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 .
Response to Amendment
In light of Applicant’s amendment, claim(s) 1 and 6-7 is/are amended. Claims 1-7 and 21-32 are now pending examination.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Specifically, the newly added limitation “wherein the lateral surfaces of the plurality of denticulations are located farther from the central axis than the medial surfaces of the plurality of denticulations, wherein the medial surfaces of the plurality of denticulations are positioned between the lateral surfaces of the plurality of denticulations and the central axis, and wherein the lateral and medial surfaces of the plurality of denticulations are respectively beveled at different angles so as to meet to form respective outermost sharpened cutting edges” overcomes the previous rejections under Majlessi. However, a new grounds of rejection is made in view of Devroye.
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 1-7 and 21-32 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 includes the limitation “wherein the lateral and medial surfaces of the plurality of denticulations are respectively beveled at different angles”, however the disclosure does not support such a configuration. There is no explicit disclosure of medial surfaces, let alone specifying that the lateral and medial surfaces of the plurality of denticulations are respectively beveled at different angles. Thus, claim 1 is rejected for incorporating new matter. Claims 6-7 also include limitations requiring the lateral and medial surfaces to be beveled at different angles, wherein the lateral and medial surfaces of the plurality of denticulations are respectively beveled at different angles of between about 15° and about 45° with respect to the central axis, and wherein the lateral and medial surfaces of the plurality of denticulations are respectively beveled at different angles of between about 22° and about 38° with respect to the central axis, respectively. Claims 2-5 and 21-32 are rejected due to their dependence on claim 1.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 6-7, and 21-32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Devroye (US 20210251649 A1) (previously of record).
Regarding claim 1, Devroye discloses a punch assembly for removing hair follicles from surrounding tissue (Figure 11-13; Paragraph 0029), the punch assembly comprising:
a substantially cylindrical body (T1+T2) having a proximal end (T1) and a distal end (T2) (Figure 7; Paragraph 0076), the substantially cylindrical body formed about a central axis and extending distally from the proximal end (Figure 7), the substantially cylindrical body having a hair follicle-receiving chamber (lumen of T2) at least partially defined by an interior wall (822) within the substantially cylindrical body, the interior wall extending distally from the proximal end (Figure 8; Paragraph 0083); and
a plurality of denticulations (1104) arranged at the distal end of the substantially cylindrical body (Figure 11-12; Paragraph 0085), wherein the plurality of denticulations individually comprise lateral and medial surfaces (labeled in Annotated Figure 12) individually substantially rigidly beveled in a direction away from the central axis (Figure 12), wherein the lateral surfaces of the plurality of denticulations are located farther from the central axis than the medial surfaces of the plurality of denticulations (Annotated Figure 12), wherein the medial surfaces of the plurality of denticulations are positioned between the lateral surfaces of the plurality of denticulations and the central axis (Annotated Figure 12), and wherein the lateral and medial surfaces of the plurality of denticulations are respectively beveled at different angles so as to meet to form respective outermost sharpened cutting edges (1110) (Figure 13; Paragraph 0080; 0086) (the edge as a whole is beveled, thus the medial and lateral surfaces are beveled at different angles since the lateral surface is a 90 degree difference from the medial surface). (Devroye states in Paragraph 0114 “that various embodiments can be combined”, thus components from multiple embodiments are considered to be disclosed by Devroye).
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Regarding claim 2, Devroye further discloses wherein the plurality of denticulations comprises between 3 and 10 denticulations (Figure 12) (Figure 12 shows four and eight denticulations).
Regarding claim 6, Devroye further discloses wherein the lateral and medial surfaces of the plurality of denticulations are beveled at different angles of between about 15° and about 45° with respect to the central axis (Figure 22; Paragraph 0099) (when the edge is beveled, the lateral and medial surfaces would be beveled at different angles, which can include angles in the claimed range).
Regarding claim 7, Devroye further discloses wherein the lateral and medial surfaces of the plurality of denticulations are beveled at different angles of between about 22° and about 38° with respect to the central axis (Figure 22; Paragraph 0099) (when the edge is beveled, the lateral and medial surfaces would be beveled at different angles, which can include angles in the claimed range).
Regarding claim 21, Devroye further discloses the plurality of denticulations arranged at the distal end of the substantially cylindrical body are interspersed by a plurality of additional symmetrical cutting edges (labeled in Annotated Figure 12) recessed from the respective outermost sharpened cutting edges of the plurality of denticulations (Figure 11; Annotated Figure 12; Paragraph 0085), and wherein the plurality of denticulations are fully capable to substantially encircle a hair follicle during a hair follicle extraction and/or removal operation.
Regarding claim 22, Devroye further discloses wherein the substantially cylindrical body is to facilitate application of one or more lateral forces to the plurality of denticulations arranged at the distal end of the substantially cylindrical body during the hair follicle extraction and/or removal operation (Paragraph 0066; 0068).
Regarding claim 23, Devroye further discloses wherein, at least in part via the application of the one or more lateral forces, the plurality of denticulations arranged at the dis end of the substantially cylindrical body are to facilitate separation of the substantially encircled hair follicle from tissue surrounding the hair follicle during the hair follicle extraction and/or removal operation (Paragraph 0030; 0066).
regarding claim 24, Devroye further discloses wherein, to facilitate separation of the substantially encircled hair follicle from the surrounding tissue, the plurality of denticulations arranged at the distal end of the substantially cylindrical body are to facilitate formation of a substantially ellipse-snaped wound (Figure 8, 11; Paragraph 0065) (the cutting edge is annular, thus results in a "substantially elliptically-shaped wound").
Regarding claim 25, Devroye further discloses wherein the plurality of denticulations arranged at the distal end of the substantially cylindrical body are to facilitate formation of the substantially ellipse- shaped wound responsive at least in part to removal of the plurality of denticulations arranged at the distal end of the substantially cylindrical body from the surrounding tissue (Figure 8; Paragraph 0083).
Regarding claim 26, Devroye further discloses wherein the hair-follicle receiving chamber is to receive and/or maintain the substantially encircled hair follicle responsive at least in part to the removal of the plurality of denticulations arranged at the distal end of the substantially cylindrical body from the surrounding tissue (Figure 8, 13; Paragraph 0066; 0068; 0083).
Regarding claim 27, Devroye further discloses wherein, to facilitate formation of the substantially ellipse-shaped wound, the plurality of denticulations arranged at the distal end of the substantially cylindrical body are to facilitate formation of a scallop-shaped inferior margin of the wound and/or an irregularly shaped exterior margin of the wound. ("[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. V. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimedapparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. As such, the device of Devroye is fully capable of forming formation of a scallop-shaped inferior margin of the wound and/or an irregularly shaped exterior margin of the wound).
Regarding claim 28, Devroye further discloses wherein the plurality of denticulations arranged at the distal end of the substantially cylindrical body are to facilitate formation of the substantially ellipse snaped wound having a measure of eccentricity of between approximately 0.5 and approximately 0.95 (Figure 8, 11; Paragraph 0065). ("[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. V. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. As such, the device of Devroye is fully capable of creating a wound having a measure of eccentricity of between approximately 0.5 and approximately 0.95.).
Regarding claim 29, Devroye further discloses wherein the plurality of denticulations arranged at the distal end of the substantially cylindrical body are to facilitate formation of the substantially ellipse snaped wound having a measure of eccentricity of comprises a value of between approximately 0.63 and approximately 0.8 (Figure 8, 11; Paragraph 0065). ("[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. V. Bausch & Lomb Inc., 909 2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. As such, the device of Devroye is fully capable of creating a wound having a measure of eccentricity of between approximately 0.63 and approximately 0.8.)
Regarding claim 30, Devroye further discloses wherein the plurality of denticulations arranged at the distal end of the substantially cylindrical body are to facilitate formation of the substantially ellipse-shaped wound having a major axis that substantially aligns with one or more of Langer's lines proximate with the wound (Paragraph 0067). ("[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. V. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.)
Regarding claim 31, Devroye further discloses wherein the plurality of denticulations arranged at the distal end of the substantially cylindrical body are to facilitate formation of the substantially ellipse- snaped wound to facilitate a reduced healing time following the hair follicle extraction and/or removal operation (Figure 8, 11; Paragraph 0068). ("[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. V. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.)
Regarding claim 32, Devroye further discloses wherein the plurality of denticulations arranged at the distal end of the substantially cylindrical body are to facilitate formation of the substantially ellipse-shaped wound to facilitate reduced scarring following the hair follicle extraction and/or removal operation (Paragraph 0069).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Devroye in view of Lee (KR 101868395 B1) (noted on IDS).
Regarding claim 3, Devroye discloses the punch assembly of claim 1, but fails to explicitly disclose wherein the plurality of denticulations consists of 5 or 6 denticulations.
However, Lee is directed to a punch device and teaches wherein the plurality of denticulations (123) consists of 6 denticulations (Figure 4).
There are a number of choices available to a person of ordinary skill in the art for the number of denticulations in a punch device. Therefore, “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under 103” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. __, 82 USPQ2d 1385 (2007).
Claim(s) 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Devroye in view of Umar (US 20230355267 A1) (previously of record).
Regarding claim 4-5, Devroye discloses the punch assembly of claim 1, and further discloses wherein the substantially cylindrical body comprises a narrowed portion (labeled in Annotated Figure 3) that terminates at the distal end (Annotated Figure 3), but fails to explicitly disclose the narrowed portion having a length of between 1.75 mm and 5.0 mm.
However, Umar is directed to a punch device and teaches a punch (10) with a narrowed portion (26) having a length of between 0.5 mm to 5 mm, encompassing the claimed range of between 1.75 mm and 5.0 mm and a width (diameter) of 0.5 mm to 3 mm, encompassing the claimed range of between 0.5 mm and 0.75 mm (Figure 1; Paragraph 0160; 0172).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Devroye such that a narrowed portion having a length of between 1.75 mm and 5.0 mm, as taught by Umar, as both references and the claimed invention are directed to punches. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Devroye with the teachings of Umar by incorporating a narrowed portion having a length of between 1.75 mm and 5.0 mm since it has been held change in size/proportion does not distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). n re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976). MPEP 2144
Conclusion
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 ZEHRA JAFFRI whose telephone number is (571)272-7738. The examiner can normally be reached 8 AM-5:30 PM.
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/Z.J./Examiner, Art Unit 3771
/KATHERINE H SCHWIKER/Primary Examiner, Art Unit 3771