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 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.
Claim 9 is 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.
Claim 9, the “semicircular” surfaces are not supported in the original specification and drawing. Reading Applicant’s specification, there is no discussion of “semicircular” surfaces, instead of Page 6 recites “the convex surfaces 125, 126 may include circular surfaces” and looking at Figure 2, both surfaces 125, 126 are not semicircular (slightly shorts), thus, the use of semicircular in claim 9 is new matter.
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 2-3, 9 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.
The scope of claim 2 is unclear since claim 1 already recites the main surface that “a length in third direction…a width in the second direction”, however, claim 2 recites “a first length …third direction …a second length… second direction” that is confusing whether the first length and the second length are additional length or refer to the longitudinal length and the width in claim 1.
Claim 9, the scope of claim 9 “…semicircular…” is unclear. There is a new matter (see the discussion above). Reading Applicant’s specification, there is no discussion of “semicircular” surfaces, instead of Page 6 recites “the convex surfaces 125, 126 may include circular surfaces. It should be understood that the circular here is not in the strictest sense”, therefore, it is unclear what interpretation to give the language “semicircular” surfaces.
For examination purposes, as best understood, Examiner is interpreting the “issues above” as below and claim 3 dependent from claim 2 is ejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent from the rejected parent 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-6, 9-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (US 4976028) and as evidenced by Squires (US 2018/0333879).
Regarding claim 1, Chen shows a cap (a cap 10, Figure 3) for a hair cutter (Figure 1 and abstract “razor”), comprising:
a body (a body of the cap 10) comprising a main surface (from a surface where ribs 12 extend from) arranged to face towards a subject during use; and
a protrusion (14, 12) protruding from the main surface along a first direction (a vertical direction, Figure 3) perpendicular to the main surface,
wherein the protrusion comprises a plurality of ribs (see ribs 12) extending along a second direction (a direction the width of the cap 10) perpendicular to the first direction (Figure 3), the plurality of ribs parallel to each other and spaced apart from each other in a third direction (a longitudinal direction of the cap) perpendicular to the first and second directions (Figure 3),
wherein the main surface has a length in the third direction that is greater than a width of the main surface in the second direction (see Figure 3, the length in the longitudinal direction is greater the length in the direction of the cap width);
wherein each of the plurality of ribs has a length in the second direction greater than a width of the each rib in the third direction (Figure 3); and
wherein each of the plurality of ribs has a top (as it is written, it is unclear what the metes and bounds of the “top” are. Is it a top portion, a top surface, or a top edge, therefore, the top end or the portion where the reference “12” meets this limitation) that is “parallel” to the main surface (Figure 3),
wherein the main surface does not define an opening between adjacent ribs (see recess areas 13, Figure 3),
such that, during use of the hair cutter with the cap attached (all parts attached together as seen in Figure 1), the contact area between the hair cutter and the skin is reduced, and the mutual slide between moist skin and the hair cutter is decreased accordingly, without compromising the hair cutting performance (the smooth and inclined structures of ribs are able to perform this. MPEP 2112.01, under the heading "Product and Apparatus Claims - When the Structure Recited in the Reference is Substantially Identical to that of the Claims, Claimed Properties or Functions are Presumed to be Inherent").
Regarding claim 2, as best understood, Chen shows that a first length of the main surface (a longitudinal length) along the third direction is greater than a second length of the main surface (the width length) along the second direction (Figure 3).
Regarding claim 4, Chen shows that each of the plurality of ribs comprises a lateral surface (lateral left and right surface of each rib) adjacent to the main surface of the body, an angle between the lateral surface and the main surface ranging from 90 to 140 degrees (about 90 degrees, Figure 3).
Regarding claim 5, Chen shows that the body comprises first and second side portions (36, 38, Figure 5), wherein the first and second side portions (two end ribs 14, Figure 3) are separated from each other along the third direction and each has a convex surface (see its convex or rounded top and edges) protruding outwardly from the main surface (Figure 3).
Regarding claim 6, Chen shows that the body comprises an intermediate portion (the connection portion between two ends 14, for an example, a edge of the cap in the 3rd direction) connecting the first and second side portions, the main surface being provided on the intermediate portion (Figure 3).
Regarding claim 9, as best understood, Chen shows that the convex surfaces are “semicircular” surfaces (see top conners of ends 14 in Figure 3 since Applicant’s specification recites “… the circular here is not in the strictest sense” and see the issue above).
Regarding claim 10, Chen shows that the plurality of the ribs are provided in parallel on the main surface with the same interval (Figure 3).
Regarding claim 11, Chen shows that a coating provided on the main surface (as it is written, it is unclear what material or coating is provided, therefore, during use, water, cream, oil, foam or lotion can be on the cap that meets this scope as evidenced by Squires, Para. 29 “the razor cap or guards can be used with cream, oil, foam or lotion to form a very close shave such as 0 1 mm”).
Regarding claim 12, Chen shows that the cap is made of a thermoplastic material (Col. 5, line 13-14 “thermoplastic”).
Regarding claim 13, Chen shows that a hair cutter (Figure 1), comprising the cap (see the discussion in claim 1 above).
Claims 1-3, 11, 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wain (US 2011/0094108).
Regarding claim 1 and 13, Wain shows a cap (a cap 14, Figures 1-2) for a hair cutter (a shaving cartridge 10), comprising:
a body (a body of the cap 14) comprising a main surface (from a surface where ribs 16 extend from) arranged to face towards a subject during use; and
a protrusion (16) protruding from the main surface along a first direction (a vertical direction, Figures 1-2) perpendicular to the main surface,
wherein the protrusion comprises a plurality of ribs (16) extending along a second direction (a direction the width of the cap 14) perpendicular to the first direction (Figure 1), the plurality of ribs parallel to each other and spaced apart from each other in a third direction (a longitudinal direction of the cap) perpendicular to the first and second directions (Figure 1),
wherein the main surface has a length in the third direction that is greater than a width of the main surface in the second direction (see Figure 1, the length in the longitudinal direction is greater the length in the direction of the cap width);
wherein each of the plurality of ribs has a length in the second direction greater than a width of the each rib in the third direction (Figure 1); and
wherein each of the plurality of ribs has a top (as it is written, it is unclear what the metes and bounds of the “top” are. Is it a top portion, a top surface, or a top edge, therefore, the top end or the portion where the reference “12” meets this limitation) that is “parallel” to the main surface (see surface 32 is parallel to a top portion of the rib 16, Figure 2),
wherein the main surface does not define an opening between adjacent ribs (see Figures 1-2),
such that, during use of the hair cutter with the cap attached (all parts attached together as seen in Figure 1), the contact area between the hair cutter and the skin is reduced, and the mutual slide between moist skin and the hair cutter is decreased accordingly, without compromising the hair cutting performance (the smooth and inclined structures of ribs are able to perform this. MPEP 2112.01, under the heading "Product and Apparatus Claims - When the Structure Recited in the Reference is Substantially Identical to that of the Claims, Claimed Properties or Functions are Presumed to be Inherent").
Regarding claims 2-3, Wain shows that a first length of the main surface (a longitudinal length) along the third direction is greater than a second length of the main surface (the width length) along the second direction (Figures 1-2) and
the width of each of the plurality of ribs decreases in a direction away from the main surface and along the first direction when view in a cross section perpendicular to the second direction (Figures 1- 2).
Regarding claim 11, Wain shows that a coating provided on the main surface (Para. 15 “the cap may include a shaving aid composite to deliver a lubricious substance to the user's skin”).
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.
Claims 7-8, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Chen.
Regarding claim 7, Chen shows each of the plurality of ribs that comprises a bottom (a bottom of each rib in Figure 3 that connects to the recess 13), but it is unclear a total surface area of the plurality of ribs at a section at a distance from the top that is 10%-60% of a surface area of the main surface.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have a total surface area of the plurality of ribs at a section at a distance from the top that is 10%-60% of a surface area of the main surface, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. The claimed range (10%-60%) would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. These are known discovering the optimum or workable ranges depending on the size and shape of the cap of the shaving cartridge requirements to be manufactured.
Regarding claim 8, Chen shows that the distance is 0.2 mm (as it is written, it is unclear where the distance is measured from the top of ribs, therefore, each rib has a top surface inclined to the main surface where the distance is at 0.2 mm from the main surface and meets this limitation).
Regarding claim 12, this is an alternative rejection if one argues that Chen’s cap is NOT made of a thermoplastic material.
A cap made by thermoplastic is well known in the art. The examiner takes official notice that it is known to have the cap to be made of a thermoplastic material. Examples can be provided if it is challenged. One having ordinary skill in the art would have found it obvious to have the cap being thermoplastic material, in order to be easily molded, a lightweight, and Eco-friendly manufacturing.
Further, it would have been obvious to one having ordinary skill in the art to have the cap being made of thermoplastic, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. See the new art above.
However, if Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview.
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 NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
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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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/NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 11/17/2025