DETAILED ACTION
Election/Restrictions
The Examiner has withdrawn the previous restriction requirement. All claims will be examined and no claims are currently withdrawn.
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 “compression spring between the base and the carriage” of claims 3 and 13 and the track “cross ribs” of claims 10 and 20 must be shown or the feature(s) 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.
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 8 and 18 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. The term “generally” in claims 8 and 18 is a relative term which renders the claim indefinite. The term “generally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 11 is rejected under 35 U.S.C. 101 because
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 11 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Restated, claim 11 encompasses a human organism because it positively claims with the steps: 1) a user, 2) a thumb, and 3) a figures. The Examiner suggests that applicant amend claim 11 using “configured to” language consistent with claim 1. For example, -- wherein is configured to be grasped by a user by a thumb of one hand under the base and fingers over the carriage and manipulating the apparatus by repetitive pinching motions between the thumb and fingers--. This will remove the positive recitation of a user, thumb, and fingers from claim 11.
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.
Claims 1-3, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Levin et al. (herein “Levin”; US Pat. No. 6,605,048 B1).
Regarding claim 1 and 11, Levin discloses a tactile calming apparatus (Fig. 19; noting this is merely intended use), comprising: a base (Fig. 19, below); a vertical column extending orthogonally from the base (Fig. 19, below), the vertical column having indented tracks on opposite sides along the height of the column (Fig. 19, below), a carriage riding on bearings in the indented tracks (Fig. 19, below; the Examiner construing “bearing” broadly to be any structure providing a bearing surface; noting the “bearings” are within the indented track; noting dictionary.com defines “bearing” as “a support or guide for sliding”); and a spring adapted to provide a force against the carriage in a direction away from the base (Fig. 19, below); wherein a user is enabled to grasp the apparatus by a thumb of one hand under the base and fingers over the carriage, and manipulates the apparatus by repetitive pinching motions between the thumb and fingers reducing a distance between the base and the carriage (Fig. 12 to 11; clearly showing this). Regarding claim 11, Levin, as identified above, anticipates both the structure and the method of use as clearly shown in Figs. 19 below, 11 and 12.
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Regarding claim 2 and 12, Levin discloses that the spring is a tension spring tethered at one end at an upper region of the column above the carriage, and at an opposite end to the carriage (see Fig. 19 above; the Examiner construing this broadly based on the relative position of the spring within the apparatus).
Regarding claim 3 and 13, Levin discloses that the spring is a compression spring positioned between the base and the carriage providing a spring force against the carriage directed away from the base (see Fig. 19 above; the Examiner construing this broadly based on the relative position of the spring within the apparatus).
Claim Rejections - 35 USC § 103
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 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.
Claims 5-8 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Levin et al. (herein “Levin”; US Pat. No. 6,605,048 B1).
Regarding claim 5 and 15, Levin discloses that the base is circular platform rounded at the top and bottom edges for comfort (Fig. 1 and 19 above). It is noted that Levin does not specifically disclose that the base is ergonomic cushioned. However, regarding making the base ergonomic, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). In addition, regarding making the base cushioned, it has been held that the selection of a known material based on its suitability for its intended use is obvious. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that making the base ergonomic would not be significant: that is, the base would still allow for pushing by the thumb regardless of its exact shape. In addition, it would have been obvious to a person of ordinary skill in the art at the time of filing that making the base cushioned would be obvious based on its suitability for its intended purpose: that is, the base would be repeated pressed on by the thumb, so making it cushioned would alleviate thumb soreness.
Regarding claim 6 and 16, Levin discloses that the underside of the base is
shaped to a user's thumb (Figs. 9 and 10; noting the Examiner construes this broadly as Figs. 9 and 10 clearly show that it is made to fit a user’s thumb, and without actually claiming a shape, the limitation carries little weight).
Regarding claim 7 and 17, Levin discloses that the carriage has wings on opposite sides shaped for a user's fingers (Figs. 9 and 10). It is noted that Levin does not specifically disclose that the wings are slope downward away from the column. However, regarding the exact shape of the wings, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that making the wings slope downward away from the column would not be significant: that is, the wings would allow the fingers to push the base toward it regardless of the exact shape of the wings.
Regarding claim 8 and 18, it is noted Levin does not specifically disclose the wings are radiused generally for a user's finger tips to prevent the fingers from slipping off the carriage. However, regarding the exact shape of the wings, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that making the wings slope downward away from the column would not be significant: that is, the wings would allow the fingers to push the base toward it regardless of the exact shape of the wings.
Claims 9 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Levin et al. (herein “Levin”; US Pat. No. 6,605,048 B1) in view of Mackelfresh et al. (herein “Mackelfresh”; US Pub. No. 2020/0238001 A1).
Regarding claims 9 and 19, it is noted that Levin does not disclose a tether
interface at an upper region of the column adapted to connect the apparatus to a lanyard,
a key ring, a necklace, or other personal item of a user to ensure the apparatus is always
at hand when needed. However, Levin generally discloses a syringe (Fig. 19 above). In addition, Mackelfresh discloses a syringe that has a tether interface (Fig. 1, item 16; noting “adapted to connect” is functionally language that is possible given the structure). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Levin to use a tether interface as taught by Mackelfresh because doing so would be use of a known technique (using a tether interface on a syringe) to improve a similar product (a syringe) in the same way (using a tether interface on a syringe, the tether interface allowing the syringe to be attached or hung on other objects).
Allowable Subject Matter
Claims 4 and 14 and 10 and 20 are 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. This indication of allowance of claim 14 and 20 assumes that applicant fixes the 101 issues with independent claim 11.
The prior art of record does not make obvious the limitations of claims 4, 14, 10, and 20. In addition, it would not have been obvious a POSA to modify a syringe to use roller bearings or cross ribs in conjunction with the roller bearings to produce a soft sound and feel.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached on (571)270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
1/15/26
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711