DETAILED ACTION
This office action is in response to the claims filed 5/13/2023. Claims 1-17 are presenting pending in this application.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 1-3, 8, 15, and 17 are objected to because of the following informalities:
Claim 1 recites, “when the capacitive switch is moved to within at least one from the group including close proximity to the skin and touching the skin, the desired effect generating element is activated to generate a desired response that is transmitted to the skin” in lines 5-8; it is suggested to amend the claim to use inferential language (e.g. configured to, adapted to, etc) to make clear that the human body is not being claimed.
Claim 2 recites, “wherein the capacitor discharges when in close proximity to the skin” in claims 1-2; it is suggested to amend the claim to use inferential language (e.g. configured to, adapted to, etc) to make clear that the human body is not being claimed.
Claim 3 recites, “when the capacitive switch is moved away from the skin, the desired effect generating element is deactivated”; it is suggested to amend the claim to use inferential language (e.g. configured to, adapted to, etc) to make clear that the human body is not being claimed.
Claim 8 recites, “the housing is ergonomically shaped to circumscribe a portion of a finger” in lines 1-2; it is suggested to amend the claim to use inferential language (e.g. configured to, adapted to, etc) to make clear that the human body is not being claimed.
Claim 15 recites, “when the housing is moved to touch the skin, the desired effect generating element is activated to generate a desired response that is transmitted to the skin without pressing any switch to activate the desired effect generating element” in lines 4-6; it is suggested to amend the claim to use inferential language (e.g. configured to, adapted to, etc) to make clear that the human body is not being claimed. Claim 15 includes headings e), f), and g); it is suggested to amend the headings to recite a), b), and c), respectively, as the independent claim recites the elements for the first time.
Claim 17 recites, “when the housing is tapped upon the skin the vibrator changes between different vibration states”; it is suggested to amend the claim to use inferential language (e.g. configured to, adapted to, etc) to make clear that the human body is not being claimed.
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.
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: “a desired effect generating element . . . activated to generated a desired response” in claims 1 and 15.
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 § 102
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.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim(s) 1, 3-7, 10, and 15-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sedic (2014/0194794).
Regarding claim 1, Sedic discloses a device for delivering a desired effect to a body having skin; comprising: a) a housing (200) (shell) (para [0013]); b) a capacitive switch (240) (capacitive sensor) integrated with the housing (200) (covered by the shell (200) (para [0013]); c) a desired effect generating element (210) (massager motor) integrated with the capacitive switch (240) (para [0013]); and d) whereby when the capacitive switch (240) is moved to within at least one from the group including close proximity to the skin and touching the skin, the desired effect generating element (240) is activated to generate a desired response that is transmitted to the skin (para [0009]).
Regarding claim 3, Sedic disclose that when the capacitive switch is moved away from the skin (210), the desired effect generating element is deactivated (para [0010]).
Regarding claim 4, Sedic discloses a microcontroller (250) (controller can be a printed circuit board or a processor) integrated with the desired effect generating element (210) (controller can control movement of the massage motor (210)) (para [0015]), whereby when the housing (210) is tapped upon a conductive surface the microcontroller (250) instructs the desired effect generating element (210) to change to different effect outputs with each tap (housing (200) may include controls (120) that can be used to increase or decrease motor speed and which are integrated with the housing (120) (para [0011]) and as shown in fig 1 shows the controls (120) include “+” and “-“ buttons, and therefore, if a conductive surface taps the housing (100) at the “+” and “-“ buttons, would change different effect outputs with each tap by increasing motor speed if the “+” button is tapped or decreasing motor speed of the “-“ button is tapped).
Regarding claim 5, Sedic discloses the desired effect generating element is a vibrator (210) (massager motor) (para [0013]).
Regarding claim 6, Sedic discloses the vibrator (210) has a plurality of different vibration outputs (motor speed may be increased or decreased (para [0011]).
Regarding claim 7, Sedic discloses a battery (260) and charging port (280) (charging socket) (para [0016]).
Regarding claim 10, Sedic discloses the desired response is vibration (para [0009]).
Regarding claim 15, Sedic discloses a device for delivering an effect to a body having skin; comprising:e) a housing (200) (shell) (para 0013]); f) a desired effect generating element (210) (massager motor) integrated with the housing (200) (massager motor (210) is inside the housing (200)) (para [0013]); and g) whereby when the housing (200) is moved to touch the skin, the desired effect generating element (210) is activated to generate a desired response that is transmitted to the skin (para [0009]) without pressing any switch to activate the desired effect generating element (210) (capacitive sensor (240) may sense a change in capacitance when in close proximity, and therefore a switch does not need to be pressed, as the sensor can detect without requiring physical contact) (para [0008]).
Regarding claim 16, Sedic discloses the desired effect generating element is a vibrator (210) (massager motor) (para [0013]).
Regarding claim 17, Sedic discloses when the housing (200) is tapped upon the skin the vibrator (210) changes between different vibration states (housing (200) may include controls (120) that can be used to increase or decrease motor speed and which are integrated with the housing (120) (para [0011]) and as shown in fig 1 shows the controls (120) include “+” and “-“ buttons, and therefore, if a skin of the user taps the housing (100) at the “+” and “-“ buttons, would change different effect outputs with each tap by increasing motor speed if the “+” button is tapped or decreasing motor speed if the “-“ button is tapped).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sedic as applied to claim 1 above, and further in view of Island et al (8,709,003).
Regarding claim 2, Sedic disclose that the switch is a capacitance sensor to sense capacitance changes that indicate a human body is in close proximity or in contact with the massager head (para [0008]), and it is considered that a capacitance sensor to sense capacitance changes that indicate a human body is in close proximity or in contact with the massager head would include a capacitor, wherein the capacitor discharges when in close proximity to the skin.
In the alternative, although Sedic does not explicitly disclose that the capacitance sensor includes a capacitor, wherein the capacitor discharges when in close proximity to the skin, Island teaches a sensor to detect skin contact including a plurality of sensors (70A-C) and connected to capacitive sensor (600), which detects variance in the capacitance of the sensors based on the rate of charge or discharge at a third terminal (col 6, ln 17-29), wherein each sensor is a planar metal region that forms one electrode of a parallel plate capacitor, the second electrode being formed by a corresponding region of the skin (col 2, ln 51-55).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the capacitance sensor of Sedic to include a capacitor, wherein the capacitor discharges when in close proximity to the skin, as the use of a capacitance sensor comprising a capacitor that discharges when in close proximity to the skin is known in the art, and it appears that the device of modified Sedic would perform equally well to detect skin contact if the capacitance sensor comprises a capacitor that discharges when in close proximity to the skin. See MPEP 2143(I)(A).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sedic as applied to claim 1 above, and further in view of Imboden (2013/0110017).
Regarding claim 9, Sedic discloses the housing (200) has an outer layer of silicone over the capacitive switch (240) (para [0013]).
Sedic does not disclose the housing has an outer layer of plastic over the capacitive switch.
However, Imboden teaches a massage device including a housing (outer covering), wherein the outer covering may be a soft pliable material that is biocompatible and provides a comfortable surface, where the material can be a silicone rubber or thermoplastic elastomer (TPE).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the device of Sedic by substituting the silicone material of the housing with a plastic material comprising TPE as it would be a simple substitution of one known material for another, as TPE is known in the art to be a biocompatible material used interchangeably with silicone to be a soft, pliable material to provide a comfortable feel (Imboden, para [0104]), and it appears that the device of modified Sedic would perform equally well to provide a massage for a user if the housing were made of a plastic material comprising a thermoplastic elastomer. See MPEP 2143(I)(B).
Claims 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sedic as applied to claim 1 above, and further in view of Gorham (2007/0282400).
Regarding claim 11, Sedic discloses the desired effect generating element (210) located within a massager head (110) is activated to generate a desired response comprising vibration (para [0008]).
Sedic does not disclose the desired response is therapeutic light.
However, Gorham teaches a combination medical device including an application head (21), wherein the applicator head (21) includes a plurality of desired effect generating elements, including a vibration source (7), heat source (8), light source (9), and conductive pads (18) configured to provide an electrical current (amperage) (para [0042]), wherein the desired response includes therapeutic light (17) (para [0043]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the device of Sedic by providing the treatment head with a plurality of desired effect generating elements including a heat source for providing heat ,a light source for providing therapeutic light, and conductive pads configured to provide electrical current as taught by Gorham in order to integrate the collective beneficial characteristics of separate and distinct therapeutic pain relieving, relaxing, stimulating and healing modalities so that beneficial healing, relaxing and pain relieving results are enhanced because of the convenience and synergistic effect that the multiple healing modalities provide (Gorham, abstract).
Regarding claim 12, Sedic discloses the desired effect generating element (210) located within a massager head (110) is activated to generate a desired response comprising vibration (para [0008]).
Sedic does not disclose the desired response is electrical current.
However, Gorham teaches a combination medical device including an application head (21), wherein the applicator head (21) includes a plurality of desired effect generating elements, including a vibration source (7), heat source (8), light source (9), and conductive pads (18) configured to provide an electrical current (amperage) (para [0042]), wherein the desired response includes electrical current (para [0045]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the device of Sedic by providing the treatment head with a plurality of desired effect generating elements including a heat source for providing heat ,a light source for providing therapeutic light, and conductive pads configured to provide electrical current as taught by Gorham in order to integrate the collective beneficial characteristics of separate and distinct therapeutic pain relieving, relaxing, stimulating and healing modalities so that beneficial healing, relaxing and pain relieving results are enhanced because of the convenience and synergistic effect that the multiple healing modalities provide (Gorham, abstract).
Regarding claim 13, Sedic discloses the desired effect generating element (210) located within a massager head (110) is activated to generate a desired response comprising vibration (para [0008]).
Sedic does not disclose the desired response is heat.
However, Gorham teaches a combination medical device including an application head (21), wherein the applicator head (21) includes a plurality of desired effect generating elements, including a vibration source (7), heat source (8), light source (9), and conductive pads (18) configured to provide an electrical current (amperage) (para [0042]), wherein the desired response includes heat (para [0044]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the device of Sedic by providing the treatment head with a plurality of desired effect generating elements including a heat source for providing heat ,a light source for providing therapeutic light, and conductive pads configured to provide electrical current as taught by Gorham in order to integrate the collective beneficial characteristics of separate and distinct therapeutic pain relieving, relaxing, stimulating and healing modalities so that beneficial healing, relaxing and pain relieving results are enhanced because of the convenience and synergistic effect that the multiple healing modalities provide (Gorham, abstract).
Claim(s) 11 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sedic as applied to claim 1 above, and further in view of Charraud (2023/0346105).
Regarding claim 11, Sedic discloses the desired effect generating element (210) located within a massager head (110) is activated to generate a desired response comprising vibration (para [0008]).
Sedic does not disclose the desired response is therapeutic light.
However, Charraud teaches a device for skin treatment including an applicator head (100), wherein the applicator head (110) includes a roller ball (110) (para [0012]) and a plurality of desired effect generating elements in a dispensing device (200), including a piston (150) for dispensing of a chemical (skin formula) (para [0015]), a light source (220) for providing therapeutic light (para [0020]), and a magnet (180) to provide vibration (para [0018]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the device of Sedic by substituting the treatment head of Sedic with a treatment head including a roller ball, and a plurality of desired effect generating elements including a piston for dispensing for a chemical, a light source for providing therapeutic light, and a magnet to provide vibration as taught by Charraud in order to allow the reatment head to simultaneously provide multiple skin treatments, including applying a chemical, applying a vibration treatment, and administering a light therapy (Charraud, abstract).
Regarding claim 14, Sedic discloses the desired effect generating element (210) located within a massager head (110) is activated to generate a desired response comprising vibration (para [0008]).
Sedic does not disclose the desired response is dispensing of a chemical.
However, Charraud teaches a device for skin treatment including an applicator head (100), wherein the applicator head (110) includes a roller ball (110) (para [0012]) and a plurality of desired effect generating elements in a dispensing device (200), including a piston (150) for dispensing of a chemical (skin formula) (para [0015]), a light source (220) for providing therapeutic light (para [0020]), and a magnet (180) to provide vibration (para [0018]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the device of Sedic by substituting the treatment head of Sedic with a treatment head including a roller ball, and a plurality of desired effect generating elements including a piston for dispensing for a chemical, a light source for providing therapeutic light, and a magnet to provide vibration as taught by Charraud in order to allow the treatment head to simultaneously provide multiple skin treatments, including applying a chemical, applying a vibration treatment, and administering a light therapy (Charraud, abstract).
Claim(s) 1, 3, 5-6, 8, 10, and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whitaker (2019/0371136) in view of Sedic.
Regarding claim 1, Whitaker discloses in fig 1 a device for delivering a desired effect to a body having skin; comprising: a) a housing (20) (flexible device body); b) a switch (50) (touch sensitive sensor) integrated with the housing (20) (para [0031]); c) a desired effect generating element (40) (vibration unit) integrated with the switch (50) (para [0031]); and d) whereby when the switch (20) is moved to within at least one from the group including close proximity to the skin and touching the skin, the desired effect generating element (40) is activated to generate a desired response that is transmitted to the skin (sensor (50) can act as an activation input or an input used to determine whether a vibration cycle should be activated).
Whitaker does not disclose the switch is a capacitive switch.
However, Sedic teaches a device for delivering a desired effect to a body having skin; comprising: a) a housing (200) (shell) (para [0013]); b) a capacitive switch (240) (capacitive sensor) integrated with the housing (200) (covered by the shell (200) (para [0013]); c) a desired effect generating element (210) (massager motor) integrated with the capacitive switch (240) (para [0013]); and d) whereby when the capacitive switch (240) is moved to within at least one from the group including close proximity to the skin and touching the skin, the desired effect generating element (240) is activated to generate a desired response that is transmitted to the skin (para [0009]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the device of Whitaker by configuring the touch sensitive switch to be a capacitive switch as taught by Sedic, as the use of a capacitive sensor to detect contact with a patient is known in the art, and it appears that the device of modified Whitaker would perform equally well to detect contact with a patient if the touch sensitive switch is a capacitive switch. See MPEP 2143(I)(A).
Regarding claim 3, the modified Whitaker’s references disclose that when the capacitive switch is moved away from the skin, the desired effect generating element is deactivated (Whitaker, para [0032], Sedic, para [0010]).
Regarding claim 5, Whitaker discloses the desired effect generating element is a vibrator (40) (vibration unit) (para [0032]).
Regarding claim 6, Whitaker discloses the vibrator (40) has a plurality of different vibration outputs (as shown in figs 6-8, vibration magnitude can be varied) (para [0041]).
Regarding claim 8, Whitaker discloses the housing (20) is ergonomically shaped to circumscribe a portion of a finger (includes fingertip shaped cavity (22)) (para [0031]).
Regarding claim 10, Whitaker discloses the desired response is vibration (para [0031]).
Regarding claim 15, Whitaker discloses in fig 1 a device for delivering a desired effect to a body having skin; comprising: e) a housing (20) (flexible device body); b) a desired effect generating element (40) (vibration unit) integrated with the housing (20) (para [0031]); and g) whereby when the housing is moved to touch the skin, the desired effect generating element is activated to generate a desired response that is transmitted to the skin using touch sensitive sensor (50) (para [0050]).
Whitaker does not disclose that the desired effect generating element is activated without pressing any switch
However, Sedic teaches a device for delivering an effect to a body having skin; comprising: e) a housing (200) (shell) (para 0013]); f) a desired effect generating element (210) (massager motor) integrated with the housing (200) (massager motor (210) is inside the housing (200)) (para [0013]); and g) whereby when the housing (200) is moved to touch the skin, the desired effect generating element (210) is activated to generate a desired response that is transmitted to the skin (para [0009]) without pressing any switch to activate the desired effect generating element (210) (capacitive sensor (240) may sense a change in capacitance when in close proximity, and therefore a switch does not need to be pressed, as the sensor can detect without requiring physical contact) (para [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the device of Whitaker by configuring the touch sensitive switch to be a capacitive switch that s configured to activate the desired effect generating element is activated without pressing any switch as taught by Sedic, as the use of a capacitive sensor to detect contact with a patient is known in the art, and it appears that the device of modified Whitaker would perform equally well to detect contact with a patient if the touch sensitive switch is a capacitive switch. See MPEP 2143(I)(A).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Huang (2022/0387253), Sedic (2017/0087379), Lee (10,195,107), and Camozzi et al (2022/0218563) and Brown (9,775,769) disclose massage devices including a capacitive and/or contact sensor, and Gulesserian (2020/0238022) disclose a vibrating massager configured to be worn by a user’s finger.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS YOUNG SUL whose telephone number is (571)270-5260. The examiner can normally be reached on Monday-Friday 8:30 am-5 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Justine Yu can be reached on 571-272-48354835. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DOUGLAS Y SUL/Examiner, Art Unit 3785