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
Claim 3 is objected to because of the following informalities: Line 2 reads “said out foam layer”, which examiner suggests changing to “said outer foam layer” to maintain consistency. 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 1-8 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 recites the limitation "said heat shield" in line 7. There is insufficient antecedent basis for this limitation in the claim. As best understood, examiner interprets that the heat shield should actually be the heat reflecting layer based on the drawings and specification of the invention. Therefore, examiner suggests changing the limitation to “said heat reflecting layer”.
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.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Lamothe (US 20220192916 A1) in view of Venezia (US 20180049941 A1) and ‘798 (KR 20080000798 U).
Regarding claim 1, Lamothe teaches a portable heated roller for therapeutic exercise (Fig. 1), comprising: an inner core housing (Fig. 5, inner console 28) containing energy storage components and electronic control components (paragraph 51 “the inner console (28) is hollow and defines an inner cavity (30) housing one or more of a circuit board (32) comprising a microcontroller, one or more function buttons associated with selected applications and corresponding indicators that indicate the functions associated with the function buttons, a battery (38), a rotary motor (40), and a cooling fan (not shown)”); a heating component layer surrounding said core (paragraph 63 “In the various embodiments, the heating pads (56) are mounted on the entirety or a portion of the outer surface (34) of the inner console (28) (FIG. 5)”); wherein said heating component layer is comprised of
an outer heating element layer (wherein 56 is a heating element layer); and an outer solid foam layer surrounding said heating component layer (paragraph 74 “the heating pads (56) are held in place by being sandwiched or pressed between the inner console (28) and the body (10) of the cordless foam roller (1)”; see Fig. 5 where body 10 of the foam roller surrounds heating component layer 56), said outer foam layer having external shapes and features (paragraph 47 “The body (10) is substantially cylindrically-shaped having an exterior surface (20) which is textured along at least a portion or the entirety of the body (10)”; see Fig. 2 showing the external shapes and features).
Lamothe is silent on an inner foam layer surrounding said inner core.
However, Venezia teaches an analogous roller (Fig. 1) with an inner foam layer surrounding said inner core (see Fig. 5; paragraph 27 “Over support 30 a layer of foam 10 is placed. The foam layer 10 can be attached with an adhesive to support 30 and goes around the outside of support 30”).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing
date of the claimed invention to have modified the product of Lamothe to include an inner foam layer surrounding said inner core for the purpose of absorbing the impact of the user and protecting the components within the inner (Lamothe paragraph 27).
Modified Lamothe is silent on a middle heat reflecting layer surrounding said inner foam and wherein the heating element layer surrounds said heat reflecting layer.
However, ‘798 teaches a massaging roller (Fig. 1) with a middle heat reflecting layer surrounding an inner insulative material (page 6 “a thermal insulation material (20) and a silver foil (30) sequentially arranged on the outer surface of the main body (10) to block heat conduction”; see Fig. 2 where 30 is a heat reflecting layer surrounding insulating material 20, which is analogous to the inner foam layer of modified Lamothe as described above) and wherein the heating element layer surrounds said heat reflecting layer (see Fig. 2; page 6 “A planar heating element 40 arranged on the outer surface of the silver foil 30 to generate heat”).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing
date of the claimed invention to have modified the product of Lamothe to include a middle heat reflecting layer surrounding said inner foam and wherein the heating element layer of Lamothe now surrounds said heat reflecting layer for the purpose of improving the heat distribution of the roller and prevent any loss of the generated heat (page 7 paragraph 1“to double the heating effect, while simultaneously blocking heat from leaking out toward the main body (10)”).
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Lamothe (US 20220192916 A1) in view of Venezia (US 20180049941 A1) and ‘798 (KR 20080000798 U) as applied above and in further view of DiPeri (US 12502331 B1).
Regarding claim 2, modified Lamothe teaches the roller of claim 1.
‘798 further teaches wherein said heat reflecting layer is a heat reflector (page 7 paragraph 1 “The silver foil 30 reflects the heat emitted from the planar heating element 40”).
Lamothe further teaches wherein said outer foam layer external shapes and features include peaks and valleys (Fig. 2 where there are peaks and valleys on the outer foam layer caused by the shape and texture of 22).
Modified Lamothe is silent wherein said inner foam layer is thicker than said outer foam layer.
However, DiPeri teaches a roller (Fig. 1) with an inner foam layer thicker than said outer foam layer (col. 3 ln 55-60 “The outer portion 12 may be or comprise a cylinder of foam (e.g., elastic or compliant foam) or other suitable material that forms an exterior surface of the roller 10. The inner portion 14 may be or comprise a cylinder of foam (e.g., “rigid” foam, polystyrene foam, or the like) positioned interior to the outer portion 12”; Fig. 3 where 14 is thicker than 12).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing
date of the claimed invention to have modified the product of Lamothe to include an inner foam layer thicker than said outer foam layer for the purpose of increasing the force absorption of the inner foam layer since a thicker layer would reasonably absorb more impact and provide greater protection.
Regarding claim 3, modified Lamothe teaches the roller of claim 2.
DiPeri further teaches wherein said inner foam layer has a different density from said out foam layer (col. 3 ln 55-60 “The outer portion 12 may be or comprise a cylinder of foam (e.g., elastic or compliant foam) or other suitable material that forms an exterior surface of the roller 10. The inner portion 14 may be or comprise a cylinder of foam (e.g., “rigid” foam, polystyrene foam, or the like) positioned interior to the outer portion 12” wherein elastic foam reasonably has a different density than rigid foam).
Regarding claim 4, modified Lamothe teaches the roller of claim 3.
Lamothe further teaches said heating element layer is comprised of an electrical multi-path structure having one or more resistive paths (paragraph 74 “In the various embodiments, the inner console (28) is lined with one or more heating pads (56) which are positioned along the length of the exterior surface (34) or a portion thereof of the inner console (28)” wherein multiple heating pads would create a plurality of resistive paths) for electrical current to travel through (paragraph 77 “In the various embodiments, the electrical current run through the wires (36) or the heating pads (56) which subsequently emit heat”).
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Lamothe (US 20220192916 A1) in view of Venezia (US 20180049941 A1), ‘798 (KR 20080000798 U) and DiPeri (US 12502331 B1) as applied above and in further view of Rocklin (US 20170020774 A1).
Regarding claim 5, modified Lamothe teaches roller of claim 4.
Lamothe further teaches wherein one or more ends of said portable roller has a structure (Fig. 2, end caps 16 and 18; see also paragraph 46).
Modified Lamothe is silent wherein the ends specifically have an open-ended dome structure.
However, Rocklin teaches an analogous roller (Fig. 1) with one or more ends of said portable roller has an open-ended dome structure (Fig. 1, endcaps 120 and 125; paragraph 56 “Thus, the roller apparatus 100 may have endcaps 120, 125 at or near one or both ends”).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing
date of the claimed invention to have substituted the end structures of Lamothe for the open-ended dome structures of Rocklin for the same purpose of sealing the portable roller and protecting the electrical components within the inner core.
Regarding claim 6, modified Lamothe teaches the roller of claim 5.
Lamothe further teaches wherein one or more of said open ended dome structures provide access to user controls (Fig. 3 and 5, where buttons 42, 44, 46, and 50 are user control buttons as taught in paragraph 60; paragraph 67 “In the various embodiments, the second end cap (18) comprises a ring and a transparent lid mounted thereon. In the various embodiments, the ring is formed of a thermoplastic polymer. In the various embodiments, the thermoplastic polymer comprises ABS. In the various embodiments, the transparent lid is formed of plastic or glass. Having a transparent lid over the circuit board (32) allows the user to select the desired settings for heat and vibration”); and one or more of said open ended dome structures provide access to inner core energy re-charging components (Fig. 4, charge port 60 within end structure 16; paragraph 58 “In the various embodiments, the charge port (60) may be provided within the first end cap (16) to facilitate recharging of the battery (FIG. 4)”).
Regarding claim 7, modified Lamothe teaches roller of claim 2.
Lamothe further teaches wherein one or more ends of said portable roller has a structure (Fig. 2, end caps 16 and 18; see also paragraph 46).
Modified Lamothe is silent wherein the ends specifically have an open-ended dome structure.
However, Rocklin teaches an analogous roller (Fig. 1) with one or more ends of said portable roller has an open-ended dome structure (Fig. 1, endcaps 120 and 125; paragraph 56 “Thus, the roller apparatus 100 may have endcaps 120, 125 at or near one or both ends”).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing
date of the claimed invention to have substituted the end structures of Lamothe for the open-ended dome structures of Rocklin for the same purpose of sealing the portable roller and protecting the electrical components within the inner core.
Regarding claim 8, modified Lamothe teaches the roller of claim 7.
Lamothe further teaches wherein one or more of said open ended dome structures provide access to user controls (Fig. 3 and 5, where buttons 42, 44, 46, and 50 are user control buttons as taught in paragraph 60; paragraph 67 “In the various embodiments, the second end cap (18) comprises a ring and a transparent lid mounted thereon. In the various embodiments, the ring is formed of a thermoplastic polymer. In the various embodiments, the thermoplastic polymer comprises ABS. In the various embodiments, the transparent lid is formed of plastic or glass. Having a transparent lid over the circuit board (32) allows the user to select the desired settings for heat and vibration”); and one or more of said open ended dome structures provide access to inner core energy re-charging components (Fig. 4, charge port 60 within end structure 16; paragraph 58 “In the various embodiments, the charge port (60) may be provided within the first end cap (16) to facilitate recharging of the battery (FIG. 4)”).
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 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 11,951,063 (hereinafter ‘063) in view of ‘798 (KR 20080000798 U). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are made obvious by the combination of the cited patent and ‘798.
Regarding claim 1, ‘063 teaches a portable heated roller for therapeutic exercise, comprising: an inner core housing containing energy storage components and electronic control components; a heating component layer surrounding said core; wherein said heating component layer is comprised of an inner foam layer surrounding said inner core and an outer heating element layer surrounding said heat shield; and an outer solid foam layer surrounding said heating component layer, said outer foam layer having external shapes and features (see ‘063 claim 1).
‘063 further teaches a middle heat shield layer (claim 1).
‘063 does not teach a middle heat reflecting layer surrounding said inner foam.
However, ‘798 teaches a massaging roller (Fig. 1) with a middle heat reflecting layer surrounding an inner insulative material (page 6 “a thermal insulation material (20) and a silver foil (30) sequentially arranged on the outer surface of the main body (10) to block heat conduction”; see Fig. 2 where 30 is a heat reflecting layer surrounding insulating material 20, which is analogous to the inner foam layer of modified Lamothe as described above) and wherein the heating element layer surrounds said heat reflecting layer (see Fig. 2; page 6 “A planar heating element 40 arranged on the outer surface of the silver foil 30 to generate heat”).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing
date of the claimed invention to have modified the product of ‘063 to substitute the middle heat shield layer for the middle heat reflecting and shielding layer of ‘798 for the same purpose of shielding the heat from the inner core (page 7 paragraph 1 “while simultaneously blocking heat from leaking out toward the main body (10)”) and for the purpose of improving the heat distribution and efficiency of the roller (page 7 paragraph 1 “This silver foil (30) reflects the heat emitted from the planar heating element (40) toward the cover (60) to double the heating effect, while simultaneously blocking heat from
leaking out toward the main body (10)”).
Regarding claim 2, modified ‘063 teaches claim 1.
‘063 further teaches the said inner foam layer is thicker than said outer foam layer and said outer foam layer external shapes and features include peaks and valleys (claim 2).
‘798 further teaches wherein said heat reflecting layer is a heat reflector (page 7 paragraph 1 “The silver foil 30 reflects the heat emitted from the planar heating element 40”).
Claims 3-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,951,063 (hereinafter ‘063) in view of ‘798 (KR 20080000798 U) as applied above and in further view of DiPeri (US 12502331 B1). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated and/or made obvious by the cited patent and combination with ‘798 and DiPeri.
Regarding claim 3, modified ‘063 teaches claim 2.
‘063 does not teach the invention of claim 3.
However, DiPeri teaches wherein said inner foam layer has a different density from said out foam layer (col. 3 ln 55-60 “The outer portion 12 may be or comprise a cylinder of foam (e.g., elastic or compliant foam) or other suitable material that forms an exterior surface of the roller 10. The inner portion 14 may be or comprise a cylinder of foam (e.g., “rigid” foam, polystyrene foam, or the like) positioned interior to the outer portion 12” wherein elastic foam reasonably has a different density than rigid foam).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing
date of the claimed invention to have modified the product of ‘063 to include an inner foam layer has a different density from said out foam layer for the purpose of increasing the force absorption of the inner foam layer since a denser layer would reasonably absorb more impact and provide greater protection for the foam layer that is closer to the inner.
Regarding claim 4, ‘063 teaches the disclosed invention (claim 3).
Regarding claim 5, ‘063 teaches the disclosed invention (claim 4).
Regarding claim 6, ‘063 teaches the disclosed invention (claim 5).
Regarding claim 7, ‘063 teaches the disclosed invention (claim 6).
Regarding claim 8, ‘063 teaches the disclosed invention (claim 7).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AKHIL A JAYAN whose telephone number is (571)272-6099. The examiner can normally be reached Monday-Friday 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, Kendra Carter can be reached at 5712729034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AKHIL A JAYAN/Examiner, Art Unit 3785
/KENDRA D CARTER/Supervisory Patent Examiner, Art Unit 3785
Prosecution Insights