Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
2. This office action is in response to the filing of the application on 12/06/2023. Since the initial filing, no claims have been amended, added, or canceled. Thus, claims 1-4 are pending in the application.
Specification
3. The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The following title is suggested: Applicant is suggested to change title of the invention to “Scalp Massaging Device” or something similar.
Claim Objections
4. Claims 2 and 4 are objected to because of the following informalities:
Regarding claim 2, the claim limitation “wherein said massaging device includes a massaging device intended to apply stimulation” (ln. 1-2) should read --wherein said massaging device is configured to apply stimulation-- for the sake of clarity.
Regarding claim 4, the claim limitation --allow a user to hold the body unit with one’s hand-- should read --allow a user to hold the body unit with a hand of the user--.
Appropriate correction is required.
Claim Interpretation
5. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
6. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Such claim limitation(s) is:
“drive means”: (claim 1 ln. 3)
A review of the specification appears to show insufficient corresponding structure for “drive means”:
“drive means”: “For a drive source of the drive means, use may be made of a battery etc., for instance. Further, a system for driving the stimulation units is not particularly limited, and hence, it may be possible also to incorporate a driving system similar to that of each existing massaging device set forth in the preceding column of BACKGROUND ARTS, for instance” (para. 21, pg. 4). This portion of the disclosure does not provide sufficient structure for the limitation “drive means.”
7. Additionally, this application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
“massaging device”: (claim 2, ln.1)
A review of the specification appears to show sufficient corresponding structure:
“massaging device”: “a body unit 2, a plurality of brush-like stimulation units 3 attached to a lower surface of the body unit 2, the stimulation units each having a plurality of dispersedly arranged protrusions 3a, and a drive means (not shown) for vibrating or oscillating the stimulation units 3 with respect to the body unit 2, wherein the body unit 2 and the stimulation units 3 are the same in basic form as those of the above comparative example” (para. 40, ln. 1-5).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
8. 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(s) 1-4 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.
Regarding claim 1, the specification lacks support for 35 U.S.C. 112(f) inciting claim limitation “drive means” (claim 1, ln. 3). A review of the specification finds “drive means” (claim 1, ln. 3) described as “For a drive source of the drive means, use may be made of a battery etc., for instance. Further, a system for driving the stimulation units is not particularly limited, and hence, it may be possible also to incorporate a driving system similar to that of each existing massaging device set forth in the preceding column of BACKGROUND ARTS, for instance” (para. 21, pg. 4). This description lacks proper structure to perform the action of “vibrating or oscillating said stimulation units with respect to said body unit” (claim 1, ln. 3). Therefore, applicant has failed to properly describe the claimed invention and prove they have possession of the claimed invention at the time of filing.
Claims 2-4 are rejected due to their dependence on a rejected base claim.
9. 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.
10. Claims 1-4 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.
Regarding claim 1, the claim limitation “drive means for vibrating or oscillating said stimulation units with respect to said body unit” (claim 1, ln. 3) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
A review of the specification finds “drive means” (claim 1, ln. 3) described as “For a drive source of the drive means, use may be made of a battery etc., for instance. Further, a system for driving the stimulation units is not particularly limited, and hence, it may be possible also to incorporate a driving system similar to that of each existing massaging device set forth in the preceding column of BACKGROUND ARTS, for instance” (para. 21, pg. 4). This description lacks proper structure to perform the action of “vibrating or oscillating said stimulation units with respect to said body unit” (claim 1, ln. 3).
Therefore, claim 1 is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 1 is additionally rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, due to use of claim limitation “low-frictional material” (claim 1, ln. 7). What constitutes a “low-frictional material” (e.g. what threshold of “friction” is required to be “low friction”) renders the claim indefinite. For purposes of examination, this claim is being interpreted to mean any materials which imparts low counter force to another object trying to slide across its surface. Additionally, the term “brush-like stimulation units” (ln. 1) is unclear as to what feature is required to make a stimulation unit brush “like.” For the purposes of examination, “brush-like stimulation units” will be interpreted as --brush stimulation units--. See MPEP 2173.05(b)(III)(E). Similarly, the term “sheet-like protective film” (ln. 5) is unclear as to what feature is required to make a film sheet “like.” For the purposes of examination, the term “sheet-like protective film” will be interpreted as simply a protective film. See MPEP 2173.05(b)(III)(E). Finally¸ the term “the tip ends” (ln. 4) lacks an antecedent basis.
Regarding claim 2, the term “the scalp” (ln. 2) lacks an antecedent basis.
Any remaining claims are rejected as being dependent upon a rejected base claim.
Claim Rejections - 35 USC § 103
11. 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.
12. Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Xioachuan (CN203089822U) – translation attached to office action), in light of Zou (WO 2015188654 A1), and further in light of Masuda et al. (US4662362A)
Regarding claim 1, Xiaochuan discloses a massager for the scalp (para. 6), which comprises a body unit (Fig. 1, housing 1), a plurality of brush-like stimulation units attached to a lower surface of said body unit (para. 33, A massage head 2 is provided on the lower side of the housing 1. The massage head 2 is provided with massage teeth 23 corresponding to the bushing 7. The massage teeth 23 are sleeved on the outside of the bushing 7. At least two massage protrusions 231 are provided on the outer surface of the massage teeth 23), said stimulation units each having a plurality of dispersedly arranged protrusions (para. 33, At least two massage protrusions 231 are provided on the outer surface of the massage teeth 23, Fig. 1, massage teeth 23 & protrusions 231), and a drive means for vibrating or oscillating said stimulation units with respect to said body unit (para. 42, The drive device also includes a motor 10, a battery 3, a printed circuit board 5, and a gearbox. The gearbox includes the gear set and a speed transmission gear assembly 4. The speed transmission gear assembly 4 is located between the two gear sets and connected to the motor. Battery 3 drives motor 10 under the control of printed circuit board 5. The rotation of motor 10 drives gear assembly 4, which in turn drives gear sets located on both sides of gear assembly 4 to rotate).
Xiaochuan discloses the tip ends of said stimulation units are covered with a sheet-like protective film (Xiaochuan, para. 15, soft outer layer wraps around the outer surface of the massage bracket and the massage teeth), but does not disclose said protective film is constituted of a plurality of layers of films that are slidable on each other in an in-plane direction, said plurality of layers of films being made of a low-frictional material or being each configured so as to have a surface having been subjected to low-frictional surface treatment.
However, Zou teaches a multi-layer massager (abs.), which includes a removeable protective cover covering stimulation units (pg. 35 ln. 1-3, foot massager includes a housing and a foot cover 912 which goes inside foot hole 916, pg. 36 ln. 7-9, removeable foot cover 912 has a tightening structure fit into annular groove of protrusion 911, pg. 36 ln. 1-4, designed for easy removal and replacement of foot cover 912 between users, pg. 38 ln. 10-12, foot cover 912 is placed inside of detachable bushing 913 inside foot hole 916 creating the multi-layer structure, Fig. 9, bushing 813 and foot cover 912).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the outer cover of Xiaochuan to additionally include a removeable protective cover as taught by Zou in order to create a multi-layered device which has an outer removeable layer to promote better hygiene and cleanliness between different users (Zou, pg. 36, ln. 2-5, replacement of outer layer prevents accumulation of bacteria or cross-infection between users, thereby promoting better hygiene). The resultant device would be a device having multiple layers which are slidable relative to each other in an in-plane direction covering the brush-like stimulation units.
The modified Xiaochuan device is silent on the plurality of layers of films being made of a low-frictional material or being each configured so as to have a surface having been subjected to low-frictional surface treatment.
However, Masuda teaches a massage device with moving massage elements (col. 1 ln. 34-46) which includes a protective film made of a low-frictional material or being each configured so as to have a surface having been subjected to low-frictional surface treatment (col. 3 ln. 43-49, Massage device 10 is covered with covering 11. Covering 11 includes wrapping cloth 13. Wrapping cloth 13 can be made from nylon cloth, Fig. 43, wrapping cloth 13. Nylon cloth is given as an example of a low friction material by applicant in paragraph [0044] of the specification).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the protective layers of the modified Xiaochuan device to be made of Nylon cloth as taught by Masuda in order to use a material with relatively high wear resistance (Masuda, col. 3, ln. 49-50).
Regarding claim 2, the modified Xiaochuan device includes a massaging device intended to apply stimulation to the scalp by said stimulation units (Xiaochuan, para. 6, purpose of this invention is to overcome the problems of limited functionality and poor effects of existing massagers, and to provide an improved electric massager with multi-point massage, good massage effect, and the ability to clean the scalp at the same time).
Regarding claim 3, the modified Xioachuan device has said protective film covering the whole of said stimulation units each having said plurality of dispersedly arranged protrusions (Xiaochuan, para. 15, soft outer layer wraps around the outer surface of the massage bracket and the massage teeth. The modified device would have two layers that warp around the outer surface of the massage bracket and the massage teeth).
Regarding claim 4, the modified Xioachuan device has said body unit provided with a grip part intended to allow a user to hold the body unit with one’s hand (Xioachuan, para. 43 ln. 1, housing 1 has a handle, Fig. 1, see device handle).
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure the prior art of record DiCarlo et al. (US 20210045964 A1) and Fried et al. (US 7238163 B1) are various massagers with protective films/membranes.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEC ROBERT WAHL whose telephone number is (571)272-9880. The examiner can normally be reached Monday - Friday 8:30 a.m. to 6:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy Stanis can be reached at (571) 272-5139. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.R.W./Examiner, Art Unit 3785
/TIMOTHY A STANIS/Supervisory Patent Examiner, Art Unit 3785
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