DETAILED ACTION
This office action is in response to the claims filed 3/14/2023. Claims 1-10 are presenting pending in this application, with claims 1-5 presented on the merits.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claims 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/19/2025.
Applicant's election with traverse of Invention I in the reply filed on 12/19/2025 is acknowledged. The traversal is on the ground(s) that it should be no undue burden on the Examiner to consider all claims in a single application. This is not found persuasive because considering the claims in both Invention I and II would present an undue burden on Examiner because the device of Invention I and the method of making a device of Invention II would require search in different classifications, as the massage roller of Invention I would require search in USPC 601/121 and the method of manufacturing a massage roller would require a search in USPC 264/328.8. Furthermore, applicant’s disclosure includes additional manufacturing steps not found in a prior art search of USPC class 601 and CPC class A61H, such as injecting the coating member on an outer periphery of the tube member in a mold, and therefore, a complete search of the disclosed manufacturing process would be an undue burden because it would require a search in different classifications.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
Figures 1-2 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
Claim Objections
Claim 2 is objected to because of the following informalities: Lines 6-7 of claim 2 recite, “and arranged in adjacent to the two lateral sides”; it is suggested to amend the claim to recite --and arranged adjacent to the two lateral sides-- to make the claims more grammatically correct.
Appropriate correction is required.
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(s) 2-5 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 pre-AIA the applicant regards as the invention.
Claim 2 recites the limitation "the two lateral sides" in lines 4 and 7. There is insufficient antecedent basis for this limitation in the claim, as only “a lateral side” has previously been recited in claim 1 (from which claim 2 depends from).
Claims 3-5 are rejected for being either directly or indirectly depending from a rejected claim base.
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 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.
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 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.
Claim 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Selvaggio (2015/0045707) in view of Ploss et al (2020/0276078), or, in the alternative, under 35 U.S.C. 103 as obvious over Selvaggio and Ploss et al, and further in view of Gao (2024/0299236).
Regarding claim 1, Selvaggio discloses a massage roller, comprising: a tube member (30) (elongated tube) (para [0026]) and comprising two end parts (14, 16) (distal ends) disposed in opposite to each other (fig 1, para [0025]); and a coating member (40) (sleeve) formed on an outer periphery of the tube member (30) (para [0027]), the coating member (40) comprising two distal ends (as shown in fig 4, coating member (40) includes two distal ends adjacent the respective end parts (14, 16) of the tube member (30)), a lateral side extending along a radial direction between each of the two distal ends and each of the two end parts, respectively (as shown in fig 1, coating member (40) has a radial thickness of approximately 0.375 inches (para [0029]) and forms a pair of end faces that extends laterally between each of the two distal ends and each of the two end parts, respectively), a drop (17) (gripping surfaces) being formed between the two distal ends and the two end parts (14, 16) (para [0025]), the coating member (40) comprising a plurality of ribs (50) (ridges) and a plurality of grooves (48) disposed in an alternate arrangement along an axial direction of the tube member (30) (para [0028]).
Selvaggio does not disclose the two distal ends of the coating member tapering toward the two end parts.
However, Ploss in fig 4 teaches a massage roller device including a tube member (14) (inner core) and a coating member (16) (outer core) (para [0034]), wherein two distal ends of the coating member (16) taper towards two end parts of the tube member (14) (coating member (16) includes beveled ends (58) which as shown in fig 4 cause the two distal ends of the coating member (16) to taper towards two end parts of the tube member (14)) (para [0054]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the device of Selvaggio by configuring the two distal ends to taper towards the two end parts as taught by Ploss in order to reduce the impact of dropping the roller, increase the comfort for users pressing a body part against an end, or provide other benefit (Ploss, para [0054]).
The limitations “a tube member formed through a first injection processing” and “a coating member formed on an outer periphery of the tube member through a second injection processing” are product-by process limitations. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP 2113(I). In this case, the device of modified Selvaggio is considered to read on the product-by-process limitations of forming the tube member by a first injection processing step and forming a coating member on an outer periphery of the tube member through a second injection processing step, as modified Selvaggio’s structure would be similar to a device made by the recited injection processes.
In the alternative, although modified Selvaggio is silent as to method in which the device was constructed, Gao teaches a massage roller device including a tube member (40) (inner support) made of a rigid material (para [0097]) and a sleeve member (30) (outer massage wheel) formed on an outer periphery of the tube member (40) and made of an elastic material such as foam (para [0097]), wherein the tube member (40) is formed through a first injection processing (a material of the inner support (40) in a fluid state is injected in a mold, and then the fluid material is solidified to form the rigid inner support (40) (para [0135]), and the coating member (30) is formed on an outer periphery of the tube member (40) through a second injection processing (a foaming material of the outer massage wheel (30) is in a fluid state and is injected into a foaming mold (50) to form a foamed wheel (para [0136]) and the foamed wheel (300) is then shrunk to form the outer massage wheel (30) (para [0137])).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the device of modified Selvaggio by forming the tube member through a first injection processing and forming the coating member formed on an outer periphery of the tube member through a second injection processing as taught by Gao in order to provide a manufacturing process that facilitates assembly of the device (Gao, para [0023]), and so that an inner diameter of an inner circumferential engaging surface of the coating member is slightly smaller than an outer diameter of the outer circumferential mating surface of tube member, so that the coating member is not easy to slip off from the tube member, and thus the coating member is firmly retained on the tube member (Gao, para [0024]).
Claims 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Selvaggio, Ploss et al, and Gao as applied to claim 1 above, and further in view of Rocklin et al (2021/0212883).
Regarding claim 2, modified Selvaggio disclose a massage roller.
Modified Selvaggio does not disclose a skin layer, the skin layer being attached to cover a surface of the coating member but without covering the two lateral sides, and an exposed area not covered by the skin layer being formed on the two end parts and arranged in adjacent to the two lateral sides, respectively.
However, Rocklin in fig 3 teaches a massage roller device, wherein the massage roller device includes a skin layer (332) (comfort later) comprising a thing fabric, the skin layer (332) being attached to cover a surface of an outer cylindrical surface of the massage roller but without covering the two lateral sides (skin (332) may take the form of a flat or contoured fabric sheet that wraps around the apparatus, and as shown in fig 3-4, comfort layer (332, 432) does not cover the two lateral sides (para [0066]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the device of modified Selvaggio by providing a skin layer, the skin layer being attached to cover a surface of the coating member but without covering the two lateral sides as taught by Rocklin in order to provide cosmetics and/or comfort to a user and to be removable for cleaning and replacement (Rocklin, para [0066]). The now-modified Selvaggio’s device is considered that the gripping surfaces (17 of Selvaggio) comprise an exposed area not covered by the skin layer being formed on the two end parts, as the skin (332 of Rocklin) is configured to cover the coating member and is shown to leave the lateral sides uncovered, and the gripping surfaces (17 of Selvaggio) forming the exposed area are shown in fig 1 of Selvaggio to be formed on the two end parts (14, 16 of Selvaggio) and arranged adjacent to the two lateral sides, respectively.
Regarding claim 3, Selvaggio discloses a length (LE) of the exposed area (17) (lengths of ends (14, 16) can be 1.5 inches) (para [0028]) is larger than a height (TG) of each of the lateral sides (thickness of sleeve (40) can be 0.375 inches) (para [0029]).
Regarding claim 4, modified Selvaggio discloses that the height of each of the lateral sides can be 0.375 inches (Selvaggio, para [0029]), and that the skin (332 of Rocklin) is thin (Rocklin, para [0066]).
Modified Selvaggio does not disclose the height of each of the lateral sides is larger than a thickness of the skin layer.
However, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the thickness of the skin layer to be less than 0.375 inches, as it has been held that changes in size and shape, and optimization of ranges are within the level of skill of one of ordinary skill in the art. Therefore, modifying the thickness of the thin skin layer to be less than 0.375 inches would have been an obvious modification to provide a thin skin layer to provide comfort to a user and can be removed for cleaning or replacement (Rocklin, para [0066]).
Regarding claim 5, Selvaggio discloses a hardness of the tube member (30) is larger than a hardness of the coating member (40) (tube member (30) can be made of a relatively rigid material such as PVC (para [0026]), and coating member (40) can be made from a material that is softer and less rigid than the material of the tube member (30) (para [0027])).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Norwood et al (2017/0007495), Phillips (9,005,146), and Lin (2017/0202729) disclose massage rollers with an inner tube, coating member, and/or a skin layer, and Phillips et al (D738,519) and Savioli (D1,053,374) disclose massage rollers with tapering ends
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/DOUGLAS Y SUL/Examiner, Art Unit 3785