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 Arguments
Applicant's arguments filed 9/24/25 have been fully considered but they are not persuasive.
Regarding applicant’s arguments stating the ratio between the perimeter of the bulb and the perimeter of the stem being between 1.5 and 1.9 with a preferred value of 1.7 is critical, Examiner respectfully disagrees. Applicant states “ratios below 1.5 fail to retain the piercing and ratios above 1.9 cause painful dilation or fail to fit”, however the disclosure states the ratio could be as low as 1.3 and as high as 2.1 contradicting the criticality of the ratio range of 1.5-1.9. In addition, Mueller discloses “The bulge is sized such that it is sufficiently larger in diameter than the body hole into which it is to be inserted such that the body hole stretches as the pierced jewelry is inserted and then contracts after the bulge passes through the hole. The bulge is also sized such that it is not too large as to result in pain or a tear in the user's skin as it is installed” in paragraph 7.
Regarding applicant’s arguments stating Mueller makes no reference to accommodating various skin hole sizes or anatomical variations, Examiner points out a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Further, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding applicant’s arguments stating Mueller fails to disclose the parameter of the PB/PT ratio, Examiner respectfully disagrees. Although Mueller does not explicitly mention the ratio, the ratio exists as shown in figures 7A-8B. Mueller teaches “The heart-shaped bulge 22 provides for an easier insertion because of the slope of the heart facing the end of the post 12,” in para 28.
Regarding applicant’s arguments stating Mueller fails to disclose the equilibrium, Examiner respectfully disagrees. Mueller teaches “That is, because of the weight of the decorative portion 20 of the stem-type jewelry, stem-type jewelry often tilts off-center, reducing its appearance. By adding the bulge 24 of the present invention to the stem 12 of stem type pierced jewelry, the danger of loss is reduced and, with proper placement of the bulge 24, the weight of the decorative portion 20 is counter-acted by the bulge 24 holding against the earlobe, etc.” Within this teaching, the Examiner is interpreting the weight of the tip would be included in the counteraction of the weight of the ornamental portion and therefore reads on the claims as presents.
Examiner holds the rejection over the prior art.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Mueller US 2010/0122553.
Regarding claim 1, Mueller discloses a monolithic piercing, intended to be inserted into a previously pierced hole in the skin of a user, the piercing comprising:
a tip, configured to allow guidance and suitable presentation of a bulb (22) of progressive dilation upon insertion into said skin hole;
a stem (12) configured to match the length and diameter of the skin tunnel hole and provide support for the piercing; and
an ornamental end portion (10) constituting an ornamental pattern having a sufficiently large volume and/or characteristic dimension to prevent the piercing from passing through the skin hole; and
a dilation bulb (22) non-removably integrated with said stem (12) and said tip to form a single continuous piece, said dilation bulb (22) having an ovoid profile with increasing diameter between said tip and said stem (22) over substantially the length of said dilation bulb (22) to ensure a progressive and painless dilation of the skin surrounding said skin hole during guiding said piercing into said skin hole, wherein:
the tip, the dilation bulb (22) and the stem (12) cooperate to ensure a triple function of insertion, holding in place and removal of the piercing permitted by the guidance and the dilation of the hole (para 7 “a bulge 22 as a retainer on a stem or post of pierced jewelry”);
a perimeter PB of any cross section of the dilation bulb (22) is greater than a perimeter of any cross section of the tip and is also greater than a perimeter of any cross section of the stem (12) (Fig 8A shows perimeter of the bulge 22 is larger than the perimeter of the tip and of the stem 12);
a weight of the ornamental end portion (300) is equal, with a 10% tolerance, to the combined weight of the tip (110) and the dilation bulb (120) (para 30, “By adding the bulge of the present invention to the stem 12 of stem type pierced jewelry, the danger of loss is reduced and, with proper placement of the bulge 24, the weight of the decorative portion 20 is counter-acted by the bulge 24 holding against the earlobe, etc,”)( To counteract the weight of the decorative portion, the weight of the bulge would be added to the weight of the tip. Examiner interprets the term “counter-acted” to mean equal, therefore the combined weight of the tip and bulge would equal the weight of the decorative portion and read on the claim as presented. It would have been obvious to one skilled in the art before the effective filing date of the invention to make the combined weight of the bulge and tip equal to the weight of the decorative portion to perform the counteraction of weight as taught by Mueller and enhance the comfort of the user. Further, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, para 40-41, applicant has not disclosed any criticality for the claimed limitations.);
an angle α formed by a tangent to the dilation bulb (22) from any point of a first remarkable perimeter, located between the tip and the bulb (22), and by a first longitudinal direction of the tip is between 135° and 180° (Fig 8A-8B); and
an angle β formed by the tangent to the dilation bulb (22) from any point of a second remarkable perimeter, located between the dilation bulb (22) and the stem (12), and by the first direction longitudinal of the tip (110) is between 90° and 135°(Fig 8A-8B).
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Mueller discloses the claimed invention except for a ratio between a maximum perimeter of the dilation bulb and any perimeter of the stem is between 1.5 and 1.9 and preferably equal to 1.7. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have had the maximum ratio between perimeter of the dilation bulb and any perimeter of the stem 1.5 and 1.9 or equal to 1.7, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, para 40-41, applicant has not disclosed any criticality for the claimed limitations. Examiner notes the language “preferably” indicates the ratio is a preference and therefore not critical.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Mueller US 2010/0122553 in view of Giorlando US 2014/0116087.
Regarding claim 2, Mueller discloses the present invention, but Mueller doesn’t teach a piercing wherein the tip and the bulb extend along a first longitudinal direction, and the stem extends along a second longitudinal direction.
Giorlando teaches a piercing wherein the stem (post 110) extends along a longitudinal direction and then extends along a second longitudinal direction (Giorlando Figure 6).
It would have been obvious to one skilled in the art before the effective filing date of the invention to modify the stem of Mueller to have the post of Giorlando to create a piercing with a more secure attachment.
Regarding claim 3, Mueller in view of Giorlando discloses in which the bulb (22) comprises at least one flat (Mueller Figures 8A-8B).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Mueller US 2010/0122553 in view of Mueller Figure 9 US 2010/0122553.
Regarding claim 4, Mueller discloses the invention except wherein the stem is curved
Mueller Figure 9 discloses wherein the stem is curved (Mueller Figure 9).
It would have been obvious to one skilled in the art before the effective filing date of the invention to modify the stem of Mueller Figures 8A-8B with the curved stem of Mueller Figure 9 to create a more secure retention system.
Claims 5, 7, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Mueller US 20100122553 Fig 8A-8B in view of Mueller US 20100122553 Fig 7A-7B.
Regarding claim 5, Mueller Fig 8A-8B discloses a monolithic and rigid piercing, made in one piece, without any removable part, without mechanism, intended to be inserted into a previously pierced skin hole of a user, the piercing comprising:
a tip, configured to allow proper guidance and presentation of a progressive dilatation bulb during insertion into said skin hole;
a stem (12) configured to match the length and diameter of the skin tunnel hole and provide support for the piercing;
an ornamental end portion (10) constituting an ornamental pattern having a volume and/or a characteristic dimension large enough to prevent the piercing from passing through the skin hole; and
a dilation bulb (22) non-removably integrated with said stem (12) and said tip to form a single continuous piece, said dilation bulb (22) having an ovoid profile with increasing diameter between said tip and said stem (12) over substantially the length of said dilation bulb (22) to ensure a progressive and painless dilation of the skin surrounding said skin hole during guiding said piercing into said skin hole (Fig 8A-8B), wherein:
the diameter of the dilation bulb (22) proximate to said stem (12) is larger than the diameter of said dilation bulb (22) proximate to said tip (Fig 8A-8B);
the tip, the dilation bulb (22) and the stem (12) cooperate to ensure a triple function of insertion, holding in place and removal of the piercing permitted by the guidance and the dilation of the hole (para 7, “a bulge 22 as a retainer on a stem or post of pierced jewelry”);
a perimeter of any cross section of the dilation bulb (22) is greater than a perimeter of any cross section of the tip and is greater than a perimeter PT of any cross section of the stem (12) (Fig 8A shows perimeter of the bulge 22 is larger than the perimeter of the tip and of the stem 12);
an angle α formed by the tangent to the dilation bulb (22) from any point of a first remarkable perimeter, located between the point and the dilation bulb (22), and by the first direction longitudinal of the tip tends towards 180° and said angle α is between 135° and 180° (Fig 8A-8B).
Mueller does not explicitly disclose wherein a weight of the ornamental end portion (10) is 1.5 to 3 times less than the combined weight of the tip and the bulb (22). However, Mueller teaches “By adding the bulge of the present invention to the stem 12 of stem type pierced jewelry, the danger of loss is reduced and, with proper placement of the bulge 24, the weight of the decorative portion 20 is counter-acted by the bulge 24 holding against the earlobe, etc,” (para 30). To counteract the weight of the decorative portion, the weight of the bulge would be added to the weight of the tip.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have had the weight of the bulge and tip be 1.5 to 3 times the weight of the decorative portion to perform the counteraction of weight as taught by Mueller and enhance the comfort of the use, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, para 40-41, applicant has not disclosed any criticality for the claimed limitations).
Mueller Fig 8A-8B discloses the claimed invention except for a ratio between a maximum perimeter of the dilation bulb and any perimeter of the stem is between 1.5 and 1.9 and preferably equal to 1.7. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have had the maximum ratio between perimeter of the dilation bulb and any perimeter of the stem 1.5 and 1.9 or equal to 1.7, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, para 40-41, applicant has not disclosed any criticality for the claimed limitations.
Mueller Fig 8A-8B does not disclose wherein an angle β formed by the tangent to the bulb from any point of the second remarkable perimeter, located between the dilation bulb and the stem, and by the third direction longitudinal of the stem tends towards 180°.
Mueller Fig 7A-7B teaches wherein the angle between the bulb (20) and the stem (12) tends towards 180°(Fig 8A-8B).
It would have been obvious to one skilled in the art before the effective filing date of the invention to modify the angle between the bulb and the stem of Fig 8A to tend towards 180° as shown in Fig 7A to add comfort for the user when the bulb is inserted and removed from the ear of the user.
Regarding claim 7, Mueller Fig 8A-8B in view of Mueller Fig 7A-7B discloses the claimed invention except for a ratio between a maximum perimeter of the dilation bulb and any perimeter of the stem is between 1.5 and 1.9. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have had the maximum ratio between perimeter of the dilation bulb and any perimeter of the stem 1.5 and 1.9, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, para 40-41, applicant has not disclosed any criticality for the claimed limitations.
Regarding claim 18, Mueller Fig 8A-8B in view of Mueller Fig 7A-7B discloses the claimed invention except for a ratio between a maximum perimeter of the dilation bulb and any perimeter of the stem is equal to 1.7. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have had the maximum ratio between perimeter of the dilation bulb and any perimeter of the stem equal to 1.7, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, para 40-41, applicant has not disclosed any criticality for the claimed limitations.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANNA SALEM RASHID whose telephone number is (703)756-1113. The examiner can normally be reached M-F 10:00 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA S RASHID/Examiner, Art Unit 3677
/JASON W SAN/SPE, Art Unit 3677