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 .
DETAILED ACTION
1. This office action is in response to the preliminary amendment filed on 2/13/2023. As directed by the amendment, claims 1-15 have been amended and no claims have been added or canceled. Thus, claims 1-15 are pending in the application.
Priority
2. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation- 35 USC § 112 – Sixth Paragraph/35 USC § 112(f)
3. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
4. This application includes a claim limitation that uses the word “means” or “step” but is nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation recites sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation is:
“massage means” (claims 1, 3, 5, 8, 9, 10, 12, and 13). Claim 1 additionally recites that each massage means has “a working surface intended to come into contact with the skin” (ln. 4-5). This “working surface” is considered sufficient structure to perform the “massage” function.
Because this claim limitation is not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation does not recite sufficient structure, materials, or acts to perform the claimed function.
5. This application includes a claim limitation that does not use the word “means,” but is nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is:
“actuating element” (claims 1 and 5).
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The following is considered the “corresponding structure”:
“The actuating element 10 comprises, for example, at least one actuating shaft 12 comprising a housing 13 for receiving the output shaft 11” ([0044]).
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
6. Claims 1 and 5 are objected to because of the following informalities:
Regarding claim 1, the phrase “each massage means can be rotated around a respective secondary rotation axis” (ln. 6) should read --each massage means is configured to be rotated around a respective secondary rotation axis-- to avoid any confusion that use of the phrase “can be” makes the limitation optional;
Regarding claim 5, the word “inscribe” (ln. 3) should read --inscribed--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
7. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
8. Claims 2, 4-9, 11, and 14-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 2, the limitation “between 6 mm and 8 mm, for example approximately equal to 7 mm (+/- 0.3 mm)” is unclear because the claim presents a narrow numerical range that falls within a broader range. See MPEP 2173.05(c). For the purposes of examination, claim 2 will be interpreted as requiring a range between 6 mm - 8 mm.
Regarding claim 4, the term “said first surface portion” (ln. 2) lacks an antecedent basis. For the purposes of examination, claim 4 will be interpreted as newly introduced a “first surface portion.”
Regarding claim 5, the phrase “The massage head according to any claim 1” (ln. 1-2, emphasis added) renders the dependency of claim 5 unclear. For the purposes of examination, claim 5 will be interpreted as dependent upon claim 1. Additionally, use of the phrase “on one hand…and, on the other hand” (ln. 3-4) is unclear. It is recommended that such a phrase be removed from the claim.
Regarding claim 6, the limitation “at a distance of less than or equal to 2 mm, and preferably comprised between 0.6 mm and 1.8 mm” (ln. 3-4) is unclear because the claim presents a narrow numerical range that falls within a broader range. See MPEP 2173.05(c). For the purposes of examination, claim 6 will be interpreted as requiring a range of less than or equal to 2 mm. Additionally, the term “said bearing plane” (ln. 4) lacks an antecedent basis.
Regarding claim 7, the limitation “less than or equal to 2 mm, and preferably comprised between 0.2 mm and 1.2 mm” is unclear because the claim presents a narrow numerical range that falls within a broader range. See MPEP 2173.05(c). For the purposes of examination, claim 7 will be interpreted as requiring a range of less than or equal to 2 mm.
Regarding claim 8, the limitation “at a distance of less than or equal to 4 mm, and preferably comprised between 0.4 mm and 1.4 mm” (ln. 4-5) is unclear because the claim presents a narrow numerical range that falls within a broader range. See MPEP 2173.05(c). For the purposes of examination, claim 8 will be interpreted as requiring a range of less than or equal to 4 mm.
Regarding claim 9, the limitation “between 5 mm and 7.8 mm, preferably about 7 mm (+/- 0.3 mm)” (ln. 3) is unclear because the claim presents a narrow numerical range that falls within a broader range. See MPEP 2173.05(c). For the purposes of examination, claim 9 will be interpreted as requiring a range between 5 mm and 7.8 mm.
Regarding claim 11, the term “said concavity” (ln. 2) lacks an antecedent basis. For the purposes of examination, claim 11 will be interpreted as introducing a “concavity.”
Regarding claim 14, the limitation “intended to be connected to said main body” (ln. 2-3) is unclear what is required to meet the limitation of “intended.” A suggestion for correction is --configured to be connected to said main body--. Additionally, the phrase “the massage head corresponding to claim 1” (ln. 3) is unclear what is meant by “corresponding.” A suggestion for correction is --the massage head according to claim 1--.
Any remaining claims are rejected as being dependent upon a rejected base claim.
Claim Rejections - 35 USC § 103
9. 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 of this title, 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.
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.
10. Claims 1-9 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Giraud et al (2017/0128130) in view of Mandica (WO 2017/029446, English translation accompanying Office Action).
Regarding claim 1, Giraud discloses a massage head for a mechanical skin massage device (Figs. 14-15, massage head treatment head 9 is part of the mechanical skin massage device 1), said device comprising a main body forming a manual gripping area and to which said massage head is intended to be connected (Fig. 14, treatment head 9 is intended to be connected to a manual griping area at casing 22), the massage head comprising at least: a working head (Fig. 14, treatment head 9), comprising massage means that each have a working surface intended to come into contact with the skin to massage it (Fig. 14, means of massage 31, 32, and 33), the working head being configured so that each massage means can be rotated around a respective secondary rotation axis (Fig. 15 depicts secondary rotation axes A1, A2, and A3 for means of massage 31, 32, and 33), and an actuating element designed and configured to rotate said working head around a primary rotation axis (Figs. 14-15, drive 26 is an “actuating element” configured to rotate the treatment head 9 about central axis “Δ” depicted in Fig. 14), said working head further comprising an outer surface from which each massage means emerges (Fig. 14, projection surface 51 has means of massage
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31, 32, and 33 emerging therefrom).
Giraud does not disclose each massage means rising, from said outer surface, to a respective massage height between 5 mm and 9 mm. Giraud is silent as to the dimensions of the massage means 31, 32, 33.
However, Mandica teaches a similar massage device (Fig. 1) comprising a working head and massage means (Fig. 1, working head 2 and massage means 4), wherein the massage means each have a diameter between 5-15 mm (See Page 6, last full paragraph of translation)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective fling date of the claimed invention to dimension the massage means of Giraud to have a diameter between 5-15 mm as taught by Mandica. Mandica teaches that such a sized massage means is appropriate for skin treatment. The resultant device would have a massage height within the claims 5 mm - 9 mm range, as the massage means of Giraud appear have approximately ¾ of its height emerging from the outer surface 51.
Regarding claim 2, the modified massage head of Giraud has each massage height between 6 mm and 8 mm, for example approximately equal to 7 mm (+/−0.3 mm) (Mandica, Page 6, last full paragraph of translation, discloses a diameter between 5-15 mm. This would result in a massage height between 6 mm - 8 mm in the modified device).
Regarding claim 3, the modified massage head of Giraud has said massage means positioned below a distal plane substantially perpendicular to said primary rotation axis (Giraud, Figs. 14-15, the tops of the massage means 31, 32, 33 form a “distal plane” that is perpendicular to primary rotation axis “Δ”), said outer surface comprising, between said massage means, a first surface portion positioned at a distance comprised between 5 mm and 9 mm from said distal plane (Figs. 14-15, the distance between the projection surface 51 and the tops of the massage means 31, 32, 33 would be slightly less than between 5-15 mm as taught by Mandica. This dimension falls within the claimed range).
Regarding claim 4, the modified massage head of Giraud has said outer surface comprising, around said first surface portion, a second surface portion positioned at a distance comprised between 5 mm and 9 mm from said distal plane (Giraud, Figs. 14-15, any additional point on projection surface 51 can be considered a “second surface portion” that would have the same distance away from the distal plane as taught by Mandica as implemented in the modified massage head).
Regarding claim 5, the modified massage head of Giraud has a bearing ring intended to contact the skin and defining, on one hand, a bearing surface inscribe within a bearing plane and, on the other hand, a work area located inside the bearing ring and in which said outer surface is located (Giraud, Fig. 14, ring 30 is configured to contact the skin and defines a “bearing surface” at its top most surface and a “work area” within the interior of ring 30 in which outer surface 51 is located), at least a portion of the working surface of each massage means extending protruding from the bearing plane (Fig. 14, massage means 31, 32, 33, extend past the top surface of ring 30), said bearing ring being separate from said working head so that when the latter is rotated by said actuating element, said bearing ring remains fixed (Giraud, Fig. 15 depicts the device with ring 30 removed, showing that the working head rotates via driver 26 while the ring 30 would remain fixed).
Regarding claim 6, the modified massage head of Giraud has said outer surface having a substantially circular free outer edge positioned, according to a parallel direction to said primary rotation axis at a distance from said bearing plane (Giraud, outer surface 51 is vertically spaced apart (i.e. lower) from the top surface or ring 30).
The modified massage head of Giraud does not give a dimension to the spacing between the outer surface and the bearing plane.
However, having such a distance be less than or equal to 2 mm, and preferably comprised between 0.6 mm and 1.8 mm, from said bearing plane is considered an obvious modification of size/proportion (See MPEP 2144.04(A)) and a routine optimization of dimensions (See MPEP 2144.05(II)).
Regarding claim 7, the modified massage head of Giraud has said outer surface having a substantially circular free outer edge defining, perpendicular to said primary rotation axis, a clearance with said bearing ring (Giraud, Figs. 14-15, a clearance must be present between ring 30 and surface 51 to allow the surface 51 to rotate about primary rotation axis “Δ”).
The modified massage head of Giraud does not give a dimension of this clearance.
However, having the clearance be less than or equal to 2 mm, preferably comprised between 0.2 mm and 1.2 mm is considered an obvious modification of size/proportion (See MPEP 2144.04(A)) and a routine optimization of dimensions (See MPEP 2144.05(II)).
Regarding claim 8, the modified massage head of Giraud has between each massage means and said bearing ring, said outer surface having at least one respective line portion (L) that is the shortest possible (Giraud, Figs. 14, each massage means 31, 32, and 33 has a shortest possible line to the ring 30).
Giraud is silent as to the dimensions between each point of said shortest possible line portion (L) between the massage means and the bearing ring.
However, having such a distance be less than or equal to 4 mm, and preferably comprised between 0.4 mm and 1.4 mm, from said bearing plane is considered an obvious modification of size/proportion (See MPEP 2144.04(A)) and a routine optimization of dimensions (See MPEP 2144.05(II)).
Regarding claim 9, it would likewise be obvious for the modified massage head of Giraud to have the shortest distance between the surface of two massage means between 5 mm and 7.8 mm, preferably about 7 mm (+/−0.3 mm). Such a distance is considered an obvious modification of size/proportion (See MPEP 2144.04(A)) and a routine optimization of dimensions (See MPEP 2144.05(II)).
Regarding claim 12, the modified massage head of Giraud has each massage means comprising at least one respective substantially convex portion intended to come into contact with the skin (Fig. 1, massage means 31, 32, and 33 are ball-shaped, whereby the surfaces of the balls that would come in contact with the skin are convex).
Regarding claim 13, the modified massage head of Giraud has said working head comprises an attached monolithic plate forming said outer surface (Fig. 15, plate 5 has its top surface as surface 51), and in that the massage means pass through said monolithic plate (Figs. 14-15 and 18, massage means 31, 32, and 33 pass through plate 5 via through holes 541, 542, 543).
Regarding claim 14, the modified massage head and device of Giraud is a mechanical skin massage device (Giraud, Fig. 14, device 1), comprising a main body forming a manual gripping area (Fig. 14, casing 21 and 22 from a “main body” with a manual gripping area) and a massage head intended to be connected to said main body (Fig. 14, treatment head 9), the massage head corresponding to claim 1 (See rejection of claim 1 above).
Regarding claim 15, the modified massage device of Giraud has said massage head being designed and configured to be removably connected to said main body (Fig. 16 depicts drive 26 having a cross-shaped slot that allows the driver 26 to be removably coupled to the output shaft 25; see [0068]).
11. Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Giraud in view of Mandica, as applied to claim 1 above, and further in view of Rosen (2017/0348143).
Regarding claim 10, the modified massage head of Giraud does not have the outer surface comprising a concave area having an outwardly facing concavity, wherein at least one of said massage means is positioned in said concave area.
However, Rosen teaches a skin treatment device comprising a treatment surface that can be concave to better match the local shape of skin tissue being treated ([0071]).
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 outer surface of Giraud to be concave as taught by Rosen to better match the local shape of skin tissue being treated.
Regarding claim 11, the modified massage head of Giraud does not disclose a bend radius value of the concavity.
However, having a bend radius between 100 mm and 250 mm is considered an obvious modification of size/proportion (See MPEP 2144.04(A)) and a routine optimization of dimensions (See MPEP 2144.05(II)).
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Daffer (2016/0235257), Liu (2012/0121309), Leason et al (2003/0125648), Podolsky (5,725,483), and Obagi (5,131,384) disclose handheld massagers having working heads comprising massage means;
Grez (2015/0165179) and Shadduk (2017/0056636) discloses massage device having concave surfaces designed to conform to the skin surface of a user.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY A STANIS whose telephone number is (571)272-5139. The examiner can normally be reached on Mon - Fri 8:30-5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Justine Yu can be reached on 571-272-4835. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY A STANIS/Primary Examiner, Art Unit 3785