DETAILED ACTION
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 .
Status of Claims
2. This office action is responsive to the preliminary amendment filed on 12/21/2023. As directed by the amendment: claims 3-4, 7, and 11-15 have been amended, no claims have been cancelled, and no claims have been added. Thus, claims 1-15 are presently pending in this application.
Drawings
3. The drawings are objected to because:
Figures 10-26, 34-35, 41, 47, 49-51, 54, 57, 63, and 73 are photographs which are not ordinarily permitted unless they are the only practicable way for illustrating the claimed invention. See 37 CFR 1.84(b).
The markings in figure 14 are not clear, it is suggested to increase the size of the image for clarity or provide arrows with lead lines to the markings
The symbol in figure 17 in front of the label “600 mm” is not clear, it is suggested to relabel the box without the unknown symbol or increase the size of the box for clarity
The symbols in figures 21-26 are difficult to read, it is suggested to increase the font size for clarity and include a background so the symbols stand out against the lighter portions of the image
The labels within the cells of figures 27-29 are difficult to read, it is suggested to increase the font size of the labels for clarity
The labels in figure 34 are difficult to read, it is suggested to increase the font size for clarity
The markings in figure 41 are not clear, it is suggested to increase the size of the image for clarity or provide arrows with lead lines to the markings
The labels in figure 72 are difficult to read, it is suggested to increase the font size or stroke thickness for clarity
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.
Specification
4. 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: --Vibrating Instrument for the Hand--
5. The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
6. Claim 9 is objected to because of the following informalities: the limitation “a finger lock portion that is locked to at least a little finger of five fingers” in line 5 seems to be positively claiming “a little finger.” It is suggested to replace this with –a finger lock portion configured to lock at least a little finger of five fingers—to clarify that a little finger is not being positively claimed thereby avoiding a potential 101 rejection. Appropriate correction is required.
Similarly, claim 11 is objected to because of the following informalities: the limitation “the finger lock portion is locked to at least the little finger between the little finger and a ring finger” in lines 3-4 seems to be positively claiming “the little finger.” It is suggested to replace this with –the finger lock portion is configured to lock to at least the little finger between the little finger and a ring finger—to clarify that the little finger is not being positively claimed thereby avoiding a potential 101 rejection. Appropriate correction is required.
Claim Interpretation
7. 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.
8. 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.
9. 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:
“pressing portion” in claim 1 line 3, claim 3 lines 1-2, claim 8 line 3, and claim 9 line 3 are being interpreted as a protrusion provided in a main body or the like according to paragraph [0012] of the specification. The “pressing portion” recited in claims 2, 4-6, 10, and 12-15 are not interpreted under 112f as adequate structure is provided.
“use state detecting unit” in claim 7 line 2 is being interpreted as a position sensor, a pressure sensor or the like according to paragraph [0290] of the specification.
“state detecting unit” in claim 8 line 5 is being interpreted as a position sensor, a pressure sensor or the like according to paragraph [0290] of the specification.
“finger lock portion” in claim 9 line 5 and claim 10 line 4 are being interpreted as a ring or the like according to paragraph [0082] of the specification. The “finger lock portion” recited in claim 11 is not interpreted under 112f as adequate structure is provided.
“vibration applying unit” in claim 2 line 4 is being interpreted as a vibrating motor including a weight or the like according to paragraph [0275] of the specification.
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
10. 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.
11. Claim 11 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 11, the limitation “the finger lock portion is locked to at least the little finger between the little finger and a ring finger” in lines 3-4 is unclear if the finger lock is locked to the little finger, ring finger, or both fingers. The claim is being interpreted as –the finger lock portion is locked to at least the little finger of the little finger and ring finger--.
Claim Rejections - 35 USC § 102
12. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
13. Claim(s) 1-4 and 6-8 is/are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by Gertner et al. (US 2019/0262225).
Regarding claim 1, Gertner discloses an instrument capable of being grasped with one hand (fig. 21, device 9030 is sized to be incorporated into a phone case and therefore be grasped with one hand, see [0493]), the instrument comprising:
a pressing portion (fig. 21, effector tip 9018) capable of pressing a Pacinian corpuscle present in a palm while transmitting vibration to the Pacinian corpuscle, when the instrument is grasped with one hand (fig, 21, device 9030 can be held with the effector tip 9018 facing into the palm to transmit vibrations from the effector tip to the palm of a user).
Regarding claim 2, the device of Gertner reads on the limitations of claim 1 and further reads on
a main body portion (fig. 21, housing 9024);
the pressing portion provided to protrude from the main body portion (fig. 21, effector tip 9018 protrudes from housing 9024 via aperture 9028, see [0495]); and
a vibration applying unit that generates vibration (fig. 24, drive motor 9054 oscillates cantilever beam 9062 and effector tip 9018, see [0500]), wherein
by grasping the main body portion with one hand, the pressing portion is configured to be brought into contact with skin on the Pacinian corpuscle present in the palm to press the Pacinian corpuscle (fig. 21, when grasping device 9030 with the effector tip 9018 facing the palm, the effector tip 9018 is brought into contact with skin of the Pacinian corpuscle) while transmitting vibration to the Pacinian corpuscle (fig. 24, motor 9054 causes the effector tip 9018 to oscillate, see [0511]).
Regarding claim 3, the device of Gertner reads on the limitations of claim 1 and further reads on wherein the pressing portion vibrates (fig. 24, motor 9054 causes the effector tip 9018 to oscillate, see [0511]).
Regarding claim 4, the device of Gertner reads on the limitations of claim 1 and further reads on wherein the pressing portion (fig. 24, effector tip 9018) is configured to include at least a part of a vibrating body that vibrates (fig. 24, effector tip 9018 is connected to beam 9062 where the motor 9054 is attached to the beam, see [0514] and fig. 25 which shows the effector tip connected to the beam and motor).
Regarding claim 6, the device of Gertner reads on the limitations of claim 2 and further reads on wherein the vibration is vibration in a direction in which the pressing portion protrudes from the main body portion ([0511] states that motor 9054 causes the beam and motor to oscillate in a desired direction such as perpendicular to a surface of tissue; fig. 24, effector tip 9018 protrudes towards a surface of tissue).
Regarding claim 7, the device of Gertner reads on the limitations of claim 1 and further reads on a use state detecting unit capable of detecting a use state in a grasping situation ([0530] states that device 9030 can include a motion sensor to measure vibratory output that may be fed into the device’s control loop).
Regarding claim 8, Gertner discloses an instrument capable of being grasped with one hand (fig. 21, device 9030 is sized to be incorporated into a phone case and therefore be grasped with one hand, see [0493]), the instrument comprising:
a pressing portion (fig. 21, effector tip 9018) capable of pressing a Pacinian corpuscle present in a palm when the instrument is grasped with one hand (fig, 21, device 9030 can be held with the effector tip 9018 facing into the palm to transmit vibrations from the effector tip to the palm of a user); and
a state detecting unit capable of detecting a state of the instrument ([0530] states that device 9030 can include a motion sensor to measure vibratory output that may be fed into the device’s control loop).
14. Claim(s) 9-11 is/are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by Rowe-Lanzisera et al. (US 5,405,357) hereinafter Rowe.
Regarding claim 9, Rowe discloses an instrument (fig. 2, acupressure glove 42) capable of being grasped with one hand (fig. 2, glove 42 is worn on one hand, and closing the hand would grasp the glove when applying pressure to locators 38 to stimulate acupressure points, see col. 3, lines 52-67), the instrument comprising:
a pressing portion (fig. 2, locators 38 are positioned over nodules 39, see fig. 6, where the nodule 39 is shown attached to the locator 38) capable of pressing a Pacinian corpuscle present in a palm when the instrument is grasped with one hand (fig. 2, when the hand is closed, pressure is applied to the locators 38 which transmits pressure to corresponding nodules 39 which are positioned near the Pacinian corpuscle present in a palm); and
a finger lock portion that is locked to at least a little finger of five fingers to prevent a change in posture (fig. 2, glove 42 includes portions covering the fingers 9 which helps retains the nodes on the hand in a predetermined position relative to acupressure points on the hand, see col. 3, lines 52-67).
Regarding claim 10, the instrument of Rowe reads on the limitations of claim 9 and further reads on
a main body portion (col. 3, lines 52-54 state that the glove is comprised of an elastic flexible form); and
the pressing portion provided to protrude from the main body portion (fig. 2, locators 38 are positioned over nodules 39, see fig. 6, where the nodule 39 is shown attached to the locator 38), wherein
the pressing portion and the finger lock portion have a certain positional relationship with each other (fig. 2, glove 42 includes portions covering the fingers 9 which helps retains the nodes on the hand in a predetermined position relative to acupressure points on the hand, see col. 3, lines 52-67), and
by grasping the main body portion with one hand, the pressing portion is configured to be brought into contact with skin on the Pacinian corpuscle present in the palm to press the Pacinian corpuscle (fig. 2, glove 42 is worn on one hand, and closing the hand would grasp the glove when applying pressure to locators 38 to stimulate acupressure points, see col. 3, lines 52-67).
Regarding claim 11, the instrument of Rowe reads on the limitations of claim 9 and further reads on wherein the finger lock portion has a ring shape (fig. 2, the glove portion over the fingers 9 has a ring shape to accommodate the user’s fingers), and
the finger lock portion is locked to at least the little finger between the little finger and a ring finger (fig. 2, the glove 42 covers all five fingers including the little finger and the ring finger).
Claim Rejections - 35 USC § 103
15. 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.
16. Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gertner.
Regarding claim 5, the device of Gertner reads on the limitations of claim 2, and further discloses that the beam (fig. 24, 9062) can have varying cross-sections to control the bending direction of the beam ([0512]), but does not expressly disclose that the vibration is vibration in a direction intersecting a direction in which the pressing portion protrudes from the main body portion.
However, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to change the shape of the beam to have a shorter side parallel to the z-axis of the device of Gertner in order to cause bending in a desired direction ([0512]).
The modified device of Gertner reads on the vibration is vibration in a direction intersecting a direction (fig. 24, a shorter side of beam 9062 being parallel to the z-axis would cause the oscillations to be mainly in the x-z plane which intersects the x-y plane of the effector tip) in which the pressing portion protrudes from the main body portion (fig. 24, effector tip 9018 protrudes along the y direction).
17. Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rowe.
Regarding claim 13, the instrument of Rowe reads on the limitations of claim 9 and further reads on wherein at least a tip portion of the pressing portion has a spherical shape (fig. 6, the tip of nodule 39 has a spherical shape), and further discloses that the diameter of the sphere is no less than 10 mm (col. 4, lines 51-59), but does not expressly state that the sphere has a radius (R) of 0.5 mm to 5 mm.
However, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the radius of the nodules of the device of Rowe to be 5 mm, for the purpose of providing a pressing portion, and since it has been held that where the general conditions of a claim are discloses in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Furthermore, Applicant has not provided criticality that a radius of 0.5 to 5 mm provides an advantage, is used for a particular purpose, or solves a stated problem beyond stating that “when a diameter of the first contact portion is very small, there is a possibility that too much pain is felt at the time of pressing”, see the [0243] in the specification. Further it appears the instrument of Rowe would perform equally well with the recited 5 mm radius of the spherical portions of nodules 39. See MPEP 2144.05(II).
18. Claim(s) 12 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rowe as applied to claim 9 above, and further in view of Khalaf et al. (US 2020/0330315).
Regarding claim 12, the instrument of Rowe reads on the limitations of claim 9, but does not expressly a shape of the pressing portion is a stepped shape.
However, Khalaf teaches of a handheld device (fig. 5, 70) that uses changeable heads one of which is a stepped shaped (fig. 7, heads 82D) for moving tissue in a desired manner (see [0045]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to replace the shape of the nodule of the instrument of Rowe with the shape of the head as taught by Khalaf (Khalaf fig. 7, head 82D) as a simple substitution of one known element for another to obtain a predictable result of allowing tissue to be contacted in a desired manner (Khalaf [0045]).
The modified instrument of Rowe reads on a shape of the pressing portion is a stepped shape (Khalaf fig. 7, head 82D has an higher, upper rim and a lower inner opening thereby making a stepped shape).
Regarding claim 14, the instrument of Rowe reads on the limitations of claim 9, but does not expressly a shape of the pressing portion is a conical shape.
However, Khalaf teaches of a handheld device (fig. 5, 70) that uses changeable heads of various shapes one of which is a conical shape (fig. 7, heads 82E) for moving tissue in a desired manner (see [0045]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to replace the shape of the nodule of the instrument of Rowe with the shape of the head as taught by Khalaf (Khalaf fig. 7, head 82E) as a simple substitution of one known element for another to obtain a predictable result of allowing tissue to be contacted in a desired manner (Khalaf [0045]).
The modified instrument of Rowe reads on a shape of the pressing portion is a conical shape (Khalaf fig. 7, head 82E is shaped like a cone).
Regarding claim 15, the instrument of Rowe reads on the limitations of claim 9, but does not expressly a shape of the pressing portion is a cylindrical shape.
However, Khalaf teaches of a handheld device (fig. 5, 70) that uses changeable heads of various shapes one of which is a cylindrical shape (fig. 7, heads 82B) for moving tissue in a desired manner (see [0045]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to replace the shape of the nodule of the instrument of Rowe with the shape of the head as taught by Khalaf (Khalaf fig. 7, head 82B) as a simple substitution of one known element for another to obtain a predictable result of allowing tissue to be contacted in a desired manner (Khalaf [0045]).
The modified instrument of Rowe reads on a shape of the pressing portion is a cylindrical shape (Khalaf fig. 7, head 82B is shaped like a cylinder).
Conclusion
19. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Khubani (US 2010/0222720) discloses a finger stretching device where fingers are inserted into a vibrating device. Cedic (US 2018/0168913) discloses a personal massage apparatus that can be held in a palm and includes various motor configurations. Sun (US 2007/0188451) discloses a mouse that has massaging functions via nodes on the outside of the mouse. Schuler (US 2020/0101588) discloses a grip element which can also include an elastic band for securing to a hand of a user. Machida (JP-10137320) discloses a finger massage appliance that has various protrusions that can function as a pressing portion. Kono et al. (JP-2016182272) a finger exercising device that has various protrusions and is meant to be gripped in a user’s hand.
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS Z CHANG whose telephone number is (571)272-0432. The examiner can normally be reached Monday-Friday 9:00 am-5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/THOMAS Z CHANG/Examiner, Art Unit 3785
/TIMOTHY A STANIS/Supervisory Patent Examiner, Art Unit 3785
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