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 .
Response to Arguments
Applicant’s arguments filed 04/21/2026 have been fully considered but are moot in view of new grounds of rejection.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Great Britain (GB) on 01/12/2023. It is noted, however, that applicant has not filed a certified copy of the GB2300486.4 application as required by 37 CFR 1.55.
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 1-3 and 5-20 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.
In re claim 1, the limitation, “the geometry of the subject’s skin” lacks antecedent basis.
In re claim 2, the limitation, “the skin contact surface faces outwardly” is unclear regarding whether this is directed to one of the skin contact surfaces of a first or second projection, or if it is directed to both the skin contact surfaces from the respective first and second projections. For examination purposes, the limitation, “the skin contact surface faces outwardly” is interpreted as being directed to the skin contact surface from the first projection and the skin contact surface from the second projection.
In re claim 15, see in re claim 2 above.
In re claim 17, see in re claim 1 above.
Claim Rejections - 35 USC § 102
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 1-3, 5-8, 10-12, and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boll et al. (US 2016/0310756).
In re claim 1, Boll discloses a skin treatment device [0001, 0083] comprising:
a housing (fig. 23: exterior of 400 and 550) having an output window (fig. 23: opening comprising 454);
a light source ([0047]: 300 is an applicator for applying treatment and can be a light based energy source)
housed within the housing (fig. 23) and
configured to discharge light energy pulses transmittable through the output window and onto a subject’s skin [0047];
a control system ([0054]: controller controls energy delivered to applicator 300) configured to control the light source to deliver the light energy pulses ([0053-0054]: controller controls delivery of energy delivered; [0047]: light based energy sources are used; [0055]); and
projections (fig. 23: left and right projections 450; [0083-0084]) projecting outwardly from the housing relative to the output window (fig. 23),
wherein
a first projection of the projections has a skin contact surface (fig. 23: one of the 750 on a projection) and carries a sensor ([0084]: adjustable mask and chin rests include contact sensors; fig. 23: each projection includes chin rest 750 with contact sensors 460) and a
second projection of the projections has a skin contact surface (fig. 23: chin rest 750 on the second projection) and carries a sensor (see above), and
at least the first and second projections are each at least partially moveable from a rest position (fig. 23: projections being pushed apart from one another to create a relatively larger unmasked portion 454A) to a deflected position (fig. 23: projections being pushed together to create a relatively smaller unmasked portion 454B) such that each partially moveable projection deflects to accommodate the geometry of the subject’s skin (fig. 23; [0083-0084]);
*the first and second projections deflect independently of one another (fig. 23: each of the projections may move independently of one another to accommodate different sizes; [0083-0084]); and
the control system is further configured to receive one or more sensor outputs from the sensor of at least one of the projections ([0054]: controller receives contact information from contact sensors 305), and
based on one or more of the sensor outputs, control the discharge of the light energy pulses onto the subject’s skin ([0054]: contact sensors must confirm contact before energy is delivered; [0047]).
*Regarding the limitation, “the first and second projections deflect independently of one another”, Examiner asserts that the recited limitations is a recitation of functional language of the claimed invention.
The recitation of functional language must result in a structural difference between the claimed
invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If
the prior art structure is capable of performing the functional language, then it meets the claim.
In this case, only one of the first and second projections may be moved to accommodate the size of a treatment area, resulting in the first and second projections being capable of moving independently of one another; see MPEP § 2114 (I) and In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432).
In re claim 2, Boll discloses wherein the skin contact surface faces outwardly from at least the first and second projections (fig. 23: both skin contact surfaces 750 face outwardly from the projections).
In re claim 3, Boll discloses wherein the sensor of at least the first and second projections are each retained by the projection (fig. 23: each of the sensors of the projections are held by their respective projections) and are further held in a fixed position relative to the skin contact surface (fig. 23: each of the sensors of the projections are held in a fixed position on their respective skin contact surfaces).
In re claim 5, Boll discloses wherein at least the first and second projections extend around an entirety of the output window (fig. 23: first and second projections cover entire top portion of the output window).
In re claim 6, Boll discloses wherein the sensor of the first projection and the sensor of the second projection are carried on diametrically opposing first and second sides of the output window (fig. 23: sensors are directly on opposite sides of the output window; [0084]).
In re claim 7, Boll discloses wherein:
the output window comprises
a length dimension (fig. 23: top and bottom of the window 454) and
a width dimension (fig. 23: left and right sides of the window 454);
the length dimension is greater than the width dimension (fig. 23); and
the length dimension extends between two of the projections (fig. 23).
In re claim 8, Boll discloses wherein:
at least the first and second projections are arranged to be received into corresponding openings in the housing (fig. 23: projections 450 can move into a relatively smaller unmasked portion 454B configuration which would move them into relative corresponding openings of the housing to accommodate the projections);
each received projection in the rest position extends outwardly from the opening (fig. 23: projections being pushed apart from one another as shown by the 454A configuration would cause them to extend outwardly from the opening); and
each received projection in the deflected position is at least partially withdrawn into the opening (fig. 23: projections being pushed together to create a relatively smaller unmasked portion 454B would cause them to be at least partially withdrawn into the opening).
In re claim 10, Boll discloses wherein at least the first and second projections are each biased to the rest position by biasing arrangement (fig. 23: when the projections are set to the 454A configuration, they would be biased to stay in that configuration).
Additionally, regarding the limitations, “wherein at least the first and second projections are each biased to the rest position by biasing arrangement”, Examiner asserts that the recited limitations is a recitation of functional language of the claimed invention.
The recitation of functional language must result in a structural difference between the claimed
invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If
the prior art structure is capable of performing the functional language, then it meets the claim.
In this case, the projections would be biased to stay in the current configuration that they are set in, resulting in the first and second projections being capable of being configured to be biased to the rest position; see MPEP § 2114 (I) and In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432).
In re claim 11, Boll discloses wherein:
the housing has a forward contact surface for contacting the subject’s skin (fig. 23: top surfaces of 750);
the output window is defined in the forward contact surface (fig. 23); and
the forward contact surface is at least partially convex (fig. 23: top surfaces of 750 are at least partially convex).
In re claim 12, Boll discloses wherein at least the first and second projections comprise a unitary projection (fig. 23: exterior 450 of each projections is a unitary projection).
In re claim 17, regarding the limitations, “a skin treatment device for delivery of light energy pulses to a subject’s skin, the skin treatment device comprising:
a housing having an output window;
a light source housed within the housing for discharging light energy pulses transmitted through the output window onto the subject’s skin;
a control system for controlling discharge of the light source to deliver the light energy pulses; and
at least a first projection and a second projection,
each of the projecting outwardly from the housing relative to the output window, and
each of the projections having a skin contact surface and carrying a sensor;
wherein:
each projection is at least partially moveable from a rest position to a deflected position such that each projection deflects to accommodate the geometry of the subject’s skin;
the first and second projections deflect independently of one another; and
the control system is arranged to receive one or more sensor outputs from the sensor of at least one of the projections, and
based on one or more of the sensor outputs, control the discharge of the light energy pulses onto the subject’s skin”,
see in re claim 1 above.
In re claim 18, Boll discloses wherein at least one of:
the control system is arranged to receive one or more sensor outputs from the sensor of each projection (see in re claim 1 above), and based on the one or more of the sensor outputs, control the discharge of the light energy pulses onto the subject’s skin (see in re claim 1 above);
the skin contact surface faces outwardly from each projection (see in re claim 2 above); or
the sensor of each projection
is retained by the projection (see in re claim 3 above) and
is further held in a fixed position relative to the skin contact surface (see in re claim 3 above).
In re claim 19, Boll discloses wherein at least one of:
the sensor of the first projection and the sensor of the second projection are carried on diametrically opposing first and second sides of the output window (see in re claim 6 above);
the output window comprises a length dimension and a width dimension (see in re claim 7 above),
the length dimension greater than the width dimension (see in re claim 7 above), and
the length dimension extending between two of the projections of the one or more projections (see in re claim 7 above);
each projection is arranged to be received into a corresponding opening in the housing (see in re claim 8 above),
each projection in the rest position extending outwardly from the opening (see in re claim 8 above), and
each projection in the deflected position being at least partially withdrawn into the opening (see in re claim 8 above);
each projection is rigid;
each projection is biased to the rest position by a biasing arrangement (see in re claim 10 above);
each projection comprises a unitary projection (see in re claim 12 above);
each projection is pivotally mounted to the housing; or
each projection is elastically deformable and arranged to conform to the geometry of the subject’s skin.
In re claim 20, Boll discloses wherein at least one of:
the housing has a forward contact surface for contacting the subject’s skin (see in re claim 11 above),
the output window defined in the forward contact surface (see in re claim 11 above), and
the forward contact surface being at least partially convex (see in re claim 11 above);
each projection is pivotally mounted to the housing,
the skin contact surface of each pivotally mounted projection comprising a leading edge and a trailing edge,
the leading edge projecting further outwardly from the housing in the rest position; or
each projection is elastically deformable and arranged to conform to the geometry of the subject’s skin,
each elastically deformable projection comprising an elastomeric material.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Boll et al. (US 2016/0310756) in view of Bock (US 2015/0313993).
In re claim 9, Boll fails to disclose wherein at least the first and second projection are rigid.
Bock teaches a skin treatment device (fig. 5: 80; [0004, 0037]) comprising a projection (fig. 5: applicator head 90 is interpreted as a projection; [0042]), wherein the projection is rigid ([0048]: projection may be may of rigid material).
Bock further teaches that the projection may be either rigid or semi rigid [0048] depending on which surface the projection is applied to [0048].
It would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify both of the projections of Boll, to provide wherein at least the first and second projection are rigid, as taught by Bock, because the projection may be either rigid or semi rigid depending on which surface the projection is applied to.
Claims 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Boll et al. (US 2016/0310756) in view of McGuire (US 2012/0303102).
In re claim 13, Boll discloses wherein at least the first and second projections are pivotally mounted to the housing.
McGuire teaches an analogous light treatment device [0001] wherein a projection ([0045]: reflecting surface 900; fig. 9; see also fig. 8) comprises a shutter (902; [0045]) which is pivotally mounted to a housing (fig. 8: exterior of 800 is interpreted as a housing and embodiment shown in fig. 9 would also have a housing; [0045]: shutter 902 is mounted via hinge 910).
McGuire further teaches that the shutter can be used to substantially cover a reflecting surface 900 (fig. 9; [0045]) during an alarm condition [0045], which can be based on a predetermined level set by a user [0045].
The proposed combination would yield wherein each of the projections of Boll comprise a shutter that is engaged during an alarm condition so that the shutters can cover the window 454 of Boll when needed, as taught by the shutter in McGuire.
This would yield wherein at least the first and second projections are pivotally mounted to the housing.
It would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify both of the projections of Boll, to provide wherein at least the first and second projections are pivotally mounted to the housing, as taught by McGuire, because doing so allows the skin treatment device of Boll to react to an alarm condition by covering the window of treatment when needed.
In re claim 15, the proposed combination yields (all mapping is directed to Boll unless otherwise stated)
wherein the skin contact surface of the first and second projections comprise
a leading edge (fig. 23: far left side of left skin contact surface and far right side of right skin contact surface are interpreted as leading edges) and
a trailing edge (fig. 23: far right side of left skin contact surface and far left side of right skin contact surface are interpreted as trailing edges); and
the leading edge projects further outwardly from the housing in the rest position (fig. 23: leading edge is higher than the trailing edge).
Claims 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Boll et al. (US 2016/0310756) in view of Beerwerth et al. (US 2010/0063565).
In re claim 14, Boll fails to disclose wherein at least the first and second projections are
elastically deformable and
arranged to conform to the geometry of the subject’s skin.
Beerwerth teaches an analogous skin treatment device [0001]
wherein a projection (fig. 3b: 10; [0032]) is
elastically deformable ([0032]: elastic ring structure comprising of skin part 12, which is made of rubber, would be elastically deformable) and
arranged to conform to a geometry of a subject’s skin [0032] and
wherein the projection comprises an elastomeric material ([0032]: rubber).
Beerwerth further teaches that the elastic skin part 12 together with a hollow cavity 15 (fig. 3b) provides good local compressibility [0032] and conforms to strongly curved parts of a user's anatomy [0032].
The proposed combination would yield wherein both the first and second projections of Boll comprise of an elastomeric material, are elastically deformable, and are arranged to conform to a geometry of a subject’s skin.
It would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify both of the projections of Boll, to provide wherein a projection is elastically deformable and arranged to conform to a geometry of a subject’s skin and wherein at least the first and second projections comprise an elastomeric material, as taught by Beerwerth, because doing so provides good local compressibility and conforms to strongly curved parts of a user's anatomy.
In re claim 16, regarding the limitation, “wherein at least the first and second projections comprise an elastomeric material”, see in re claim 14 above.
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.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUMAISA R BAIG whose telephone number is (571)270-0175. The examiner can normally be reached Mon-Fri: 8am- 5pm.
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, David Hamaoui can be reached at (571) 270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUMAISA RASHID BAIG/Examiner, Art Unit 3796
/DAVID HAMAOUI/SPE, Art Unit 3796
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