DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claims 1, 4-5, 17-20 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.
Claims 1 and 17 are apparatus claims (See preamble, “Personal care device…”) but recite newly “through which an inner functional component is inserted”.
See MPEP 2173.05(p) II, in part: “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b)…. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).”). Here, it cannot be ascertained whether the preamble is wrong, or if the positive recitation of the step is wrong, and the inclusion of both method steps and device in a single claim is indefinite. Appropriate correction is required. It is not clear whether the claims are to product-by-process limitations, or if the scope of the claim is to a method with improperly unclear preamble.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
CLAIM(S) 1, 4,5, AND 17-20 ARE REJECTED UNDER 35 U.S.C. 103 AS BEING UNPATENTABLE OVER MEIER (US 9,126,346) IN VIEW OF WÖRNER (DE 102 15 804), ANDREWS (US 6,141,875), AND AUDET (US 6,406,157) as previously set forth in the action dated 6/2/26 and incorporated here by reference.
Applicant newly recites openings at back, front, and bottom. The art previously applied shows access points to the inside of the handle in all those locations. Further, the position at which internal elements are “inserted” is at best a product by process limitation, met when the device could have been assembled in the manner discussed in the claim—but the art need not specify that manner of making. It would have been obvious to one skilled in the art at the time of the invention to make any of the openings shown in the cited are the opening for specific electronic elements of the device, since it has been held that rearranging the parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. As in Japikse, the position of buttons on a machine is the type of thing that does not impact the function of the button, and moving it to known positions shown in the prior art for handle interior access points should not be considered unobvious—the positions and access and insertion of electronic functioning elements at each positions is in the public domain as evidenced significantly in the cited art.
Here, it is not patentable advance to specify some electronics are inserted in different locations, since the locations are all shown in the art and they are all selectable for the insertion of electronics if the designer wished.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN M MICHALSKI whose telephone number is (571)272-6752. The examiner can normally be reached Typically M-F 6a-3:30p East Coast Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SEAN M. MICHALSKI
Primary Examiner
Art Unit 3724
/SEAN M MICHALSKI/ Primary Examiner, Art Unit 3724
