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 amendments
Applicant’s amendments filed 6/8/26 have been entered.
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.
Claim(s) 19, 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adair [US Pat. 5433221, previously cited].
Re. claim 19, Adair discloses a grip for a hand-held
a groove extending around a portion of the grip [see Fig. 8, groove in CC];
a portion [Annotated Fig. 7] configured to secure to a securing portion [14 and 16] of a disposable barrier [10],
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Wherein the securing portion comprises a ring [around 16, Fig. 8] configured to be received within the groove [Fig. 9],
wherein the disposable barrier includes a barrier bag portion [12] attached to the securing portion of the disposable barrier [Figs. 1A-B],
wherein the barrier bag portion is configured to extend away from the securing portion to cover a portion of the grip [Fig. 7]
wherein the barrier bag portion is configured to collapse towards the securing portion to uncover the portion of the grip, the tattoo machine secured to the grip, or a combination thereof [Col. 4 line 56-Col. 5 line 2]; and
wherein the securing portion is rotatably disposed within the groove such that the grip rotates independently of the barrier bag [at least in Fig. 8, the securing portion is rotatably disposed within the groove].
Re. claim 21, Adair the grip further comprises a receptable [in CC, annotated Fig. 9] for receiving [“a needle cartridge of the tattoo machine”: this is not a positively recited part of the invention. The grip receptacle receives a member and is thus capable of receiving a needle cartridge] and a different receptacle [for securing the grip to the tattoo machine is the intended use of the different receptacle, of which Adair’s device is capable].
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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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bonny et al. [US 2018/0200014 A1, hereinafter “Bonny” previously cited] in view of Nordgren et al. [US 2018/0310912 A1, hereinafter “Nordgren”].
Re claim 1, Bonny discloses a disposable barrier [drape 22, together with rings 24 and 28; see Figs. 2-3] for use with a grip [this is the intended use of the barrier. The barrier of Bonny may be used with a grip], comprising:
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a securing portion [portion of drape 22 including and in the vicinity of 24] comprising a ring [24] configured to secure within a groove positioned on the grip and extending around the circumference of the grip [Fig 1, Par. 0031: “After the second ring 24 is at the base 16 of the robotic system 10, the second ring 24 may be attached to a base drape 26 to create a base seal.” Note that the grip is not a positively recited element in claim 1 and structure relating to the grip is thus not limiting of the claimed invention. Because the securing portion is ring-shaped, it is capable of being secured to a groove on a grip.];
wherein the ring is rotatably disposed within the groove [24 is a “rotationally unconstrained ring” Par. 0026, and thus is rotatably disposed on the “grip.” Regarding the groove, this is not a positively recited part of the claim. The ring is capable of being placed in a groove and would, according to its structure, thus be rotatably disposed in that groove],
and
a barrier bag portion [22] attached to the securing portion,
wherein the barrier bag portion is configured to extend away from the securing portion to cover a portion of the grip, the tattoo machine secured to the grip, or a combination thereof [Fig. 1. Note that the tattoo machine is not a positively recited part of the invention. A machine is covered, and thus a tattoo machine is capable of being covered], when the disposable barrier is in an open configuration [Fig. 1], and wherein the barrier bag portion is configured to collapse towards the securing portion when the disposable barrier is in a closed configuration [Fig. 3, Par. 0030],
wherein the ring is capable of being rotatably disposed within the groove enabling the grip to rotate independently of the disposable barrier while the disposable barrier protects the tattoo machine [the disposable barrier is configured to spin around independently of the grip Par. 0030, thereby enabling the grip to adjust freely while the disposable barrier is protecting the machine. The tattoo machine is not positively recited. The barrier of Bonny is capable of such use].
Bonny fails to disclose the securing portion comprising an annular space, and wherein the barrier bag is configured to collapse and reside within the annular space.
However, Nordgren discloses, for a sterile cover for a medical device, a barrier bag portion [105, Figs. 4-6] and a securing portion [410]; the securing portion further comprising an annular space [Annotated Fig. 5]; wherein the barrier bag is configured to collapse and reside within the annular space [Fig. 4, Par. 0030].
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Bonny by configuring the securing portion to have an annular space, wherein the bag is configured to collapse and reside within the annular space, as taught by Nordgren, in order to aid in the deployment of the device [Par. 0029].
Re claim 2, Bonny discloses the securing portion of the disposable barrier is configured to prevent ink back flow from a cartridge needle attached to the grip from entering the tattoo machine [the securing portion is configured to prevent “contaminants” from infiltrating the robot, Par. 0004. The securing portion, when used with a tattoo machine, would prevent ink back flow from a needle from entering the tattoo machine. Because the machine itself is not a positively recited part of the invention, specifics of the machine, needle, and grip do not lend patentable distinction].
Re claim 4, Bonny discloses the securing portion is configured to be
Re. claim 5, the grip is not a positively recited part of the claimed invention (the barrier). Thus, the structure of the grip does not lend patentable distinction. The invention of Bonny is capable of use with such a grip.
Re claim 6, Bonny discloses the barrier bag portion comprises a seal [hermetic seal provided in ring 28, Par. 0029] positioned proximate to a first end of the barrier bag portion located opposite to a second end of the barrier bag portion attached to the securing portion of the disposable barrier [Fig. 1].
Re claim 7, Bonny discloses the seal is configured to be sealed by a user of the disposable barrier [Par. 0029 describes the seal and Par. 0031 describes how the barrier is applied by a user. The barrier seal is also capable of being applied by a user.] to facilitate reduction of contamination of a tattoo machine covered by the disposable barrier [this is the intended result of the seal, and not given further patentable weight; however, the seal of Bonny is capable of such use].
Re claim 8, the modified Bonny discloses the securing portion is capable of being rotatably disposed within a groove such that the grip rotates freely about the securing portion and the barrier bag remains stationary while the grip rotates, thereby enabling a user to reposition the grip without disturbing the barrier bag portion protecting the tattoo machine [this is the intended use of the barrier. The barrier of Bonny is capable of such use at least because it is free to rotate about the machine, Par. 0030].
Re claim 9, Bonny discloses the disposable barrier comprises silicone, plastic, elastic material, or a combination thereof [plastic, Par. 0025].
Allowable Subject Matter
Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Adair does not disclose the claimed configuration, nor would it have been obvious to modify Adair by e.g. Nordgren to arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 6/8/26 have been fully considered but they are not persuasive. The examiner agrees that Bonny fails to disclose all the features of amended claim 1 but finds that they are obvious as set forth above. Ozkarsli is no longer applied due to claim amendments so argument against this reference are moot.
Applicant argues that Adair fails to teach a groove and ring arrangement. The examiner respectfully disagrees as set forth above. The ring is that around the circular opening of 16. The groove is a recess which receives the securing portion, see Fig 8-9.
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 ERIN MCGRATH whose telephone number is (571)270-0674. The examiner can normally be reached M-Th 9 am to 3 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JACKIE HO can be reached at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN MCGRATH/Primary Examiner, Art Unit 3771
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