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
This Office Action is in response to an amendment filed on 7/7/2025. As directed by the amendment, claims 9, 13, and 18 were canceled, claims 1, 10, 17, and 19-20 were amended, and claims 21-23 were added. Thus, claims 1-8, 10-12, 14-17, and 19-23 are pending for this application.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 12, 14-15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 6,309,273 B1) in view of Kessler (US 2012/0157272 A1) and Hoard (US 1,265,083).
Regarding 1, Kim discloses (Figs. 1-3A) a muscle therapy device (Fig.1, col. 3, lines 46 -50, “acupressure effect”), comprising: a ring shaped member (Fig.1), the ring shaped member having an interior wall (wall adjacent portion 11) and exterior wall (wall opposite portion 11); at least one protrusion member (“bulged portion” 11) coupled to the ring shaped member (Fig.1), the at least one protrusion (11) extending radially inwardly from the ring shaped member (as shown in Fig.1); and at least one tip member (“pressure dome” 15) disposed on the at least one protrusion member (as shown in Fig.1; col. 3, lines 33-37).
Kim does not disclose at least a portion of the ring shaped member having an H-shaped cross section adapted to stiffen the ring shaped member.
However, Kessler teaches a ring shaped exercise hoop (Fig.3, Abstract) wherein at least a portion of the ring shaped member has an H-shaped cross section (see annotated Fig.2, where the cross section of the hoop is taken in a plane perpendicular to the center axis of the hoop and the H-shape is created by the wall 78 in connection with the inner surface of the hoop) to provide compartments within the hoop to hold individual weights for the purpose of exercising [0005] and [0025]). It is noted that the wall members 78 would provide the additional benefit of supporting, and stiffening, the ring shaped member, because the walls 78, being cross sectional members within the device, will support any outside load applied to the device in a direction perpendicular to the surface of the device.
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Therefore, it would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to modify the cross section of the ring shaped device of Kim to have at least a portion having an H-shaped cross section in several places throughout the ring shaped member, as taught by Kessler, for the purpose of providing individual weight compartments for exercising benefits for the user.
Modified Kim does not disclose the at least one protrusion member extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member.
However, Hoard teaches (Fig. 1-3) a massage appliance comprising a protrusion member (angular members 7) extending radially inward from a member (bar 1) by extending from the exterior wall (wall of bar 1 facing ground) through the interior wall (wall of bar facing user) of the member (via struts 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the massage device of modified Kim such that the at least one protrusion member extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member, as taught by Hoard, as it has been held that making two components separable is a mere design consideration that would have been obvious to one of ordinary skill, see in re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961).
Regarding claim 2, modified Kim discloses wherein the ring shaped member (Kim, Fig.1) is comprised of a plurality of arcuate portions (Kim, “plurality of arcuate modules” 51) removably coupled (Kim, Fig.2A, socket 53 and plug 52 are configured for releasable connection to other arcuate modules, col. 3, lines 62- col.4, line 1), including a first arcuate portion and a second arcuate portion (Kim, see Fig.1, where ring shaped member comprising 7 arcuate portions).
Regarding claim 3, modified Kim discloses wherein each of the plurality of arcuate portions has a main body (see Fig.2A where the main body is taken to be the entire section of the arcuate portion between the socket 53 and the plug 52), the main body having at least a portion with the H- shaped cross section disposed between a male end (Kim,Fig. 2A-2C, “plug” 52) and a female end (Kim, Fig.2A-2C, “socket” 53; see Fig.2 of Kessler, with 3 H-shaped cross sections within one arcuate portion between both ends).
Regarding claim 4, modified Kim discloses wherein the male end of the first arcuate portion is selectively, removably coupled to the female end of the second arcuate portion (Kim, Fig.’s 2B and 2C, col. 3, line 62 – col. 4, lines 1-11, where the plug and socket are removably connected via a pressure projection 21 on the socket 53 and a guide projection on the plug 52).
Regarding claim 5, modified Kim discloses wherein the female end has a hollow portion defined by at least one side wall (Kim, Fig.2 socket 53 is a hollow interior within circular wall).
Regarding claims 6-8, modified Kim discloses an aperture formed on the side wall of the male end (Kim, Fig.2C “locking slot” 55), and wherein the female end has at least one button connector (“locking projection” 56) disposed on at least one side wall (Fig. 2B) and wherein the button connector (56) of the female end (53) of the first arcuate portion disposed in the aperture of the male end (52) of the second arcuate portion (Kim, Fig. 2B-2C). This is the opposite configuration as claimed, that being at least one aperture is formed in the at least one side wall [of the female end], wherein the male end has at least one button connector disposed on at least one side wall, wherein the button connector of the male end of the first arcuate portion disposed in the aperture of the female end of the second arcuate portion.
However, it would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to provide the aperture on the side wall of the female end and the button connector on the male end as this configuration would still provide the predictable result of securing a first arcuate portion to a second arcuate portion. Additionally, it has been held that mere reversal of essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167. See MPEP 2144.
Regarding claim 12, modified Kim discloses wherein the at least one protrusion member (Kim, Fig. 1, 11) is a plurality of protrusion members including a first protrusion member and a second protrusion member (Kim, Fig.1, plurality of protrusion members includes a first and second protrusion member 11).
Regarding claim 14, modified Kim discloses wherein the at least one protrusion member (Kim, Fig.1, 11) is a pair of protrusion members, including a first protrusion member and a second protrusion member (Kim, Fig.1, plurality of protrusion members includes a first and second protrusion member 11).
Regarding claim 15, modified Kim discloses wherein the first protrusion member (Kim, Fig.1, 11) is disposed on the ring shaped member opposite to where the second protrusion member is disposed on the ring shaped member (see Fig.1, where each protrusion member is disposed on the ring shaped member opposite another protrusion member).
Regarding claim 20, Kim discloses a method of using a muscle therapy device (Fig.1, col. 3, lines 46 -50, “acupressure effect”) , the method comprising the steps of: providing the muscle therapy device (Fig.1, col. 3, lines 46 -50, “acupressure effect”), the muscle therapy device (Fig.1) having a ring shaped member (Fig.1) , the ring shaped member having an interior wall (wall adjacent portion 11) and exterior wall (wall opposite portion 11); at least one protrusion member (“bulged portion” 11) coupled to the ring shaped member, the at least one protrusion (11) extending radially inwardly from the ring shaped member (as shown in Fig.1), and at least one tip member (“pressure dome” 15) disposed on the at least one protrusion member (as shown in Fig.1; col. 3, lines 33-37); positioning the muscle therapy device at a predetermined location on a body of a user (the waist); applying pressure to the muscle therapy device; and contacting the predetermined location with the at least one tip member (15) of the muscle therapy device (“In the hula hoop 10 and referring to FIGS. 1 and 2A, the bulged portions 11 are projecting toward the center of the hoop 10 so that when the hula hoop 10 is rotated against a waist of a person, the contact tips 31 are pressed against the body brining an accupressure effect”, col. 3, lines 46-49).
Kim does not disclose at least a portion of the ring shaped member having an H-shaped cross section adapted to stiffen the ring shaped member.
However, Kessler teaches a ring shaped exercise hoop (Fig.3, Abstract) wherein at least a portion of the ring shaped member has an H-shaped cross section (see annotated Fig.2, where the cross section of the hoop is taken in a plane perpendicular to the center axis of the hoop and the H-shape is created by the wall 78 in connection with the inner surface of the hoop) to provide compartments within the hoop to hold individual weights for the purpose of exercising [0005] and [0025]). It is noted that the wall members 78 would provide the additional benefit of supporting, and stiffening, the ring shaped member.
Therefore, it would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to modify the cross section of the ring shaped device of Kim to have at least a portion having an H-shaped cross section in several places throughout the ring shaped member as taught by Kessler to provide individual weight compartments for exercising benefits for the user.
Modified Kim does not disclose the at least one protrusion member extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member.
However, Hoard teaches (Fig. 1-3) a massage appliance comprising a protrusion member (angular members 7) extending radially inward from a member (bar 1) by extending from the exterior wall (wall of bar 1 facing ground) through the interior wall (wall of bar facing user) of the member (via struts 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the massage device of modified Kim such that the at least one protrusion member extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member, as taught by Hoard, as it has been held that making two components separable is a mere design consideration that would have been obvious to one of ordinary skill, see in re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 6,309,273 B1) in view of Kessler (US 2012/0157272 A1), Snead (US 9468790 B1) and Yoo et al. (US 6,217,482 B1), as evidenced by Lee (WO2015/030487 A1, reference to the disclosure of Lee is made to the English machine translation attached herein), and Hoard (US 1,265,083).
Regarding claim 19, Kim discloses a muscle therapy device (Figs. 1-3A, col. 3, lines 46 -50, “acupressure effect”), comprising: a ring shaped member (Fig.1); the ring shaped member having an interior wall (wall adjacent portion 11) and exterior wall (wall opposite portion 11); the ring shaped member having a plurality of arcuate portions (Kim, “plurality of arcuate modules” 51) including a first arcuate portion and a second arcuate portion (Kim, see Fig.1, where ring shaped member comprising 7 arcuate portions), the male end of the first arcuate portion is selectively, removably coupled to the female end of the second arcuate portion (Kim, Fig.’s 2B and 2C, col. 3, line 62 – col. 4, lines 1-11, where the plug and socket are removably connected via a pressure projection 21 on the socket 53 and a guide projection on the plug 52), wherein the female end has a hollow portion defined by at least one side wall (Kim, Fig.2 socket 53 is a hollow interior within circular wall), at least one protrusion member (“bulged portion” 11) coupled to the ring shaped member (Fig.1), the at least one protrusion (11) extending radially inwardly from the ring shaped member (as shown in Fig.1); and at least one tip member (“pressure dome” 15) disposed on the at least one protrusion member (as shown in Fig.1; col. 3, lines 33-37), wherein the at least one protrusion member (Kim, Fig. 1, 11) is a plurality of protrusion members including a first protrusion member and a second protrusion member (Kim, Fig.1, plurality of protrusion members includes a first and second protrusion member 11), each of the protrusion members having a semi-circular shape (Fig.2A), the first protrusion member (Kim, Fig.1, 11) is disposed on the ring shaped member opposite to where the second protrusion member is disposed on the ring shaped member (see Fig.1, where each protrusion member is disposed on the ring shaped member opposite another protrusion member).
Kim does not teach at least a portion of the ring shaped member having an H-shaped cross section adapted to stiffen the ring shaped member and the main body having at least a portion with the H-shaped cross section disposed between a male end and a female end.
However, Kessler teaches a ring shaped exercise hoop (Fig.3, Abstract) wherein at least a portion of the ring shaped member has an H-shaped cross section and the main body having at least a portion with the H- shaped cross section disposed between a male end (see annotated Fig.2 in claim 1 above, where the cross section of the hoop is taken in a plane perpendicular to the center axis of the hoop and the H-shape is created by the walls 78 in connection with the inner surface of the hoop, the H-shape being disposed between the male end and the female end) to provide compartments within the hoop to hold individual weights for the purpose of exercising [0005] and [0025]). It is noted that the wall members 78 would provide the additional benefit of supporting, and stiffening, the ring shaped member, because the walls 78, being cross sectional members within the device, will support any outside load applied to the device in a direction perpendicular to the outer surface of the device.
Therefore, it would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to modify the cross section of the ring shaped device of Kim to have at least a portion having an H-shaped cross section in several places throughout the ring shaped member in the main body of each arcuate portion between their male and female ends as taught by Kessler to provide individual weight compartments for exercising benefits for the user.
Regarding the limitation “at least one aperture is formed in the at least one side wall [of the female end], wherein the male end has at least one button connector disposed on at least one side wall, wherein the button connector of the male end of the first arcuate portion disposed in the aperture of the female end of the second arcuate portion”, modified Kim discloses an aperture formed on the side wall of the male end (Kim, Fig.2C “locking slot” 55), and wherein the female end has at least one button connector (“locking projection” 56) disposed on at least one side wall (Fig. 2B) and wherein the button connector (56) of the female end (53) of the first arcuate portion disposed in the aperture of the male end (52) of the second arcuate portion (Kim, Fig. 2B-2C). This is the opposite configuration as claimed.
However, it would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to provide the aperture on the side wall of the female end and the button connector on the male end as this configuration would still provide the predictable result of securing a first arcuate portion to a second arcuate portion. Additionally, it has been held that mere reversal of essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167. See MPEP 2144.
Modified Kim does not disclose wherein each of the female end and the male end have at least one lock hole formed therethrough, the at least one lock hole of the female end is disposed above the at least one lock hole of the male end, the lock holes configured to receive a fastener.
However, Snead teaches a ring shaped member comprising a plurality of arcuate portions (Fig.2 sections 21 and 22), the arcuate portions comprising a female end (30) and male end (32) and wherein each of the female end (30) and the male end (32) have at least one lock hole (40 on 32, and 42 on 30) formed therethrough (col. 4, lines 22-25) wherein the at least one lock hole of the female end (Snead, 42) is disposed above the at least one lock hole (40) of the male end (Snead, “The first hole 40 and the second hole 42 align upon disposition of the interconnect extension 34 within the female end 30”, col. 4, line 25-27) wherein the lock holes (Snead, Fig.2, 40 and 42) are configured to receive a fastener (Snead, “threaded fastener” 47, col.4, lines 30-32)to receive a fastener through both holes to securely attach the male end of one arcuate portion to the female end of the other arcuate portion (col. 4, lines 30-32).
Note that while Snead only discloses a single locking mechanism, it is well known to provide two different locking mechanisms to secure two structures together. This is evidenced by Lee, which discloses a hoop device (Fig.1) comprising multiple sections (Fig.3, 10) that are coupled together to form the hoop, and teaches that it is known to use more than one coupling mechanism to secure the sections together (p.3, paragraphs 3 and 4). Lee teaches each section (Fig.3) comprising a male end (30) and a female end (40), the male end comprising a coupling hook (33) to fits into engaging groove (43) of the female end when the male end is inserted into the female end. Additionally, the male end (30) comprises hook material fastener (34) that is attached to loop material fastener (44) disposed on the female end (40) after the male end (30) is engaged with the female end (40) via coupling hook (33) and engaging groove (43; p.3, paragraphs 3 and 4), the two locking mechanisms, the hook and loop material in addition to the coupling hook and groove, are both provided to couple the hoop sections 10 to one another to securely form the hoop.
Therefore, it would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to modify each arcuate portion of modified Kim to further comprise at least one lock hole of the female end is disposed above the at least one lock hole of the male end, the lock holes configured to receive a fastener, as taught by Snead, for the purpose of providing an additional locking mechanism to secure the arcuate portions to each other so that the tubes do not disengage during use, as evidenced by the teachings of Lee where the use of two different coupling mechanisms is a known way of coupling portions of a hoop device together in a more secure fashion.
Modified Kim does not disclose wherein each of the arcuate portions has a pair of hooks, with one of the pair of hooks disposed adjacent to the male end and an other of the pair of hooks disposed adjacent to the female end,
However, Yoo teaches a ring shaped exercise device (Fig.8) comprising two arcuate portions (right half of the device and left half of the device) each comprising a hook at their end (183 and 184) to secure the end of the left arcuate portion to the end of the right arcuate portion (col. 5, lines 30-38).
Therefore, it would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to substitute the pressure projection 21 on the socket 53 of Kim and the guide projection on the plug 52 of Kim with a hook at each end of each arcuate portion, as taught by Yoo, as it has been held that simple substitution of one well-known locking structure (projections and sockets of Kim) with another well known locking structure (hooks of Yoo) would provide the expected result of supporting and preventing the arcuate portions from being disconnected during use (see rationale for obviousness of a simple substitution of a well-known structure in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See also MPEP 2143(I)(B)).. With this modification, one end of each arcuate portion would comprise hook 183 and the opposite end of each arcuate portion would comprise hook 184.
Modified Kim does not disclose the at least one protrusion member extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member.
However, Hoard teaches (Fig. 1-3) a massage appliance comprising a protrusion member (angular members 7) extending radially inward from a member (bar 1) by extending from the exterior wall (wall of bar 1 facing ground) through the interior wall (wall of bar facing user) of the member (via struts 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the massage device of modified Kim such that the at least one protrusion member extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member, as taught by Hoard, as it has been held that making two components separable is a mere design consideration that would have been obvious to one of ordinary skill, see in re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Kessler and Hoard (US 1,265,083), and further in view of Yoo et al. (US 6,217,482 B1).
Regarding claim 10, modified Kim does not disclose an at least one hook is disposed on the main body adjacent to at least one of the male end and the female end.
However, Yoo teaches a ring shaped exercise device (Fig.8) comprising two arcuate portions (right half of the device and left half of the device) comprising a hook (183 and 184) to secure the end of the left arcuate portion to the end of the right arcuate portion (col. 5, lines 30-38), the at least one hook (Yoo, Fig.8, 183 and 184) disposed on the main body adjacent to at least one of the male end (Kim, Fig.2A, 52) and the female end (Kim, Fig.2A, 53).
Therefore, it would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to substitute the pressure projection 21 on the socket 53 of Kim and the guide projection on the plug 52 of Kim with a hook at each end of each arcuate portion, as taught by Yoo, as it has been held that simple substitution of one well-known locking structure (projections and sockets of Kim) with another well known locking structure (hooks of Yoo) would provide the expected result of supporting and preventing the arcuate portions from being disconnected during use (see rationale for obviousness of a simple substitution of a well-known structure in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See also MPEP 2143(I)(B)).. With this modification, one end of each arcuate portion would comprise hook 183 and the opposite end of each arcuate portion would comprise hook 184.
Regarding claim 11, modified Kim discloses wherein the at least one hook includes a pair of hooks (Yoo, Fig.8, 183 and 184), with one of the pair of hooks disposed adjacent to the male end (Kim, Fig.2A, 52 with hook 183, Yoo) and an other of the pair of hooks disposed adjacent to the female end (Kim, Fig.2A, 53 with hook 184, Yoo).
Claims 16-17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Kessler and Hoard, and further in view of Snead (US 9468790 B1), as evidenced by Lee (WO2015/030487 A1, reference to the disclosure of Lee is made to the English machine translation attached herein).
Regarding claim 16, modified Kim does not disclose wherein each of the female end and the male end have at least one lock hole formed therethrough.
However, Snead teaches a ring shaped member comprising a plurality of arcuate portions (Fig.2 sections 21 and 22), the arcuate portions comprising a female end (30) and male end (32) and wherein each of the female end (30) and the male end (32) have at least one lock hole (40 on 32, and 42 on 30) formed therethrough (col. 4, lines 22-25) to receive a fastener through both holes to securely attach the male end of one arcuate portion to the female end of the other arcuate portion (col. 4, lines 30-32).
Note that while Snead only discloses a single locking mechanism, it is well known to provide two different locking mechanisms to secure two structures together. This is evidenced by Lee, which discloses a hoop device (Fig.1) comprising multiple sections (Fig.3, 10) that are coupled together to form the hoop, and teaches that it is known to use more than one coupling mechanism to secure the sections together (p.3, paragraphs 3 and 4). Lee teaches each section (Fig.3) comprising a male end (30) and a female end (40), the male end comprising a coupling hook (33) to fits into engaging groove (43) of the female end when the male end is inserted into the female end. Additionally, the male end (30) comprises hook material fastener (34) that is attached to loop material fastener (44) disposed on the female end (40) after the male end (30) is engaged with the female end (40) via coupling hook (33) and engaging groove (43; p.3, paragraphs 3 and 4), the two locking mechanisms, the hook and loop material in addition to the coupling hook and groove, are both provided to couple the hoop sections 10 to one another to securely form the hoop.
Therefore, it would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to modify each arcuate portion of modified Kim to further comprise at least one lock hole of the female end is disposed above the at least one lock hole of the male end, the lock holes configured to receive a fastener, as taught by Snead, for the purpose of providing an additional locking mechanism to secure the arcuate portions to each other so that the tubes do not disengage during use, as evidenced by the teachings of Lee where the use of two different coupling mechanisms is a known way of coupling portions of a hoop device together in a more secure fashion.
Regarding claim 17, Kim as modified discloses wherein the at least one lock hole of the female end (Snead, 42) is disposed above the at least one lock hole (40) of the male end for each of the female and male ends (Snead, “The first hole 40 and the second hole 42 align upon disposition of the interconnect extension 34 within the female end 30”, col. 4, line 25-27).
Regarding claim 21, modified Kim discloses a lock screw (threaded fastener 47, col.4, lines 30-32 Snead) is disposed through the lock hole (Fig. 2 Snead and Col. 4 lines 30-32 Snead).
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 6,309,273 B1) in view of Kessler (US 2012/0157272 A1) and Hoard (US 1,265,083), and further in view of Spratt (US 5,730,708).
Regarding claim 22, modified Kim discloses a ring shaped member, but does not disclose a protective cover disposed on at least a portion of the ring shaped member.
However, Spratt teaches (Fig. 7a-7e) a ring shaped member (formed by handles 20) and a protective cover (bumped pad 16) disposed on at least a portion of the ring shaped member (see Fig. 7a).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the massage device of modified Kim to further comprise a protective cover, as taught by Spratt, for the purpose of protecting user’s vertebrae as well as a wall during use (Col. 3 lines 27-30 Spratt).
Regarding claim 23, modified Kim discloses the protective cover is disposed on the ring shaped member below an arch of the protrusion member (when combined with the modified Kim reference, the cover 16 of Spratt would be positioned below the arch of Kim due to being below the point of contact of the tip of the protrusion as shown in Fig. 7A).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-18, respectively, of Gifford (U.S. Patent 11,351,084) in view of Hoard (US 1,265,083).
Although the claims are not identical, they are not patentably distinct from one another. The application claims are broader in at least one aspect and also recite additional features not claimed in the patent claims.
For claim 1:
Regarding the broadening aspect of the application claims, the following comparison between the patent claims and the application claims highlights (see underlined features in the patent claims) what elements have been excluded in the presentation of the application claims.
Patent claim 1
Application claim 1
A muscle therapy device, comprising:
a ring shaped member, at least a portion of the ring shaped member having an H-shaped cross section defined by a channel and a center support member, each of the channel and the center support member running a length of the portion of the ring shaped member, wherein the H-shaped cross section is adapted to stiffen the ring shaped member and the channel is open and the center support member is exposed;
at least one protrusion member coupled to the ring shaped member, the at least one protrusion member extending radially inwardly from the ring shaped member; and
at least one tip member disposed on the at least one protrusion member.
A muscle therapy device, comprising:
a ring shaped member, at least a portion of the ring shaped member having an H-shaped cross section adapted to stiffen the ring shaped member; the ring shaped member having an interior wall and an exterior wall
at least one protrusion member coupled to the ring shaped member, the at least one protrusion extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member; and
at least one tip member disposed on the at least one protrusion member,
wherein the device is configured to be operated along a single force vector.
Thus, it is apparent, for the broadening aspect, that patent claim 1 includes features that are not in application claim 1. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Since application claim 1 is anticipated by patent claim 1, with respect to the broadening aspect, and since anticipation is the epitome of obviousness, then application claim 1 is obvious over patent claim 1 with respect to the broadening aspect.
With respect to the additional features recited in application claim 1, patent claim 1 fails to recite the at least one protrusion member extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member.
However, Hoard teaches (Fig. 1-3) a massage appliance comprising a protrusion member (angular members 7) extending radially inward from a member (bar 1) by extending from the exterior wall (wall of bar 1 facing ground) through the interior wall (wall of bar facing user) of the member (via struts 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the massage device of patent claim 1 such that the at least one protrusion member extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member, as taught by Hoard, as it has been held that making two components separable is a mere design consideration that would have been obvious to one of ordinary skill, see in re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961).
For dependent claims 2-18, the recited limitations are contained in patent claims 2-18, respectively.
For claim 19:
Although the claims are not identical, they are not patentably distinct from one another. The application claims are broader in at least one aspect.
Regarding the broadening aspect of the application claims, the following comparison between the patent claims and the application claims highlights (see underlined features in the patent claims) what elements have been excluded in the presentation of the application claims.
Patent claim 19
Application claim 19
A muscle therapy device, comprising:
a ring shaped member, at least a portion of the ring shaped member having an H-shaped cross section defined by a channel and a center support member, each of the channel and the center support member running a length of the portion of the ring shaped member, wherein the H-shaped cross section is adapted to stiffen the ring shaped member and the channel is open and the center support member is exposed, the ring shaped member having a plurality of arcuate portions including a first arcuate portion and a second arcuate portion, each of the plurality of arcuate portions having a main body, the main body having at least a portion with the H-shaped cross section disposed between a male end and a female end, the male end of the first arcuate portion is selectively, removably coupled to the female end of the second arcuate portion, wherein the female end has a hollow portion defined by at least one side wall, at least one aperture is formed in the at least one side wall wherein the male end has at least button connector disposed on at least one side wall, the button connector of the male end of the first arcuate portion disposed in the aperture of the female end of the second arcuate portion;
at least one protrusion member coupled to the ring shaped member, the at least one protrusion member extending radially inwardly from the ring shaped member; and
at least one tip member disposed on the at least on protrusion member, wherein each of the arcuate portions has a pair of hooks, with one of the pair of hooks disposed adjacent to the male end and an other of the pair of hooks disposed adjacent to the female end,
wherein the at least one protrusion member is a plurality of protrusion members including a first protrusion member and a second protrusion member, each of the protrusion members having a semi-circular shape, the first protrusion member is disposed on the ring shaped member opposite to where the second protrusion member is disposed on the ring shaped member, wherein each of the female end and the male end have at least one lock hole formed therethrough, the at least one lock hole of the female end is disposed above the at least one lock hole of the male end, the lock holes configured to receive a fastener.
A muscle therapy device, comprising:
a ring shaped member, at least a portion of the ring shaped member having an H-shaped cross section adapted to stiffen the ring shaped member, he ring shaped member having an interior wall and an exterior wall, the ring shaped member having a plurality of arcuate portions including a first arcuate portion and a second arcuate portion, each of the plurality of arcuate portions having a main body, the main body having at least a portion with the H-shaped cross section disposed between a male end and a female end, the male end of the first arcuate portion is selectively, removably coupled to the female end of the second arcuate portion, wherein the female end has a hollow portion defined by at least one side wall, at least one aperture is formed in the at least one side wall wherein the male end has at least button connector disposed on at least one side wall, the button connector of the male end of the first arcuate portion disposed in the aperture of the female end of the second arcuate portion;
at least one protrusion member coupled to the ring shaped member, the at least one protrusion member extending radially inwardly from the ring shaped member; and
at least one tip member disposed on the at least on protrusion member, wherein each of the arcuate portions has a pair of hooks, with one of the pair of hooks disposed adjacent to the male end and an other of the pair of hooks disposed adjacent to the female end,
wherein the at least one protrusion member is a plurality of protrusion members including a first protrusion member and a second protrusion member, each of the protrusion members having a semi-circular shape, the first protrusion member is disposed on the ring shaped member opposite to where the second protrusion member is disposed on the ring shaped member, wherein each of the female end and the male end have at least one lock hole formed therethrough, the at least one lock hole of the female end is disposed above the at least one lock hole of the male end, the lock holes configured to receive a fastener.
Thus, it is apparent, for the broadening aspect, that patent claim 1 includes features that are not in application claim 19. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Since application claim 1 is anticipated by patent claim 1, with respect to the broadening aspect, and since anticipation is the epitome of obviousness, then application claim 1 is obvious over patent claim 1 with respect to the broadening aspect.
With respect to the additional features recited in application claim 19, patent claim 1 fails to recite the at least one protrusion member extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member.
However, Hoard teaches (Fig. 1-3) a massage appliance comprising a protrusion member (angular members 7) extending radially inward from a member (bar 1) by extending from the exterior wall (wall of bar 1 facing ground) through the interior wall (wall of bar facing user) of the member (via struts 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the massage device of patent claim 1 such that the at least one protrusion member extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member, as taught by Hoard, as it has been held that making two components separable is a mere design consideration that would have been obvious to one of ordinary skill, see in re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961).
For claim 20:
Although the claims are not identical, they are not patentably distinct from one another. The application claims are broader in at least one aspect.
Regarding the broadening aspect of the application claims, the following comparison between the patent claims and the application claims highlights (see underlined features in the patent claims) what elements have been excluded in the presentation of the application claims.
Patent claim 19
Application claim 19
A muscle therapy device, comprising:
a ring shaped member, at least a portion of the ring shaped member having an H-shaped cross section defined by a channel and a center support member, each of the channel and the center support member running a length of the portion of the ring shaped member, wherein the H-shaped cross section is adapted to stiffen the ring shaped member and the channel is open and the center support member is exposed, the ring shaped member having a plurality of arcuate portions including a first arcuate portion and a second arcuate portion, each of the plurality of arcuate portions having a main body, the main body having at least a portion with the H-shaped cross section disposed between a male end and a female end, the male end of the first arcuate portion is selectively, removably coupled to the female end of the second arcuate portion, wherein the female end has a hollow portion defined by at least one side wall, at least one aperture is formed in the at least one side wall wherein the male end has at least button connector disposed on at least one side wall, the button connector of the male end of the first arcuate portion disposed in the aperture of the female end of the second arcuate portion;
at least one protrusion member coupled to the ring shaped member, the at least one protrusion member extending radially inwardly from the ring shaped member; and
at least one tip member disposed on the at least on protrusion member, wherein each of the arcuate portions has a pair of hooks, with one of the pair of hooks disposed adjacent to the male end and an other of the pair of hooks disposed adjacent to the female end,
wherein the at least one protrusion member is a plurality of protrusion members including a first protrusion member and a second protrusion member, each of the protrusion members having a semi-circular shape, the first protrusion member is disposed on the ring shaped member opposite to where the second protrusion member is disposed on the ring shaped member, wherein each of the female end and the male end have at least one lock hole formed therethrough, the at least one lock hole of the female end is disposed above the at least one lock hole of the male end, the lock holes configured to receive a fastener.
A method of using a muscle therapy device, the method comprising the steps of:
providing the muscle therapy device, the muscle therapy device having a ring shaped member, at least a portion of the ring shaped member having an H-shaped cross section adapted to stiffen the ring shaped member, the ring shaped member having an interior wall and an exterior wall, at least one protrusion member coupled to the ring shaped member, the at least one protrusion extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member, and at least one tip member disposed on the at least one protrusion member;
positioning the muscle therapy device at a predetermined location on a body of a user;
applying pressure to the muscle therapy device; and
contacting the predetermined location with the at least one tip member of the muscle therapy device.
Thus, it is apparent, for the broadening aspect, that patent claim 1 includes features that are not in application claim 20. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Since application claim 20 is anticipated by patent claim 1, with respect to the broadening aspect, and since anticipation is the epitome of obviousness, then application claim 20 is obvious over patent claim 1 with respect to the broadening aspect.
With respect to the additional features recited in application claim 20, patent claim 1 fails to recite the at least one protrusion member extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member.
However, Hoard teaches (Fig. 1-3) a massage appliance comprising a protrusion member (angular members 7) extending radially inward from a member (bar 1) by extending from the exterior wall (wall of bar 1 facing ground) through the interior wall (wall of bar facing user) of the member (via struts 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the massage device of patent claim 1 such that the at least one protrusion member extending radially inwardly from the ring shaped member by extending from the exterior wall through the interior wall of the ring shaped member, as taught by Hoard, as it has been held that making two components separable is a mere design consideration that would have been obvious to one of ordinary skill, see in re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961).
Response to Arguments
Applicant’s arguments filed 7/7/2025 have been fully considered.
Applicant’s arguments with respect to claim(s) 1, 19 and 20 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.
Applicant’s arguments regarding allowability of the dependent claims have been considered but are moot due to rejection of all independent claims.
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