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 .
Status of the Claims
This office action is responsive to the amendment filed on 08/08/2026. As directed by the amendment: claims 1-19 have been canceled, and new claims 20-35 have been added. Thus, claims 20-35 are presently pending in the application.
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.
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Claims 20-22, 24-27, and 29-35 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 23-24 and 26 of co-pending Application No. 18/407,694 (referred as ‘694). Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding application claim 20, Application number No. 18/407,694 discloses a non-contact driven air wave massage device, comprising: a housing (As set forth in lines 1-3 of claim 23); at least one chamber (The air wave cylinder of ‘694 set forth in claim 23), the at least one chamber being provided with at least one opening leading to outside the device and at least one motion chamber (As set forth in lines 4-6 of claim 23 of ‘694; the air wave chamber of ‘694); a magnetic sliding portion (The magnetic air pressure valve member of ‘694) substantially sealed and slidably provided inside the at least one motion chamber (As set forth in lines 7-9), the magnetic sliding portion comprising at least one magnet or at least one component made of a magnetic attractive substance (The magnetically inducible element of claim 23 of ‘694); a driving mechanism (Magnetic driving mechanism of ‘694) located outside the at least one chamber (As set forth in lines 22-23 of claim 23 of ‘694, outside the waterproof barrier wall and therefore the chamber), the driving mechanism comprising a motor (As set forth in line 26 of claim 23), a connecting piece drivable by the motor (The eccentric driving element, driver member, and the connection link of ‘694 set forth in lines 24-30 of claim 23), and at least one driving magnet mounted on the connecting piece (The arc shaped driving magnets of claim 23, mounted on the driver member, which is a part of the connecting piece), the connecting piece being arranged along an outer wall of the at least one motion chamber (Arranged coaxially around the air wave cylinder as set forth in line 31 of claim 23); and a power source electrically connected to a control unit (As set forth in claim 26 of ‘694), wherein the control unit controls the driving mechanism such that the motor drives the connecting piece to move the at least one driving magnet to reciprocate relative to the outer wall of the at least one motion chamber, so as to apply magnetic forces to the magnetic sliding portion without contact and cause the magnetic sliding portion to reciprocate within the at least one motion chamber and generate air waves at the at least one opening (As set forth in claims 23 and 26 of ‘694, the motor driving the eccentric driving element, part of the connection piece of ‘694).
Claims 23-24 and 26 of ‘694 fail to explicitly disclose wherein the driving mechanism is fixedly connected to the housing.
However, ‘694 does teach the driving mechanism is positioned in said housing cavity (As set forth in claim 23).
It would be obvious to make the driving mechanism fixedly connected to the housing in addition to just being positioned within the housing to ensure it remains in a fixed position within the device.
Regarding application claim 21, Application number 18/407,694 as modified discloses the device
of claim 20 as set forth above.
Claims 23-24 and 26 of ‘694 further disclose, wherein the at least one driving magnet comprises a pair of driving magnets provided on the connecting piece (As set forth in claim 23 lines 31-33), and the magnetic sliding portion comprises a permanent magnet having an N pole and an S pole arranged in a radial direction of the at least one motion chamber, the pair of driving magnets being arranged to attract the permanent magnet in a direction close to the outer wall of the at least one motion chamber (As set forth in claim 24 of ‘694).
Regarding application claim 22, Application number 18/407,694 as modified discloses the device
of claim 20 as set forth above.
Claims 23-24 and 26 of ‘694 further disclose, wherein the connecting piece is cylindrical and movably sleeved on an outer wall of the at least one chamber (The driver member, part of the connecting piece, is arranged coaxially around said air wave cylinder in such a manner that the driving magnets are moved forward and backward as set forth in claim 23 of ‘694, meaning the driver member would have to be moveably sleeved).
Regarding application claim 24, Application number 18/407,694 as modified discloses the device
of claim 20 as set forth above.
Claims 23-24 and 26 of ‘694 further disclose, the device further comprising waterproof barrier walls positioned in the housing, wherein the at least one chamber is provided on one side of the waterproof barrier walls and the driving mechanism is provided on another side of the waterproof barrier walls (A waterproof barrier shell, constructed by one or more waterproof barrier walls, surround said air wave cylinder and the magnetic driving mechanism is provided outside said waterproof barrier shell and positioned in said housing cavity of said housing as set forth in lines 19-23 claim 23 of ‘694).
Claims 23-24 and 26 of ‘694 fail to explicitly disclose wherein the waterproof barrier walls are fixedly connected to the housing.
However, It would be obvious to make waterproof barrier walls fixedly connected to the housing in addition to just being positioned within the housing to ensure it remains in a fixed position within the device.
Regarding application claim 25, Application number 18/407,694 as modified discloses the device
of claim 20 as set forth above.
Claims 23-24 and 26 of ‘694 fail to explicitly disclose, wherein the at least one motion chamber is provided with limiting portions at two ends of a moving path of the magnetic sliding portion.
However, it would be obvious that at least one motion chamber is provided with limitation portions at two ends of a moving path of the magnetic sliding portion because one would reasonably expect that in order for the magnetic sliding portion to maintain reciprocating motion within the at least one motion chamber, some form of a limiting portion would have to exist at each side in order to maintain the magnetic sliding portion’s position within the motion chamber.
Regarding application claim 26, Application number 18/407,694 as modified discloses the device
of claim 20 as set forth above.
Claims 23-24 and 26 of ‘694 further disclose, wherein the magnetic sliding portion is provided with at least one sealing ring forming a sealing effect between the magnetic sliding portion and the at least one motion chamber (As set forth in lines 15-18 of claim 23, ring shaped given it’s arrangement mounted around said valve member body).
Regarding application claim 27, Application number No. 18/407,694 discloses a method of generating air waves with a massage device (The method associated with the device of claims 23-24 and 26 of ‘694), comprising: providing a chamber (The air wave cylinder of ‘694 set forth in claim 23) having at least one opening (As set forth in lines 4-6 of claim 23 of ‘694; the air wave chamber of ‘694) and a magnetic sliding member disposed in the chamber (The magnetic air pressure valve member of ‘694 as set forth in lines 7-9), the magnetic sliding member comprising at least one magnet or at least one component made of a magnetically attractive material (The magnetically inducible element of claim 23 of ‘694); positioning, outside the chamber, a magnetic drive member adjacent an outer wall of the chamber (Driver member of ‘694); operating an actuator (Magnetic driving mechanism of ‘694) located outside the chamber (As set forth in lines 22-23 of claim 23 of ‘694, outside the waterproof barrier wall and therefore the chamber) to move the magnetic drive member back and forth along the outer wall of the chamber; and magnetically coupling movement of the magnetic drive member through the outer wall to the magnetic sliding member, without mechanical contact between the magnetic drive member and the magnetic sliding member, thereby causing the magnetic sliding member to reciprocate within the chamber and vary an air volume and an air pressure in the chamber to generate air waves at the at least one opening (As set forth in claims 23 and 26 of ‘694, the motor driving the eccentric driving element, connected to the magnetic drive member of ‘694).
Regarding application claim 29, Application number 18/407,694 as modified discloses the device
of claim 27 as set forth above.
Claims 23-24 and 26 of ‘694 further disclose, wherein the magnetic drive member comprises at least one magnet (The arc shaped driving magnets of claim 23, mounted on the driver member) provided along a radial direction of the chamber and spaced from the magnetic sliding member (Driver member is arranged coaxially around said air wave cylinder in such a manner that said pair of arc-shaped driving magnets are symmetrically positioned opposite said permanent magnet as set forth in claim 23).
Regarding application claim 30, Application number 18/407,694 as modified discloses the device
of claim 27 as set forth above.
Claims 23-24 and 26 of ‘694 further disclose the method, further comprising retaining the chamber on an outer surface (Examiner’s note: “Outer surface” is being interpreted given it’s broadest reasonable interpretation and is being taken to mean the topmost layer of an obkect which would include the surface of the housing within the device given the surface of the housing within the device would still be it’s top most layer even within the device itself) of a housing (The airwave chamber is positioned within the device as set forth in lines 2-5 of claim 23) while the actuator is installed inside the housing (As set forth in lines 22-23 of claim 23).
Regarding application claim 31, Application number 18/407,694 as modified discloses the device
of claim 27 as set forth above.
Claims 23-24 and 26 of ‘694 further disclose, wherein the chamber is at least partially located in a space enclosed by one or more waterproof barrier walls (As set forth in lines 19-21 of claim 23), and the actuator is positioned on a side of the one or more waterproof barrier walls opposite the magnetic sliding member (The magnetic driving mechanism is provided outside said waterproof barrier shell and positioned in said housing cavity of said housing as set forth in lines 19-23 claim 23 of ‘694, which would be opposite the side of the magnetic sliding mechanism).
Regarding application claim 32, Application number 18/407,694 as modified discloses the device
of claim 27 as set forth above.
Claims 23-24 and 26 of ‘694 further disclose, the method further comprising communicating air through at least one air hole that opens into the chamber to reduce running resistance of the magnetic sliding member (The air hole being the portion of the device forming the opening as set forth above for claim 27, wherein it would be obvious to one of ordinary skill in the art that the if there were no hole/opening, the increase in air pressure caused on either side of the magnetic sliding member as it is moved would create resistance that wouldn’t be there if the air is able to communicate through the opening and hole according to the method as set forth for claim 27).
Regarding application claim 33, Application number 18/407,694 as modified discloses the device
of claim 27 as set forth above.
Claims 23-24 and 26 of ‘694 fail to explicitly disclose, wherein a cross-sectional area of the at least one opening is equal to or less than a cross-sectional area of the chamber.
However, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to make a cross-sectional area of the at least one opening is equal to or less than a cross-sectional area of the chamber in the device of ‘694 because Applicant has not disclosed that the specific ratio provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected the ratio of ‘694, and the instant application's ratio between cross-sectional areas, to perform equally well because both mechanisms perform the same function of delivering an air wave massage to the user at the opening wherein the magnetic sliding portion is housed in the chamber.
Therefore, it would have been prima facie obvious to modify Lin to obtain the invention as specified in claim 33, because such a modification is considered to be well within the skill level of the ordinary artisan in order deliver an air wave massage to the user and thus fails to patentably distinguish over the prior art of ‘694.
Regarding application claim 34, Application number 18/407,694 as modified discloses the device
of claim 27 as set forth above.
Claims 23-24 and 26 of ‘694 fail to explicitly disclose, limiting movement of the magnetic sliding member at first and second ends of a moving path within the chamber.
However, it would be reasonably expected that in order for the magnetic sliding member to maintain reciprocating motion within the chamber, some form of a limiting portion would have to exist at each side and end of the moving path in order to maintain the magnetic sliding portion’s position within the chamber and limit its movement.
Regarding application claim 35, Application number 18/407,694 as modified discloses the device
of claim 27 as set forth above.
Claims 23-24 and 26 of ‘694 further disclose, wherein the magnetic sliding member is substantially sealed relative to the outer wall of the chamber and slides along the chamber (As set forth in lines 15-18 of claim 23) while the magnetic drive member remains outside the chamber (As set forth in claim 23 of ‘694).
Claim 23 and 28 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 23-24 and 26 of co-pending Application No. 18/407,694 (referred as ‘694) in view of Sloan (US 20190350800 A1). Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding application claim 23, Application number 18/407,694 as modified discloses the device
of claim 20 as set forth above.
Claims 23-24 and 26 of ‘694 disclose wherein an eccentric driving element is arranged to be driven by said motor to rotate eccentrically about an axis of said motor to drive forward and backward movement of the driver member arranged coaxially around the air wave cylinder in a linear motion (As set forth in claim 23 of ‘694) and fails to explicitly disclose, wherein the motor comprises a linear motor including a stator and an actuator, and one end of the connecting piece is fixed on the actuator such that the at least one driving magnet is driven by the linear motor to reciprocate longitudinally near the outer wall of the at least one motion chamber.
However, Sloan teaches wherein linear actuation can be achieved using a linear motor including a stator and an actuator (Sloan: FIG. 10 A linear motor has a similar electromagnetic operation to a traditional DC motor, but with the stator 1010-1040 and rotor 1050 being “unrolled,” such that linear force is produced).
‘694 and Sloan are both considered to be analogous to the claimed invention because they are in the same field of motors for driving a device. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the configuration of the motor and connecting piece of ‘694 to incorporate the teaching of Sloan and include wherein linear actuation can be achieved using a linear motor including a stator and an actuator (Sloan: FIG. 10 A linear motor has a similar electromagnetic operation to a traditional DC motor, but with the stator 1010-1040 and rotor 1050 being “unrolled,” such that linear force is produced). Doing so would provide an alternative means for creating linear force (Sloan: As set forth in [0070]).
While the linear motor doesn’t drive an eccentric driving element to rotate eccentrically about an axis of the motor, they would both produce the linear motion required to drive the connecting piece to move the at least one driving magnet to reciprocate relative to the outer wall of the at least one motion chamber as required by the claims. In other words, the eccentric driving element, driver member, and the connection link of ‘694 the make up the connecting piece wouldn’t have to include an eccentrically driven element given the linear motor is creating linear motion with the need to convert a rotational motion using an eccentric element.
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to make the means for causing the linear motion required to drive the connecting piece in the device of ‘694 one caused by a linear motor because Applicant has not disclosed that the specific means for providing linear actuation provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected the means for linear actuation of modified ‘694, and the instant application’s, to perform equally well because both produce the linear motion required to drive the connecting piece to move the at least one driving magnet to reciprocate relative to the outer wall of the at least one motion chamber
Therefore, it would have been prima facie obvious to further modify ‘694 to obtain the invention as specified in claim 23, because such a modification is considered to be well within the skill level of the ordinary artisan in order to achieve the desired actuation and thus fails to patentably distinguish over the prior art of ‘694.
Regarding application claim 28, Application number 18/407,694 as modified discloses the device
of claim 27 as set forth above.
Claims 23-24 and 26 of ‘694 disclose wherein an eccentric driving element is arranged to be driven by said motor to rotate eccentrically about an axis of said motor to drive forward and backward movement of the driver member arranged coaxially around the air wave cylinder in a linear motion (As set forth in claim 23 of ‘694) and fails to explicitly disclose, wherein operating the actuator comprises operating a linear motor having a stator and a movable actuator, and moving the magnetic drive member by the movable actuator through a connecting piece.
However, Sloan teaches wherein linear actuation can be achieved using a linear motor including a stator and an actuator (Sloan: FIG. 10 A linear motor has a similar electromagnetic operation to a traditional DC motor, but with the stator 1010-1040 and rotor 1050 being “unrolled,” such that linear force is produced).
‘694 and Sloan are both considered to be analogous to the claimed invention because they are in the same field of motors for driving a device. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the configuration of the motor and connecting piece of ‘694 to incorporate the teaching of Sloan and include wherein linear actuation can be achieved using a linear motor including a stator and an actuator (Sloan: FIG. 10 A linear motor has a similar electromagnetic operation to a traditional DC motor, but with the stator 1010-1040 and rotor 1050 being “unrolled,” such that linear force is produced). Doing so would provide an alternative means for creating linear force (Sloan: As set forth in [0070]).
While the linear motor doesn’t drive an eccentric driving element to rotate eccentrically about an axis of the motor, they would both produce the linear motion required to drive the connecting piece to move the at least one driving magnet to reciprocate relative to the outer wall of the at least one motion chamber as required by the claims. In other words, the eccentric driving element, driver member, and the connection link of ‘694 the make up the connecting piece wouldn’t have to include an eccentrically driven element given the linear motor is creating linear motion with the need to convert a rotational motion using an eccentric element.
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to make the means for causing the linear motion required to drive the connecting piece in the device of ‘694 one caused by a linear motor because Applicant has not disclosed that the specific means for providing linear actuation provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected the means for linear actuation of modified ‘694, and the instant application’s, to perform equally well because both produce the linear motion required to drive the connecting piece to move the at least one driving magnet to reciprocate relative to the outer wall of the at least one motion chamber
Therefore, it would have been prima facie obvious to further modify ‘694 to obtain the invention as specified in claim 28, because such a modification is considered to be well within the skill level of the ordinary artisan in order to achieve the desired actuation and thus fails to patentably distinguish over the prior art of ‘694.
Response to Arguments
Applicant’s arguments with respect to the claims 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.
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 KEIRA EILEEN CALLISON whose telephone number is (571)272-0745. The examiner can normally be reached Monday-Friday 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kendra Carter can be reached at (571) 272-9034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEIRA EILEEN CALLISON/ Examiner, Art Unit 3785
/KENDRA D CARTER/ Supervisory Patent Examiner, Art Unit 3785
