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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1, 2-7, 10 and 12-19, drawn to a dermabrasion device.
Group II, claim 11, drawn to a process for manufacturing a dermabrasion device.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the dermabrasion device of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Schar et al. (US 2018/0317640) as explained in the rejection below.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 11 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 non-obviousness.
Claims 1, 3-7, 10 and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over Schar et al. (US 2018/0317640).
Regarding claim 1, Schar et al. disclose a device (1, Figure 1a) capable of dermabrasion (noting that it is intended for scrubbing multiple body locations - Abstract, ¶[0090], therefore being reasonably pertinent to Applicant’s field of skin scrubbing devices) comprising: a surface (upper surface of head 5, Figure 6a) comprising multiple abrasive groups (formed by bristles 7.5 - Figures 6a-6c) arranged in a pattern (any of the disclosed patterns, e.g. Figure 16.4), the pattern comprising a center (see “Center” in drawing below; Figure 16.4) on the surface and the multiple abrasive groups (15.4) arranged around the center forming arcs around the center, wherein the multiple abrasive groups are defined by: a first abrasive group (see “1st Abrasive Group” in drawing below) comprising with at least three protuberances (e.g. 7.1-7.5, 10.1-10.8; Figures 2a-6c, 7a-14b), the first abrasive group arranged in a first arc segment (either 1st Arc Segment in drawing below); and a second abrasive group (see “2nd Abrasive Group” in drawing below) comprising at least three protuberances (e.g. 7.1-7.5, 10.1-10.8; Figures 2a-6c, 7a-14b), the second abrasive group arranged in a second arc segment (either 2nd Arc Segment in drawing below), wherein the second arc segment has a greater radius greater than a radius of the first arc segment (evident from Figure 16.4 and drawing below), and wherein the second arc segment is concentric with the first arc segment (evident from Figure 16.4 and drawing below).
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Schar et al. fail to disclose that the first and second abrasive groups are arranged on a first and second base, respectively.
Schar et al. disclose another abrasive group having a base (8; Figures 6a-6c). Schar et al. further disclose that the abrasive groups can be arranged on base (“stem” or “pedestal”; ¶[0186]-[0192]; [0445], [0457]-[0465], [0676]) which can help anchor the group to the surface (¶[0189], [0190]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided each abrasive group of Figure 16.4 with a base as claimed in order to improve anchoring to the surface.
Regarding claim 3, Schar et al. fail to explicitly state that the protuberances of each group can have different heights. However, Schar et al. disclose that the protuberances can have different heights/lengths within a group as a general feature of their invention (¶[0048], [0074] and elsewhere). Therefore, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to provide the protuberances of each group for Figure 16.4 with different heights/lengths as claimed in order to better treat uneven surfaces.
Regarding claim 4, each protuberance of the at least three protuberances of the first abrasive group and the second abrasive group has a peak shape selected from the group consisting of domed peak (Figure 7a), truncated peak (Figure 13a; ¶[0091]), and pointed peak (¶[0438]).
Regarding claim 5, Schar et al. fail to disclose that each of the at least three protuberances of the first and second abrasive groups can have different peak shapes. However, Schar et al. disclose that protuberances within the same bundle can have different shapes (¶[0048]) and disclose a variety of peak shapes (Figures 7a, 9a, 10a, 13a, 14a). Therefore, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to provide at least three of the protuberances within each group with a difference peak shape in order to combine the advantages of the various disclosed shapes.
Regarding claim 6, each of the first and second abrasive groups comprises between three and twelve protuberances (evident from Figure 16.4).
Regarding claim 7, the first and second abrasive groups are of different dimensions and number of protuberances (the circular group below “16.4” in Figure 16.4 can be regarded as the second abrasive group - being part of an outer concentric arc segment and having a different dimension and number of protuberances than the inner circular arrangement of groups).
Regarding claim 10, the surface is divided into sections (e.g. the surface can be regarded as having three sections - each having one of the circular arrangement of groups).
Regarding claim 12, the dermabrasion device is arranged on a fastening element (2; Figure 1a), where said fastening element is a solid element with a gripping means (3).
Regarding claim 13, at least three protuberances of the first and second abrasive groups comprise a geometry selected from the group consisting of pyramids, cones, cubes, prisms, cuboids, parallelepipeds, cylinders, and a base that can be in the form of squares, triangles, circles, rectangles, pentagons, trapezoids, ellipses, rhombuses, hexagon, heptagon, octagon, decagon, and combinations thereof (¶[0376], [0378]).
Regarding claim 14, Schar et al. disclose a device (1, Figure 1a) capable of dermabrasion (noting that it is intended for scrubbing multiple body locations - Abstract, ¶[0090], therefore being reasonably pertinent to Applicant’s field of skin scrubbing devices) comprising: multiple abrasive groups (15.4; Figure 16.4) arranged in a pattern, the pattern comprising a center (see “Center” in drawing above) on the surface and the multiple abrasive groups arranged around the center forming arcs around the center, wherein the multiple abrasive groups are defined by: a first abrasive group (see “1st Abrasive Group” in drawing above) comprising a first base with at least three protuberances (e.g. 7.1-7.5, 10.1-10.8; Figures 2a-6c, 7a-14b), the first abrasive group arranged in a first arc segment (see either 1st Arc Segment in drawing above) and a second abrasive group (see “2nd Abrasive Group” in drawing above) with at least three protuberances (e.g. 7.1-7.5, 10.1-10.8; Figures 2a-6c, 7a-14b), the second abrasive group arranged in a second arc segment (see either 2nd Arc Segment in drawing above), wherein the second arc segment has a radius greater than a radius of the first arc segment, and wherein the second arc segment is concentric with the first arc segment (evident from Figure 16.4).
Schar et al. fail to disclose that the first and second abrasive groups are arranged on a first and second base, respectively.
Schar et al. disclose another abrasive group having a base (8; Figures 6a-6c). Schar et al. further disclose that the abrasive groups can be arranged on base (“stem” or “pedestal”; ¶[0186]-[0192]; [0445], [0457]-[0465], [0676]) which can help anchor the group to the surface (¶[0189], [0190]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided each abrasive group of Figure 16.4 with a base as claimed in order to improve anchoring to the surface.
Schar et al. fail to explicitly state that the protuberances of each group can have different heights or shapes.
However, Schar et al. disclose that the protuberances can have different heights/lengths within a group as a general feature of their invention (¶[0048], [0074] and elsewhere). Schar et al. further disclose that protuberances within the same bundle can have different shapes (¶[0048]) and disclose a variety of peak shapes (Figures 7a, 9a, 10a, 13a, 14a).
Therefore, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to provide at least three of the protuberances of each group for Figure 16.4 with different heights/lengths as claimed in order to better treat uneven surfaces. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to provide at least three of the protuberances within each group with a difference peak shape in order to combine the advantages of the various disclosed shapes.
Regarding claims 15 and 19, Schar et al. fail to disclose that each of the first and second abrasive groups comprises nine protuberances. However Schar et al. disclose in general that the abrasive groups of their invention can comprise 9 protuberances (¶[0049]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the groups of Figure 16.4 with 9 protuberances since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable value involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 16, each protuberance of the at least three protuberances of the first abrasive group and the second abrasive group has a peak shape selected from the group consisting of domed peak (Figure 7a), truncated peak (Figure 13a; ¶[0091]), and pointed peak (¶[0438]).
Regarding claim 17, the dermabrasion device is arranged on a fastening element (2; Figure 1a), where said fastening element is a solid element with a gripping means (3).
Regarding claim 18, the at least three protuberances of the first and second abrasive groups comprise a geometry selected from the group consisting of pyramids, cones, cubes, prisms, cuboids, parallelepipeds, cylinders, and a base that can be in the form of squares, triangles, circles, rectangles, pentagons, trapezoids, ellipses, rhombuses, hexagon, heptagon, octagon, decagon, and combinations thereof (¶[0376], [0378]).
Response to Arguments
Applicant’s arguments with respect to the pending claims 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 Thomas McEvoy whose telephone number is (571) 270-5034 and direct fax number is (571) 270-6034. The examiner can normally be reached on Monday-Friday, 9:00 am – 6:00 pm.
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, please contact the examiner’s supervisor, Elizabeth Houston at (571) 272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS MCEVOY/Primary Examiner, Art Unit 3771