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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “sphere 635”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Paragraph [0024] appears to incorrectly refer to “second recess 505” in multiple instances. Elsewhere, reference number 505 is used to describe “second portion 505” and the second recess is described with “second recess 510”.
Paragraph [0028] has a sentence that states “Here, applicable liquids include, but are not limited to, water, The access port 805 preferably includes a food-grade tab that acts as a stopper.” There appears to be at least a period missing within this quoted portion.
Appropriate correction is required.
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 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.
Claims 7, and 13-19 is/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.
As to claim 7, the current wording/indentation makes it unclear whether the first portion and the second portion share a common void or each comprises their own void and whether both share a common access port or each comprises their own access port in the second scenario as worded (i.e. wherein “one or more of the first portion and the second portion comprises:…”).
Claim 7 recites the limitation "the access point" in line 5. There is insufficient antecedent basis for this limitation in the claim. It will be assumed this was intended to recite to “the access port”.
As to claim 13, the current wording/indentation of lines 11-13 makes it unclear whether the first portion and the second portion share a common void or each comprises their own void and whether both share a common access port or each comprises their own access port in the second scenario as worded (i.e. wherein “one or more of the first portion and the second portion comprises:…”).
Claim 13 recites the limitation "the access point" in line 14. There is insufficient antecedent basis for this limitation in the claim. It will be assumed this was intended to recite to “the access port”.
As to claim 14, the current wording/indentation of lines 11-13 makes it unclear whether the first portion and the second portion share a common void or each comprises their own void and whether both share a common access port or each comprises their own access port in the second scenario as worded (i.e. wherein “one or more of the first portion and the second portion comprises:…”).
Claim 14 recites the limitation "the access point" in line 14. There is insufficient antecedent basis for this limitation in the claim. It will be assumed this was intended to recite to “the access port”.
Claim 19 recites the limitation "the magnet" in line 3 and again line 4. There is insufficient antecedent basis for this limitation in the claim. It will be assumed that claim 19 was intended to depend from claim 15 which introduced a magnet.
Claims 15-19 are rejected as they depend from a rejected claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chen (US 2018/0161235 A1, hereafter “Chen”) in view of Hyder et al. (US 2016/0279017 A1, hereafter “Hyder”).
As to claim 1, Chen discloses a topical anesthetizing apparatus (1; see Figs. 1-9), comprising:
a first portion (10);
a second portion (20);
a numbing orb (40) that is configured to be chilled (para 0028);
an open state (state when 10 and 20 are detached and/or assembled as seen in Figs. 7-8);
a closed state (state seen in Figs. 1-2);
wherein
the first portion comprises a first recess (12 + 13);
the second portion comprises a second recess (22 + 23);
in the closed state,
the first recess and the second recess come together to form substantially a sphere (para 0026, 0027);
the numbing orb is selectively positioned within the substantial sphere (para 0026-0027);
in the open state,
the first recess is positioned distal to the second recess (distal, based off the applicant’s disclosure, appears similar to “separated”, in the interpreted open state the first recess is distal to the second recess);
the numbing orb is
selectively positioned within the first recess or the second recess (in Figs. 7-8 the orb 40 is positioned within first recess); and
configured to be topically applied to the skin of a mammal to topically anesthetize the skin (para 0028, 0033 – the device of Chen is “configured to…” inasmuch as the instant orb as it is capable of being chilled/iced).
As noted above, the first recess and the second recess of Chen come together to form substantially a sphere. While the examiner believes this to satisfy the limitations of a sphere, in the event this does not anticipate the wording of a sphere, Hyder discloses a roller therapy device and teaches “the cavity has a curvature that matches a curvature of the ball (e.g., a sphere with a radius that is <1-2 mm bigger than a radius of the ball)” (para 0041, also see claim 7). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen such that the compartment/space 15 forms a sphere. One would have been motivated to do so as changing the shape of the compartment/space of Chen would have involved only a change in the shape of components and furthermore would have been motivated to do so in order to better match the orb and/or other casing components (see para 0041 of Hyder).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen/Chen in view of Hyder as applied to claim 1 above, and further in view of Fufidio et al. (US D1,003,731 S).
As to claim 2, Chen and/or Chen in view of Hyder teaches the topical anesthetizing apparatus of claim 1 as described above, but is silent to wherein the first portion is hinge attached to the second portion.
Fufidio however teaches a first portion is hinge attached to a second portion (see Figs. 1-14).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen (as already modified above) such that the first portion is hinge attached to the second portion. One would have been motivated to do so as a means of allowing the first portion and the second portion to pivot relative to one another while remaining attached (see Figs. 1-14 of Fufidio).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen/Chen in view of Hyder as applied to claim 1 above, and further in view of Moriyama (US 4,082,089).
As to claim 3, Chen and/or Chen in view of Hyder teaches the topical anesthetizing apparatus of claim 1 as described above, but is silent to wherein one or more of the first recess and the second recess comprise a magnet; and the magnet selectively secures the numbing orb.
Moriyama discloses a magnet (14) selectively secures a numbing orb (17) (see Figs. 1-2, paragraph beginning ln 52 col 1, and claim 1 of Moriyama).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen (as already modified above) such that one or more of the first recess and the second recess comprise a magnet; and the magnet selectively secures the numbing orb based off of Moriyama. One would have been motivated to do so in order to provide an additional and/or alternative means of attaching the orb (see Figs. 1-2, paragraph beginning ln 52 col 1, and claim 1 of Moriyama).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Hyder and Moriyama as applied to claim 3 above, and further in view of GIldea et al. (US 2019/0167915 A1, hereafter “Gildea”).
As to claim 5, Chen in view of Hyder and Moriyama teaches the topical anesthetizing apparatus of claim 3 as described above, but is silent to wherein the numbing orb is a hollow polymeric structure; comprises a liquid filing; and the liquid filling comprises one or more of water, hydroxyethyl cellulose, sodium polyacrylate, a polymer, a glycol, glycerin, and silica coated with vinyl.
Gildea teaches a hollow polymeric structure (bladder 20; see para 0017, 0041) and comprises a liquid filing; and the liquid filling comprises one or more of a hydroxyethyl cellulose, a glycol, and glycerin (see para 0018 and para 0050).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen (as already modified above) such that the numbing orb is a hollow polymeric structure; comprises a liquid filing; and the liquid filling comprises one or more of a hydroxyethyl cellulose, a glycol, and glycerin. One would have been motivated to do so for the purpose of making the orb conform to the contour of the rest of the device and/or the skin (see para 0041, 0042 of Gildea) and to provide any one or a combination of known refrigerants within the orb (see para 0018 and 0050 of Gildea). Additionally, it has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious (see MPEP 2144.07).
As to claim 9, Chen (and/or modified Chen) discloses a method to massage the skin of a mammal comprising: chilling the numbing orb of the topical anesthetizing apparatus of claim 1 (see rejection of claim 1 and paragraphs 0011 and 0028); and while the topical anesthetizing apparatus is in the open state, applying the chilled numbing orb to skin of a mammal (see para 0028).
However, Chen does not expressly recite applying the chilled numbing orb to thereby topically anesthetize the skin.
Gildea explicitly discloses applying a contact portion 26 of a bladder 20 to thereby topically anesthetize the skin (see para 0002, 0009-0012, 0036, 0061).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used Chen to perform a step of applying the chilled numbing orb to thereby topically anesthetize the skin by cooling the numbing orb to an appropriate temperature before use. One would have been motivated to do so in or to desensitize the area before insertion of a medical device such as a needle or cannula (see para 0036, 0061 of Gildea).
As to claim 10, Chen (and/or Chen in view of Hyder) in view of Gildea teaches the method of claim 9 as described above. While none of the references explicitly refer to wherein chilling the numbing orb comprises placing one or more of the numbing orb, the first portion, and the second portion in a freezer for 5-30 minutes, it appears to goal of this step is to make it so the orb reaches an appropriate temperature for desensitizing skin. Gildea teaches “The refrigerant medium can cool the surface of the skin to a temperature of 0-15° C. and typically about 2-10° C. The cooling device cools the target area of the skin to a temperature to provide a numbing effect that does not cause injury or extreme discomfort to the skin” (para 0012; however, see all of paragraphs 0009-0013, 0038, 0061). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have performed the step of chilling by placing one or more of the numbing orb, the first portion, and the second portion in a freezer for 5-30 minutes, if such a time period was optimal for cooling the numbing orb to a desired temperature, given the choice of materials/refrigerants (see above-cited portions of Gildea as well as MPEP 2144.05).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen/Chen in view of Hyder as applied to claim 1 above, and further in view of Rogalski (US 2002/0173738 A1).
As to claim 7, Chen and/or Chen in view of Hyder teaches the topical anesthetizing apparatus of claim 1 as described above, but is silent to wherein one or more of the first portion and the second portion comprises: a void internally positioned therein; an access port externally positioned thereon; the access point is functionally coupled to the void; and the void is configured to receive a liquid via the access port.
Rogalski discloses a massage ball and topical product dispenser and teaches a first portion (in this instance the first portion interpreted as hollow hemisphere 20 and gasket 24), wherein the first portion comprises a void internally positioned therein; an access port (22) externally positioned thereon; the access point is functionally coupled to the void; and the void is configured to receive a liquid via the access port (see para 0033).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen (as already modified above) such that one or more of the first portion and the second portion comprises: a void internally positioned therein; an access port externally positioned thereon; the access point is functionally coupled to the void; and the void is configured to receive a liquid via the access port. One would have been motivated to do so based off of Rogalski, for the purpose of providing a way to apply topical lotion to the orb/skin (see para 0033 of Rogalski).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Hyder and Moriyama as applied to claim 3 above, and further in view of Murdock et al. (US 2006/0155225 A1, hereafter “Murdock”).
As to claim 8, Chen in view of Hyder and Moriyama teaches the topical anesthetizing apparatus of claim 3 as described above, but is silent to wherein the first portion or the second portion comprises a traversing release button positioned proximate to the magnet; and the traversing release button selectively dislodges the numbing orb from the magnet when compressed.
Murdock discloses a traversing release button (111), the traversing release button selectively dislodges the numbing orb (24) when compressed (see para 0042).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen (as already modified above) to include wherein the first portion or the second portion comprises a traversing release button positioned proximate to the magnet; and the traversing release button selectively dislodges the numbing orb from the magnet when compressed. One would have been motivated to do so in order to provide a means of dislodging the orb with a user’s thumb or finger (see para 0042 of Murdock).
Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Hyder, Fufidio, and Rogalski.
As to claim 13, Chen discloses a topical anesthetizing apparatus (1; see Figs. 1-9), comprising:
a first portion (10);
a second portion (20);
a numbing orb (40) that is configured to be chilled (para 0028);
an open state (state when 10 and 20 are detached and/or assembled as seen in Figs. 7-8);
a closed state (state seen in Figs. 1-2);
wherein
the first portion comprises a first recess (12 + 13);
the second portion comprises a second recess (22 + 23);
in the closed state,
the first recess and the second recess come together to form substantially a sphere (para 0026, 0027);
the numbing orb is selectively positioned within the substantial sphere (para 0026-0027);
in the open state,
the first recess is positioned distal to the second recess (distal, based off the applicant’s disclosure, appears similar to “separated”, in the interpreted open state the first recess is distal to the second recess);
the numbing orb is
selectively positioned within the first recess or the second recess (in Figs. 7-8 the orb 40 is positioned within first recess); and
configured to be topically applied to the skin of a mammal to topically anesthetize the skin (para 0028, 0033 – the device of Chen is “configured to…” inasmuch as the instant orb as it is capable of being chilled/iced).
As noted above, the first recess and the second recess of Chen come together to form substantially a sphere. While the examiner believes the compartment/space 15 of Chen to comprise a sphere, in the event this does not anticipate the wording of a sphere, Hyder discloses a roller therapy device and teaches “the cavity has a curvature that matches a curvature of the ball (e.g., a sphere with a radius that is <1-2 mm bigger than a radius of the ball)” (para 0041, also see claim 7). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen such that the compartment/space 15 forms a sphere. One would have been motivated to do so as changing the shape of the compartment/space of Chen would have involved only a change in the shape of components and furthermore would have been motivated to do so in order to better match the orb and/or other casing components (see para 0041 of Hyder).
Chen/Hyder are silent to wherein the first portion is hinge attached to the second portion. Fufidio however teaches a first portion is hinge attached to a second portion (see Figs. 1-14). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen (as already modified above) such that the first portion is hinge attached to the second portion. One would have been motivated to do so as a means of allowing the first portion and the second portion to pivot relative to one another while remaining attached (see Figs. 1-14 of Fufidio).
Chen/Hyder/Fufidio is silent to wherein one or more of the first portion and the second portion comprises: a void internally positioned therein; an access port externally positioned thereon; the access point is functionally coupled to the void; and the void is configured to receive a liquid via the access port. Rogalski discloses a massage ball and topical product dispenser and teaches a first portion (in this instance the first portion interpreted as hollow hemisphere 20 and gasket 24), wherein the first portion comprises a void internally positioned therein; an access port (22) externally positioned thereon; the access point is functionally coupled to the void; and the void is configured to receive a liquid via the access port (see para 0033). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen (as already modified above) such that one or more of the first portion and the second portion comprises: a void internally positioned therein; an access port externally positioned thereon; the access point is functionally coupled to the void; and the void is configured to receive a liquid via the access port. One would have been motivated to do so based off of Rogalski, for the purpose of providing a way to apply topical lotion to the orb/skin (see para 0033 of Rogalski).
As to claim 14, Chen discloses a topical anesthetizing apparatus (1; see Figs. 1-9), comprising:
a first portion (10);
a second portion (20);
a numbing orb (40) that is configured to be chilled (para 0028);
an open state (state when 10 and 20 are detached and/or assembled as seen in Figs. 7-8);
a closed state (state seen in Figs. 1-2);
wherein
the first portion comprises a first recess (12 + 13);
the second portion comprises a second recess (22 + 23);
in the closed state,
the first recess and the second recess come together to form substantially a sphere (para 0026, 0027);
the numbing orb is selectively positioned within the substantial sphere (para 0026-0027);
in the open state,
the first recess is positioned distal to the second recess (distal, based off the applicant’s disclosure, appears similar to “separated”, in the interpreted open state the first recess is distal to the second recess);
the numbing orb is
selectively positioned within the first recess or the second recess (in Figs. 7-8 the orb 40 is positioned within first recess); and
configured to be topically applied to the skin of a mammal to topically anesthetize the skin (para 0028, 0033 – the device of Chen is “configured to…” inasmuch as the instant orb as it is capable of being chilled/iced).
As noted above, the first recess and the second recess of Chen come together to form substantially a sphere. While the examiner believes the compartment/space 15 of Chen to comprise a sphere, in the event this does not anticipate the wording of a sphere, Hyder discloses a roller therapy device and teaches “the cavity has a curvature that matches a curvature of the ball (e.g., a sphere with a radius that is <1-2 mm bigger than a radius of the ball)” (para 0041, also see claim 7). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen such that the compartment/space 15 forms a sphere. One would have been motivated to do so as changing the shape of the compartment/space of Chen would have involved only a change in the shape of components and furthermore would have been motivated to do so in order to better match the orb and/or other casing components (see para 0041 of Hyder).
Chen/Hyder are silent to wherein the first portion is hinge attached to the second portion. Fufidio however teaches a first portion is hinge attached to a second portion (see Figs. 1-14). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen (as already modified above) such that the first portion is hinge attached to the second portion. One would have been motivated to do so as a means of allowing the first portion and the second portion to pivot relative to one another while remaining attached (see Figs. 1-14 of Fufidio).
Chen/Hyder/Fufidio is silent to wherein one or more of the first portion and the second portion comprises: a void internally positioned therein; an access port externally positioned thereon; the access point is functionally coupled to the void; and the void is configured to receive a liquid via the access port. Rogalski discloses a massage ball and topical product dispenser and teaches a first portion (in this instance the first portion interpreted as hollow hemisphere 20 and gasket 24), wherein the first portion comprises a void internally positioned therein; an access port (22) externally positioned thereon; the access point is functionally coupled to the void; and the void is configured to receive a liquid via the access port (see para 0033). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen (as already modified above) such that one or more of the first portion and the second portion comprises: a void internally positioned therein; an access port externally positioned thereon; the access point is functionally coupled to the void; and the void is configured to receive a liquid via the access port. One would have been motivated to do so based off of Rogalski, for the purpose of providing a way to apply topical lotion to the orb/skin (see para 0033 of Rogalski).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen, Hyder, Fufidio and Rogalski as applied to claim 13 above, and further in view of Moriyama.
As to claim 15, Chen in view of Hyder, Fufidio, and Rogalski teaches the topical anesthetizing apparatus of claim 13 as described above, but is silent to wherein one or more of the first recess and the second recess comprise a magnet; and the magnet selectively secures the numbing orb.
Moriyama discloses a magnet (14) selectively secures a numbing orb (17) (see Figs. 1-2, paragraph beginning ln 52 col 1, and claim 1 of Moriyama).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen (as already modified above) such that one or more of the first recess and the second recess comprise a magnet; and the magnet selectively secures the numbing orb based off of Moriyama. One would have been motivated to do so in order to provide an additional and/or alternative means of attaching the orb (see Figs. 1-2, paragraph beginning ln 52 col 1, and claim 1 of Moriyama).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen, Hyder, Fufidio, and Rogalski as applied to claim 14 above, and further in view of Gildea.
As to claim 17, Chen in view of Hyder, Fufidio, and Rogalski teaches the topical anesthetizing apparatus of claim 14 as described above, but is silent to wherein the numbing orb is a hollow polymeric structure; comprises a liquid filing; and the liquid filling comprises one or more of water, hydroxyethyl cellulose, sodium polyacrylate, a polymer, a glycol, glycerin, and silica coated with vinyl.
Gildea teaches a hollow polymeric structure (bladder 20; see para 0017, 0041) and comprises a liquid filing; and the liquid filling comprises one or more of a hydroxyethyl cellulose, a glycol, and glycerin (see para 0018 and para 0050).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen (as already modified above) such that the numbing orb is a hollow polymeric structure; comprises a liquid filing; and the liquid filling comprises one or more of a hydroxyethyl cellulose, a glycol, and glycerin. One would have been motivated to do so for the purpose of making the orb conform to the contour of the rest of the device and/or the skin (see para 0041, 0042 of Gildea) and to provide any one or a combination of known refrigerants within the orb (see para 0018 and 0050 of Gildea). Additionally, it has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious (see MPEP 2144.07).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen, Hyder, Fufidio, Rogalski, and Moriyama as applied to claim 15 above (as noted previously, it is assumed claim 19 was intended to depend from claim 15), and further in view of Murdock.
As to claim 19, Chen in view of Chen, Hyder, Fufidio, Rogalski, and Moriyama teaches the topical anesthetizing apparatus of claim 15 as described above, but is silent to wherein the first portion or the second portion comprises a traversing release button positioned proximate to the magnet; and the traversing release button selectively dislodges the numbing orb from the magnet when compressed.
Murdock discloses a traversing release button (111), the traversing release button selectively dislodges the numbing orb (24) when compressed (see para 0042).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Chen (as already modified above) to include wherein the first portion or the second portion comprises a traversing release button positioned proximate to the magnet; and the traversing release button selectively dislodges the numbing orb from the magnet when compressed. One would have been motivated to do so in order to provide a means of dislodging the orb with a user’s thumb or finger (see para 0042 of Murdock).
Double Patenting
Applicant is advised that should claim 13 be found allowable, claim 14 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Allowable Subject Matter
Claims 4, 6, and 11-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 16 and 18 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.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 4, while Chen and/or Chen in view of Hyder teaches the topical anesthetizing apparatus of claim 3 as described above, each are silent to wherein the numbing orb: is a metallic structure; and comprises a powder coating in combination.
As to claim 6, while Chen or Chen/Hyder in view of Moriyama and Gildea teaches the topical anesthetizing apparatus of claim 5 as described above, each are silent to wherein the numbing orb comprises a metal tab externally affixed that allows the numbing orb to be selectively positioned within the first recess or the second recess in combination.
As to claim 11, while Chen or Chen/Hyder in view of Gildea teaches the method of claim 9 as described above, each are silent to further comprising: adding water to one or more of the first portion and the second portion via an access port attached thereto prior to chilling the numbing orb in combination.
Claim 12 depends from claim 11.
As to claim 16, while Chen in view of Hyder, Fufidio, Rogalski, and Moriyama teaches the topical anesthetizing apparatus of claim 14 as described above, each are silent to wherein the numbing orb: is a metallic structure; and comprises a powder coating in combination.
Claim 18 depends from claim 16.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James D Ponton whose telephone number is (571)272-1001. The examiner can normally be reached M-F 9am-5pm.
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/James D Ponton/Primary Examiner, Art Unit 3783