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 .
Claim Rejections - 35 USC § 112
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.
Claims 1-9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In claim 1, on lines 5-8, it is unclear how a holding surface (supposedly 10A) extends “along the collecting surface” (4A) or in a direction “away from the end portion” (4B, in drawings). It appears the 2 surfaces (4A and 10A) are at 2 different levels. Also, it is not clear how the holding surface 10A extends in a direction “away” from the end portion 4B.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over WO2019/208403, please see translation. As to claim 1, as best understood, WO2019/208403 disclose a hair cutting and collecting tool including a pedestal portion (bottom portion of base 10) having a thin plate shape (fig. 1) and having a collecting surface (in groove 13); a holding base (upper parts of base 10 around grooves 13) along with the collecting surface; and a fixing portion (lid 20) attached to the collecting surface through the holding base or directly, wherein the holding base includes a side surface (vertical surface forming right side of first groove 13 as in fig. 3) erected at a position away from an end portion (left end vertical surface of base 10 as in fig. 3) of the pedestal portion by a first distance (distance from left end of base 10 to second/right vertical wall of groove 13 as in fig 3), and a holding surface (bottom of groove 13) extending “along the collecting surface” in a direction away ? from the end portion (left vertical surface of base 10 as in fig. 3) from a position (bottom of groove 13) by a second distance (from bottom of groove 13 to top of groove 13 in fig. 3) above the collecting surface of the side surface, wherein the first distance is longer than a “thickness” of scissor blades (32) that cut hair, and the second distance is longer than a “width” of the scissor blades (32), as seen in fig. 3, and wherein in a state of the end portion being applied to a scalp, a predetermined amount of hair is taken out from a scalp side so that the predetermined amount of hair is placed (see abstract translation) on the holding surface, hair taken out is fixed by the fixing portion, scissor blades are inserted into a space surrounded by the side surface, the collecting surface, and a scalp to cut hair, and a hair sample is collected, see translation and figures. Further, it is noted that the holding base is not disclosed as “attached to the collecting surface” but rather is integral with the collecting surface as formed of a single piece. However, the expediency of making one-piece construction, in place of separate elements fastened together, or vice versa is a design consideration within the skill of the art. In re Kohno, 391 F.2d 959, 157 USPQ 275 (CCPA 1968); In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have substituted the one piece construction with two separated pieces as a matter of obvious design choice known in the art. As to claims 2 and 4, note that these are design choices as well and would be based on the size of scissor blades being employed. A change in the size of a prior art device is a design consideration within the skill of the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). As to claim 3, note the depiction of figs. 1 and 5 showing the groove 13 relative to the hair. As to claim 9, note the Abstract translation recites cutting according to a predetermined size such that some form of scale for measuring would have to be included.
Allowable Subject Matter
Claims 5-8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional prior art cited on PTO-892 include state of the art hair cutting and collecting tools.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NASHMIYA FAYYAZ whose telephone number is (571)272-2192. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Laura Martin can be reached at (571)272-2160. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NF
Examiner
Art Unit 2855
/N.S.F/Examiner, Art Unit 2855
/LAURA MARTIN/SPE, Art Unit 2855
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