The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 15, 2026 has been entered.
Response to Arguments
The previous rejection of claim 17 under 35 USC 112(b) due to the indefinite nature of the term “substantially” remains. All other previously applied rejections under 35 USC 112(b) are overcome by the amendments to the claims.
On pages 8-10 of the remarks dated June 15, 2026, the applicant argues that the previously applied prior art fails to teach the claims as amended. The examiner notes that the claims have been amended with specific dimensions for the diameter(s) of the passageways within each independent claim.
With regard to these amendments and the argument that they are not found in the prior art, it must be noted that the MPEP 2144.05(II)(A) states “’[W]here 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)”. Additionally, the same section of the MPEP states “Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree ‘will not sustain a patent’)”.
The instant application states the following in paragraphs 34-35 of the specification (note that paragraph numbers come from the PGPUB 2024/0189618):
The passageways 110 allow for the light emitted by the light source 100 to safely contact a user's skin in order to treat the user. The passageways 110 have various diameters; those which are closer to an LED light tend to have smaller diameters than those which are further from an LED light, though this is a general description and not necessary in each alternative embodiment. Some passageways 110 will have the same diameter as other passageways 110, of course. The diameter of each passageway 110 is between 0.1 millimeters and 1 centimeter. Each passageway is substantially frustum-shaped, with circular openings at each end of each of the passageways.
A skilled artisan will be able to select a suitable frame, set of LED and/or NIR lights, light source, strap, and clasp according to a particular example based on various considerations, including the size and shape of the main body, the number of light sources used, and the number of passageways used. In one embodiment, fifty LED lights may be used. In others, fewer than 10, 10 to 20, 20 to 50, or more than 50 LED lights may be used. Additionally, in different embodiments, zero, one, two, three, four, five, or more than five NIR light sources may be used. The passageways, in various embodiments, may have any size, shape, number, and configuration. They may be circular, triangular, conical, cylindrical, oval, elliptical, square, rectangular, or have any other shape. Additionally, the light source and LED lights may be placed on any portion of the main body in other configurations. Any individual light may emit one or more than one such type of light or an individual light color or type, in various embodiments. Moreover, each of the passageways may have openings on the first surface of the silicone portion that have widths between about 0.8 millimeters (“mm”) and about 4 mm, between about 1 mm and about 3.4 mm, and/or between about 1.3 mm and about 2.8 mm. Additionally, each of the passageways may have heights between about 1.2 millimeters (“mm”) and about 5 mm, between about 1 mm and about 4.8 mm, and/or between about 1.5 mm and about 3.5 mm. The passageways, of course, may have different heights and opening widths or equal heights and opening widths.
These two paragraphs are the only portions of the specification that identify the ranges of the diameters for the passageways. These portions give the following ranges:
“The diameter of each passageway 110 is between 0.1 millimeters and 1 centimeter” (see paragraph 34);
“the passageways may have openings on the first surface of the silicone portion that have widths between about 0.8 millimeters (“mm”) and about 4 mm, between about 1 mm and about 3.4 mm, and/or between about 1.3 mm and about 2.8 mm” (see paragraph 35);
Besides these specific diameters and/or widths, paragraph 35 also states that “The passageways, in various embodiments, may have any size, shape, number, and configuration. They may be circular, triangular, conical, cylindrical, oval, elliptical, square, rectangular, or have any other shape.”
Based on the above, it is clear that there is no criticality to the sizes and shapes of the passageways being any specific dimension, so long as they achieve the purpose of “When in use and the device 2 is turned on, light is able to be emitted via the main body 10 to the user because the light travels through and adjacent the silicone portion of the device 2 and is emitted through the passageways 110 and onto a user's skin” (see paragraph 32).
As described in the previous rejections, the combination of the references, and particularly the teachings of the Lay reference teach and illustrate openings in Figures 25B and 25C that are conical in shape, with Figure 25A illustrating cylindrical openings. And as stated on page 6 of the Final rejection dated December 18, 2025 after the quote, “In addition to what is stated above in paragraph 285, it is noted that paragraph 287 states that holes 66 are for delivering light energy to living skin tissue.” Therefore, “… the general conditions of [the] 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)”. Lay teaches the use of openings within a face mask to deliver optical energy to the skin. Lay also teaches that “In certain embodiments, perforations or holes may be provided with substantially uniform size and distribution, with substantially uniform distribution but non-uniform size, with non-uniform size and non-uniform distribution, or any other desired combination of size and distribution patterns” (see paragraph 288). Figures 26-29 illustrate and assortment of different sizes and distributions of holes/perforations (see description in paragraphs 289-292). As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the sizes of the holes and/or perforations would be within the general size as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPC 233. This is reflected in the rejections that follow.
Claim Rejections - 35 USC § 112
First Paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12-16 is rejected because it is not clear that the originally filed specification supports the species that has been amended into the claim. While paragraph 34 states that “The diameter of each passageway 110 is between 0.1 millimeters and 1 centimeter”, there is simply no mention in the specification of breaking this diameter range into two distinct ranges and placing the diameter ranges at different sides of the opening, such that the first set of passageways has a first opening and a diameter between .5 centimeter and 1 centimeter, and a second opening having a diameter between .1 millimeters and .5 centimeters” as now claimed. The genus of “between 0.1 millimeters and 1 centimeter” does not teach the species as currently claimed. In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus) – see MPEP 2163(I)(B), first paragraph.
Claims 13-16 are rejected for their dependency on independent claim 12.
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 17 is 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.
Claim 17 is rejected because the term “substantially” is unclear and indefinitely. It is not clear from the claims, nor from the specification, to what extend a shape is substantially diamond-shaped. For example, a square is diamond shaped if rotated by 45o, or simply viewed from a 45o angle to horizontal. As another example, it is unclear if an ellipsoid should be interpreted to be diamond-shaped, since it is more diamond-shaped than a circle.
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.
Claims 1-6 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (KR 101561448) in view of Lay et al. (US Patent Pub. No. 2021/0370090), in view of either one of Binner (US Patent Pub. No. 2020/0001107) and Kim (WO 2022/05437).
Regarding claim 1, Choi discloses a phototherapy apparatus for treating a facial face by phototherapy using a light guide plate coated with fine particles that induce total internal reflection (see Technical-Field). Figures 1a and 1b illustrate the general construction of the apparatus, with Figure 1b reproduced below with annotations:
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As can be seen, the apparatus of Choi comprises a main body (the entire mask device) having a first end (the top) and a second end (the bottom) with an intermediate portion extending therebetween (the entire mask and/or the denoted “first portion 10”). The apparatus has a frame 20 and first portion(s) 10, which includes 10a and 10b, secured to the frame. Additionally, the frame 20 comprises light source(s) 40 (i.e., “a plurality of LED light sources 40 in the LED rim 20”). It is also noted that there are light sources on the top portion of the frame which will illuminate light into first portion 10a of Choi, and light sources on the bottom portion of the frame, which will illuminate into first portion 10b – thereby constituting “a first set of lights and a second set of lights” as required by claim 1.
However, Choi fails to teach “the first portion defining a set of passageways extending from a first side of the first portion to a second side of the first portion” and therefore also fails to teach that the light sources are “configured to emit … through the set of passageways defined by the first portion”. Rather, Choi teaches “the light emitted from the plurality of LED light sources 40 of the LED rim 20 passes through the fine particles 15 of the light guide plate 10 to illuminate the user's face” (see fifth paragraph of Description-of-Embodiments).
Lay teaches devices and methods for phototherapeutic treatments of skin (see paragraph 12) and particularly to “a mask for delivering light energy to living skin” (see paragraph 43). While Figures 5-13 illustrate embodiments in which LEDs emit light directly onto the tissue/skin surface, Figure 14A begins discussion of embodiments in which “the device 72 is edge lit with one or more light-emitting sources 36 supported by the substrate 38 (e.g., a flexible PCB)” (see paragraph 272). Most particularly, Figure 24 illustrates an embodiment where LEDs 36 provide the same edge lit format. Paragraph 285 discusses this embodiment by stating (emphasis added):
FIG. 24 is a side cross-sectional schematic view of a portion of a device 102 for delivering light energy to living skin tissue, wherein the device 102 is edge lit along multiple edges with multiple light-emitting sources 36 supported by the substrate 38 or flexible PCB having reflective surfaces 38′ arranged to reflect light toward the light-transmissive outer surface 42 of the device 102. In certain embodiments, the one or more light-emitting sources 36 may be arranged to produce one or both of collagen-promoting light and ES increasing and/or ES releasing light. Encapsulating material layers 40A, 40B are arranged above and below the substrate 38 and over the light-emitting sources 36. Holes or perforations 66 are defined through the substrate 38 and the encapsulating material layers 40A, 40B. The holes or perforations 66 preferably allow passage of at least one of air and exudate through the device 102.
In addition to what is stated above in paragraph 285, it is noted that paragraph 287 states that holes 66 are for delivering light energy to living skin tissue.
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize holes from one surface to the other surface of the mask material, as taught by Lay, and to utilize this structural configuration as the light extracting element within Choi, as Lay teaches the use of scattering materials and particles with regard to the embodiment of Figures 18-21 (see paragraph 277-280) and then teaches the embodiment of Figure 24 as an alternative and/or functional equivalent to that of Figure 19 (and other alternative figures and embodiments). Therefore, such a modification amounts to substitution of known equivalents for extracting light out of a material via edge lit illumination techniques, and would yield predictable results choosing one technique and/or extracting structure over another (KSR v. Teleflex).
While both Choi and Lay teach control device, with Lay providing a control device directly on the mask (see numeral 20 in Figure 3C, for example), neither is “substantially diamond-shaped”.
Binner teaches a light treatment system, which provides a mask as shown below. On the left side is the original Figure 2 of Binner, while the right side shows a diamond-shaped overlay on the controller unit 50, which has a button 54:
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Also, Kim teaches a mask device that radiates beauty light onto the skin (see Abstract). Kim utilizes a control module 160 that includes a button 165. The control module itself is substantially diamond-shaped in that it is oblong vertically:
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to provide a control unit on the mask that is substantially diamond-shaped, as illustrated by either one of Binner and Kim, and to utilize this shape for the controller as a mere matter of design choice, there being no criticality to the controller being substantially diamond-shaped versus any other shape.
With regard to the specific diameters claimed, it is noted that the MPEP 2144.05(II)(A) states “’[W]here 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)”. Additionally, the same section of the MPEP states “Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree ‘will not sustain a patent’)”.
Paragraphs 34 and 35 (from the PGPUB 2024/0189618) are the only portions of the specification that describe diameters for the passageways. These paragraphs give the following ranges:
“The diameter of each passageway 110 is between 0.1 millimeters and 1 centimeter” (see paragraph 34);
“[T]he passageways may have openings on the first surface of the silicone portion that have widths between about 0.8 millimeters (“mm”) and about 4 mm, between about 1 mm and about 3.4 mm, and/or between about 1.3 mm and about 2.8 mm” (see paragraph 35);
Besides these specific diameters and/or widths, paragraph 35 also states that “The passageways, in various embodiments, may have any size, shape, number, and configuration. They may be circular, triangular, conical, cylindrical, oval, elliptical, square, rectangular, or have any other shape.”
Based on the above, it is clear that there is no criticality to the sizes and shapes of the passageways having any specific dimension, so long as they achieve the purpose of “When in use and the device 2 is turned on, light is able to be emitted via the main body 10 to the user because the light travels through and adjacent the silicone portion of the device 2 and is emitted through the passageways 110 and onto a user's skin” (see paragraph 32).
As described above, the combination of the references and particularly the teachings of the Lay reference teach and illustrate openings in Figures 25B and 25C that are conical in shape, with Figure 25A illustrating cylindrical openings. And as stated on page 6 of the Final rejection dated December 18, 2025 after the quote, “In addition to what is stated above in paragraph 285, it is noted that paragraph 287 states that holes 66 are for delivering light energy to living skin tissue.” Therefore, “… the general conditions of [the] 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)”. Lay teaches the use of openings within a face mask to deliver optical energy to the skin. Lay also teaches that “In certain embodiments, perforations or holes may be provided with substantially uniform size and distribution, with substantially uniform distribution but non-uniform size, with non-uniform size and non-uniform distribution, or any other desired combination of size and distribution patterns” (see paragraph 288). Figures 26-29 illustrate and assortment of different sizes and distributions of holes/perforations (see description in paragraphs 289-292). In order for these openings to reside on a mask such as that disclosed by Lay, or any of the other references, the dimensions of those openings would have to be on par with the size of those in the claims. If the holes were too large, they would not allow for light to uniformly impinge on the face to provide an evenly distributed treatment to the face. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the sizes of the holes and/or perforations would be within the general size as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPC 233.
Regarding claim 2, it is noted that Figure 1b of Choi illustrates at least one LED light 40.
Regarding claim 3, Choi teaches that “The LED light source 40 of the present invention may be composed of pixels in which LED light sources 40 that emit lights of different wavelengths are combined or LED light sources 40 that emit lights of different wavelengths (Not shown). Specifically, the pixel may be a combination of a red LED, a blue LED, and a green LED, or red, blue, and green LEDs may be spaced apart from each other” (see 15th paragraph of Description-of-Embodiments – emphasis added).
Regarding claim 4, it is noted that Choi teaches that “The LED light source 40 of the present invention may be composed of pixels in which LED light sources 40 that emit lights of different wavelengths are combined or LED light sources 40 that emit lights of different wavelengths (Not shown). Specifically, the pixel may be a combination of a red LED, a blue LED, and a green LED, or red, blue, and green LEDs may be spaced apart from each other” (see 15th paragraph of Description-of-Embodiments – emphasis added).
Regarding claim 5, it is noted that Choi teaches that “The light guide plate base material 12 is preferably a transparent material to which light is guided” (see 9th paragraph of Description-of-Embodiments).
Regarding claim 6, Choi teaches that “the LED light source 40 used in the photodetector may generate near-infrared rays” (see 15th paragraph of Description-of-Embodiments – emphasis added).
Regarding claim 12, it is initially noted that lines 2-10 of claim 12 are identical to lines 2-10 of claim 1, and are therefore rejected based on the same grounds as that of claim 1 above. Although the specific dimensions of the openings are different, and represent a conical shape. With regard to the specific diameters claimed, it is noted that the MPEP 2144.05(II)(A) states “’[W]here 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)”. Additionally, the same section of the MPEP states “Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree ‘will not sustain a patent’)”.
Paragraphs 34 and 35 (from the PGPUB 2024/0189618) are the only portions of the specification that describe diameters for the passageways. These paragraphs give the following ranges:
“The diameter of each passageway 110 is between 0.1 millimeters and 1 centimeter” (see paragraph 34);
“[T]he passageways may have openings on the first surface of the silicone portion that have widths between about 0.8 millimeters (“mm”) and about 4 mm, between about 1 mm and about 3.4 mm, and/or between about 1.3 mm and about 2.8 mm” (see paragraph 35);
Besides these specific diameters and/or widths, paragraph 35 also states that “The passageways, in various embodiments, may have any size, shape, number, and configuration. They may be circular, triangular, conical, cylindrical, oval, elliptical, square, rectangular, or have any other shape.”
Based on the above, it is clear that there is no criticality to the sizes and shapes of the passageways having any specific dimension, so long as they achieve the purpose of “When in use and the device 2 is turned on, light is able to be emitted via the main body 10 to the user because the light travels through and adjacent the silicone portion of the device 2 and is emitted through the passageways 110 and onto a user's skin” (see paragraph 32).
As described above, the combination of the references and particularly the teachings of the Lay reference teach and illustrate openings in Figures 25B and 25C that are conical in shape, with Figure 25A illustrating cylindrical openings. And as stated on page 6 of the Final rejection dated December 18, 2025 after the quote, “In addition to what is stated above in paragraph 285, it is noted that paragraph 287 states that holes 66 are for delivering light energy to living skin tissue.” Therefore, “… the general conditions of [the] 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)”. Lay teaches the use of openings within a face mask to deliver optical energy to the skin. Lay also teaches that “In certain embodiments, perforations or holes may be provided with substantially uniform size and distribution, with substantially uniform distribution but non-uniform size, with non-uniform size and non-uniform distribution, or any other desired combination of size and distribution patterns” (see paragraph 288). Figures 26-29 illustrate and assortment of different sizes and distributions of holes/perforations (see description in paragraphs 289-292). In order for these openings to reside on a mask such as that disclosed by Lay, or any of the other references, the dimensions of those openings would have to be on par with the size of those in the claims. If the holes were too large, they would not allow for light to uniformly impinge on the face to provide an evenly distributed treatment to the face. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the sizes of the holes and/or perforations would be within the general size as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPC 233.
Back to claim 12, and with regard to “a strap…” as claimed in the last two lines, it is noted that Choi teaches the use of glasses and the hooks like normal eyeglasses to be used for wearing the mask, as opposed to a strap. However, Lay teaches and illustrates in Figures 41-44 the use of “an elastic headband (or strap) 612 (elongated to show the direction in which it extends) attached to the mask 611 by headband engagement features in the form of stitching 613” (see paragraph 305 in reference to Fig. 41). Figure 43 illustrates “a headband (or strap) 632, and first and second headband engagement features 633 (only one of which is visible in FIG. 43), such as a strap and a strap holder that allow adjustment of the mask 631 according to a size of a user's head” (see paragraph 307). And Figure 44 illustrates “a headband (or strap) 642, and first and second headband engagement features in the form of snaps 643 (only one of which is visible in FIG. 44). The snaps 643 may represent a series of snaps that allow adjustment of the mask 631 according to a size of a user's head” (see paragraph 308). And with regard to “each passageway of the first set of passageways having first openings, and a second opening” and the limitation of the diameters being larger at the first opening, it is noted that Figure 25B and 25C illustrate possible frustum shapes that may be the shape of the holes 66 utilized by Lay (see paragraph 278).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize a strap, or headband, to secure the mask of Choi as combined with Lay to the head of a user, as taught by Lay, because the use of either one to allow a user to wear the mask during use would amount to choosing from a finite number of securement and/or wearing methods available in the art at the time of the invention, which has previously been held as unpatentable (KSR v. Teleflex).
Regarding claim 13, it is noted that Choi teaches a plurality of LEDs 40 along LED rim 20. As shown in Figure 1b, there are 47 individual circles which represent individual LEDs. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize more than 20 LEDs.
Regarding claim 14, Choi teaches that “The LED light source 40 of the present invention may be composed of pixels in which LED light sources 40 that emit lights of different wavelengths are combined or LED light sources 40 that emit lights of different wavelengths (Not shown). Specifically, the pixel may be a combination of a red LED, a blue LED, and a green LED, or red, blue, and green LEDs may be spaced apart from each other” (see 15th paragraph of Description-of-Embodiments – emphasis added).
Regarding claim 15, Choi teaches that “The LED light source 40 of the present invention may be composed of pixels in which LED light sources 40 that emit lights of different wavelengths are combined or LED light sources 40 that emit lights of different wavelengths (Not shown). Specifically, the pixel may be a combination of a red LED, a blue LED, and a green LED, or red, blue, and green LEDs may be spaced apart from each other. In some cases, the LED light source 40 used in the phototherapy apparatus of the present invention can generate only one wavelength. For example, the LED light source 40 used in the photodetector may generate near-infrared rays” (see 15th paragraph of Description-of-Embodiments – emphasis added). However, Choi does not clearly teach that both visible and infrared LEDs would be used (i.e., that a second set would includes at least four NIR-emitting lights). Lay teaches that “in certain embodiments, the one or more first light sources 36-1 may embody infrared LEDs that emit light of wavelength in the range of from about 840 nm to about 860 nm. The one or more second light sources 36-2 may embody red LEDs that emit light of a wavelength in a range of from about 610 nm to about 630 nm” (see paragraph 297). This would include at least four NIR LEDs, as shown in Figure 33, as there is a generous mix of both types.
Regarding claim 16, it would have been obvious to one of ordinary skill in the art at the time of the invention that at least one NIR emitting light would be located on the top side of the frame 20 in the combination of Choi with the teachings of Lay. For instance, the combined teachings as described immediately above with regard to claim 15 would teach to provide a generally even mix of visible light to near infrared, and without both types of LEDs at each of the top edge and bottom edge of the frame 20 of Choi, then both types of light wavelengths would not impinge upon the skin of the forehead and/or lower portion of the face, and would therefore not be capable of providing the necessary and/or desired therapies to all facial areas.
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Choi in view of Lay and either one of Binner and Kim as described above with respect to claim 1, and further in view of FR 3071743 (herein referred to as FR), and further in view of KR 20170139261 (herein referred to as KR).
Regarding claim 17, Choi discloses a phototherapy apparatus for treating a facial face by phototherapy using a light guide plate coated with fine particles that induce total internal reflection (see Technical-Field). Figures 1a and 1b illustrate the general construction of the apparatus, with Figure 1b reproduced below with annotations:
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As can be seen, the apparatus of Choi comprises a main body (the entire mask device) having a first end (the top) and a second end (the bottom) with an intermediate portion extending therebetween (the entire mask and/or the denoted “first portion 10”). The apparatus has a frame 20 and first portion(s) 10, which includes 10a and 10b, secured to the frame. Additionally, the frame 20 comprises light source(s) 40 (i.e., “a plurality of LED light sources 40 in the LED rim 20”). It is also noted that there are light sources on the top portion of the frame which will illuminate light into first portion 10a of Choi, and light sources on the bottom portion of the frame, which will illuminate into first portion 10b – thereby constituting “a first set of lights and a second set of lights” as required by claim 1.
However, Choi fails to teach “the first portion defining a set of passageways extending from a first side of the first portion to a second side of the first portion” and therefore also fails to teach that the light sources are “configured to emit … through the set of passageways defined by the first portion”. Rather, Choi teaches “the light emitted from the plurality of LED light sources 40 of the LED rim 20 passes through the fine particles 15 of the light guide plate 10 to illuminate the user's face” (see fifth paragraph of Description-of-Embodiments). Also, Choi teaches the use of glasses and the hooks like normal eyeglasses to be used for wearing the mask, as opposed to a strap.
Lay teaches devices and methods for phototherapeutic treatments of skin (see paragraph 12) and particularly to “a mask for delivering light energy to living skin” (see paragraph 43). While Figures 5-13 illustrate embodiments in which LEDs emit light directly onto the tissue/skin surface, Figure 14A begins discussion of embodiments in which “the device 72 is edge lit with one or more light-emitting sources 36 supported by the substrate 38 (e.g., a flexible PCB)” (see paragraph 272). Most particularly, Figure 24 illustrates an embodiment where LEDs 36 provide the same edge lit format. Paragraph 285 discusses this embodiment by stating (emphasis added):
FIG. 24 is a side cross-sectional schematic view of a portion of a device 102 for delivering light energy to living skin tissue, wherein the device 102 is edge lit along multiple edges with multiple light-emitting sources 36 supported by the substrate 38 or flexible PCB having reflective surfaces 38′ arranged to reflect light toward the light-transmissive outer surface 42 of the device 102. In certain embodiments, the one or more light-emitting sources 36 may be arranged to produce one or both of collagen-promoting light and ES increasing and/or ES releasing light. Encapsulating material layers 40A, 40B are arranged above and below the substrate 38 and over the light-emitting sources 36. Holes or perforations 66 are defined through the substrate 38 and the encapsulating material layers 40A, 40B. The holes or perforations 66 preferably allow passage of at least one of air and exudate through the device 102.
In addition to what is stated above in paragraph 285, it is noted that paragraph 287 states that holes 66 are for delivering light energy to living skin tissue. Lay illustrates frustum shaped holes in Figures 25B and 25C (see paragraph 278).
With regard to the use of a strap, Lay teaches and illustrates in Figures 41-44 the use of “an elastic headband (or strap) 612 (elongated to show the direction in which it extends) attached to the mask 611 by headband engagement features in the form of stitching 613” (see paragraph 305 in reference to Fig. 41). Figure 43 illustrates “a headband (or strap) 632, and first and second headband engagement features 633 (only one of which is visible in FIG. 43), such as a strap and a strap holder that allow adjustment of the mask 631 according to a size of a user's head” (see paragraph 307). And Figure 44 illustrates “a headband (or strap) 642, and first and second headband engagement features in the form of snaps 643 (only one of which is visible in FIG. 44). The snaps 643 may represent a series of snaps that allow adjustment of the mask 631 according to a size of a user's head” (see paragraph 308).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize holes from one surface to the other surface of the mask material, as taught by Lay, and to utilize this structural configuration as the light extracting element within Choi, as Lay teaches the use of scattering materials and particles with regard to the embodiment of Figures 18-21 (see paragraph 277-280) and then teaches the embodiment of Figure 24 as an alternative and/or functional equivalent to that of Figure 19 (and other alternative figures and embodiments). Therefore, such a modification amounts to substitution of known equivalents for extracting light out of a material via edge lit illumination techniques, and would yield predictable results choosing one technique and/or extracting structure over another (KSR v. Teleflex). Also, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize a strap, or headband, to secure the mask of Choi as combined with Lay to the head of a user, as taught by Lay, because the use of either one to allow a user to wear the mask during use would amount to choosing from a finite number of securement and/or wearing methods available in the art at the time of the invention, which has previously been held as unpatentable (KSR v. Teleflex).
While both Choi and Lay teach control device, with Lay providing a control device directly on the mask (see numeral 20 in Figure 3C, for example), neither is “substantially diamond-shaped”.
Binner teaches a light treatment system, which provides a mask as shown below. On the left side is the original Figure 2 of Binner, while the right side shows a diamond-shaped overlay on the controller unit 50, which has a button 54:
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Also, Kim teaches a mask device that radiates beauty light onto the skin (see Abstract). Kim utilizes a control module 160 that includes a button 165. The control module itself is substantially diamond-shaped in that it is oblong vertically:
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to provide a control unit on the mask that is substantially diamond-shaped, as illustrated by either one of Binner and Kim, and to utilize this shape for the controller as a mere matter of design choice, there being no criticality to the controller being substantially diamond-shaped versus any other shape.
Claim 17 also specifically adds that the “first portion” of claim 1 is a “silicone” portion, in which is noted that Lay teaches that the “encapsulating material 40” may include silicone (see any of paragraphs 272-280, which discuss Figures 14A – 21; note that Figure 24 also recites numeral 40A and 40B similarly as “encapsulating materials”).
However, the strap of Lay is not disclosed as being made of silicone.
FR teaches “a cosmetic facial skin care device in the form of a mask by photomodulation” (see Abstract). FR teaches “An autonomous holding means on the face (4) can for example be a holding strap, for example an elastic band or silicone passing behind the head or branches of glasses positioned behind the ears. In a particularly preferred manner, the autonomous holding means on the face (4) is a holding strap as visible in FIGS. 1 2 and 3, and makes it possible to hold the mask on the face of the user” (see paragraph begging, “Preferably according to the invention, said device is provided with an autonomous holding means on the face (4)”, a little less than half-way through).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize silicone for the strap, as taught by FR, within the system and methods of Choi as combined with Lay as one of many options of materials in order to provide the strap with the necessary elasticity desired by Lay.
However, neither Choi nor Lay teach that the frame is made of plastic.
KR teaches “a photon therapy mask apparatus” “for skin care such as skin elasticity increase and acne treatment, massage cream or acne treatment cosmetic is used” (see Technical-Field and Background-Art’s first paragraph). KR teaches that “the first support 13 and the second support 14 are made of a transparent plastic material” (see Description, 5th paragraph).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize plastic as the material for the frame of Choi, which is similarly shown as element 13 in KR and taught as being plastic, although Choi does not expressly teach plastic, the use of other known materials perform/create the method/system taught by Choi would amount to choosing from a finite number of materials available in the art at the time of the invention, which has previously been held as unpatentable (KSR v. Teleflex).
Regarding the recitation that the silicone portion comprises a unitary piece, it is noted that Choi teaches a treatment device with a main body, as described in the previous rejection. The “silicone portion” is the entirety of the mask within the finishing portion 17, with exception of the frame 20. The treatment device itself is a unitary piece once manufactured. As such, once created, the mask portions 10a and 10b are unitary as they do not become separated, as they are fixedly secured along with the frame and finishing portion 17. Per the combination with Lay, the material for creating the mask and having the openings therein for transmitting light would be made from silicone, as Lay teaches that “a light-transmissive encapsulating material arranged to cover a light emitter(s) and at least a portion of an associated substrate (e.g., flexible PCB). A preferred encapsulating material is silicone” (see paragraph 27).
With regard to the specific diameters claimed, it is noted that the MPEP 2144.05(II)(A) states “’[W]here 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)”. Additionally, the same section of the MPEP states “Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree ‘will not sustain a patent’)”.
Paragraphs 34 and 35 (from the PGPUB 2024/0189618) are the only portions of the specification that describe diameters for the passageways. These paragraphs give the following ranges:
“The diameter of each passageway 110 is between 0.1 millimeters and 1 centimeter” (see paragraph 34);
“[T]he passageways may have openings on the first surface of the silicone portion that have widths between about 0.8 millimeters (“mm”) and about 4 mm, between about 1 mm and about 3.4 mm, and/or between about 1.3 mm and about 2.8 mm” (see paragraph 35);
Besides these specific diameters and/or widths, paragraph 35 also states that “The passageways, in various embodiments, may have any size, shape, number, and configuration. They may be circular, triangular, conical, cylindrical, oval, elliptical, square, rectangular, or have any other shape.”
Based on the above, it is clear that there is no criticality to the sizes and shapes of the passageways having any specific dimension, so long as they achieve the purpose of “When in use and the device 2 is turned on, light is able to be emitted via the main body 10 to the user because the light travels through and adjacent the silicone portion of the device 2 and is emitted through the passageways 110 and onto a user's skin” (see paragraph 32).
As described above, the combination of the references and particularly the teachings of the Lay reference teach and illustrate openings in Figures 25B and 25C that are conical in shape, with Figure 25A illustrating cylindrical openings. And as stated on page 6 of the Final rejection dated December 18, 2025 after the quote, “In addition to what is stated above in paragraph 285, it is noted that paragraph 287 states that holes 66 are for delivering light energy to living skin tissue.” Therefore, “… the general conditions of [the] 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)”. Lay teaches the use of openings within a face mask to deliver optical energy to the skin. Lay also teaches that “In certain embodiments, perforations or holes may be provided with substantially uniform size and distribution, with substantially uniform distribution but non-uniform size, with non-uniform size and non-uniform distribution, or any other desired combination of size and distribution patterns” (see paragraph 288). Figures 26-29 illustrate and assortment of different sizes and distributions of holes/perforations (see description in paragraphs 289-292). In order for these openings to reside on a mask such as that disclosed by Lay, or any of the other references, the dimensions of those openings would have to be on par with the size of those in the claims. If the holes were too large, they would not allow for light to uniformly impinge on the face to provide an evenly distributed treatment to the face. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the sizes of the holes and/or perforations would be within the general size as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPC 233.
Regarding claim 18, it is noted that Choi teaches a plurality of LEDs 40 along LED rim 20. As shown in Figure 1b, there are 47 individual circles which represent individual LEDs. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize more than 40 LEDs.
Regarding claim 19, Choi teaches that “The LED light source 40 of the present invention may be composed of pixels in which LED light sources 40 that emit lights of different wavelengths are combined or LED light sources 40 that emit lights of different wavelengths (Not shown). Specifically, the pixel may be a combination of a red LED, a blue LED, and a green LED, or red, blue, and green LEDs may be spaced apart from each other” (see 15th paragraph of Description-of-Embodiments – emphasis added).
Regarding claim 20, Choi teaches that “The light shielding layer 42 may be formed by adhering or coating a film containing a material having a light shielding property. A light-shielding material is a material that absorbs or reflects light and has light-shielding properties. Typically, the light-shielding material can be used alone or in combination with carbon black, titanium oxide, iron oxide, chromium and its alloys, silver and its alloys, tin and its alloys, metal powder or polymeric materials” (see 14h paragraph of Description-of-Embodiments).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES KISH whose telephone number is (571)272-5554. The examiner can normally be reached M-F 10:00a - 6p EST.
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/JAMES KISH/ Primary Examiner, Art Unit 3792
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