 1, 34, and 36, Dattner teaches a skin-state unit including computational circuitry configured to determine onset of changes in a skin state responsive to one or more inputs (see para. [0065], “created a timeline regarding the onset and changes in their skin condition and what preceded those events”)
Dattner fails to teach wherein the inputs are indicative of a menstrual cycle progression, wherein the menstrual cycle progressions includes a follicular phase and a luteal phase. Shinichi teaches a skin condition evaluation device and recites “the characteristics of changes in the skin condition that appear according to the biological rhythm for each time of the change” (see para. [0006,0009], e.g. follicular period, luteal phase, etc.). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the device of Dattner, such that the one or more inputs are indicative of a menstrual cycle progression, as taught by Shinichi, as it would merely be using a known technique (physiological cycle progression input) to improve similar system (skin condition) in the same way.
It follows, Dattner-Shinichi teaches wherein the changes in the skin state include a decrease in sebum production and moisture retention in the follicular phase and an increase in sebum production in the luteal phase (see para. [0006-7,0024,0032,0096] of Dattner, “seborrhea” and “eliminative sebaceous contents” are treated and monitored, e.g. decrease, increase, and it is further taught that menstrual cycles (luteal, follicular)/hormonal levels are known to be causal factors of skin conditions. “balance follicle stimulating hormone and luteinizing hormone” indicates that measurements are performed during the menstrual cycle; see para. [0012] of Shinichi, sebum is measured);
a mitigation unit including computational circuitry configured to generate a personalized skincare recommendation responsive the determined changes in the skin state (see para. [0049] of Dattner, “In an embodiment of the invention, multiple patient data points were collected, organized, interpreted, processed, structured and/or related and relationships were determined between multiple patient data points and relationships between multiple patient data points were applied, including for example, by formulating treatment options and adjusting treatment options in view of the relationships between multiple patient data points and structuring a treatment protocol from the treatment options and administering the treatment protocol to the patient and monitoring the patient for response to the administered treatment protocol and optionally reiterating one or more steps of the invention” indicating that the changes in levels are used to determine therapy);
Dattner-Shinichi fail to teach a skin-state display unit including computational circuitry configured to generate one or more instances of the skin state and one or more instances of the personalized skincare recommendation.
Marinkovich teaches a skin care system (see para. [0064,0526]) configured to generate a displayable report through an interface that is capable of outputting skin state and personalized skincare recommendation (see figs. 6-7). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the device of Dattner-Shinichi, such that one or more instances of the skin state and one or more instances of the personalized skincare recommendation, as taught by Marinkovich, as it would merely be combining prior art elements (skin state systems) according to known methods (capable of generating skin state/recommendation for the user) to yield predictable results.
Regarding claim 8, Dattner teaches wherein the skin-state unit includes computational circuitry configured to determine onset of changes in the skin state responsive to one or more inputs indicative of an overall wellness (see para. [0508], “In an embodiment, the user interface 102 may enable wellness/health 142. The user interface 102 may collect lifestyle data and also provide lifestyle (such as sleep, rest, exercise, and the like) and health (such as vitamins, food, products usage, and the like) recommendations based on the users particular skin state 158 and characteristics” indicating that overall, e.g., multi-parameter, wellness is input to understand skin state and provide recommendations).
Regarding claim 9, Dattner teaches wherein the skin-state unit includes computational circuitry configured to determine onset of changes in the skin state responsive to one or more inputs indicative of a stress level (see para. [0010], stress data is acquired).
Regarding claims 10 and 12-13, Dattner teaches wherein the skin-state unit includes computational circuitry configured to determine onset of changes in the skin state responsive to one or more inputs indicative of a medication, change in diet, and hormonal imbalance (see para. [0010,0065], “In yet another aspect, the invention provides safe, effective, integrative, holistic, whole-system methods and systems for treating acne and other inflammatory skin conditions that includes, inter alia, the steps of collecting and/or organizing and/or interpreting multiple patient data points”, data includes diet changes, medication (birth control), and hormonal imbalance).
Regarding claim 11, Dattner teaches wherein the skin-state unit includes computational circuitry configured to determine the onset of the changes in the skin state responsive to one or more inputs indicative of an environmental condition (see para. [0010], environmental parameters are measured as input to monitor skin state such as environmental toxins).
Regarding claims 28 and 29, Dattner teaches computational circuitry configured to generate a respective personalized skincare recommendation associated with the at least one change in a skin state (see abstract and para. [0061], treatment options are generated based on the analysis of data points).
Dattner fails to teach a processor configured to display at least one instances of onset of changes in the skin state and skincare recommendation.
Marinkovich teaches displaying at least one instance of the onset of a change in a skin state and personalized skincare recommendation (see figs. 6-7 and 15, trend analysis). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the device of Dattner-Shinichi-Marinkovich, such that at least one instance of the onset of a change in a skin state and personalized skincare recommendation are displayed, as taught by Marinkovich, as it would merely be applying a known technique (displaying skin change and recommendation) to a known system (skin care/state) ready for improvement to yield predictable results.
Regarding claim 32, Marinkovich teaches a selectable skin condition indicator including computational circuitry configured to provide user-selectable instances of skin conditions on the display (see para. [0106], “The system and method may further include a photo review unit for date based reviewing of at least one of a condition of a predetermined body part, a current usage status of a cosmetic, and a recommended usage list of cosmetics”); and a selectable physiological cycle indicator including computational circuitry configured to provide user-selectable instances of physiological cycle phase or stage indicators on a display (see figs. 6 and 15 and para. [0430], the trend is accessible by the user, therefore selectable, and indicates physiological cycle stage; “For example, a user may enter anecdotal information, such as medication they may be taking, recent overexposure to sun, stage in a menstrual cycle”(emphasis added) indicating a selectable input).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the device of Dattner-Shinichi-Marinkovich, such that the processor is configured to provide user-selectable instances of skin conditions on a display and user-selectable instances of physiological cycle phase or stage indicators on a display, as taught by Marinkovich, as it would merely be applying a known technique (providing selectable instances on display regarding skin conditions and physiological cycle phase/stage) to a known system (skin care) ready for improvement to yield predictable results.
Regarding claim 33, Dattner fails to teach a real-time monitoring unit including computational circuitry configured to determine whether to transmit a notification in response to one or more comparisons between user- specific physiological cycle information and predicted physiological cycle progression information.
Marinkovich teaches a real-time monitoring system (see para. [0495]) and prediction/simulation tool based on the determined skin state representative of physiological cycle information to predict skin cycle progression information (see para. [0459-61], “and provide data on overall appearance, wrinkle count, elasticity, luminosity, moisture, product usage simulation, and the like”). As such it would have been obvious one of ordinary skill in the art at the time the invention was effectively filed to have modified the device Dattner-Shinichi-Marinkovich, such that real-time monitoring and determining whether to transmit a notification in response to one or more comparisons between user- specific physiological cycle information and predicted physiological cycle progression information, as taught by Marinkovich, as it would merely be applying known techniques (monitoring and determining/comparing steps) to a known system (skin state) ready for improvement to yield predictable results.
Regarding claims 35 and 37, Dattner-Shinichi fail to teach means for generating user-selectable input menus including one or more user-selectable physiological cycle phase choices and one or more user-selectable current skin state choices; and means for updating a predicted skin state and one or more instances of the personalized skincare recommendations on a graphical user interface responsive to an inputted user- selected physiological cycle phase choice or a user-selected current skin state choice.
Marinkovich teaches means for generating user-selectable input menus including one or more user-selectable physiological cycle phase choices and one or more user-selectable current skin state choices (see para. [0430], “a user may enter anecdotal information, such as medication they may be taking, recent overexposure to sun, stage in a menstrual cycle, and the like” indicating that physiological phase and current skin state choices can be input); and means for updating a predicted skin state and one or more instances of the personalized skincare recommendations on a graphical user interface responsive to an inputted user- selected physiological cycle phase choice or a user-selected current skin state choices (see para. [0460,0534], the prediction can be updated based on user selection and/or progress towards skin care goals based on a plurality of data input).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the device of Dattner-Shinichi-Marinkovich, such that means for generating user-selectable input menus including one or more user-selectable physiological cycle phase choices and one or more user-selectable current skin state choices; and means for updating a predicted skin state and one or more instances of the personalized skincare recommendations on a graphical user interface responsive to an inputted user- selected physiological cycle phase choice or a user-selected current skin state choices, as taught by Marinkovich, as it would merely be using a known technique (input menus and updating prediction/recommendations) to improve similar systems (skin state) in the same way. Additionally, the modification is merely combining prior art elements (skin state systems) according to known methods (performing input menus and updating prediction/recommendations) to yield predictable results (skin state monitoring system).
Claims 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Dattner in view of Shinichi and Marinkovich, as applied to claims 1, 34 and 36, further in view of Miller et al. (US 20190125258- Previously cited), hereinafter Miller.
Regarding claims 30-31, Dattner-Shinichi-Marinkovich teach wherein the skin-state display unit includes computational circuitry configured to generate a display on a graphical user interface including the one or more instances of the skin state and one or more instances of the personalized skincare recommendation (see figs. 6-7 and 15 of Marinkovich), but fail to teach wherein the display is a virtual display.
Miller teaches a system for analyzing the skin of a subject (see para. [0003]) that displays the results using a virtual display.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the device of Dattner-Shinichi-Marinkovich, such that the display is a virtual display, as taught by Miller, as it would merely be substituting one known element (virtual display) for another (display) to obtain predictable results.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Marinkovich in view of Shinichi and Dattner.
Regarding claim 38, Marinkovich teaches a method for recommending a product to a user, comprising predicting an onset of a change in a skin state responsive to one or more user-specific inputs regarding a skin and wellness state, one or more inputs indicative of a preference of a characteristic of a product; and one or more user-specific inputs indicative of physiological cycle phase (see para. [0534], the system is configured to take as input a plurality of data, e.g., skin/wellness state, product preference based on previous recommendation/ treatment, menstrual cycle, to track and predict the skin state will trend towards a skin state goal); recommending a product to the subject based on the one or more user-specific inputs regarding a skin and wellness state, the one or more inputs indicative of the preference of the characteristic of the product, and one or more user-specific inputs indicative of physiological cycle phase (see para. [0534] and fig. 6, progress can be tracked overtime and therefore would be updated based on historical data and current data).
Marinkovich fails to teach wherein the inputs are indicative of a menstrual cycle progression, wherein the menstrual cycle progressions includes a follicular phase and a luteal phase.
Shinichi teaches a skin condition evaluation device and recites “the characteristics of changes in the skin condition that appear according to the biological rhythm for each time of the change” (see para. [0006,0009], e.g. follicular period, luteal phase, etc.). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the device of Marinkovich, such that the one or more inputs are indicative of a menstrual cycle progression, as taught by Shinichi, as it would merely be using a known technique (physiological cycle progression input) to improve similar system (skin condition) in the same way.
Marinkovich fails to teach wherein the changes in the skin state include a decrease in sebum production and moisture retention in the follicular phase and an increase in sebum production in the luteal phase.
Dattner teaches a skin-state unit including computational circuitry configured to determine onset of changes in a skin state responsive to one or more inputs (see para. [0065], “created a timeline regarding the onset and changes in their skin condition and what preceded those events”), wherein the changes in the skin state include a decrease in sebum production and moisture retention in the follicular phase and an increase in sebum production in the luteal phase (see para. [0006-7,0024,0032,0096] of Dattner, “seborrhea” and “eliminative sebaceous contents” are treated and monitored, e.g. decrease, increase, and it is further taught that menstrual cycles (luteal, follicular)/hormonal levels are known to be causal factors of skin conditions. “balance follicle stimulating hormone and luteinizing hormone” indicates that measurements are performed during the menstrual cycle; see para. [0012] of Shinichi, sebum is measured).
It would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to have modified the device method of Marinkovich-Shinichi-Dattner, such that the changes in the skin state include a decrease in sebum production and moisture retention in the follicular phase and an increase in sebum production in the luteal phase, as taught by Dattner, to aid in monitoring the patients skin state and adjusting treatment protocol for the skin state (see para. [0096] of Dattner).
Response to Arguments
Applicant's arguments filed 08/08/2025 have been fully considered but they are not persuasive.
Applicant arguments related to Section 112(f) interpretation are persuasive. Invocations related to the units and computational circuitry have been withdrawn.
Applicant argues that the cited references do not refer to menstrual cycles in combination with the particular changes in skin condition, on page 11 of the Remarks. The examiner disagrees. Applicant acknowledges that Shinichi teaches the menstrual phases. Shinichi also teaches measuring sebum and moisture (para. [0003,0011,0019]). Regardless, Dattner teaches that skin data (sebum and moisture changes) is impacted by menstrual cycles/hormones (see para. [0006-7,0024,0032,0096]). Additionally, these data points are used to determine the required therapy based on the skin state changes (Id.). Therefore, the combination of the references cited teach the amended limitation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yamanashi et al. teaches a makeup assistance device that can assist in makeup/skin treatment more appropriately. (US 20160000209- Cited by applicant)
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARTIN NATHAN ORTEGA whose telephone number is (571)270-7801. The examiner can normally be reached M-F 7:10 am - 5:00 pm.
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/MARTIN NATHAN ORTEGA/ Examiner, Art Unit 3791 /TSE W CHEN/Supervisory Patent Examiner, Art Unit 3791