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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5, 14, 15, 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Examiner is unable to find original Spec support for “wherein each arm includes a bulbous distal end having a first width, the bulbous distal end arranged away from the central portion, wherein each arm includes an intermediate portion disposed between the central portion and the bulbous distal end that has a second width, wherein the first width is larger than the second width, and wherein each arm includes a first narrowed portion adjacent to the bulbous distal end and disposed between the bulbous distal end and the intermediate portion, the first narrowed portion having a third width that is smaller than both the first width and the second width.” Similarly, the Examiner cannot find support for claims 14, 15, and 21.
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.
Claim 5, 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In re claim 5, it is unclear what the metes and bounds of “wherein each arm includes a bulbous distal end having a first width, the bulbous distal end arranged away from the central portion, wherein each arm includes an intermediate portion disposed between the central portion and the bulbous distal end that has a second width, wherein the first width is larger than the second width, and wherein each arm includes a first narrowed portion adjacent to the bulbous distal end and disposed between the bulbous distal end and the intermediate portion, the first narrowed portion having a third width that is smaller than both the first width and the second width” are.
Applicant claims that: wherein each arm includes a bulbous distal end having a first width. Applicant then claims that: each arm includes an intermediate portion disposed between the central portion and the bulbous distal end that has a second width.
So bulbous distal end has TWO different width? Or is the intermediate portion has a second width?
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamayachi; Yuzo (US 4,878,489, hereinafter Kamayachi ‘489).
In re claim 1, Kamayachi ‘489 teaches a device comprising: a body comprising a central portion (figs. 1-2, central portion 6b area) and two flexible arms (figs. 1-2, side of 3a, side of 4a), each arm of the two flexible arms extending outward from an opposite side of the central portion and having a same shape (figs. 1-2, col. 2, lines 57-67)); one or more flexible elements extending through the two flexible arms, wherein the two flexible arms are each configured to individually bend into a plurality of bent positions and retain a selected bent position until bent into another selected bent position (col. 3, lines 3-15); and a single vibrating motor arranged within the central portion between the two flexible arms (figs. 1-2, col. 2, lines 10-18).
In re claim 2, Kamayachi ‘489 teaches wherein the one or more flexible elements comprises a first flexible element that extends from a first free end portion of a first arm of the two flexible arms to the central portion (figs. 1-2, 3a, 3 side, fig. 5) and a second flexible element that extends from a second free end portion of a second arm of the two flexible arms to the central portion (figs. 1-2, 4a, 4 side), the first and second free end portions each spaced away from the central portion (figs. 1-2, 3a, 3 side, 4a, 4 side, fig. 5, that’s flexible on two size from the central portion; col. 3, lines 15-20).
In re claim 3, Kamayachi ‘489 teaches wherein the central portion has a width that is larger than a width of a portion of at least one arm of the two arms arranged adjacent to the central portion (figs. 1-2, width 2b is larger than the width of distal end of 3 or 4).
In re claim 9, Kamayachi ‘489 teaches a device comprising: one continuous body comprising a central portion and two flexible arms (figs. 1-2, side of 3a, side of 4a) extending outward from opposite sides of the central portion of the device (figs. 1 and 2, central portion 6b area), wherein the body is symmetrical around a central longitudinal axis of the device (figs. 1 and 2), the central longitudinal axis extending through a center of the device from a free, distal end of a first arm of the two flexible arms, through the central portion, and to a free, distal end of a second arm of the two flexible arms (fig. 1 and 2); two flexible elements, wherein each flexible element extends through a respective arm of the two flexible arms, from the central portion to an end portion of the respective arm, wherein the two flexible arms are configured to each individually bend into a plurality of bent positions and retain a selected bent position until bent into another selected bent position (col. 3, lines 3-15); and one vibrating motor arranged within an interior of the central portion, between the two flexible arms (figs. 1-2, col. 2, lines 10-18).
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.
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.
Claim(s) 4, 11, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamayachi ‘489 in view of Mecenero (US 2009/0005714, hereinafter Mecenero ‘714).
In re claim 4, Kamayachi ‘489 teaches wherein the body is a continuous body comprising] a flexible polymeric material (col. 2, lines 58-64) and a central portion and each arm of the two arms (figs. 1-2), but fails to teach a smooth outer surface.
Mecenero ‘714 teaches wherein the body is a continuous body comprising] a flexible polymeric material (0011) and a smooth outer surface that is continuous along the two arms and the central portion and curves between the central portion and each arm of the two arms (fig. 6)
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Kamayachi ‘489 to include the features of Mecenero ‘714 in order to provide comfort to the skin and tissue area during stimulation.
In re claim 11, Mecenero ‘714 teaches wherein the body comprises a flexible polymeric material (0011) and a smooth and continuous outer surface that curves (fig. 6, fig. 10 and fig. 11A) between a proximal end portion of the first arm and the central portion and a proximal end portion of the second arm and the central portion (fig. 11 A), and wherein the proximal end portions of the first and second arms are narrower than the central portion (fig. 11A, 750 is larger than 756 and 758).
In re claim 22, Mecenero ‘714 teaches wherein the central portion is bulbous, and wherein the body is symmetrical around a central longitudinal axis of the device (fig. 11A, 750).
Claim(s) 5, 14-17, 21, 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamayachi ‘489 in view of Terkes (US 2017/0304143, hereinafter Terkes ‘143).
In re claim 5, Kamayachi ‘489 fails to teach wherein each arm includes a bulbous distal end having a first width, the bulbous distal end arranged away from the central portion, wherein each arm includes an intermediate portion disposed between the central portion and the bulbous distal end that has a second width, wherein the first width is larger than the second width, and wherein each arm includes a first narrowed portion adjacent to the bulbous distal end and disposed between the bulbous distal end and the intermediate portion, the first narrowed portion having a third width that is smaller than both the first width and the second width.
Terkes ‘143 teaches wherein each arm includes a bulbous distal end having a first width (fig. 2, 2), the bulbous distal end arranged away from the central portion (fig. 2, 8), wherein each arm includes an intermediate portion disposed between the central portion and the bulbous distal end that has a second width (fig. 2, 12a-c, between peaks of 12a-12b and 10b for example), wherein the first width is larger than the second width, and wherein each arm includes a first narrowed portion (fig. 2, 12a) adjacent to the bulbous distal end and disposed between the bulbous distal end and the intermediate portion (12a-c), the first narrowed portion having a third width that is smaller than both the first width and the second width (width of 12a arrow is smaller).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Kamayachi ‘489 to include the features of Terkes ‘143 in order to provide different stimulation needs.
In re claim 14, wherein the central portion is bulbous and has a first width, wherein a proximal end portion of each of the first arm and the second arm that is disposed adjacent to the central portion has a second width that is smaller than the first width, and wherein an intermediate portion of each of the first arm and the second arm that is disposed between the proximal end portion and the free, distal end has a third width that is smaller than the first width and larger than the second width.
In re claim 21, Terkes ‘143 teaches wherein each arm includes a second narrowed portion adjacent to and continuous with the central portion (fig. 1, 12c), wherein the second narrowed portion has a fourth width that is smaller than the second width (width of 12c arrow area is the smallest), and wherein the central portion has a fifth width that is larger than the second and fourth widths (fig. 1, width of 8).
In re claim 15, Kamayachi ‘489 teaches a device comprising: a polymeric body comprising a central portion and two flexible arms extending outward from opposite sides (figs. 1-2, side of 3a, side of 4a) of the central portion wherein the central portion has a symmetrical (figs. 1 and 2, central portion 6b area), an interior of the central portion, between the two flexible arms (figs. 1-2, col. 2, lines 10-18).
Kamayachi ‘489 fails to teach bulbous shape and a first width, and wherein each arm of the two flexible arms comprises: a bulbous free end portion disposed away from the central portion and having a second width; an intermediate portion disposed between the central portion and the bulbous free end portion, the intermediate portion having a third width, the third width smaller than the first width; and a first narrowed portion adjacent to the bulbous free end portion and disposed between the bulbous free end portion and the intermediate portion, the first narrowed portion having a fourth width that is smaller than both the second width and the third width.
Terke ‘143 teaches bulbous shape and a first width (fig. 2, 2), and wherein each arm of the two flexible arms comprises: a bulbous free end portion disposed away from the central portion and having a second width (fig. 1 and 2, 6); an intermediate portion disposed between the central portion and the bulbous free end portion, the intermediate portion having a third width (fig. 1, 10c), the third width smaller than the first width (10c is smaller than 6); and a first narrowed portion adjacent to the bulbous free end portion and disposed between the bulbous free end portion and the intermediate portion, the first narrowed portion having a fourth width (fig. 1-2, 12c) that is smaller than both the second width and the third width (12c is smaller than 6, and 10c)
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Kamayachi ‘489 to include the features of Terkes ‘143 in order to provide different stimulation needs.
In re claim 16, Terkes ‘143 teaches wherein the body comprises a smooth and continuous outer surface that curves between a proximal end portion of each arm of the two flexible arms and the central portion (figs. 1-2), and wherein the proximal end portion of each arm is disposed adjacent to the central portion and has a fifth width that is smaller than the first width and the third width (12a is smaller than 8, 10c).
In re claim 17, Kamayachi ‘489 teaches wherein the one or more flexible elements comprise two flexible elements, wherein each flexible element extends through a respective arm of the two flexible arms, from the central portion to the bulbous free end portion of the respective arm (col. 3, lines 3-15).
In re claim 25, Kamayachi ‘489 teaches wherein the two flexible arms are continuous with the central portion such that an outer surface of a transition region between each arm and the central portion is seamless (fig. 1 and fig. 5).
Claim(s) 8, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamayachi ‘489 in view of Allen; Eugene (US 2014/0309565, hereinafter Allen ‘565).
In re claim 8, Kamayachi ‘489 fails to teach wherein the central portion comprises one or more power buttons and a charger port.
Allen ‘565 teaches teach wherein the central portion comprises one or more power buttons and a charger port (fig. 4, 0041, control panel 30 in fig. 8 is in the center).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Kamayachi ‘489 to include the features of Allen ‘565 in order to allow easy control and easy charging of the device.
In re claim 10, Allen ‘565 teaches further comprising a power button and charger port arranged in the central portion (fig. 4, 0041, control panel 30 in fig. 8 is in the center).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamayachi ‘489 and Terkes ‘143 in view of Mecenero ‘714.
In re claim 18, Kamayachi ‘489 and Terkes ‘143 fail to teach where a first arm of the two flexible arms has a first size and a second arm of the two flexible arms has a second size, the second size larger than the first size.
Mecenero ‘714 teaches where a first arm of the two flexible arms has a first size and a second arm of the two flexible arms has a second size, the second size larger than the first size (fig. 11A, 756 is larger than 758, para 0090).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Kamayachi ‘489 to include the features of Terkes ‘143 in order to provide different stimulation needs, and to include the features of Mecenero ‘714 in order to provide additional stimulation needs.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamayachi ‘489 and Terkes ‘143 in view of Allen ‘565.
In re claim 19, Kamayachi ‘489 and Terkes ‘143 fail to teach wherein the central portion comprises one or more power buttons and a charger port.
Allen ‘565 teaches wherein the central portion comprises one or more power buttons and a charger port (fig. 4, 0041, control panel 30 in fig. 8 is in the center).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Kamayachi ‘489 and Terkes ‘143 to include the features of Allen ‘565 in order to allow easy control and easy charging of the device.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamayachi ‘489 in view of Siddhartha; Anjani (US 2004/0193079, hereinafter Siddhartha ‘079).
In re claim 23, Kamayachi ‘489 fails to teach wherein the one or more power buttons include two power buttons, and wherein the two power buttons have different identifying marks or shapes.
Siddhartha ‘079 wherein the one or more power buttons include two power buttons, and wherein the two power buttons have different identifying marks or shapes (fig. 1, 54 and 52; 0024).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Kamayachi ‘489 to include the features of Siddhartha ‘079 in order to provide independent control of two vibrating arms.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamayachi ‘489 and Allen ‘565 in view of Siddhartha ‘079, and still further in view of Standfest (US 2013/0289346, hereinafter Standfest ‘346).
In re claim 24, Kamayachi ‘489 and Allen ‘565 fail to teach wherein the power button is a first power button on a first side of the central portion, adjacent to the first arm, further comprising a second power button arranged on a second side of the central portion, adjacent to the second arm, and wherein the first power button has a first shape or identifying mark and the second power button has a second shape or identifying mark that is different than the first shape or identifying mark.
Siddhartha ‘079 teaches wherein the power button is a first power button on a first side of the central portion, adjacent to the first arm, further comprising a second power button arranged on a second side of the central portion,
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Kamayachi ‘489 and Allen ‘565 to include the features of Siddhartha ‘079 in order to provide independent control of two vibrating arms.
Standfest ‘346 teaches wherein the power button is a first power button on a first side of the central portion, adjacent to the first arm, further comprising a second power button arranged on a second side of the central portion, adjacent to the second arm (figs. 4-5, 334, 0034-0035).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Kamayachi ‘489 and Allen ‘565 to include the features of Siddhartha ‘079 in order to provide independent control of two vibrating arms, and to include the features of Standfest ‘346 in order to provide easily and better intuitive visual and locational operation for the user when control the device.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5, 8-11, 14-19, 21-25 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.
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 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 BO JOSEPH PENG whose telephone number is (571)270-1792. The examiner can normally be reached Monday thru Friday: 8:00 AM-5:00 PM EST.
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, ANNE M KOZAK can be reached at (571) 270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BO JOSEPH PENG/Primary Examiner, Art Unit 3797
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