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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claim 1 recites, “wherein the contact of said first portion of each of said first protrusion and said second protrusion with the top of the one toe supports at least a portion of a weight of said toenail groomer”. Applicant points to Paragraph [0004] and Fig. 38 as providing support for this limitation; however, the annotated drawings (Figs. 33-34) that Applicant is relying on show the toe supporting portion as supporting the weight of the device, not the user, and further, Paragraph [0004] states this as well (see page 15 of Remarks). Examiner recommends Applicant amend this functional limitation to be in line with the language of Paragraph [0004] of the specification.
Claim Objections
Claims 1 and 9 are objected to because of the following informalities:
Claim 1:
Line 13, “a first protrusion and a second protrusion each configured to protrude”, should be amended to, “a first protrusion and a second protrusion protruding”, as the limitation is structural, not functional.
Line 15, “a distance”, should be, “a first distance”, for consistency with dependent claim 2.
Claim 9:
Line 12, “a first protrusion and a second protrusion each configured to protrude”, should be amended to, “a first protrusion and a second protrusion protruding”, as the limitation is structural, not functional.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 2 and dependent claims 3-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 2 recites, “wherein said first protrusion and said second protrusion each comprise second portions”, which Applicant maps to the interior of the cradle feature (116) (see page 11 of Remarks). Even with the mapping supplied by Applicant, this embodiment is not supported as having defined second portions, as the secondary surface is not described in the specification as being a second portion of the protrusions (115Pi, 115Pii) (refer to Paragraphs [0082], [0085]). Rather, it appears that Applicant has mapped the amended claims to the drawings, rather than using support from the specification. The only part of the specification that clearly defines a first and second protrusion with first and second portions is the alternative embodiment of Fig. 41, described in Paragraph [0088], and these protrusions are parallel, not spaced apart by a second distance. Examiner recommends Applicant amend the claims to either match the embodiment of Fig. 41 (a first and second protrusion with first and second portions) or the embodiment of Fig. 38 (a first and second protrusion and secondary surface).
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) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pao et al. (US 20220395070 A1), herein Pao, in view of Christianson (US D450887 S).
Regarding claim 1, Pao discloses a toenail groomer (100) comprising (refer to Paragraph [0166]):
a shaft (1010);
a handle (refer to annotated Fig. 46 below); said handle (Refer to annotated Fig. 46 below) configured to be grasped by a hand of a user to manipulate said toenail groomer (1000) (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 Paragraphs [0148], [0166]; the nail groomer (1000) is formed substantially similar to another embodied nail groomer 800 which includes a motor 833 in the grooming head 830) and a coupler (refer to Paragraphs [0150], [0168]; a releasable coupling arrangement for coupling of the filing bit to the motor may be preferred), said coupler being configured to couple to a portion of a filing bit (1035) (refer to Paragraphs [0150], [0168]), and said motor (833) being configured to rotate the coupler and the filing bit (1035) 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 annotated Fig. 46 below) (refer to Paragraph [0167]; the ergonomic shape of the second shaped exterior surface on the second housing portion 1030Hii may be slightly curved); and
wherein the concave surface (refer to annotated Fig. 46 below) 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 (1035X) with an axis of the corresponding toenail of the one toe, when the filing bit (1035) is proximal to the corresponding toenail (refer to Paragraph [0167], Figs. 47-48; the second shaped exterior surface on the second housing portion 1030Hii is formed with an ergonomic shape configured to correspond to and rest upon a top of the foot of the user, resulting in a portion of the abrasive surface of the filing bit being positioned in proximity to the user's toenail);
wherein the contact of said concave surface (refer to annotated Fig. 46 below) with the top of the one toe supports at least a portion of a weight of said toenail groomer (refer to Paragraph [0027] ;)
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Pao does not disclose the concave surface comprising a first protrusion and a second protrusion each configured to protrude from aconcave surface, a first portion of said first protrusion and a first portion of said second protrusion being spaced apart a distance and configured to respectively contact a first top portion and a second top portion of one toe of the user at a first toenail groomer position.
Christianson discloses a tool for a nail care system in the same field of endeavor (refer to Description). The distal end of the tool housing includes a first protrusion and a second protrusion (refer to annotated Fig. 1 below), a first portion of said first protrusion and a first portion of said second protrusion being spaced apart a distance (refer to annotated Fig. 1 below; the tips of the first and second protrusions are the first portions).
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 bottom of the concave surface (1030Hii) of Pao, analogous to the distal end of the tool housing of Christianson, with spaced apart protrusions (refer to annotated Fig. 1 below) as taught by Christianson, as this is a known design feature of nail care systems.
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As Pao teaches the concave surface (refer to annotated Fig. 46 above) configured to contact a first top portion of one toe of the user at a first toenail groomer position and support the weight of the user (refer to Paragraphs [0027], [0167]), the modification by Christianson yields a first and second protrusion each configured to protrude from said concave surface, wherein the contact of said first portion of each of said first protrusion and said second protrusion with the top of the one toe supports at least a portion of a weight of said toenail groomer.
Regarding claim 2, Pao and Christianson disclose the toenail groomer according to claim 1; Pao further discloses 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) into contact with the corresponding toenail (refer to Paragraphs [0166], [0167], Fig. 47; of note, Examiner understands this limitation as intended use; 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 to file the toenail as shown in Fig. 47 (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, the 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; of note, Examiner understands this limitation as intended use; 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 does not disclose wherein the first and second protrusions each comprise second portions contacting a second top portion of the toe said second portions of said first and second protrusions being spaced apart a second distance and configured to respectively contact a second third top portion and a fourth top portion of the one toe of the user at a second toenail groomer position.
Christianson further discloses the first and second protrusions each comprise second portions spaced apart a second distance (refer to annotated Fig. 1 below; the lower portions of the first and second protrusions are the second portions).
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 bottom of the concave surface (1030Hii) of Pao, analogous to the distal end of the tool housing of Christianson, with spaced apart protrusions (refer to annotated Fig. 1 below) as taught by Christianson, as this is a known design feature of nail care systems.
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As Pao teaches the concave surface (refer to annotated Fig. 46 above) configured to contact different top portions of the toe of the user when rotating the groomer (1000) from the second toenail groomer position to the first toenail groomer position (refer to Paragraphs [0166], [0167], Fig. 47; the groomer is configured to be placed to rest upon the foot of the user (second position), and then rotated to be in close proximity to the nail for filing (first position), thereby pushing the concave surface downwards towards different top portions of the toe). The modification by Christianson yields second portions of said first and second protrusions being configured to respectively contact a second third top portion and a fourth top portion of the one toe of the user at a second toenail groomer position, as the protrusions of the concave surface are also rotated from the second toenail groomer position to the first toenail groomer position, rotating the protrusions from an uppermost position on their tips, towards the rear, or second portions.
Regarding claim 3, Pao and Christianson disclose the toenail groomer according to claim 2; Pao further discloses wherein an axis of said motor is 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 and Christianson disclose the toenail groomer according to claim 3; Pao further discloses 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 and Christianson disclose the toenail groomer according to claim 4; Pao further discloses 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 (1035) 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 and Christianson disclose the toenail groomer according to claim 5; Pao further discloses wherein said [[a]] handle (refer to annotated Fig. 46 above) is fixedly secured to said shaft (1010) (refer to Paragraphs [0147], [0166]; 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 and Christianson disclose the toenail groomer according to claim 5; Pao further discloses wherein said handle (refer to annotated Fig. 46 above) and said shaft (1010) are integrally formed as a single unitary part (refer to Paragraphs [0147], [0166]; 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 and Christianson disclose the toenail groomer according to claim 5; Pao further discloses wherein said motor (833) of said toenail groomer (1000) is configured to be powered by one or more rechargeable batteries (refer to Paragraphs [0148], [0166]; 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 Paragraphs [0148], [0166]; for analogous embodiment (800) the grooming head (830) has a USB C port (834) for easy recharging of those batteries).
Regarding claim 9, Pao discloses a toenail groomer (100) comprising (refer to Paragraph [0166]):
a shaft (1010);
a handle (refer to annotated Fig. 46 below); said handle (refer to annotated Fig. 46 below) configured to be grasped by a hand of a user to manipulate said toenail groomer (1000) (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 Paragraphs [0148], [0166]; the nail groomer (1000) is formed substantially similar to another embodied nail groomer 800 which includes a motor 833 in the grooming head 830) and a coupler (refer to Paragraphs [0150], [0168]; a releasable coupling arrangement for coupling of the filing bit to the motor may be preferred), said coupler being configured to couple to a portion of a filing bit (1035) (refer to Paragraphs [0150], [0168]), and said motor (833) being configured to rotate the coupler and the filing bit (1035) 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 lower surface of said housing (1030Hii) configured to respectively contact a first top portion and a second top portion of one toe of the user, to align an axis of the filing bit (1035X) with an axis of the corresponding toenail of the one toe (refer to Paragraph [0167], annotated Fig. 47 below; the second shaped exterior surface on the second housing portion 1030Hii is formed with an ergonomic shape configured to correspond to and rest upon a top of the foot of the user, resulting in a portion of the abrasive surface of the filing bit being positioned in proximity to the user's toenail; each side of the lower surface is configured to contact a portion of the toe of the user);
wherein said contact of said lower surface of said housing (1030Hii) with the top of the one toe permits pivoting of the toenail groomer (1000) upon the one toe to abrade the corresponding toenail (refer to annotated Fig. 47 below; of note, Examiner understands this limitation as intended use; 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 side to side motion).
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Pao does not disclose a first protrusion and a second protrusion each configured to protrude from a lower surface of said housing (1030Hii), wherein a first portion of said first protrusion and a first portion of said second protrusion are spaced apart and configured to respectively contact a first top portion and a second top portion of one toe of the user, and wherein said contact of said first portion of each of said first protrusion and said second protrusion with the top of the one toe permits pivoting of the toenail groomer (1000) upon the one toe to abrade the corresponding toenail.
Christianson discloses a tool for a nail care system in the same field of endeavor (refer to Description). The lower surface of the tool housing includes a first protrusion and a second protrusion (refer to annotated Fig. 1 below), a first portion of said first protrusion and a first portion of said second protrusion being spaced apart (refer to annotated Fig. 1 below; the tips of the first and second protrusions are the first portions).
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 lower surface of the housing (1030Hii) of Pao with spaced apart protrusions (refer to annotated Fig. 1 below) as taught by Christianson, as this is a known design feature of nail care systems.
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As Pao teaches the lower surface of said housing (1030Hii) configured to contact first and second top portions of one toe of the user (refer to Paragraph [0167]), the modification by Christianson yields a first and second protrusion each configured to protrude from the lower surface of said housing (1030Hii) and contact first and second top portions of one toe of the user on each side of the lower surface of the housing (1030Hii), while permitting pivoting and alignment of the groomer (1000).
Regarding claim 10, Pao and Christianson disclose the toenail groomer according to claim 9; Pao further discloses wherein an axis of said motor is configured to support the axis of the filing bit (1035X) at an obtuse angle with 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 11, Pao and Christianson the toenail groomer according to claim 10; Pao further discloses Pao further discloses 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 12, Pao and Christianson the toenail groomer according to claim 11; Pao further discloses 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 (1035) at an acute angle with respect to a tip of the corresponding toenail (refer to Paragraph [0167]).
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Regarding claim 13, Pao and Christianson the toenail groomer according to claim 12; Pao further discloses wherein said handle (refer to annotated Fig. 46 above) is fixedly secured to said shaft (1010) (refer to Paragraphs [0147], [0166]; 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 14, Pao and Christianson the toenail groomer according to claim 12; Pao further discloses wherein said handle (refer to annotated Fig. 46 above) and said shaft (1010) are integrally formed as a single unitary part (refer to Paragraphs [0147], [0166]; for analogous embodiment (800) the shaft portion (810) and the handle portion (820) may be formed as a single unitary part).
Regarding claim 15, Pao and Christianson the toenail groomer according to claim 9; Pao further discloses wherein said motor (833) of said toenail groomer (1000) is configured to be powered by one or more rechargeable batteries (refer to Paragraphs [0148], [0166]; 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 Paragraphs [0148], [0166]; for analogous embodiment (800) the grooming head (830) has a USB C port (834) for easy recharging of those batteries).
Regarding claim 16, Pao and Christianson the toenail groomer according to claim 9; Pao further discloses wherein said shaft (1010) is releasably coupled to said grooming head (1030) (refer to Paragraphs [0154], [0166]; the shaft may be mounted to the first housing portion 1030Hi; analogous embodiment 800 details the end of the shaft portion may be inserted into the opening 830P in the grooming head to releasably couple the shaft portion 810 to the grooming head 830).
Response to Arguments
The outstanding objections of the IDS are withdrawn in view of the newly submitted IDS.
The outstanding claim objections are withdrawn in view of the newly submitted claim amendments.
The outstanding drawing and specification objections are withdrawn in view of the claim amendments and Applicant’s clarifying remarks (see pages 9-14 of Remarks).
The outstanding 112(b) rejections are withdrawn in view of the newly submitted claim amendments.
Applicant’s arguments with respect to claim(s) 1-8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant’s arguments are drawn to the use of Fiorenza (US 4016890) to modify Pao (US 20220395070 A1), while the current rejection relies on Pao modified by Christianson (US D450887 S).
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 Adriena J Webb Lyttle whose telephone number is (571)270-7639. The examiner can normally be reached Mon - Fri 10:00-7:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edelmira Bosques can be reached at (571) 270-5614. 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
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772
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