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 .
Information Disclosure Statement
The information disclosure statements (IDS) dated 05/26/2023 and 07/28/2025 have been received and considered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The amendment to the specification submitted 05/26/2023 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
Claim 7 is objected to because of the following informalities: clarity of the claim would be improved if amended to recite: “wherein forms an elastically deformable surface to press the transfer member”.
Appropriate correction is required.
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 6-8 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.
Claim 6 limitation “wherein the head supports the transfer member to relatively rotate in a fixed state in a non-rotating state” is not clear as to what is rotating and what is non-rotating. This claim has been interpreted to mean that the head is fixed and non-rotating and the transfer member rotates relative to the head. It is suggested to amend this claim to recite “wherein the head supports the transfer member to relatively rotate while in a fixed state in a non-rotating state” or similar.
Claims 7-8 are rejected as depending upon a rejected base claim.
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 1 is rejected under 35 U.S.C. 102(a)(1) as anticipated by KR 2018/0112959 A1 hereafter KR’959. A machine translation is relied upon to address claims.
Regarding Claim 1, KR’959 discloses a thermotherapy device ([0015]), comprising: a ceramic part (fig. 6, 28 [0039]) having an inner space formed therein (fig. 1, inner space is formed within rod 21 [0038]); a heating part which is inserted in the inner space (fig. 1, heat medium oil 29, heating wire 23 [0028]) and has a heating element (fig. 1, 23) for generating heat so as to heat the ceramic part ([0028]), and a transfer member for transferring the heat generated by the heating element to the ceramic part (fig. 1, heat medium oil 29); a power supply part (fig. 1, external power supply 33 [0028]) having an electrode member (fig. 1, rotary terminal 22, terminal box 14, terminal 15 [0026]) so as to supply an electric current to the heating part ([0027]); and a support part for supporting the ceramic part (fig. 1, main body 10 [0023]), wherein the heating part rotates relative to the electrode member such that the heating part rotates together with the ceramic part ([0018] and [0027] the rotary terminals 22 allow the entire roller assembly, including the heating element, to rotate against the electrical contacts).
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.
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over KR’959 in view of KR 100559923 B1, hereafter KR’923. A machine translation is relied upon to address claims.
Regarding Claim 2, KR’959 discloses a thermotherapy device of claim 1, wherein the electrode member comprises a head (see annotated fig. below, head is rotary terminal 22 [0026]) which electrically contacts the transfer member (fig. 1, the head portion of 22 is shown in contact with heat medium oil 29), and a body (see annotated fig. below, body is terminal box 14 and terminal 15 [0026]) fixed to the support part to support the head (fig. 1, terminal 15 and terminal box 14 are fixed to the support part 10 [0025]).
However, KR’959 is silent on the whether head supports the transfer member so as to be rotatable (since the transfer member is disclosed to be a heat medium oil [0028], the head cannot support a liquid).
KR’923 teaches a solid heat transfer medium (fig. 4a, roller 300 [0008] heat transfer medium 350 [0013]; end of page 3 “the heat transfer medium part 350 has both ends fixed to both sides of the support table 320”, thus is solid).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change KR’959’s transfer medium from a heating oil to a solid as taught by KR’923, in order to protect the heating element part of the device from damage caused by impacts and thermal expansion (page 4, lines 4-7), and thus as modified, KR’959’s head would support the transfer member so as to be rotatable, since the entire contents of KR’959’s roller rotates at rotary contact 22.
PNG
media_image1.png
741
623
media_image1.png
Greyscale
Regarding Claim 3, KR’959 as modified discloses a thermotherapy device of claim 2, wherein the head supports the transfer member in a manner of rotating with the transfer member (fig. 1 [0027] the entire roller and its contents including transfer member rotate, and as modified by KR’923, the transfer member 29 is solid and is shown to be supported by 22 in fig. 1), and wherein the body supports the head to rotate relatively (fig. 1 [026] the fitting groove 16 of the terminal allow rotary terminal to rotate).
Regarding Claim 4, KR’959 as modified discloses a thermotherapy device of claim 3, wherein the body is provided with a spring for providing a pressing force such that the head presses the transfer member (KR’959 fig. 1, spring elastic terminal 17 [0025] would press the head 22 against the solid transfer member).
Regarding Claim 5, KR’959 discloses a thermotherapy device of claim 3, but is silent on wherein a conducting groove is formed in the transfer member to be in surface contact with the head while surrounding a portion of the outer peripheral surface of the head.
However, KR’923 teaches a conducting groove formed in the transfer member (fig. 4a, 350 has a groove in its end into which a fixing member (fig. 4a, 322, page 4, halfway down) is inserted to support the roller.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a conducting groove in KR’959’s modified transfer member in order to allow rotary terminals 22 to be inserted into the transfer medium as seen in KR’959 fig. 1, so that electrical contact could be made with the heating element (fig. 1, 23).
In the alternative, Claims 1, 2 and 6-9 are rejected under 35 U.S.C. 103 as unpatentable over Myers (US 2447269 A), hereafter Myers in view of KR’959.
Regarding Claim 1, Myers discloses a thermotherapy device (fig. 2, col. 1 lines 1-5), comprising: a ceramic part (fig. 2, roller 11) having an inner space formed therein (see annotated fig. below); a heating part (fig. 2, heating unit 12, col. 1 line 27) which is inserted in the inner space and has a heating element for generating heat so as to heat the ceramic part (fig. 2, col. 1 lines 27 and 42-45), and a transfer member for transferring the heat generated by the heating element to the ceramic part (fig. 2, axles 13, metallic plugs 14, terminals 20, col. 1 lines 32-33 and 42); a power supply part (fig. 2, socket, col. 2 line 1) having an electrode member (fig. 2, plate springs 22, col. 1 line 51) so as to supply an electric current to the heating part (col. 1 lines 47-55); and a support part for supporting the ceramic part (fig. 2, support member 10, col. 1 line 21), wherein the heating part rotates relative to the electrode member such that the heating part rotates together with the ceramic part (col. 1 lines 25-27 and lines 48-51).
Myers is silent on the ceramic part being made from a ceramic (the material is disclosed as metallic, col. 1 line 26).
However, KR’959 teaches the use of a ceramic roller as an alternative to metal (fig. 6, outer tube 28 may be metal, synthetic resin, or ceramic [0039]). This material is mounted on a heated massage roller (fig. 1, [0009]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to simply substitute the material of Myers’ roller from metal to ceramic as taught by KR’959, as a known alternative in the art that performs equally well for massaging and conducting heat to a user for therapeutic benefits.
PNG
media_image2.png
711
960
media_image2.png
Greyscale
Regarding Claim 2, the modified Myers discloses a thermotherapy device of claim 1, wherein the electrode member (fig. 2, 22) comprises a head (see annotated fig. 2) which electrically contacts the transfer member (fig. 2, 2 contacts the axle 13 portion of the transfer member) and supports the transfer member so as to be rotatable (col. 1 lines 25-33), and a body which is fixed to the support part to support the head (see annotated fig. 2, the body of 22 is fixed to support part 10).
Regarding Claim 6, as best understood based on the 112(b) rejection above, Myers discloses a thermotherapy device of claim 2, wherein the head supports the transfer member to relatively rotate in a fixed state in a non-rotating state, and wherein the body supports the head (interpreted to mean that the transfer member rotates relative to the head while the head is fixed and does not rotate; Myers fig. 2, 22 remains fixed while transfer member portion, axle 13, rotates against it, col. 1 lines 48-53).
Regarding Claim 7, Myers discloses a thermotherapy device of claim 6, wherein a deformable surface which is elastically deformed to press the transfer member is formed on the head (fig. 2, plate springs 22 are elastic since they are springs and deform to contact axles 13, col. 1 lines 48-53).
Regarding Claim 8, Myers discloses a thermotherapy device of claim 7, wherein the deformable surface is elastically deformed in such a way that it protrudes toward the transfer member (fig. 2, the plate spring 22 protrudes toward the axle 13 since it is curved toward the axle).
Regarding Claim 9, Myers discloses a thermotherapy device of claim 2, wherein the transfer member is provided with an electrode plate that electrically contacts the head (fig. 2, the end surface of axles 13 serve as an electrode plate in order to conduct electrical power to the heater, col. 1 lines 48-50; in the alternative, binding screws 21 electrically contact the head of 22 via axles 13).
Claim 10 is rejected under 35 U.S.C. 103 as unpatentable over Myers in view of KR’959, further in view of Spangler (US 9620886 B1), hereafter Spangler.
Regarding Claim 10, Myers discloses a thermotherapy device of claim 9, wherein a contact surface is formed on the electrode plate to be in surface contact with the head (fig. 2, the end of axle 13 forms a contact surface with the head of 22), but is silent on while surrounding a portion of the outer peripheral surface of the head.
Spangler teaches an electrical contact surface (fig. 20G) that receives a spring metal contact =, in which the concave surface of the electrical contact surrounds a portion of the outer peripheral surface of a head (fig. 20H; col. 23 lines 15-19).
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 electrode plate in Myers’ axle (fig. 2, the end surface of axle 13) to have a concave contact surface as taught by Spangler in order to serve as a retention feature to secure the electrical contact within and allow the contacts to rotate (col. 23 lines 1-14).
Claim 11 is rejected under 35 U.S.C. 103 as unpatentable over KR’959 in view of KR 20140069445 A, hereafter KR’445. A machine translation is relied upon to address claims.
Regarding Claim 11, KR’959 discloses an thermotherapy device of claim 1, but is silent on wherein the heating part is provided with an elastically deformable member that presses the inner peripheral surface of the ceramic part.
KR’445 teaches the use of a heat transfer medium surrounding a heating element within a rolling massage device (fig. 3, roller 1, heater 22, heat transfer medium 24 [0023]). The heat transfer medium is a gel ([0023]) which is elastically deformable and presses the inner surface of the outer layer of the roller (fig. 4, 12 and 14 [0019-0020]) in order to transfer heat to the outer layer of the device ([0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the heat medium oil of KR’959’s heating part for elastically deformable gel, as taught by KR’445, since the gel is equally capable of transferring heat from an internal heating element to the outer surface of a rolling massage device.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/264,505 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons described below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding Claim 1, copending application 18/264505 recites: a thermotherapy device, comprising: a ceramic part having an inner space formed therein (claim 1, lines 3-4); 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 (claim 1 lines 5-6), and a transfer member for transferring the heat generated by the heating element to the ceramic part (claim 1 lines 6-7); a power supply part having an electrode member so as to supply an electric current to the heating part (claim 1 line 7; while an “electrode member” is not specifically recited, a power supply inherently requires an electrode to transmit electric current); and a support part for supporting the ceramic part (claim 1 line 8), wherein the heating part rotates relative to the electrode member such that the heating part rotates together with the ceramic part (claim 1 lines 9-10).
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/264,410 in view of KR’959.
This is a provisional nonstatutory double patenting rejection.
Regarding Claim 1, copending application 18/264410 recites: a thermotherapy device, comprising: a ceramic part having an inner space formed therein (claim 1, lines 3-4); 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 (claim 1 lines 5-6); a power supply part having an electrode member so as to supply an electric current to the heating part (claim 1 line 7; while an “electrode member” is not specifically recited, a power supply inherently requires an electrode to transmit electric current); and a support part for supporting the ceramic part (claim 1 line 8), wherein the heating part rotates relative to the electrode member such that the heating part rotates together with the ceramic part (claim 1 lines 9-10).
KR’959 teaches a transfer member for transferring the heat generated by the heating element to the ceramic part in the form of a heat medium oil (fig. 1, 29 [0028]) that transfers heat from an internal heating element to the outer surface of a ceramic massage roller (fig. 1 and fig. 6, roller 21 to outer ceramic roller 28 [0018]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a transfer member for transferring heat to the ceramic part as taught by KR’959 for the benefit of uniformly transferring heat to the roller, thus avoiding uneven or partial heating (KR’959 [0028]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. KR 20120116607 A discloses a massaging roller with a heating element that rotates with the roller (fig. 3)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA K. TOICH whose telephone number is (703)756-1450. The examiner can normally be reached M-Th 7:30 am - 4:30 pm, every other F 7:30-3:30 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brandy S. 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SARA K TOICH/ Examiner, Art Unit 3785
/BRANDY S LEE/ Supervisory Patent Examiner, Art Unit 3785