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 .
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 1-3, 8, 10, 11, and 13-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9 of U.S. Patent No. 11,628,120.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1-3 and 8 are anticipated by the patented claim 1.
Claim 10 is anticipated by the patented claim 2.
Claim 11 is anticipated by the patented claim 3.
Claim 13 is anticipated by the patented claim 4.
Claim 14 is anticipated by the patented claim 5.
Claim 15 is anticipated by the patented claim 6.
Claim 16 is anticipated by the patented claim 7.
Claim 17 is anticipated by the patented claim 9.
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 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 and 2 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Wu (US 2010/0042025).
As to claim 1, Wu discloses a device 1 (Fig. 1) for soothing a baby (the abdomen massaging apparatus is capable of use with a baby and thus fulfills the intended use limitation), comprising: a housing 6; a plurality of rotating elements 91-96 movably disposed within the housing 6, each of the rotating elements comprising a gear portion 42 and a massaging element 91-96 attached to the gear portion 42; and a motor 23 disposed within the housing 6 and configured to rotate the gear portions 42 of the plurality of rotating elements 91-96 to enable rotating movement of the massaging elements 91-96 (paragraphs [0021]-[0022]).
As to claim 2, Wu discloses the device of claim 1, wherein the massaging elements 91-96 protrude from the housing 6 (see Fig. 1, where rolls 91-96 extend further than the end of housing 6 and are covered by pad 7, Fig. 1, paragraph [0021]).
Claims 1, 3-7, and 14 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Zou (US 2003/0009117).
As to claim 1, Zou discloses a device (Fig. 5) for soothing a baby (the massage machine is capable of use with a baby and thus fulfills the intended use limitation), comprising: a housing (shell 6, Fig. 5); a plurality of rotating elements (connecting rod 1, shaft 41, spherical heads 2, and worm wheels 4, Fig. 2, paragraph [0028]) movably disposed within the housing 6, each of the rotating elements 1 comprising a gear portion (worm wheel 4) and a massaging element (spherical heads 2) attached to the gear portion 4; and a motor 3 disposed within the housing 6 and configured to rotate the gear portions 4 of the plurality of rotating elements 1, 2, 41, 4 to enable rotating movement of the massaging elements 1, 2 (see Figs 1-5, paragraphs [0027]-[0029]).
As to claim 3, Zou discloses the device of claim 1, wherein the massaging elements includes a first finger 2, a second finger 2, and a third finger 2 (each of the three massage heads 2 shown in Fig. 9, paragraph [0031]).
As to claim 4, Zou discloses the device of claim 3, wherein the first finger 2 includes a greater height than the second finger 2 and the third finger 2 (all spherical heads 2 in different heights in a stepped manner, see Fig. 9, paragraph [0031]).
As to claim 5, Zou discloses the device of claim 3, wherein the second finger 2 includes a greater height than the third finger 2 (all spherical heads 2 in different heights in a stepped manner, see Fig. 9, paragraph [0031]).
As to claim 6, Zou discloses the device of claim 4, wherein the first finger 2 includes a greater height than the second finger 2 and the third finger 2 and the second finger 2 includes a greater height than the third finger 2 (all spherical heads 2 in different heights in a stepped manner, see Fig. 9, paragraph [0031]).
As to claim 7, Zou discloses the device of claim 1, wherein the motor 3 is configured to rotate each of the gear portions 4 around an axis located at a center of each of the rotating elements 1, 2, 41, 4 (each axis of rotation is through the center of each shaft 41, see Fig. 2, paragraphs [0028]-[0029]).
As to claim 14, Zou discloses the device of claim 1, wherein the rotating movement of the massaging elements 2 is substantially circular (spherical heads 2 rotated around shaft 41, see Fig. 2, paragraph [0028]).
Claims 1, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Fedders (US 4,526,163).
As to claim 1, Fedders discloses a device 10 (Fig. 1) for soothing a baby (the massager 10 is capable of use with a baby and thus fulfills the intended use limitation), comprising: a housing (“case”, see col. 2, ln. 18-20); a plurality of rotating elements (including gears 16, shafts, 15, and body engaging means 17, see Fig. 1) movably disposed within the housing, each of the rotating elements 15, 16, 17 comprising a gear portion 16 and a massaging element 17 attached to the gear portion 16; and a motor 23 disposed within the housing and configured to rotate the gear portions 16 of the plurality of rotating elements 17 to enable rotating movement of the massaging elements 17 (col. 1, ln. 43 – col. 2, ln. 25).
As to claim 8, Fedders discloses the device of claim 1, wherein the rotating elements 15, 16, 17 comprise three rotating elements 15, 16, 17 disposed around a central gear 13 (any three of the six gears 16, shafts 15 and body engaging means 17 shown around central gear 13, see Fig. 1), wherein the motor 23 is configured to drive the central gear 13 to rotate the three rotating elements (see Fig. 1, col. 1, ln. 54 – col. 2, ln. 5).
As to claim 9, Fedders discloses the device of claim 1, wherein the rotating elements 15, 16, 17 comprise four rotating elements disposed around a central gear 13 (any four of the six gears 16, shafts 15 and body engaging means 17 shown around central gear 13, see Fig. 1), wherein the motor 23 is configured to drive the central gear 13 to rotate the four rotating elements (see Fig. 1, col. 1, ln. 54 – col. 2, ln. 5).
Claim 1 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Tseng (US 2005/0124921).
As to claim 1, Tseng discloses a device (Fig. 5) for soothing a baby (the massager is capable of use with a baby and thus fulfills the intended use limitation), comprising: a housing (cushion 5, Fig. 5); a plurality of rotating elements 4 (massage blocks 4 including their respective gears 25-28 and shafts 251-281, see Fig. 1) movably disposed within the housing 5 (Fig. 3A, Fig. 3B, paragraph [0022]), each of the rotating elements comprising a gear portion 25-28 and a massaging element 4 attached to the gear portion 25-28; and a motor 3 (Figs. 1, 2A, and 2B) disposed within the housing 5 and configured to rotate the gear portions 25-28 of the plurality of rotating elements to enable rotating movement of the massaging elements 4 (paragraphs [0019]-[0024]).
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 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Evans (US 2005/0151401), in view of Tseng (US 2005/0124921).
As to claim 1, Evans discloses a device (Fig. 1) for soothing a baby (Abstract), comprising: a housing (car seat, Fig. 1); a plurality of elements 1 movably disposed within the housing 6 (Fig. 1, paragraph [0020]-[0021]), and appears to show that the plurality of elements are rotating elements (cams, Fig. 9) configured to rotate by a motor (12 Volt Motor appears to rotate Belt, which rotates the shafts holding the cams, see Fig. 9) but lacks detailed description as to the limitation that each of the plurality of rotating elements comprises a gear portion and a massaging element attached to the gear portion; wherein the motor is disposed within the housing and configured to rotate the gear portions of the plurality of rotating elements to enable rotating movement of the massaging elements.
However, Tseng teaches a massaging device (Fig. 1, 2A, 2B) configured to be housed in a car seat cushion 5 (see Fig. 5, paragraph [0024]), the device including a plurality of rotating elements 4 each comprising a gear portion 25-28 and a massaging element 4 attached to the gear portion 26; and a motor 3 disposed within the device housing 5 (Fig. 5) and configured to rotate the gear portions 26 of the plurality of rotating elements to enable rotating movement of the massaging elements 4 (see Fig. 1, Fig. 5, paragraphs [0019]-[0020],[0024]).
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to modify the device of Evans to replace the cam, shaft, and belt arrangement of Fig. 9 with the massage block, gear unit 1 and motor 3 arrangement taught by Tseng in order to provide a suitable known alternative type of massage means that would perform equally well to massage and relax the body.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Tseng (US 2005/0124921), in view of Fornarelli (US 5,205,811).
As to claim 10, Tseng discloses the device of claim 1, wherein the device is embedded in an insert (cushion 5 of Tseng, Fig. 5) having an opening (the space occupied by unit 1 in Fig. 5 of Tseng) configured to receive the device (paragraph [0024]), but does not expressly disclose that the insert is configured to be placed within a blanket.
However, Fornarelli teaches a soothing device (simulator 16, Figs. 1-5) embedded in an insert (foam form 14), which is placed within a blanket 10 (col. 2, ln. 1-18). Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to modify the device of Tseng so that the cushion 5 is configured to be placed within a blanket, as taught by Fornarelli, in order to provide a comfortable interface for the user to lie down while being massaged.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Evans (US 2005/0151401), in view of Tseng (US 2005/0124921), as applied to claims 1 and 10 above, and further in view of Adachi (US 4,141,095).
As to claim 11, modified Evans discloses the device of claim 1, but does not disclose that the device further comprises a microphone.
However, Adachi teaches a baby soothing device (rocking cradle, Fig. 1) which includes a microphone M that detects the sound of a baby crying which is used to initiate an automatic operation of the motor of soothing device (Fig. 1, col. 3, ln. 3-35). Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to modify the device of Evans to include a microphone, as taught by Adachi, as part of a means to automatically trigger the massage device motor when the baby cries in order to sooth the baby on an as needed basis without an adult manually activating it.
As to claim 12, modified Evans discloses the device of claim 11, wherein the device is configured to turn on where the microphone M is activated by a sound (see Adachi, col. 3, ln. 1-35).
Claims 1, 13, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Tseng (US 2005/0124921), in view of Williams (US 6,475,171).
As to claim 1, Williams discloses a device 3 (Fig. 1) for soothing a baby (the massager is capable of use with a baby and thus fulfills the intended use limitation), comprising: a housing 12 (Fig. 2); a plurality of elements 20 movably disposed within the housing 12 (Fig. 3, col. 3, ln. 23-25), but does not disclose that the plurality of elements are rotating elements each comprising a gear portion and a massaging element attached to the gear portion; wherein a motor is disposed within the housing and configured to rotate the gear portions of the plurality of rotating elements to enable rotating movement of the massaging elements.
However, Tseng teaches a massaging device (Fig. 1, 2A, 2B) configured to be housed in a cushion 5 (see Fig. 5, paragraph [0024]), the device including a plurality of rotating elements 4 each comprising a gear portion 25-28 and a massaging element 4 attached to the gear portion 26; and a motor 3 disposed within the device housing 5 (Fig. 5) and configured to rotate the gear portions 26 of the plurality of rotating elements to enable rotating movement of the massaging elements 4 (see Fig. 1, Fig. 5, paragraphs [0019]-[0020],[0024]).
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to modify the device of Williams to replace the massaging elements 20 with the motor and gear-driven rotatable massage elements 4, as taught by Tseng, in order to provide a suitable known alternative type of massage means that would perform equally well to massage and relax the back of the user.
As to claim 13, modified Williams discloses the device of claim 1, further comprising at least one retractable clip 35 (hanger 31 includes end pieces 35 which clip the shoulder straps 5A to the bar 34 within the gaps 35B, see Fig. 8, col. 4, ln. 56-66).
As to claim 15, Williams discloses a system 3 (Fig. 1) for soothing a baby (the massager is capable of use with a baby and thus fulfills the intended use limitation), comprising: a soothing device 3 comprising a plurality of moving elements 20 (Fig. 3, col. 23-25) and an apparel component 12, 5, 6 configured to receive the soothing device (the massager 3 is received within housing 12 and is worn on the user’s back via straps 5 and belt 6, see Fig. 1, col. 3, ln. 10-22), but does not disclose that the plurality of moving elements are rotating elements each comprising a gear portion and a massaging element attached to the gear portion; and a motor configured to rotate simultaneously move gear portions to enable rotational movement of the massaging elements.
However, Tseng teaches a massaging device (Fig. 1, 2A, 2B) configured to be housed in a cushion 5 (see Fig. 5, paragraph [0024]), the device including a plurality of rotating elements 4 each comprising a gear portion 25-28 and a massaging element 4 attached to the gear portion 26; and a motor 3 disposed within the device housing 5 (Fig. 5) and configured to rotate the gear portions 26 of the plurality of rotating elements to enable rotating movement of the massaging elements 4 (see Fig. 1, Fig. 5, paragraphs [0019]-[0020],[0024]).
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to modify the device of Williams to replace the massaging elements 20 with the motor and gear-driven rotatable massage elements 4, as taught by Tseng, in order to provide a suitable known alternative type of massage means that would perform equally well to massage and relax the back of the user.
As to claim 16, Zou discloses the system of claim 15, wherein the apparel component includes a padded pocket configured to receive the soothing device (housing 12 includes padding 15 and receives the back massager 3 within it, see Fig. 1, col. 2, ln. 63 – col. 3, ln. 2 and col. 3, ln. 23-25).
As to claim 17, Zou discloses the system of claim 15, wherein the soothing device comprises at least one retractable clip 35 (hanger 31 includes end pieces 35 which clip the shoulder straps 5A to the bar 34 within the gaps 35B, see Fig. 8, col. 4, ln. 56-66).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Helwig (US 6,968,806), in view of Tseng (US 2005/0124921).
As to claim 18, Helwig discloses a method for soothing a pet (animal soothing system, col. 1, ln. 14-18), comprising the steps of: providing a soothing device 11 including a housing 10 (bedding structure, see Figs. 1-3, col. 3, ln. 46-58), providing a pet (see Fig. 1 showing a dog); placing the soothing device 11 on the pet (through the bedding structure 10 of Fig. 1, or a wearable item of Fig. 12); and operating the soothing device 11, whereby the pet is massaged and soothed (col. 5, ln. 4-30 and col. 2, ln. 22-32).
Helwig does not disclose that the soothing device includes a plurality of rotating elements movably disposed within the housing, each of the rotating elements comprising a gear portion and a massaging element attached to the gear portion, and a motor disposed within the housing and configured to rotate the gear portions of the plurality of rotating elements to enable rotating movement of the massaging elements.
However, Tseng teaches a soothing device (massage device, Fig. 1, 2A, 2B) configured to be placed in a massage bed or cushion 5 (see Fig. 5, paragraph [0024]), the device including a plurality of rotating elements 4 movably disposed within a housing 5, each of the rotating elements 4 comprising a gear portion 25-28 and a massaging element 4 attached to the gear portion 26; and a motor 3 disposed within the device housing 5 (Fig. 5) and configured to rotate the gear portions 26 of the plurality of rotating elements to enable rotating movement of the massaging elements 4 (see Fig. 1, Fig. 5, paragraphs [0019]-[0020],[0024]).
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to modify the device of Helwig to replace the sensation producing device with the motor and gear-driven rotatable massage elements 4, as taught by Tseng, in order to provide a suitable known alternative type of soothing device that can deliver soothing tactile sensations/massage to the user.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hunt (US 4,979,502) discloses a massage device incorporated into various wearable components.
Pistay (US 5,344,437) discloses a massage device incorporated into a pillow.
Ramey (US 4,257,408) discloses a massage device incorporated into a cushioned structure such as a teddy bear.
Shoemaker (WO 2010/003010 A2) discloses an infant soothing pad having a massage device within a pocket of the pad.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE L WOODWARD whose telephone number is (571)270-1479. The examiner can normally be reached on Monday - Friday 8:30 am - 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KENDRA CARTER can be reached on 571-272-9034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VALERIE L WOODWARD/Primary Examiner, Art Unit 3785