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 .
Specification
The amendment to the specification submitted 05/25/2023 is objected to since OPLA states that incorporations by reference to foreign priority documents when added by amendment at the time of entry to the national stage should be objected to as adding new matter. See MPEP 608.01(p)(I)(B): "an incorporation by reference statement added after an application's filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a))". See also MPEP 1893.03(b): An international application designating the U.S. has two stages (international and national) with the filing date being the same in both stages. Often the date of entry into the national stage is confused with the filing date. It should be borne in mind that the filing date of the international stage application is also the filing date for the national stage application. Specifically, 35 U.S.C. 363 provides that an international application designating the United States shall have the effect, from its international filing date under Article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark office. Similarly, PCT Article 11(3) provides that “... an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.” It is suggested to remove the incorporation by reference to the foreign priority document.
Claim Objections
Claims 10, 12 and 14 are objected to because of the following informalities:
In claim 10 the phrase “which extends … exposed to the outside” should be offset by commas to clarify that the first/second support surfaces are relative to the first/second transfer bodies, thus the claim should read: ---The thermotherapy device of claim 9, wherein a first support surface, which extends to surround the second transfer body and has a first through-hole formed such that the first head is exposed to the outside, is formed on the first transfer body, and wherein a second support surface, which extends to surround the first transfer body and has a second through-hole formed such that the second head is exposed to the outside, is formed on the second transfer body.---
In claim 12 “are exposed.” should read ---are exposed to contact with the first transfer body and the second transfer body.---
In claim 14 “the inner peripheral surface” should read ---an inner peripheral surface---
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: “transfer member” in claim 1, “support part” in claim 1, “heating element” in claim 1, “first transfer body” and “second transfer body” in claim 2 and “elastically deformable member” in claim 14.
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 § 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 1-9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (WO 2014200172 A1) in view of Ceragem (US 2019/0216680 A1). A machine translation of Lee is being relied upon to address claims and provided to applicant in this correspondence.
Regarding claim 1, Lee discloses a thermotherapy device (pg 1 ln 12), comprising: an outer part (#53 fig 1-4) having an inner space (#51 fig 1-4) formed therein; a heating part (#40, 20 fig 1-4) which is inserted in the inner space (see fig 2) and has a heating element (#40 fig 1-4) for generating heat so as to heat the outer part (pg 6 ln 35), and a transfer member (#20A-B fig 1-4) for transferring the heat generated by the heating element to the outer part (pg 6 ln 39-40); a power supply part for supplying a current to the heating part (pg 6 ln 21-22); and a support part (#3/5/6 fig 1-4) for supporting the ceramic part, wherein the heating part can rotate relative to the power supply part such that the heating part rotates together with the ceramic part (pg 6 ln 45-47).
Lee is silent to the material of the outer part and therefore silent to the part being ceramic.
Ceragem teaches a similar thermotherapy device (abstract) wherein the outer part is ceramic (#241/242 fig 2, par 0054).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize ceramic as taught by Ceragem for the outer part of Lee as doing so allows for thermal conduction to the user and pressured massage on the user (Ceragem: abstract).
Regarding claim 2, modified Lee discloses the device of claim 1. Lee further discloses the transfer member comprises a first transfer body (#20A fig 1-4) and a second transfer body (#20B fig 1-4) that are disposed to face each other (see fig 1-4), and wherein the heating element is provided between the first transfer body and the second transfer body (see fig 1-4).
Regarding claim 3, modified Lee discloses the device of claim 2. Lee further discloses the power supply part is provided with a first electrode (#38 fig 3 which connects to #33, pg 6 ln 21-23) which is disposed on one side of the ceramic part (upper side) and a second electrode (#38 fig 3 which connects to #34, pg 6 ln 21-23) which is disposed on the other side of the ceramic part (lower side).
Regarding claim 4, modified Lee discloses the device of claim 3. Lee further discloses an insulating member (#60 fig 3, pg 6 ln 28-32) is provided between the first transfer body and the second transfer body (see fig 3).
Regarding claim 5, modified Lee discloses the device of claim 4. Lee further discloses the insulating member is formed with an insertion groove (#61 fig 3, pg 6 ln 28-32) into which the heating element is inserted and disposed, and wherein both side surfaces of the heating element are exposed to contact with the first transfer body and the second transfer body (pg 6 ln 37-40).
Regarding claim 6, modified Lee discloses the device of claim 4. Lee further discloses a first conductive surface which electrically contacts the first electrode is formed on the first transfer body, and wherein a second conductive surface which electrically contacts the second electrode is formed on the second transfer body (pg 6 ln 37-40, conductive surfaces are the surfaces of the transfer body that face the insulating member/heating element).
Regarding claim 7, modified Lee discloses the device of claim 6. Lee further discloses the first conductive surface is formed to extend to surround the second transfer body (as the surfaces match in size it is seen that their perimeters surround one another), wherein the second conductive surface is formed to extend to surround the first transfer body (as the surfaces match in size it is seen that their perimeters surround one another), and wherein the insulating member is formed with a base surface which is disposed between the first transfer body and the second transfer body (see Lee annotated partial fig 3 below), and bent surfaces (see Lee annotated partial fig 3 below) which are disposed between the first conductive surface and the second transfer body and between the second conductive surface and the first transfer body, respectively (see fig 3 showing entirety of the insulating member, base and bent surfaces, between the conductive surfaces and transfer bodies themselves).
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Lee annotated partial fig 3
Regarding claim 8, modified Lee discloses the device of claim 4. Lee further discloses a first electrode plate (#33 fig 3) which electrically contacts the first electrode (pg 6 ln 21-23) is formed on the first transfer body, and wherein a second electrode plate (#34 fig 3 which electrically contacts the second electrode (pg 6 ln 21-23) is formed on the second transfer body.
Regarding claim 9, modified Lee discloses the device of claim 8. Lee further discloses a first head (portion of 33 visible in fig 3) which is in contact with the first electrode (pg 6 ln 21-23) and a first body which is in contact with one side surface of the heating element (portion of 33 internal to the transfer body, as disclosed by pg 6 ln 17-19 disclosing the electrical contact/power is extended to the heating element) are formed on the first electrode plate, and wherein a second head (portion of 34 visible in fig 3) which is in contact with the second electrode (pg 6 ln 21-23) and a second body which is in contact with the other side surface of the heating element (portion of 34 internal to the transfer body, as disclosed by pg 6 ln 17-19 disclosing the electrical contact/power is extended to the heating element) are formed on the second electrode plate.
Regarding claim 12, modified Lee discloses the device of claim 5. Lee does not expressly disclose the heating element is formed to protrude by a certain height such that both side surfaces are exposed. Lee does however disclose that the heating element is exposed in order to contact the transfer members (pg 6 ln 37-40). However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the heating element protrude in order to ensure that the connection between the heating element and transfer members is made and secure.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over modified Lee as applied to claims 12 and 1 above, and further in view of Dannatt (US 4,266,115 A).
Regarding claim 13, modified Lee discloses the device of claim 12. Lee is silent to a first protrusion is formed on the first transfer body to press one side surface of the heating element, and wherein a second protrusion is formed on the second transfer body to press the other side surface of the heating element.
Dannatt teaches protrusions on transfer bodies for pressing a heating element (#37 fig 2-3 showing protrusions/fluting, col 6 ln 44-48).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate protrusions as taught by Dannatt on the transfer bodies of modified Lee as doing so establishes good thermal contact between the components (Dannatt: col 6 ln 44-48).
Regarding claim 14, modified Lee discloses the device of claim 12. Lee is silent to the heating part is provided with an elastically deformable member that presses the inner peripheral surface of the ceramic part.
Dannatt teaches the heating part is provided with an elastically deformable member that presses the inner peripheral surface of the outer part (#37 fig 2-3, col 6 ln 44-48 discloses member 37 being an elastomer thus disclosing elastically deformable).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate elastomer layer as taught by Dannatt on the heating part of modified Lee as doing so establishes good thermal contact between the components (Dannatt: col 6 ln 44-48).
Allowable Subject Matter
Claims 10-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: While modified Lee discloses the device of claim 9. However, Lee is silent to a first support surface which extends to surround the second transfer body and has a first through-hole formed such that the first head is exposed to the outside is formed on the first transfer body, and wherein a second support surface which extends to surround the first transfer body and has a second through-hole formed such that the second head is exposed to the outside is formed on the second transfer body as required of claim 10. Further, absent teaching it would not have been obvious to one of ordinary skill in the art to incorporate the surrounding support surfaces for the purpose of ensuring engagement between the components as Lee discloses the use of components (#4 fig 3)) which already perform the function of maintaining engagement. Additionally, no prior art has been found that teaches two transfer bodies with support surfaces that surround the opposing transfer body. Claim 11 requires all of the features of claim 10 by way of dependency and thus patentably defines for the same reasons.
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 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of copending Application No. 18/254,750 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because infringement on one would constitute infringement of the other.
Regarding claim 1, application’750 discloses a thermotherapy device (cl 1 ln 1), comprising: a ceramic part having an inner space formed therein (cl 1 ln 2); a heating part which is inserted in the inner space and has a heating element for generating heat so as to heat the ceramic part (cl 1 ln 3-5), and a transfer member for transferring the heat generated by the heating element to the ceramic part (cl 1 ln 4-6); a power supply part for supplying a current to the heating part (cl 1 ln 7-8); and a support part for supporting the ceramic part (cl 1 ln 9), wherein the heating part can rotate relative to the power supply part such that the heating part rotates together with the ceramic part (cl 1 ln 13-14 disclosing rotation and cl 1 ln 7-8 disclosing the electrode member as the power supply part).
Regarding claim 14, application ‘750 discloses the device of claim 1 and further discloses the heating part is provided with an elastically deformable member that presses the inner peripheral surface of the ceramic part (cl 11 ln 1-3).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hyllberg US 5984848 A discloses a thermotherapy device with through holes for inserting electrical connections
Song WO 2015084076 A1 discloses a ceramic heater with a heating element sandwiched between transfer members
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIRA B DAHER whose telephone number is (571)270-0190. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brandy Lee can be reached at (571) 270-7410. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIRA B DAHER/Examiner, Art Unit 3785
/BRANDY S LEE/Supervisory Patent Examiner, Art Unit 3785
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