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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/30/2025 has been entered.
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 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over DeStefano et al. 2011/0054369
Regarding claim 1, DeStefano teaches a massage tool (abstract), comprising: a generally cylindrical grip portion (shaft 20, figure 2); a massage head portion (first muscle treatment member 60), wherein the massage head portion includes a generally hemispherical portion (Figure 10, upper surface 64), an edge portion (intermediate portion 68 contains an edge portion in connection with 64) and a generally flat bottom portion (intermediate portion 68); and an extension member extending between and connected to the massage head portion and the generally cylindrical grip portion (engagement portion 72, 0047 states that “engagement portion 72 of first muscle treatment member 60 passes through first end 54 of aperture 52 of intermediate member 40 and is threaded into threaded first end 36 of aperture 30 of elongate shaft 20”).
DeStefano fails to explicitly teach wherein the grip portion, massage head portion, and extension member are a unitary body. However, it would have been prima facie obvious to one of ordinary skill in the art to make the construction of this device unitary, since it has been held that forming in one piece an article that has formerly been formed in more than one piece and put together involves only routine skill in the art. The use of a one-piece construction choice instead of the removable pieces discussed in DeStefano would merely be a matter of obvious engineering choice.
Regarding claim 10, DeStefano teaches a method of massaging, comprising:
a) providing a massage tool having a body including a grip portion (Figure 5, outer surface 28) and a massage head portion (muscle treatment member 60) connected by an elongated intermediate portion (Elongate rigid shaft 20)
b) a user gripping the grip portion of the massage tool (gripping shaft 20);
c) engaging a patient with the massage head portion of the massage tool (First muscle treatment portion 60),
d) manipulating a muscle within the patient with the massage head portion; wherein the massage head portion includes a generally hemispherical portion (Figure 10, upper surface 64) and a generally flat bottom portion (intermediate portion 68) connected by an edge portion (intermediate portion 68 contains an edge portion in connection with 64),
DeStefano fails to explicitly teach the massage tool as having a unitary body. However, it would have been prima facie obvious to one of ordinary skill in the art to make the construction of this device unitary, since it has been held that forming in one piece an article that has formerly been formed in more than one piece and put together involves only routine skill in the art. The use of a one-piece construction choice instead of the removable pieces discussed in DeStefano would merely be a matter of obvious engineering choice.
Regarding claim 11, DeStefano teaches the method of claim 10, further comprising:
e) manipulating the muscle with the circumferential edge portion (Figure 10 depicts (intermediate portion 68 containing an edge portion in connection with 64, this edge portion can be used to massage a user.).
Regarding claim 12, DeStefano teaches the method of claim 10 wherein the gripping step includes the user grasping the gripping portion of the massage tool with the elongated intermediate portion extending between two fingers of the user (Based on the user’s grip as shown in figure 20, the gripping portion of the massage tool can be gripped as the rest of shaft 20 extends between the fingers of the user.).
Regarding claim 13, DeStefano teaches the massage tool of claim 1 wherein the boundary between the generally hemispherical portion and the edge portion of the massage head is curved (The area between upper surface 64 and intermediate portion 68 is curved as depicted in figure 10.).
PNG
media_image1.png
356
535
media_image1.png
Greyscale
Regarding claim 14, DeStefano teaches the massage tool of claim 4, wherein the boundary between the generally hemispherical portion and the edge portion of the massage head is curved (The area between upper surface 64 and intermediate portion 68 is curved as depicted in figure 10.).
Claims 2-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over DeStefano in view of Thornburg et al. 2020/0060924
Regarding claim 2, DeStefano teaches the massage tool of claim 1, but fails to teach wherein the massage tool is made of a metallic structural material. Thornburg teaches an analogous handheld massage tool that does teach wherein the massage tool is made of a metallic structural material (0025). It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tool of DeStefano with the teachings of Thornburg and include wherein the massage tool is made of a metallic structural material as this would allow for a desired massage interaction with the skin of the user (0025).
Regarding claim 3, DeStefano in view of Thornburg teaches the massage tool of claim 2, wherein the massage tool is made of stainless steel (Thornburg 0025).
Regarding claim 4, DeStefano teaches a massage tool (abstract), comprising: a generally cylindrical grip portion (shaft 20, figure 2); a massage head portion (first muscle treatment member 60); and an extension member extending between and connected to the massage head portion and the generally cylindrical grip portion (engagement portion 72, 0047 states that “engagement portion 72 of first muscle treatment member 60 passes through first end 54 of aperture 52 of intermediate member 40 and is threaded into threaded first end 36 of aperture 30 of elongate shaft 20”). wherein the massage head portion includes a generally hemispherical portion (Figure 10, upper surface 64), an edge portion (intermediate portion 68) and a generally flat bottom portion (intermediate portion 68);
DeStefano fails to explicitly teach the massage tool as having a unitary body. However, it would have been prima facie obvious to one of ordinary skill in the art to make the construction of this device unitary, since it has been held that forming in one piece an article that has formerly been formed in more than one piece and put together involves only routine skill in the art. The use of a one-piece construction choice instead of the removable pieces discussed in DeStefano would merely be a matter of obvious engineering choice.
DeStefano still fails to mention the massage tool as being made of metal, however Thornburg does teach a massage tool head as being made of metal (0025). It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify DeStefano with the teachings of Thornburg and include a metal massage head as this would allow for a desired massage interaction with the skin of the user (0025).
Regarding claim 5, DeStefano in view of Thornburg teaches the metal massage tool of claim 4, wherein the metal massage tool is made of a metallic structural material (Thornburg 0025).
Regarding claim 6, DeStefano in view of Thornburg teaches the metal massage tool of claim 5, wherein the metal massage tool is made of stainless steel (Thornburg 0025).
Regarding claim 7, DeStefano in view of Thornburg teaches the metal massage tool of claim 4, wherein the grip portion is generally cylindrical (Shaft 20, figure 2 of DeStefano).
Regarding claim 9, DeStefano in view of Thornburg teaches the metal massage tool of claim 4, wherein the massage tool is made of stainless steel (Thornburg 0025).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over DeStefano in view of Thornburg, further in view of Williams et al. CA 2826754 A1
Regarding claim 8, DeStefano in view of Thornburg teaches the metal massage tool of claim 4, but fails to teach wherein the grip portion is a pair of oppositely disposed curved members connected to the extension member. Williams teaches an analogous therapy device that does teach wherein the grip portion (handle 101) is a pair of oppositely disposed curved members (Figure 1, indentations 101E) connected to the extension member (Frame 102). It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the massage tool of DeStefano in view of Thornburg with the teachings of Williams and include wherein the grip portion is a pair of oppositely disposed curved members connected to the extension member as these allow for the handle to conform to a user’s finger when they grip the handle (claim 12).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROHAN DEEP PATEL whose telephone number is (571)270-5538. The examiner can normally be reached Mon - Fri 5:30 AM - 3:00 PM PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brandy S Lee can be reached at (571) 2707410. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROHAN PATEL/Examiner, Art Unit 3785
/BRANDY S LEE/Supervisory Patent Examiner, Art Unit 3785