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 .
Election/Restrictions
Applicant’s election without traverse of Group I, encompassing claims 1-4 and new claims 19-22, in the reply filed on 12/16/2025 is acknowledged.
Specification
The amendment filed 12/16/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: regarding claim 22, there does not appear to be support for the recitation that the distance the cutting edge cuts in the third direction is in the range of 10 µm to 10 mm. In the remarks, Applicant points to paragraph [0045] as showing support for this recitation. However, paragraph [0045] refers to the distance in the third direction between the cutting edge of the first gray hair removal cutter and the second gray hair removal cutter as opposed to the distance the cutting edge cuts in the third direction. Although the range recited is the same, paragraph [0045] describes a different structural relationship than what is disclosed in claim 22, thus claim 22 is considered to be new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
Claims 1 and 4 are objected to because of the following informalities:
Claim 1:
at line 7, “cutter” should read “gray hair removal cutter”
“the surface” lacks antecedent basis and should be amended to read “a surface”
the term “used” at line 7 suggests a step, but the preamble of the claim is directed towards an apparatus
the phrase “defining that extension direction of the handle is a first direction” should be amended to read “a direction the handle extends is a first direction”
Claim 4: based on figures 1c and 2, as well as paragraphs [0074, 0081], it appears as though the two opposite sides of the blade are arranged along the second direction, and has been treated as such for purposes of examination. Therefore, “third direction” should read “second direction”
Appropriate correction is required.
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.
Claims 1 and 22 are 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.
Regarding claim 1, it is recited that the device moves along the second direction while cutting hair in the third direction. First, since the second direction appears to be the direction the blade extends, it is unclear how the device can move in the second direction “along the surface of a scalp”. If the device moves along the second direction, the blunted blade tips would eventually contact the scalp and prevent further movement – in this case, the device would become stationary, so how can cutting be performed while the device moves? Second, if the device does move in the second direction, how do the cutting edges engage hair? Since the cutting edges extend in the second direction, it does not seem possible for them to contact the hair in such a way that it can be cut if the device is moving in the second direction. Therefore, it would seem as though the device must move in the direction that hair is cut. Since it does not appear that the device can operate as described, the specification is not commensurate in scope with the subject matter encompassed by claim 1.
Claims 2-4 and 19-22 are rejected by virtue of their dependence on claim 1.
Regarding claim 22, as discussed above, there does not appear to be support for the recitation that the distance the cutting edge cuts in the third direction is in the range of 10 µm to 10 mm. In the remarks, Applicant points to paragraph [0045] as showing support for this recitation. However, paragraph [0045] refers to the distance in the third direction between the cutting edge of the first gray hair removal cutter and the second gray hair removal cutter as opposed to the distance the cutting edge cuts in the third direction. Although the range recited is the same, paragraph [0045] describes a different structural relationship than what is disclosed in claim 22, thus claim 22 is considered to be 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.
Claim 1 is 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.
Regarding claim 1, as discussed above, it is recited that the device moves along the second direction on the surface of a scalp while cutting hair in the third direction. First, it is unclear how the device can move in the second direction “along the surface of a scalp” – it appears as though moving in the second direction would result in the device coming into contact with the surface of a scalp, but it would not move along the surface. That is, it is understood that the second direction is perpendicular to the surface of a scalp. Second, if the device does move in the second direction so that the blade tips are perpendicular to the surface of the scalp, how is the cutting action performed? If the blade tips are in contact with the surface of the scalp and the cutting edges reciprocate in the third direction, it does not appear that the hair will be engaged by the cutting edges since there is no movement along the length of the hairs. That is, if the device does not move along the cutting direction, how will the cutting edges come into contact with the hair?
Further, in order for the device to move along the surface of the scalp, it appears as though it must move in the third direction, which is understood to be parallel to the surface of the scalp. If the device moves in the third direction, the cutting edges will be perpendicular to the surface of the scalp and will come into contact with the hair such that it is cut as the device moves. Therefore, as best understood in view of the specification, it is interpreted that in order to cut hair in the third direction, the device must also move in the third direction, and has been treated as such for purposes of examination.
Claims 2-4 and 19-22 are rejected by virtue of their dependence on claim 1.
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.
(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 1-4 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bei (WO 2020227753).
Regarding claim 1, Bei discloses a gray hair removal cutter, comprising: a handle (casing 30; see fig. 1) and a blade located on the handle (blades 20 extend out from base 11 of casing 30; see paragraph [0046] and fig. 1); defining that extension direction of the handle is a first direction (casing 30 extends in second direction (II), along a y-axis; see paragraph [0047] and fig. 3), a direction perpendicular to the first direction is a second direction (the first direction (I) along an x-axis is perpendicular to the second direction (II); see paragraph [0047] and fig. 3), and a direction perpendicular to both the first and second directions is a third direction (the third direction lies along a z-axis relative to first direction (I) and second direction (II); see paragraph [0047]); wherein a single edge or two opposite edges of the blade (blades 20 each have at least one notch 21, and may comprise a second notch 26; see paragraphs [0057, 0060] and figs. 6-9) comprise a cutting edge (notches 21, 26 comprise cutting edge 25; see paragraphs [0057, 0060] and fig. 7-9) that is used for removing gray hair along the third direction while the cutter moves along the third direction on the surface of a scalp (comb 100 moves along the z-axis during use so that cutting edges 25 engage with hair or fur; see paragraphs [0047, 0057]), and the cutting edge extends along the second direction (cutting edges 25 of notches 21, 26 extend along first direction (I); see figs. 3-6).
Regarding claim 2, Bei discloses the limitations of claim 1 as described in the rejection above.
Bei further discloses wherein the blade is formed by extending outward from a side wall of the handle along the second direction (blades 20 extend from a side of base 11 of casing 30, along first direction (I); see paragraph [0046] and figs. 3-4).
Regarding claim 3, Bei discloses the limitations of claim 2 as described in the rejection above.
Bei further discloses wherein an end of the blade away from the handle forms a cone or blunt cone (blade tip 24 is formed as a blunt cone shape in order to prevent injury to the person or pet being groomed; see paragraph [0062] and figs. 7-9).
Regarding claim 4, Bei discloses the limitations of claim 3 as described in the rejection above.
Bei further discloses wherein: two opposite sides of the blade arranged along the second direction incline inward (notches 21, 26 are angled inwardly towards the center of blade 20; see figs. 6-9) and form a curved surface that is recessed inward in middle (notches 21, 26 have a curved surface that is recessed towards the center of blade 20; see figs. 6-9); and the cutting edge is formed on at least one edge of the curved surface (cutting edge 25 is formed on the sharpened curve of notches 21, 26; see paragraphs [0057, 0060] and figs. 6-9).
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.
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 19 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Bei (WO 2020227753).
Regarding claim 19, Bei discloses the limitations of claim 1 as described in the rejection above.
Bei further discloses the height between the blade and a bottom end of the handle in the first direction (a height is defined between the bottom end and the closest blade 20 in second direction (II) along the y-axis; see annotated portion of fig. 1 below).
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Bei does not explicitly disclose wherein the height is not greater than 10 mm.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Bei to make the height between the blade and a bottom end of the handle in the first direction less than 10 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984)). In the instant case, the device of Bei would not operate differently if modified to have the claimed dimensions. That is, the device would still be capable of cutting hair even if the height between the blade and a bottom end of the handle were less than 10 mm. Further, it appears Applicant has placed no criticality on the range, simply indicating that it is preferable that the height is not greater than 10 mm (see paragraph [0026] of instant specification).
Regarding claim 21, Bei discloses the limitations of claim 1 as described in the rejection above.
Bei further discloses wherein the width of the blade in the third direction is not greater than the width of the handle in the third direction (the width of blades 20 in the third direction (along the z-axis as described above) is smaller than the width of casing 30 in the third direction; see paragraph [0047] and fig. 1).
Bei does not explicitly disclose that both widths are not greater than 10 mm.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Bei to make both widths less than 10 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984)). In the instant case, the device of Bei would not operate differently if modified to have the recited dimensions. That is, the device would still be capable of cutting hair even if both widths were modified to be less than 10 mm. Further, it appears Applicant has placed no criticality on the claimed range, simply indicating that it is preferable that the widths are not greater than 10 mm (see paragraph [0028] of instant specification).
Regarding claim 22, Bei discloses the limitations of claim 1 as described in the rejection above.
Bei further discloses the distance that the cutting edge cuts in the third direction (cutting edge 25 cuts hair in the third direction along the z-axis; see paragraph [0057]).
Bei does not explicitly disclose wherein the distance that the cutting edge cuts in the third direction is in the range of 10 µm to 10 mm.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Bei to make the distance the cutting edge cuts in the third direction in the range of 10 µm to 10 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984)). In the instant case, the device of Bei would not operate differently if modified to have the recited dimensions. That is, the device would still be capable of cutting hair in the third direction even if the cutting edge were to cut hair a distance in the range of 10 µm to 10 mm. Further, it appears Applicant has placed no criticality on the claimed range, as the recitation appears to lack support in the specification.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Bei (WO 2020227753) in view of Saiki (US 20100294295).
Regarding claim 20, Bei discloses the limitations of claim 1 as described in the rejection above.
Bei does not explicitly disclose wherein the length of the cutting edge of the blade in the second direction is in the range of 10 µm to 10 mm.
Saiki discloses wherein the length of the cutting edge of the blade in the second direction is in the range of 10 µm to 10 mm (cutting edge 1b, which comes into contact with hair, is about 2 mm in length; see paragraph [0082] and figs. 4A-4B).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Bei in view of Saiki to make the length of the cutting edge in the second direction between a range of 10 µm to 10 mm 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 (see In re Aller, 105 USPQ 233). It appears Applicant has placed no criticality on the claimed range, simply indicating that it is preferable that the length of the cutting edge in the second direction is in a range of 10 µm to 10 mm (see paragraph [0027] of instant specification). Further, a person of ordinary skill in the art would understand that making the length of the cutting edge in the second direction too large would result in a blade which extends too far from the handle and could potentially injure a user. Likewise, making the length too short would result in difficulty performing the cutting operation. Therefore, in order to mitigate both of these issues, it would be obvious to one of ordinary skill in the art to discover the optimal range through routine experimentation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 3585718 to Escalante, drawn to a hair thinning device; and US 6955137 to Dunn, drawn to an article for grooming an animal.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HALEIGH N WATSON whose telephone number is (571)272-3818. The examiner can normally be reached M-Th 530AM-330PM EST.
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/HALEIGH N WATSON/Examiner, Art Unit 3724
/JENNIFER S MATTHEWS/Primary Examiner, Art Unit 3724