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 .
Response to Amendment
This Office Action is a response to applicant’s arguments and amendment filed 10/27/2025. Claims 1-3, 9-13 and 15-20 are amended. Claims 1-20 are currently pending.
The objection of claims 1, 3, 11-12 and 18-20 has been withdrawn due to applicant’s amendment.
The rejection of claims 1-20 under 35 U.S.C. 112(b) has been withdrawn due to applicant’s amendment.
Response to Arguments
Applicant’s arguments, see Remarks, filed 10/27/2025, with respect to the rejection(s) of claim(s) 1, 16-18 and 20 under 35 U.S.C. 102(a)(1) as being anticipated by Azdoud; and claims 2-15 and 19 under 35 U.S.C. 103 as being unpatentable over Azdoud in view of Dixon, have been fully considered but are not persuasive, in combination with the amendments to the claims. The rejection has been modified, necessitated by applicant’s amendment to the claims.
Applicant argues Dixon fails to teach or suggest a flat blade formed from a single piece (Remarks, pgs. 8-10).
In response to applicant’s argument, it is respectfully submitted if a product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (MPEP 2113(I)). Determination of patentability is based on the product itself as opposed to its method of production. As discussed below, Azdoud discloses a first needle assembly comprising a first blade, such that the product claimed is considered to be the same as the product of the prior art. The limitation “formed from a single piece” is considered to be a product-by-process limitation, which describes the process of forming the blade of the needle assembly but is otherwise the same in structure as the needle of Azdoud and therefore does not hold any patentable weight. Accordingly, the claims remain rejected.
Claim Objections
Claims 7, 9 and 13 are objected to because of the following informalities:
In claim 7, the phrase “the second direction” should read “a second direction”.
In claim 9, line 2, the phrase “a second a second” appears to include an additional, unnecessary “a second” phrase.
In claim 13, line 3, the phrase “each point” should read “each of the plurality of points”.
Appropriate correction is required.
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, 16-18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Azdoud (US 2021/0386987 A1) (all references previously of record).
Regarding claim 1, Azdoud discloses (abstract; paras. [0074]-[0299]; figs. 1a-26) a system (90, figs. 1a-b) for use in the application and removal of tattoos and other skin treatments (abstract, para. [0080]), comprising:
a handpiece (tattoo frame 103, which is mounted by an operator and therefore considered a handpiece, para. [0102]);
a set of disposable cartridges (includes needle cartridge 141, note para. [0150] describes switching between multiple cartridges, such that the system is considered to include multiple needle cartridges forming the set, including 141 and/or 641, see also para. [0095]) comprising:
a first disposable cartridge (141, para. [0095]) comprising:
a first needle assembly (needle 142 which includes a plurality of rods, para. [0095]) comprising a first blade (needle 142 considered to include a blade) formed from a single piece having a first configuration (configuration of needle 142, note the limitation “formed from a single piece” is treated as a product by process limitation, in which determination of patentability is based on the product itself; since Azdoud discloses needle 142 including rods brazed together, the limitation is considered to be met, see MPEP 2113), and
a first tubing connection (lines, para. [0090]) couplable to a fluid pump configured to dispense facilitating fluid to the first needle assembly (para. [0090]), and
a second disposable cartridge (second needle cartridge 641, para. [0150]) comprising:
a second needle assembly (one or more needles 642, para. [0150]) having a second configuration (configuration of needles 642), and
a second tubing connection (one or more lines, considered to have multiple lines, para. [0090]) couplable to the fluid pump configured to dispense facilitating fluid to the second needle assembly (multiple containers, para. [0090]),
wherein the first disposable cartridge and the second disposable cartridge are alternatively couplable to the handpiece (removably coupled to system, para. [0150]);
a system controller (includes 108 and 78 of fig. 1a, paras. [0075] and [0080]) comprising a power input (tattooing apparatus 100 is powered on, controller is considered to include a power source, para. [0106]), a microprocessor (para. [0075]), and a user interface (one or more displays, para. [0088]), the system controller configured to control the operation of one or more drives (para. [0247]);
an oscillation drive (arm solenoid actuator 113, para. [0092]) configured to provide oscillatory motion to the first needle assembly or the second needle assembly (controls position of motor gantry 115 and ensures needle oscillation occurs, para. [0120]);
a distance drive (112) configured to provide linear motion to the first needle assembly or the second needle assembly (sets maximum extension of needle, para. [0092]);
a rotational drive (motor 111) configured to provide rotational motion to the first needle assembly or the second needle assembly (generates rotational movement of cam which converts to movement of needle, paras. [0092] and [0096]); and
a drive shaft (145) configured to independently translate oscillatory, linear, and rotational motion to the first needle assembly or the second needle assembly (para. [0096]).
Regarding claim 16, Azdoud discloses (abstract; paras. [0074-[0299]; figs. 1a-26) a system (90, figs. 1a-b) for use in the application and removal of tattoos and other skin treatments (abstract, para. [0080]), comprising:
a handpiece (tattoo frame 103, which is mounted by an operator and therefore considered a handpiece, para. [0102]);
a first disposable cartridge (141, para. [0095]) comprising a first needle assembly (needle 142 which includes a plurality of rods, para. [0095]) comprising a first blade (needle considered to include a blade) formed from a single piece (note the limitation “formed from a single piece” is treated as a product by process limitation, in which determination of patentability is based on the product itself; since Azdoud discloses needle 142 including rods brazed together, the limitation is considered to be met, see MPEP 2113) and having a first configuration (configuration of 142), the first disposable cartridge selectively couplable to the handpiece (removably coupled, para. [0150]);
a second disposable cartridge (second needle cartridge 641, para. [0150]) comprising a second needle assembly (one or more needles 642, para. [0150]) having a second configuration that is distinct from the first configuration (considered to be distinct due to two separate needle cartridges), the second disposable cartridge selectively and alternatively couplable to the handpiece in place of the first disposable cartridge (removably coupled, considered to be selectively and alternatively coupled with other cartridges when removed, para. [0150]);
a system controller (includes 108 and 78 of fig. 1a, paras. [0075] and [0080]) comprising a power input (tattooing apparatus 100 is powered on, controller is considered to include a power source, para. [0106]), a microprocessor (para. [0075]), and a user interface (one or more displays, para. [0088]), the system controller configured to control the operation of one or more drives (para. [0247]);
an oscillation drive (arm solenoid actuator 113, para. [0092]) configured to provide oscillatory motion to the first needle assembly or the second needle assembly (controls position of motor gantry 115 and ensures needle oscillation occurs, para. [0120]);
a distance drive (112) configured to provide linear motion to the first needle assembly or the second needle assembly (sets maximum extension of needle, para. [0092]);
a rotational drive (motor 111) configured to provide rotational motion to the first needle assembly or the second needle assembly (generates rotational movement of cam which converts to movement of needle, paras. [0092] and [0096]); and
a drive shaft (145) configured to independently translate oscillatory, linear, and rotational motion to the first needle assembly or the second needle assembly (para. [0096]).
Regarding claim 17, Azdoud discloses the system of claim 16. Azdoud further discloses wherein the first disposable cartridge comprises a tubing connection (lines, para. [0090]) couplable to a fluid pump configured to dispense facilitating fluid to the first needle assembly (para. [0090]).
Regarding claim 18, Azdoud discloses the system of claim 16. Azdoud further discloses wherein the first disposable cartridge comprises a first needle assembly rod (143, para. [0095]) comprising a first needle face (distal end of 143) and the second disposable cartridge comprises a second needle assembly rod (annotated fig. 10b) comprising a second needle face (distal end of rod).
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Annotated Figure 10B of Azdoud
Regarding claim 20, Azdoud discloses the system of claim 18. Azdoud further discloses wherein the second needle assembly of the second disposable cartridge comprises a plurality of needles (one or more needles 642), each of the plurality of needles comprising a securement end (proximal end) and a penetration end (distal end), and wherein each securement end of the plurality of needles is connected with the second needle assembly rod at the second needle face of the second disposable cartridge (fig. 10b).
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.
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) 2-15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Azdoud in view of Dixon (US 2004/0116953 A1).
Regarding claim 2, Azdoud discloses the system of claim 1.
However, Azdoud fails to specifically disclose wherein the first blade of the first needle assembly comprises a first flat blade, the first flat blade comprising a securement end and a penetration end.
Dixon teaches (para. [0082]; figs. 6-8), in the same field of endeavor, a system (figs. 1-3) for use in the application and removal of tattoos and other skin treatments (abstract) comprising a first blade of a first needle assembly (at least one needle of at least one needle set) comprising a first flat blade (the at least one needle arranged in a planar array), the first flat blade comprising a securement end (proximal end) and a penetration end (distal end), for the purpose of presenting a first contact edge extending or arranged along a horizontal line when the needle device is vertical or a first contact point at a horizontal plane from which contact edges slope upwardly away (para. [0082]).
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 first and second needle bundles of Azdoud to comprise the arrangement of the first and second sub-sets of needles (fig. 6a), such that the first and second needle bundles comprise a flat blade, in order to present a first contact edge extending or arranged along a horizontal line when the needle device is vertical or a first contact point at a horizontal plane from which contact edges slope upwardly away, which is well-suited for many intended uses, based on the teachings of Dixon (para. [0082]).
Regarding claim 3, Azdoud (as modified) teaches the system of claim 2. Azdoud (as modified) further teaches wherein the penetration end of the first flat blade of the first needle assembly comprises a plurality of points (fig. 6a of Dixon).
Regarding claim 4, Azdoud (as modified) teaches the system of claim 3. Azdoud (as modified) further teaches wherein the plurality of points forms a sawtooth shape (depicted in fig. 6a of Dixon).
Regarding claim 5, Azdoud (as modified) teaches the system of claim 3. Azdoud (as modified) further teaches wherein the plurality of points is cut at an angle in a first direction (direction O2, para. [0086] of Dixon).
Regarding claim 6, Azdoud (as modified) teaches the system of claim 5. Azdoud (as modified) further teaches wherein the plurality of points is sharpened in a second direction (direction O1, see fig. 6a of Dixon depicting the needles being sharp at direction O1).
Regarding claim 7, Azdoud (as modified) teaches the system of claim 5. Azdoud (as modified) further teaches wherein the plurality of points is sharpened in the second direction by grinding (paras. [0132]-[0158] of Dixon).
Regarding claim 8, Azdoud (as modified) teaches the system of claim 3. Azdoud (as modified) further teaches wherein the plurality of points has a first depth (depth of at least first sub-set of needles, annotated fig. 6a, para. [0085] of Dixon).
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Annotated Figure 6A of Dixon
Regarding claim 9, Azdoud (as modified) teaches the system of claim 8. Azdoud (as modified) further teaches wherein the second needle assembly (642 of Azdoud) comprises a second blade (needles considered to include a blade) formed from a single piece (note the limitation “formed from a single piece” is treated as a product by process limitation, in which determination of patentability is based on the product itself; since Azdoud discloses needles including rods brazed together, the limitation is considered to be met, see MPEP 2113), the second blade comprising a flat blade (combination considered to further teach needles of Azdoud arranged similar to second sub-set of needles of Dixon, which include a planar array, para. [0085] of Dixon), the second flat blade comprising a securement end (proximal end) and a penetration end (distal end) comprising a plurality of points (includes multiple needles) having a second depth (depth of needles extending past first sub-set of needles, para. [0085]) that is greater than the first depth (depicted in fig. 6a of Dixon).
Regarding claim 10, Azdoud discloses the system of claim 1.
Azdoud further discloses wherein the second needle assembly comprises a second blade (needles considered to include a blade) formed from a single piece (note the limitation “formed from a single piece” is treated as a product by process limitation, in which determination of patentability is based on the product itself; since Azdoud discloses needles including rods brazed together, the limitation is considered to be met, see MPEP 2113).
However, with respect to the cited embodiment, Azdoud fails to disclose wherein the second blade is not flat.
Dixon teaches (para. [0120]; fig. 19), in the same field of endeavor, a second blade (needle sub-set within matrix), wherein the second blade is not flat (para. [0120]), for the purpose of providing versatility with the needle arrangements (para. [0120]).
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 shape of the second needle sub-set of Azdoud to be not flat, in order to provide versatility with the needle arrangements as desired, based on the suggestions and teachings of Dixon (para. [0120]).
Regarding claim 11, Azdoud (as modified) teaches the system of claim 3. Azdoud (as modified) further teaches wherein the plurality of points has a first uniform spacing between each of the plurality of points (depicted in fig. 6a of Dixon).
Regarding claim 12, Azdoud (as modified) teaches the system of claim 11.
Azdoud (as modified) further teaches wherein the second needle assembly comprises a second blade (second sub-set of needles considered to include a blade, para. [0085] of Dixon), the second blade comprising a securement end (proximal end) and a penetration end (distal end) comprising a plurality of points (plurality of needles).
However, Azdoud (as modified) fails to specifically teach wherein the plurality of points have a second, uniform spacing between each of the plurality of points, the second uniform spacing being greater than the first uniform spacing.
Azdoud (as modified) teaches (para. [0098] of Dixon) that the spacing between needle tip locations needs to be optimized to “add versatility with respect to how much ink is held by the needles as more color is available with increased spacing between the needles.” Figure 6a of Dixon depicts the spacing between the needles and discusses the relative distance between adjacent needle tips being the same or varied, and as such, the spacing between needle tip locations is disclosed to be a result effective variable in that changing the spacing changes how much ink is held by the needles. Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the system of Azdoud (as modified) to have spacing within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Azdoud (as modified) by making the spacing of the second sub-set of needles to be greater than the first sub-set of needles as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 13, Azdoud (as modified) teaches the system of claim 11.
Azdoud (as modified) further teaches wherein the second needle assembly comprises a second blade (second sub-set of needles considered to include a blade, para. [0085] of Dixon), the second blade comprising a securement end (proximal end) and a penetration end (distal end) comprising a plurality of points (plurality of needles).
However, Azdoud (as modified) fails to specifically teach the plurality of points having a second nonuniform spacing between each point.
Dixon teaches (para. [0098]; figs. 6-8), in the same field of endeavor, varying the spacing of one sub-set of needles relative to a second sub-set of needles (para. [0098]), for the purpose of adding versatility with respect to how much ink is held by the needles as more color is available (para. [0098]).
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 spacing between the needles in Azdoud (as modified) to be nonuniform, in order to add versatility with respect to how much ink is held by the needles as more color is available, based on the teachings of Dixon (para. [0098]).
Regarding claim 14, Azdoud (as modified) teaches the system of claim 3. Azdoud (as modified) further teaches wherein the plurality of points has a first uniform length (annotated fig. 7 of Dixon).
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Annotated Figure 7 of Dixon
Regarding claim 15, Azdoud (as modified) teaches the system of claim 14. Azdoud (as modified) further teaches wherein the second needle assembly (second sub-set of needles, para. [0085] of Dixon) comprises a second blade (plurality of needles), the second blade comprising a securement end (proximal end) and a penetration end (distal end) comprising a plurality of points having a second nonuniform length (see tapering in figs. 6-8 of Dixon).
Regarding claim 19, Azdoud discloses the system of claim 18.
However, Azdoud fails to specifically disclose wherein the first blade of the first disposable cartridge comprises a flat blade, the flat blade comprising a securement end and a penetration end, and wherein the flat blade securement end is connected with the first needle assembly rod at the first needle face of the first disposable cartridge.
Dixon teaches (para. [0082]; figs. 6-8), in the same field of endeavor, a system (figs. 1-3) for use in the application and removal of tattoos and other skin treatments (abstract) comprising a first needle assembly (at least one needle set) comprising a flat blade (arranged in a planar array), the flat blade comprising a securement end (proximal end) and a penetration end (distal end), for the purpose of presenting a first contact edge extending or arranged along a horizontal line when the needle device is vertical or a first contact point at a horizontal plane from which contact edges slope upwardly away (para. [0082]).
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 first needle bundle of Azdoud to comprise the flat blade arrangement of needles (fig. 6a), in order to present a first contact edge extending or arranged along a horizontal line when the needle device is vertical or a first contact point at a horizontal plane from which contact edges slope upwardly away, which is well-suited for many intended uses, based on the teachings of Dixon (para. [0082]).
Azdoud (as modified) further teaches wherein the flat blade securement end is connected with the first needle assembly rod at the first needle face of the first disposable cartridge (combination considered to further teach similar coupling of needle cartridge to 143, fig. 2 of Azdoud).
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 BRIGID K BYRD whose telephone number is (571)272-7698. The examiner can normally be reached Mon-Fri 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at (571)-272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIGID K BYRD/Examiner, Art Unit 3771