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 .
This office action is in response to the preliminary amendment filed 4/7/23. As directed by the amendment, claim 1 has been cancelled and claims 2-20 have been added. As such, claims 1-20 are pending in the instant application.
Information Disclosure Statement
Due to a long list of IDS submitted, examiner refers Applicant to MPEP 2004 and in particular to point 13 which states: It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).
Note that consideration by the examiner of the information submitted in an IDS means nothing more than considering the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. See MPEP 609.
The information disclosure statement filed 2/8/23 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
Note: reference FP16 was not provided with at least an English language abstract or some other explanation of relevance.
The information disclosure statement filed 2/8/23 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Note: the crossed-through references (other than FP 16 noted above) have not been provided and are not considered at this time.
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: 628. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 520. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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.
Claim Objections
Claim 7 is objected to because of the following informalities: the language “a user’s palm and a user’s finger” (line 4-5) is objected to as the user has already been set forth in claim 1; Examiner suggests amending to read –the user’s palm and the user’s finger--. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “heating element” in claim 10 and 15. Support for this language is found in the disclosure, in particular Fig. 32A and its accompanying explanation in the written specification.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 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 2-7 and 17-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 2, the newly added claim, which was part of a preliminary amendment filed after the filing date of the instant application, includes limitations, such as the temperature controlled massage member or vibration controlled massage member interchangeably received, which introduce new matter not found in the disclosure as originally filed, nor its parent claims in the priority claim chain.
Regarding claim 3, the newly added claim, which was part of a preliminary amendment filed after the filing date of the instant application, includes limitations, such as the routine controller which initiates protocol for user instruction for application of the massage attachment while heart rate is sensed, which introduce new matter not found in the disclosure as originally filed, nor its parent claims in the priority claim chain.
Regarding claim 17, similar to claim 3 discussed above, the newly added claim, which was part of a preliminary amendment filed after the filing date of the instant application, includes limitations, such as initiating a protocol for user instruction for application of the massage attachment while heart rate is sensed, which introduce new matter not found in the disclosure as originally filed, nor its parent claims in the priority claim chain.
Regarding claim 18, the newly added claim, which was part of a preliminary amendment filed after the filing date of the instant application, includes limitations, such as the removal of the first massage attachment and replacement with second massage attachment and using a second attachment module on the third handle, which introduce new matter not found in the disclosure as originally filed, nor its parent claims in the priority claim chain. Note while the disclosure supports a removable massage attachment, it does not appear to support a method in which the first massage attachment is removed and replaced with a second one as claimed. Additionally the disclosure does not appear to support a first attachment module disposed on the first handle portion (claim 16) and using a second module disposed on the third handle to provide different active effect at the same time as claimed.
Claims 4-7 are rejected based on dependency on a rejected claim.
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.
Claims 12-15 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.
Regarding claim 12, the limitation of the second attachment module being configured to be “connected to and removed from the housing of the percussive therapy device at the same time” is unclear as it is not known how an element, i.e. the second attachment module, can be connected to and removed from another element, i.e. the housing, at the same time as these two states appear to be mutually exclusive and the attachment module is either in a state of being attached to, or removed from, the housing but not both at the same time.
Claims 13-15 are rejected based on dependency on a rejected claim.
Note: the claims as currently worded are afforded the earliest filing date in which all limitations claimed are supported and this earliest filing date is the filing of the instant application, 1/23/23. The documents in the priority claims have been considered but they do not support the claims as currently worded.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wersland et al. (2021/0059898).
Regarding claim 1, Wersland discloses a percussive massage device (see abstract and figures for example) which includes: a housing comprising first, second, and third handle portions that cooperate to at least partially define a handle opening, wherein the first handle portion defines a first axis, the second handle portion defines a second axis, and the third handle portion defines a third axis, wherein the first, second, and third axes are co-planar and cooperate to form a triangle that surrounds the handle opening, wherein the first handle portion is generally straight, wherein the second handle portion is generally straight, and wherein the third handle portion is generally straight, such that a user can grasp any of the first, second, or third handle portions independently to use the percussive massage device (see Fig. 1-5, housing 101 with first 143, second 145, and third 147 handle portions defining their own axes and which are co-planar and define a central handle opening 149 and which is forms a triangle); a rechargeable battery positioned in one of the first, second, or third handle portions (see para. 0149, rechargeable battery 114, see Fig. 6); a motor positioned in one of the first, second, or third handle portions (motor 106, see para. 0150); a switch for activating the motor (switch 104 para. 0165); a push rod assembly operatively connected to the motor and configured to reciprocate in response to activation of the motor (push rod assembly 108/310, see para. 0157), wherein a distal end of the push rod assembly includes a connector thereon (see Fig. 8, distal end of 108 includes a connector as shown, see also Fig. 9, connector 110), and wherein a massage attachment is configured to be received on the connector (see Fig. 3-5 showing a first massage attachment; massage attachment 628 shown in Fig. 40-42); and a first attachment module operatively connected to and disposed on an outer side of the housing of the percussive therapy device, wherein the first attachment module includes a heart rate sensor configured to obtain heart rate data of the user (see Fig. 54-55, para. 0273-0274, first attachment module 437 in Fig. 54 and 439 in Fig. 55).
Regarding claim 16, the use of the Wersland device includes a method of using a percussive massage device including the steps of obtaining a percussive massage device including a housing comprising first, second, and third handle portions that cooperate to at least partially define a handle opening (see Fig. 1-5, housing 101 with first 143, second 145, and third 147 handle portions defining their own axes and which are co-planar and define a central handle opening 149); a rechargeable battery positioned in one of the first, second, or third handle portions (see para. 0149, rechargeable battery 114, see Fig. 6); a motor positioned in one of the first, second, or third handle portions (motor 106, see para. 0150); a switch for activating the motor (switch 104 para. 0165); a push rod assembly operatively connected to the motor and configured to reciprocate in response to activation of the motor (push rod assembly 108/310, see para. 0157), and a first attachment module operatively connected to and disposed on the first handle portion and which includes a heart rate sensor configured to obtain heart rate data of a user (see Fig. 54-55, para. 0273-0274, first attachment module 437 in Fig. 54 and 439 in Fig. 55, located on the first handle portion 143 as shown); placing a first massage attachment on a distal end of the push rod assembly (see Fig. 3-5 showing a first massage attachment; massage attachment 628 shown in Fig. 40-42); activating the motor using the switch (switch 104 para. 0165; ordinary use/activation of the device for use); grasping one of the first, second, or third handle portions (see Fig. 3-5); massaging a body part of the user using the first massage attachment (ordinary use of the device); and providing an active effect to the user by the first attachment module (see para. 0273-0274; active effect being monitoring heart rate which instant specification specifies is an active effect).
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, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2, 8, 12, 18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wersland in view of Pepe (2017/0304145).
Regarding claim 2, the Wersland device is silent as to the massage attachment includes a temperature controlled massage member or a vibration controlled massage member for interchangeable connection to the connector; however, Pepe teaches a similar device which includes such an interchangeable temperature controlled massage member (see Pepe Fig. 1 and 9A-D, para. 0028-0029 which discloses temperature controlled, either hot or cold therapy, massage member 30). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Wersland device’s massage member to be temperature controlled, as taught by Pepe, in order to provide additional therapeutic benefit (hot or cold, Pepe para. 0028-0029).
Regarding claim 8, the Wersland device is silent as to further including a second attachment module on the third handle portion; however, Pepe teaches a similar device which includes such an attachment module (see Pepe Fig. 1 and 9A-D, para. 0028-0029 which discloses temperature controlled, either hot or cold therapy, massage module 30). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Wersland device to further include a second attachment module which is temperature controlled, as taught by Pepe, in order to provide additional therapeutic benefit (hot or cold, Pepe para. 0028-0029). With the addition of a temperature controlled massage module (30 Pepe) to modified Wersland, this module is provided on the third handle portion indirectly via the connector.
Regarding claim 12, the modified Wersland device’s second attachment module is configured to be connected to and removed from the device (via connector 110 of Wersland).
Regarding claim 18, the Wersland method is silent as to removing the first massage attachment and placing a second massage attachment and module on the third handle to provide a different active effect to the user than the first; however, Pepe includes a similar device/use method which includes this feature (see Pepe Fig. 1 and 9A-D, para. 0028-0029, additional massage attachments 30 with hot/cold effect, infrared sensor 31 providing different active effect). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Wersland method to further include removal of a first and attachment of a second massage attachment and a second attachment module with different active effect, as taught by Pepe, in order to provide additional therapeutic benefit (hot or cold, Pepe para. 0028-0029) and infrared temperature sensing (para. 0029).
Regarding claim 20, the Wersland method is silent as to further providing heat and cold therapy to the user; however, Pepe includes a similar device/use method which includes this feature (see Pepe Fig. 1 and 9A-D, para. 0028-0029, additional massage attachments 30 with hot/cold effect). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Wersland device’s massage member to be temperature controlled, as taught by Pepe, in order to provide additional therapeutic benefit (hot or cold, Pepe para. 0028-0029).
Claim(s) 3-7 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wersland.
Regarding claim 3, the Wersland device includes a routine controller to initiate a protocol to instruct a user to apply the massage attachment to a body part (see Wersland para. 0006, 0225-0226), but is silent as to explicitly doing this while the heart rate sensor obtains heart rate and heart rate variability; however one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to combine the heart rate sensing features of Fig. 54-55 to be performed during a massage protocol in order to provide the user with feedback of their heart rate during the massage.
Regarding claim 4, the modified Wersland device’s first attachment module is disposed on the first handle portion in an integrated manner (see Fig. 54-55).
Regarding claim 5, the modified Wersland device’s first attachment module is disposed on an upper outer side of the first handle portion (see Fig. 54).
Regarding claim 6, the modified Wersland device’s first attachment module is disposed at a lower outer side of the first handle portion (see Fig. 55).
Regarding claim 7, the modified Wersland device’s first attachment module includes first and second pulse sensors disposed respective opposite sides on the first handle portion, and wherein the first and second pulse sensors are configured to contact a user's palm and a user's finger, respectively, when the user grasps the first handle portion (see Fig. 55, first and second pulse sensors 440, see para. 0274).
Regarding claim 17, the Wersland method includes a routine controller to initiate a protocol to instruct a user to apply the massage attachment to a body part (see Wersland para. 0006, 0225-0226), but is silent as to explicitly doing this while the heart rate sensor obtains heart rate and heart rate variability; however one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to combine the heart rate sensing features of Fig. 54-55 to be performed during a massage protocol in order to provide the user with feedback of their heart rate during the massage.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wersland and Pepe as applied to claim 12 above, and further in view of Lee et al. (KR 20200051098-A) (copy provided by Applicant).
Regarding claim 13, the modified Wersland device is silent as to the attachment module being received in a module recess in the third handle portion; however, Lee teaches a similar device which includes two modes of therapy (Lee: vibration unit 14 which corresponds to the vibration/percussive effect of Wersland, and an additional attachment module in the form of LED light therapy 20, see Fig. 2 and para. 3-5 of the DESCRIPTION-OF-EMBODIMENTS portion of the translation, central opening in 20 as shown in Fig. 2, attachment module 20 received in modular recess in housing 10 as shown in Fig. 2). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified Wersland device to include as an attachment module the LED therapy device, as taught by Lee, in order to provide an additional therapeutic effect. The location of the recess/module would have been an obvious matter of design choice and obvious rearrangement of parts. See MPEP 2144.04 VI C.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wersland, Pepe, and Lee as applied to claim 13 above, and further in view of Stanbridge (2012/0253245).
Regarding claim 14, the modified Wersland device is silent as to the module and recess including magnets, respectively configured to provide removable attachment/securement therein; however, Stanbridge teaches a similar massage device which includes magnetic attachment of parts (see Stanbridge para. 0093-0094). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified Wersland device’s module and recess to include magnetic coupling elements, as taught by Stanbridge, as such a coupling method/mechanism is well-known in the art and would have been obvious substitution of one known element for another and one would expect the modified Wersland device to perform equally as well.
Regarding claim 15, the modified Wersland device’s second attachment module includes at least one of the claimed list (see Lee additional attachment module in the form of LED light therapy 20, see Fig. 2 and para. 3-5 of the DESCRIPTION-OF-EMBODIMENTS portion of the translation).
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wersland in view of Rochel (2021/0307998).
Regarding claim 8, the Wersland device is silent as to further including a second attachment module on the third handle portion; however, Rochel teaches a similar device which includes this feature (see Rochel Fig. 1A-B, module 140 providing light therapy, see para. 0021 and 0028). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Wersland device to include a second attachment module, as taught by Rochel, in order to provide additional therapeutic benefit (via phototherapy, Rochel para. 0021 and 0028).
Regarding claim 9, the modified Wersland device’s second attachment module is disposed on the third handle portion in an integrated manner (see Rochel Fig. 1B, 140 being integrated in the handle).
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wersland and Rochel as applied to claim 9 above, and further in view of Goldstein (2018/0008512).
Regarding claim 10, the modified Wersland device is silent as to the second massage module including at least one of the claimed list (Rochel teaching phototherapy but silent as to exact type of light/LED); however, Goldstein teaches a similar massage device which utilizes LED phototherapy effect (see Goldstein para. 0051). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified Wersland device’s second massage module to include LEDs, as taught by Goldstein, as this is a well-known type of phototherapy device and would have been obvious substitution of one known element for another and one would expect the modified Wersland device to perform equally as well.
Regarding claim 11, the modified Wersland device’s second attachment module includes one or more LEDs (see Goldstein para. 0051).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wersland in view of Rochel and Goldstein.
Regarding claim 19, the Wersland method is silent as to providing light therapy to the user disposed on the third handle portion; however, Rochel teaches a similar device which includes this feature (see Rochel Fig. 1A-B, module 140 providing light therapy, see para. 0021 and 0028). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Wersland method to include a second attachment module, as taught by Rochel, in order to provide additional therapeutic benefit (via phototherapy, Rochel para. 0021 and 0028). The modified Wersland method is silent as to the second massage module including at least one of the claimed list (Rochel teaching phototherapy but silent as to exact type of light/LED); however, Goldstein teaches a similar massage device which utilizes LED phototherapy effect (see Goldstein para. 0051). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified Wersland device’s second massage module to include LEDs, as taught by Goldstein, as this is a well-known type of phototherapy device and would have been obvious substitution of one known element for another and one would expect the modified Wersland device to perform equally as well.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-7, and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,890,253 in view of Wersland.
Regarding instant claims 1 and 16, patent claim 8 teaches each structural and functional limitation as claimed (see patent claim 8 regarding the attachment module providing for heart rate sensing, patent claim 1 for the structural elements of the percussive therapy device), but is silent as to the electrical source explicitly being a rechargeable battery and the handle portions forming a triangle as claimed; however, Wersland teaches a similar massage device which includes these features (see Wersland Fig. 1-5, housing 101 with first 143, second 145, and third 147 handle portions defining their own axes and which are co-planar and define a central handle opening 149 and which is forms a triangle; para. 0149, rechargeable battery 114, see Fig. 6). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent claim 8 device to include these features, as taught by Wersland, in order to provide a shape to the such that it can be used in multiple ways (Fig. 1-5 of Wersland) and such a rechargeable battery is a well-known electrical source and would have been obvious substitution of one known element for another.
Regarding instant claims 3 and 17, the patent claim 8 device is silent as to including a routine controller to initiate a protocol to instruct a user to apply the massage attachment to a body part (see Wersland para. 0006, 0225-0226), and is silent as to explicitly doing this while the heart rate sensor obtains heart rate and heart rate variability; however one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to combine the heart rate sensing features of Fig. 54-55 to be performed during a massage protocol in order to provide the user with feedback of their heart rate during the massage to apply to patent claim 8.
Regarding instant claim 4, the modified patent claim 8 device’s first attachment module is disposed on the first handle portion in an integrated manner (see Wersland Fig. 54-55).
Regarding instant claim 5, the modified patent claim 8 device’s first attachment module is disposed on an upper outer side of the first handle portion (see Wersland Fig. 54).
Regarding instant claim 6, the modified patent claim 8 device’s first attachment module is disposed at a lower outer side of the first handle portion (see Wersland Fig. 55).
Regarding instant claim 7, the modified patent claim 8 device’s first attachment module includes first and second pulse sensors disposed respective opposite sides on the first handle portion, and wherein the first and second pulse sensors are configured to contact a user's palm and a user's finger, respectively, when the user grasps the first handle portion (see Wersland Fig. 55, first and second pulse sensors 440, see para. 0274).
Claims 2, 8, 12, 18, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,890,253 in view of Wersland and Pepe.
Regarding instant claim 2, the patent claim 8 device is silent as to the massage attachment includes a temperature controlled massage member or a vibration controlled massage member for interchangeable connection to the connector; however, Pepe teaches a similar device which includes such an interchangeable temperature controlled massage member (see Pepe Fig. 1 and 9A-D, para. 0028-0029 which discloses temperature controlled, either hot or cold therapy, massage member 30). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent claim 8 device’s massage member to be temperature controlled, as taught by Pepe, in order to provide additional therapeutic benefit (hot or cold, Pepe para. 0028-0029).
Regarding instant claim 8, the patent claim 8 device is silent as to further including a second attachment module on the third handle portion; however, Pepe teaches a similar device which includes such an attachment module (see Pepe Fig. 1 and 9A-D, para. 0028-0029 which discloses temperature controlled, either hot or cold therapy, massage module 30). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent claim 8 device to further include a second attachment module which is temperature controlled, as taught by Pepe, in order to provide additional therapeutic benefit (hot or cold, Pepe para. 0028-0029). With the addition of a temperature controlled massage module (30 Pepe) to modified patent claim 8, this module is provided on the third handle portion indirectly via the connector.
Regarding instant claim 12, the modified patent claim 8 device’s second attachment module is configured to be connected to and removed from the device (via connector 110 of Wersland/patent claim 1).
Regarding instant claim 18, the patent claim 8 use method is silent as to removing the first massage attachment and placing a second massage attachment and module on the third handle to provide a different active effect to the user than the first; however, Pepe includes a similar device/use method which includes this feature (see Pepe Fig. 1 and 9A-D, para. 0028-0029, additional massage attachments 30 with hot/cold effect, infrared sensor 31 providing different active effect). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent claim 8 use method to further include removal of a first and attachment of a second massage attachment and a second attachment module with different active effect, as taught by Pepe, in order to provide additional therapeutic benefit (hot or cold, Pepe para. 0028-0029) and infrared temperature sensing (para. 0029).
Regarding instant claim 20, the patent claim 8 use method is silent as to further providing heat and cold therapy to the user; however, Pepe includes a similar device/use method which includes this feature (see Pepe Fig. 1 and 9A-D, para. 0028-0029, additional massage attachments 30 with hot/cold effect). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent claim 8 device’s massage member to be temperature controlled, as taught by Pepe, in order to provide additional therapeutic benefit (hot or cold, Pepe para. 0028-0029).
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,890,253 in view of Wersland, Pepe, and Lee.
Regarding instant claim 13, the modified patent claim 8 device is silent as to the attachment module being received in a module recess in the third handle portion; however, Lee teaches a similar device which includes two modes of therapy (Lee: vibration unit 14 which corresponds to the vibration/percussive effect of Wersland, and an additional attachment module in the form of LED light therapy 20, see Fig. 2 and para. 3-5 of the DESCRIPTION-OF-EMBODIMENTS portion of the translation, central opening in 20 as shown in Fig. 2, attachment module 20 received in modular recess in housing 10 as shown in Fig. 2). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified patent claim 8 device to include as an attachment module the LED therapy device, as taught by Lee, in order to provide an additional therapeutic effect. The location of the recess/module would have been an obvious matter of design choice and obvious rearrangement of parts. See MPEP 2144.04 VI C.
Claims 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,890,253 in view of Wersland, Pepe, Lee, and Stanbridge.
Regarding instant claim 14, the modified patent claim 8 device is silent as to the module and recess including magnets, respectively configured to provide removable attachment/securement therein; however, Stanbridge teaches a similar massage device which includes magnetic attachment of parts (see Stanbridge para. 0093-0094). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified patent claim 8 device’s module and recess to include magnetic coupling elements, as taught by Stanbridge, as such a coupling method/mechanism is well-known in the art and would have been obvious substitution of one known element for another and one would expect the modified Wersland device to perform equally as well.
Regarding instant claim 15, the modified patent claim 8 device’s second attachment module includes at least one of the claimed list (see Lee additional attachment module in the form of LED light therapy 20, see Fig. 2 and para. 3-5 of the DESCRIPTION-OF-EMBODIMENTS portion of the translation).
Claims 8-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,890,253 in view of Wersland and Rochel.
Regarding instant claim 8, the patent claim 8 device is silent as to further including a second attachment module on the third handle portion; however, Rochel teaches a similar device which includes this feature (see Rochel Fig. 1A-B, module 140 providing light therapy, see para. 0021 and 0028). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent claim 8 device to include a second attachment module, as taught by Rochel, in order to provide additional therapeutic benefit (via phototherapy, Rochel para. 0021 and 0028).
Regarding instant claim 9, the modified patent claim 8 device’s second attachment module is disposed on the third handle portion in an integrated manner (see Rochel Fig. 1B, 140 being integrated in the handle).
Claims 10-11 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,890,253 in view of Wersland, Rochel, and Goldstein.
Regarding instant claim 10, the modified patent claim 8 device is silent as to the second massage module including at least one of the claimed list (Rochel teaching phototherapy but silent as to exact type of light/LED); however, Goldstein teaches a similar massage device which utilizes LED phototherapy effect (see Goldstein para. 0051). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified patent claim 8 device’s second massage module to include LEDs, as taught by Goldstein, as this is a well-known type of phototherapy device and would have been obvious substitution of one known element for another and one would expect the modified patent claim 8 device to perform equally as well.
Regarding instant claim 11, the modified patent claim 8 device’s second attachment module includes one or more LEDs (see Goldstein para. 0051).
Regarding instant claim 19, the patent claim 8 use method is silent as to providing light therapy to the user disposed on the third handle portion; however, Rochel teaches a similar device which includes this feature (see Rochel Fig. 1A-B, module 140 providing light therapy, see para. 0021 and 0028). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent claim 8 use method to include a second attachment module, as taught by Rochel, in order to provide additional therapeutic benefit (via phototherapy, Rochel para. 0021 and 0028). The modified patent claim 8 method is silent as to the second massage module including at least one of the claimed list (Rochel teaching phototherapy but silent as to exact type of light/LED); however, Goldstein teaches a similar massage device which utilizes LED phototherapy effect (see Goldstein para. 0051). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified patent claim 8 device’s second massage module to include LEDs, as taught by Goldstein, as this is a well-known type of phototherapy device and would have been obvious substitution of one known element for another and one would expect the modified patent claim 8 device to perform equally as well.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLIN W STUART whose telephone number is (571)270-7490. The examiner can normally be reached M-F: 9-5.
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/COLIN W STUART/Primary Examiner, Art Unit 3785