DETAILED ACTION
This Office Action is in response to the filing of a preliminary amendment the claims on 1/26/2022. As per the preliminary amendment, claims 1-3 have been amended, and no claims have been added or cancelled. Thus, claims 1-3 are pending in the application.
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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Claims 1-2 which are drawn to a method of non-surgical body sculpting, including a variety of healthy decisions with regards to diet, rest, and exercise as classified in A61B2505/00.
Claim 3 which is drawn to a specific method of applying a massage routine to the body, including which areas to massage and how to massage each area as classified in A61H7/00 and A61H8/00.
The inventions are distinct, each from the other because of the following reasons: Inventions I and II are directed to 1) a health and wellness regimen for body sculpting, and 2) a body massage technique and method. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j).
In the instant case, the inventions as claimed can have a materially different design, mode of operation, or function. For instance, invention I requires a plethora of health and wellness decisions (diet, fasting, breathing, exercise) not required in Invention II. Invention II is a method of performing a specific body massage routine on specific parts of the body, which is not required in invention I. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The search would require looking in a different classification/sub-classification and different search terms. See MPEP § 808.02.
Applicant’s election without traverse of claims 1-2 in the telephonic interview conducted on 12/12/2025 is acknowledged.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (see page 16, line 239). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
Claims 1-2 are objected to because of the following informalities:
Claim 1 recites the language “is compiled, including” in line 2. Examiner suggests changing to read --is compiled, the set of measures including-- in order to improve readability of the claim, as well as properly delineate the preamble from the transitional phrase of “including.”
Claim 1 is written as a large block of text, with clause after clause written separated only by a comma. Examiner suggests changing to appearance and format of claim 1 to include sub-sections each defined by indentations in order to better distinguish each group of limitations from one another.
Claim 1 recites a plurality of limitations that refer to parts of the body (e.g. ‘the excretory systems’ or ‘the gastrointestinal tract’) without making proper reference to there being a patient’s body that is undergoing the body sculpting. Examiner suggests positively claiming that the method is intended for use on a body of a patient, so that each referenced part of the body has proper antecedent basis.
As seen in the below 35 U.S.C. 112(b) rejections of claim 1, it is not clear whether claim 1 is intended to be read with “or” between the limitations, or “and” between the limitations. Examiner suggests including the term “or” or “and” before the last listed limitation to better represent how the claim is intended to be interpreted.
Claim 1 recites the term “150-200 ml” in line 7. Examiner suggests changing to read --150-200 milliliters-- in order to clearly define the units being used.
Claim 1 recites the term “these areas” in line 12. Examiner suggests changing to read --these certain areas-- to properly refer back to the “certain areas” rather than the “problem areas.” This suggestion does not solve any potential issues with the breadth of the term “certain areas.”
Claim 2 recites the term “, as well as massage,” in line 5. Examiner suggests changing to read --, massage,-- in order to remove the extraneous words of “as well as.”
Claim 2 recites the term “, wearing compression underwear.” in line 6. Examiner suggests changing to read --, and wearing compression underwear.-- in order to clearly mark this as the last limitation of the claim.
Appropriate correction is required.
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.
Claim Rejections - 35 USC § 112
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 1-2 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 recites that “a set of measures for body sculpting is compiled, including” in line 2, then goes on to list different measures for the rest of the claim. However, the claim lacks any indication as to whether the grouping of a “set of measures” is to be interpreted under “or” or an “and” statement (e.g. lines 2-3 being read as “cleansing the excretory systems of the body, or regulating water metabolism, or diet and rest” or being read as “cleansing the excretory systems of the body, and regulating water metabolism, and diet and rest” (emphasis added)). As such, it is unclear whether or not the entirety of the combination is being claimed together, or if it is merely claiming subsets of the entire combination. This is further unclear in light of the language of claim 2, which likewise uses the term “include” (line 2) but then lists what is better understood to be alternatives (“or”). The specification likewise does not add clarity to the interpretation. The specification opens the interpretation by citing and implying both an “or” and “and” situation (see, for instance, page 5 lines 116-124, where the set is referred to as an “entire set” of measures (“and”), and below where there is an action of “compiling a set of measures” where the “procedures are chosen” which aligns with the claim language of “compiling” and implies that a choice is being made from the set of provided measures (“or”; further see page 8 lines 206-212 and page 16 lines 221-226)). For the purposes of examination, the ”set of measures” will be understood to 1) require more than one measure, and 2) being interpreted under “or” for each measure.
Claim 1 recites the limitation "the figure" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the attending physician" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the burning of visceral fat" in line 19. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the supply of oxygen" in line 19. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the language “while, immediately before” in line 11. The term is confusing as “while” appears to be used in a context of during/ concurrently, while “immediately before” is a period of time just previous, leaving the timeframe of the tactile techniques ambiguous.
Claim 2 recites the language “include, but are not limited to” in line 2. This is understood to be different in meaning than simply using the term “including” or its equivalent “comprising.” By using the term “include, but are not limited to,” the claim is noting that the listed tactile techniques are merely exemplary, and that non-claimed tactile techniques could be used in lieu of the claimed tactile techniques. As such, the metes and bounds of the claim are unclear, as it appears to be claiming any and all tactile techniques, beyond just those listed.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without having additional limitations which can be considered to be significantly more than the judicial exception itself.
Claim 1 is directed towards a method of “non-surgical body sculpting” to be undergone by a person in order to increase wellness and improve physique, which falls within the statutory category of a process.
The claim recites the specific method steps of:
Identifying problem areas of the figure (body)
Compiling a set of measures for body sculpting
The claim is considered to be directed towards an abstract idea because the steps of “identifying problem areas” and “compiling a set of measures” are simply steps of organizing human activities, such as managing personal behavior, or completing routine daily tasks such as brushing one’s teeth or scratching an itch. Furthermore, it is noted that the claim makes no mention of any of the set of measures being performed as part of the method, but rather that they are merely compiled, which can be done by a person making a conscious decision whether or not to perform each measure, or forming a wellness plan based on and including the measures.
The act of undergoing any of the wellness measures (e.g. diet, water intake control, vitamins, exercise, breathing exercises, and so on) for “non-surgical body sculpting” is also a natural phenomenon or law of nature, as affecting the body via these wellness measures is a natural physical response to the measures, and exists naturally in nature.
The claim includes additional elements beyond the identifying/ compiling, which are the types/ nature of the measures presented. However, each body-sculpting measure is a well-understood, routine, and conventional activity in the field of health and wellness, and does not make the steps of the body sculpting itself any less abstract, nor bring the body sculpting method beyond the judicial exception. Each of the set of measures amount to nothing more than known body wellness techniques, such as diet, rest, exercise, fasting, proper breathing, and tactile stimulation, which are both well known in the art, as well as known by the general population. Each of these wellness measures does not impart any meaningful addition to the method of planning to sculpt one’s body. These limitations likewise do not add anything significantly more to the abstract idea because merely listing a set of wellness measures does not alter the abstract idea/ organization of human activity involved in the identification and compiling of the body sculpting method. Rather, some of the listed measures have been known for their health benefits for at least thousands of years (e.g. diet, rest, exercise, fasting, etc.) and are commonly performed in some combination by at least millions of people every year.
Claims 2 is directed to a list of potential tactile stimulation techniques that may be employed as part of the set of measures, without anything more to the compiling step of a set of measures, and thus does not amount to anything more than the judicial exception.
The limitations do not provide improvements to any other technical field, nor apply the judicial exception with or by use of a particular machine to reduce the method of body sculpting to a different state, nor apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, nor add a specific limitation other than what is well-understood, routine, or a conventional activity in the field of body sculpting and wellness treatments.
Therefore, claims 1-2 are not eligible.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thompson (US Pat. 8,882,668).
Regarding claim 1, Thompson discloses a method for non-surgical body sculpting (see abstract), in which problem areas of the figure are identified (see Col. 5 lines 4-22 where information about the user is collected to analyze health and habits, and see Col. 5 line 62 to Col. 6 line 16 where the body composition of the individual is measured, together determining if a user has high fat problem areas), a set of measures for body sculpting is compiled (see Col. 6 line 48 to Col. 7 line 8 where a plan is created by a registered dietician (RD) including diet, exercise, and massage), including: improving nutrition (see Col. 6 lines 48-63 where the RD creates a dietary plan to improve the nutrition of the user), physical exercises aimed at forming a healthy posture (see Col. 7 lines 5-8 and Col. 8 lines 57-62 where exercise can be included, and it is understood that physical exercise will inherently help improve posture). Examiner notes that in light of the 35 U.S.C. 112(b) rejections of claim 1, the claim is being interpreted as not requiring the entire set of all listed measures together.
Regarding claim 2, Thompson discloses a method of non-surgical body shaping according to claim 1, characterized in that tactile techniques of impact include, but are not limited to massage (see Col. 8 lines 35-47 where massage therapy is included as part of the wellness plan).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Ellis et al. (US Pub. 2007/0238593), Kodama et al. (US Pat. 7,214,196), Kurowski et al. (US Pat. 10,733,903), and Kaye (US Pat. 5,340,315) are cited to teach methods for managing the health/ wellness/ weight of a person through a customized plan, including use of at least one measure for affecting the health.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW D ZIEGLER whose telephone number is (571)272-3349. The examiner can normally be reached Mon-Thurs 9:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Justine Yu can be reached at (571)272-4835. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW D ZIEGLER/Examiner, Art Unit 3785
/JUSTINE R YU/Supervisory Patent Examiner, Art Unit 3785