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 .
Information Disclosure Statement
The information disclosure statement filed 04/18/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. In this case, DE 10038445 A1, is not accompanied by a translation. It has been placed in the application file, but the information referred to therein has not been considered.
The information disclosure statement filed 04/18/2024 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because US2009011992 was not found and US20180199689 is a duplicate entry. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following feature(s) must be shown:
Claim 2: The first section of this claim states, "...wherein said first protrusion and said second protrusion each comprise second portions configured to protrude from a second portion of said concave surface...". This is not supported by the current figures in the disclosure (Figs. 38 - 41). Both embodiments of protrusions (refer to Fig. 38, Paragraph [0080]; 115Pi and 115Pii; refer to Fig. 41 and Paragraph [0088] for alternative embodiment with protrusions 215Ai and 215Aii) protrude from a set of points on the concave surface, not multiple points or sections. Further, Fig. 41 shows that the second portions of 215Ai and 215Aii disclosed in Paragraph [0088] do not protrude from a second portion of the concave surface, but are rather different sections of the same protrusion.
Claim 3: This claim states that there is an obtuse angle with respect to an axis of the shaft and an axis of the filing bit. Figs. 33-33 and Paragraph [0082] of the disclosure do not support an obtuse angle being shown, only an acute angle is shown and described.
Claim 5: This claim also states that there is an obtuse angle with respect to an axis of the shaft and an axis of the filing bit; however, Figs. 33-33 and Paragraph [0082] of the disclosure do not support an obtuse angle being shown, only an acute angle is shown and described.
The above feature(s) must be shown or canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
186, as shown in Figs. 18-19
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Paragraph [0080], "The motor may have a shaft with a coupler 131", should be corrected to add the relevant drawing number for this feature (130).
The use of the term VELCRO ® in Paragraph [0080], which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Objections
Claims 1, 2, 5, and 6 objected to because of the following informalities:
Claim 1, lines 13-14 state, "a first protrusion and a second protrusion each configured to protrude from a first portion of said concave surface". Examiner recommends removing the "configured to" portion of this limitation, as structure of the housing is being described, not the intended use of the protrusions of the housing.
Claim 2, lines 1-2 state, “said first protrusion and said second protrusion each comprise second portions configured to protrude from a second portion of said concave surface”. Examiner recommends removing the "configured to" portion of this limitation, as structure of the housing is being described, not the intended use of the protrusions of the housing.
Claim 5, lines 1-2 state, “said obtuse angle between the axis of said motor and the axis of said shaft is configured to position the filing bit at an acute angle...”. Examiner recommends amending the claim language to, “said filing bit is configured to be positioned at an acute angle with respect to a tip of the corresponding toenail”, removing the reference to the obtuse angle, as the obtuse angle is not performing the function, the filing bit, which is at an obtuse angle, is performing the function.
Claim 6, line 1 should be amended to correct “a handle” to “the handle”.
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 2, 5 and dependent claims 3-4, and 6-8 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 2 recites, “said first protrusion and said second protrusion each comprise second portions”; however, claim 1, which claim 2 depends on, does not cite a first portion of the protrusions, or where the first portion of the protrusions contacts the toe. Rather, claim 1 states that both protrusions contact a first top portion of the toe. For examination purposes, Examiner is interpreting the second portions of the protrusions as any portion of the protrusion configured to contact a top portion of the toe in the second grooming position.
Claim 5 recites the limitation "obtuse angle between the axis of said motor and axis of said shaft" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim, as claim 3, which first recites the obtuse angle, states “the filing bit at an obtuse angle with respect to an axis of the shaft”. For examination purposes, Examiner is interpreting the obtuse angle of both claims 3 and 5 as an obtuse angle between the filing bit and an axis of the shaft.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pao et al. (US 20220395070 A1) in view of Fiorenza et al. (US 4016890 A).
Regarding claim 1, Pao et al. discloses a toenail groomer (100) comprising (refer to Paragraph [0166]):
a shaft (1010);
a handle (refer to annotated Fig. 46 below); said handle configured to be grasped by a hand of a user to manipulate said toenail groomer (refer to Paragraph [0166], Fig. 46 ; Fig. 46 shows the handle portion being grasped by a user, further the shaft (1010) is mounted to be gripped like an old-style pistol); and
a grooming head (1030), said grooming head (1030) comprising:
a housing (1030H);
wherein said shaft (1010) is mounted to a portion of said housing (1030H) (refer to annotated Fig. 46 below);
a motor (833; refer to Paragraph [0166]; the nail groomer (1000) is formed substantially similar to another embodied nail groomer (800)) and a coupler (refer to Paragraph [0168]; a releasable coupling arrangement is disclosed), said coupler being configured to couple to a portion of a filing bit (1035), and said motor being configured to rotate the coupler and the filing bit to abrade a portion of the toenail (refer to Paragraphs [0149], [0168]; a releasable coupling arrangement for coupling the filing bit to the motor is used; wherein the motor (833) is configured to rotate the filing bit); and
wherein said housing (1030H) comprises:
a concave surface (refer to Paragraph [0167], annotated Fig. 46 below; the second housing portion (1030Hii) is slightly curved upward, having a very large radius of curvature); and
wherein the concave surface (1030Hii) is configured to contact a first top portion of one toe of the user at a first toenail groomer position, to align an axis of the filing bit with an axis of the corresponding toenail of the one toe, when the filing bit is proximal to the corresponding toenail (refer to Paragraph [0167], Figs. 47-48; the exterior surface of the housing (1030Hii) is formed to rest upon a top of the foot of the user, positioning the filing bit in proximity to the user’s toenail, and aligning the axis of the filing bit (1035X) to the tip of the toenail).
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Pao et al. does not disclose the concave surface comprising a first protrusion and a second protrusion.
Fiorenza et al. discloses a power driven fingernail file (10) in the same filed of endeavor (col. 1, lines 5-6) comprising a first protrusion (20) and a second protrusion (21) positioned on opposite sides of the filing bit (117), said first protrusion (20) and said second protrusion (21) being spaced apart a distance configured to contact a first top portion of one toe of the user at a first toenail groomer position, to align an axis of the filing bit (117) with an axis of the corresponding toenail of the one toe, when the filing bit is proximal to the corresponding toenail (refer to col. 2, lines 29-33, annotated Figs.1, 2 below; the lower wall sections (20 ,21) are shaped such that the top of the fingernail (13) rests on these sections (20, 21) while contacting the abrading member (117), thereby aligning the fingernail (13) with an axis of the filing bit (117); although a fingernail is disclosed, the device is capable of being used to also contact a toenail). The curved walls (20, 21) act as positioning guides and guards (refer to col. 1, lines 47-53).
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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 concave surface (1030Hii) of the grooming head (1030) as taught by Pao et al. with first (20) and second protrusions (21) spaced on opposite sides of the filing bit (117) as taught by Fiorenza et al., as Fiorenza et al. teaches the protrusions (20, 21) act as positioning guides and guards (refer to col. 1, lines 47-53).
Regarding claim 2, Pao et al. and Fiorenza et al. disclose the toenail groomer according to claim 1, with Pao et al. further disclosing wherein when said toenail groomer (1000) is rotated from a second toenail groomer position to said first toenail groomer position, said housing (1030H) is repositioned to move the filing bit (1035) proximity to the corresponding toenail (refer to Paragraphs [0166], [0167], Fig. 24; the ergonomic shape of the second housing portion(1030Hii) is configured to rest upon the top of the foot of the user (second toenail groomer position), then be positioned in proximity to the user’s toenail when the handle is grasped by the user (first groomer position); in order to position the filing bit (1035) on the toenail in the first groomer position, from a distal position in which the housing portion (1030ii) is resting on the top portion of the foot, groomer (1000) is rotated towards the toe) and permits pivoting of the toenail groomer (1000) upon the one toe to abrade the corresponding toenail of the one toe from a first side of an edge of the corresponding toenail across to a second side of the edge of the corresponding toenail (refer to annotated Fig. 47 below; the groomer (1000) is capable of being pivoted from side to side to reach the edges of the toe, by placing the concave surface (1030Hii) on the top of the toe and performing the necessary motion).
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Pao et al. does not disclose the first and second protrusions contacting a second top portion of the toe.
Fiorenza et al. further discloses wherein said first protrusion (20) and said second protrusion (21) each comprise second portions (bottom of 20, 21; refer to annotated Figs. 1, 4 below) configured to protrude from a second portion of the surface (refer to annotated Fig. 4 below; the second portion protrudes from a lower portion of the surface), said second portions of said first and second protrusions (bottom of 20, 21) being configured to contact a second top portion of the one toe of the user at a second toenail groomer position, to align an axis of the filing bit with an axis of the corresponding toenail of the one toe, when the filing bit (117) is distal from the corresponding toenail of the one toe (refer to annotated Fig. 1 below: while in use and in a first grooming position, the top portion of the curved walls (20, 21) contacts the fingernail (13); tilting the groomer (10) away from the fingernail (13) such that the fingernail (13) is no longer in contact with the file bit (117), while maintaining contact with the finger (13A) results in the second, bottom portions of the first (20) and second (21) protrusions contacting the fleshy top portion of the finger (13A); although a fingernail is disclosed, the device is capable of being used to also contact a toenail). Fiorenza et al. teaches that the protrusions (20, 21) act as positioning guides for filing the nail (refer to col. 1, lines 47-53).
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 concave surface (1030Hii) as taught by Pao et al. with the protrusions (20, 21) as taught by Fiorenza et al to position or align the nail to the filing bit in multiple grooming positions (117).
Further, as Pao et al. discloses that the nail groomer (1000) is designed to be used in the obtuse angle configuration as shown in Fig. 47 (refer to Paragraph [0166]), it would be obvious to one of ordinary skill in the art to modify the positioning of the protrusions on the concave surface to be used with the obtuse angle configuration, such that the first portions of the protrusions on the concave surface contact the nail in a first position and the second portions of the protrusions contact the fleshy portion of the toe in a second position, thereby still acting as positioning guides as taught by Fiorenza et al (refer to col. 1, lines 47-53).
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Regarding claim 3, Pao et al. and Fiorenza et al. disclose the toenail groomer according to claim 2, with Pao et al. further disclosing wherein an axis of said motor is configured to support the axis of the filing bit (1035X) at an obtuse angle with respect to an axis of said shaft (1010X) (refer to Paragraph [0166]; the nail groomer (1000) may be configured to have an axis (1035X) of the filing bit (1035) oriented at an obtuse angle Θ with respect to an axis (1010X) of the shaft (1010)).
Regarding claim 4, Pao et al. and Fiorenza et al. disclose the toenail groomer according to claim 3, with Pao et al. further disclosing wherein a length of said shaft (1010) is configured to position the filing bit (1035) in proximity to the corresponding toenail of the one toe when said handle (refer to annotated Fig. 46 above) is grasped and manipulated by the user, to permit filing of the corresponding toenail (refer to Paragraphs [0151], [0167], Fig. 24; the shaft portion (810) of the alternative embodiment (800) is analogous to the previously mentioned shaft (1010); the length is configured for positioning the filing bit (1035) to the toe when the handle is grasped).
Regarding claim 5, Pao et al. and Fiorenza et al. disclose the toenail groomer according to claim 4, with Pao et al. further disclosing wherein said obtuse angle between the axis of said motor (1035X; refer to Paragraphs [0148], [0166]the axis of the motor is understood as being coincident with the axis of the file as shown in annotated Fig. 40 below, further alternative nail groomer (800) is formed similar to the mentioned nail groomer (1000)) and the axis of said shaft (1010X) is configured to position the filing bit at an acute angle with respect to a tip of the corresponding toenail (refer to Paragraph [0167]).
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Regarding claim 6, Pao et al. and Fiorenza et al. disclose the toenail groomer according to claim 5, with Pao et al. further disclosing wherein said a handle (refer to annotated Fig. 46 above) is fixedly secured to said shaft (1010) (refer to Paragraph [0147]; for analogous embodiment (800) the shaft portion (810) and the handle portion (820) may be formed as separate parts that may be fixedly secured together).
Regarding claim 7, Pao et al. and Fiorenza et al. disclose the toenail groomer according to claim 5, wherein said handle (refer to annotated Fig. 46 above) and said shaft (1010) are integrally formed as a single unitary part (refer to Paragraph [0147]; for analogous embodiment (800) the shaft portion (810) and the handle portion (820) may be formed as a single unitary part).
Regarding claim 8, Pao et al. and Fiorenza et al. disclose the toenail groomer according to claim 5, wherein said motor (833) of said toenail groomer (1000) is configured to be powered by one or more rechargeable batteries (refer to Paragraph [0148]; for analogous embodiment (800) rechargeable batteries are used to power the device); and
wherein said toenail groomer (1000) comprises: a USB recharging socket (refer to Paragraph [0148]; for analogous embodiment (800) the grooming head (830) has a USB C port (834) for easy recharging of those batteries).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adriena J Webb Lyttle whose telephone number is (571)270-7639. The examiner can normally be reached Mon - Fri 8:00-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached at (571) 270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADRIENA J WEBB LYTTLE/Examiner, Art Unit 3772
/THOMAS C BARRETT/SPE, Art Unit 3799