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 .
Claim Objections
Claims 2-7 and 15-20 are objected to because of the following informalities:
Claim 2, line 1, recites “According to claim 1, a swinging massage device, characterized in that:” but Examiner suggests --The swinging massage device of claim 1, is further characterized in that:-- for clarity.
Claims 3-7 and 15-20 can be amended in a similar manner.
Claim 2, line 3 recites “an opening” but should recite --the opening--.
Claims 3 and 4, line 4, “are rotary connection” should read --are in rotary connection--.
Appropriate correction is required.
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 1-20 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.
Claim 1, line 3, recites the limitation "the output shaft". There is insufficient antecedent basis for this limitation in the claim.
Claim 1, line 7, recites the limitation "the eccentric position". There is insufficient antecedent basis for this limitation in the claim.
Claim 1, line 11, recites the limitation "the rotation". There is insufficient antecedent basis for this limitation in the claim.
Claims 2-20 inherit the same deficiencies.
Claim 5, line 2, recites the limitation "the housing". There is insufficient antecedent basis for this limitation in the claim.
Claims 12 and 19 inherit the same deficiencies.
Claims 8-14, line 1, recite the limitation " A massager, characterized in that: it includes any one of the swinging massage devices". The term “it” is indefinite and the preceding claims only recite a singular swinging massage device, so “any one of the swinging massage devices” renders the claim indefinite.
Claims 15-20 inherit the same deficiencies.
Claims 8-14, line 2, recite the limitation “it further includes a massage stick” which renders the claims indefinite because it is not clear what “it” is referring to, the massager or the swinging massage stick.
Claims 15-20 inherit the same deficiencies.
Claims 15-20, lines 2-3, recite the limitation “the casing of the massage stick” which renders the claim indefinite because the preceding claims recite “a silicone casing” so it is unclear if the limitation is referencing a casing that lacks antecedent basis or the silicone casing.
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.
Claim(s) 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanbar (US 20150148592 A1).
Regarding claim 1, Kanbar discloses a swinging massage device (Figure 1, Abstract), characterized by comprising a casing with an opening (Figure 3, “200”), wherein the casing is internally installed with a motor (Figure 21, “500”, Paragraph [0094]), a screw (Figure 21, “505”), a gear (Figure 21, “510”), a crank (Figure 21, “511”), a connecting rod (Figure 21, “560”), and a tongue (Figure 21, “570”); the output shaft of the motor is connected to the screw, which engages with the gear for transmission (Figure 21, Paragraph [0094], the shaft “501” of the motor is inserted into the bore of the screw “505”); one end of the gear is connected to the casing for rotation, while the other end is connected to the crank (Figure 21, one end of gear “510” connects to the housing “521”, the other connects to the crank “511”); the eccentric position of the crank is connected to one end of the connecting rod through a crank arm (Figure 21); the other end of the connecting rod is connected to the tongue, which is assembled with the casing through a pivot and extends outside the opening of the casing (Figures 21-23); the connecting rod moves back and forth with the rotation of the crank, driving the tongue to swing or rotate back and forth (Paragraph [0108]).
Regarding claim 2, Kanbar further discloses the casing comprises a first casing and a second casing (Figure 11), the first casing is snap-fitted with the second casing (Paragraph [0092], Figure 14), and both the first and second casings have notches at their junction to form an opening for the tongue to extend out (Figures 3-5).
Regarding claims 3 and 4, Kanbar further discloses the tongue comprises a tongue body (Figure 21 “570”), a pivot sleeve (Figure 34, “566”), and a connecting part (Figure 34, “561”), which are integrally formed (Figure 34); wherein, the connecting part is connected to the connecting rod via a connecting pin (Figure 39 shows two screws which connect the two sides of the tongue, one side the connecting part, the other with the part with the connecting rod), the pivot sleeve and the pivot are rotary connection (Figures 21-23), and the tongue body extends outward from the opening of the casing in a tongue shape (Figures 21-23).
Regarding claim 5, Kanbar further discloses swinging massage device, characterized in that: the gear is rotationally connected with the housing through a bearing (Paragraph [0094], Figure 22, cylindrical bearing “512” connects the gear to the housing).
Regarding claim 6, Kanbar further discloses the motor adopts a DC motor (Paragraph [0008]).
Regarding claim 7, Kanbar further discloses that the crank is integrally formed with the crank arm (see fig. 21), the connecting rod is connected with the crank arm through the connecting pin (see fig. 21, pin 513), and the crank is connected with the gear through the fixing screw (see fig. 22, screw 505 is between the two components in the same way applicant’s screw 202 connects gear 203 and crank 205).
Regarding claims 8-14, which are dependent on claims 1-7 (See rejections for claims 1-7 supra) respectively, Kanbar further discloses a massage stick (Figure 2, the body of the device is stick like), which is assembled with the massage device through a silicone casing (Figure 2, massage head “400” is formed by silicone rubber, Paragraph [0078] and covers the tongue body “570” of Figures 21-23).
Regarding claim 15-20, which are dependent on claims 8-13 (See rejections for claims 8-13 supra) respectively, Kanbar further discloses the casing of the massage stick is equipped with a battery (Figure 19, “586a”, “586b”) and a control board (Paragraph [0107]), which is electrically connected to the motor and controlled by a switch ((Paragraph [0107], Figure 2, “585”).
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 7, 8, 10-14, and 15 of U.S. Patent No. US 12,295,899 B1 in view of Kanbar (US 20150148592 A1). Patent 12,295,899 recites a massager in claim 1, wherein the dependent claims 10-14, read on claims 1, 3, 5-7 of the instant application. Patent 12,295,899, claim 1, discloses the massage stick and claim 15 discloses a silicone shell, which read on claims 8, 10, and 12-14 of the instant application.
Regarding claim 2, Patent 12,295,899 discloses the casing comprises a first casing and a second casing, and both the first and second casings have notches at their junction to form an opening for the tongue to extend out in claims 8 and 10 but does not disclose the first casing is snap-fitted with the second casing. Kanbar discloses the first and second casing are snap fitted (Paragraph [0092]). It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the massager as taught by Patent 12,295,899, with the first and second casing are snap fitted as taught by Kanbar, since such a modification would provide the predictable results of maintaining alignment between the first and second casings when they are coupled to one another (Kanbar, Paragraph [0092]).
Claims 4 and 9 of the instant application are dependent on claim 2, and the limitations of claims 4 and 9 are disclosed in claims 1 and 11 of Patent 12,295,899.
Claim 11 of the instant application is dependent on claim 4 and the limitations of claim 11 are disclosed in claims 1 and 11 of Patent 12,295,899.
Regarding claims 15 and 17-20 of the instant application, Patent 12,295,899 discloses the casing of the massage stick is equipped with a battery and a control board, which is electrically connected to the motor in claim 7, but does not disclose control by a switch. Kanbar discloses the massager is controlled by a switch (Paragraph [0107], Figure 2, “585”). It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the massager as taught by Patent 12,295,899, with the massager being controlled by a switch as taught by Kanbar, since such a modification would provide the predictable results of allowing user to control the speed of the massager (Kanbar, Paragraph [0107]).
Claim 16 of the instant application is dependent on claims 2 and 9. Regarding claim 16, Patent 12,295,899, as modified by Kanbar with respect to claim 2, discloses the casing of the massage stick is equipped with a battery and a control board, which is electrically connected to the motor in claim 7, but does not disclose control by a switch. Kanbar discloses the massager is controlled by a switch (Paragraph [0107], Figure 2, “585”). It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the massager as taught by modified Patent 12,295,899, with the massager being controlled by a switch as taught by Kanbar, since such a modification would provide the predictable results of allowing user to control the speed of the massager (Kanbar, Paragraph [0107]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Cao (US 12290487 B1), Leonard (US 5470303 A), Lu (US 12285377 B1), Wang (US 12178773 B1), and Yan (US 12064386 B1) disclose massage sticks with a tongue massager. He (US 11369545 B1) and Wu (US 11633327 B1) disclose a tongue massager.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Marc D Honrath whose telephone number is (571)272-6219. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles A Marmor II can be reached at (571) 272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES A MARMOR II/Supervisory Patent Examiner
Art Unit 3791
/M.D.H./Examiner, Art Unit 3791
