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 .
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 8,945,104 to Hantash. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, Hantash claims:
A microdermabrasion system (see Claim 1, Col. 31, Line 2) comprising:
a console (see Claim 1, Col. 31, Line 3);
a hand piece comprising (see Claim 1, Col. 31, Line 4):
a hand piece proximal end and a hand piece distal end a tip (see Claim 1, Col. 31, Line 5), coupled to a fluid tube coupled to the console (see Claim 1, Col. 31, Lines 5-6), wherein the tip comprises a tip proximal end attached to the hand piece distal end, a tip distal end comprising an abrading surface formed on a front surface of the tip and a plurality of fluid channels (see Claim 1, Col. 31, Lines 6-8), wherein the plurality of fluid channels terminate on a side surface of the tip between the tip proximal and distal ends (see Claim 1, Col. 31, Lines 8-9);
a vacuum opening, coupled to a vacuum tube coupled to the console, wherein the vacuum opening is outside a periphery of the tip (see Claim 1, Col. 31, Lines 24-26); and
a plurality of radiation sources, each radiation source coupled to an electrical wire coupled to the console (see Claim 1, Col. 31, Lines 27-29).
Regarding claim 2, Hantash claims the invention of claim 1, Hantash further claims wherein the plurality of radiation sources are between the tip and the vacuum opening (see Claim 2).
Regarding claim 3, Hantash claims the invention of claim 1, Hantash further claims wherein the plurality of radiation sources are evenly distributed about a perimeter of the front surface of the tip. (see Claim 3).
Regarding claim 4, Hantash claims the invention of claim 1, Hantash further claims wherein an angle between the radiation sources is 360 degrees divided by a total number of radiation sources (see Claim 5).
Regarding claim 5, Hantash claims the invention of claim 1, Hantash further claims wherein the plurality of radiation sources comprises at least one of a light emitting diode, a laser diode, a radio frequency diode, or a microwave antenna (see Claim 7).
Regarding claim 6, Hantash claims the invention of claim 1, Hantash further claims wherein at least one radiation source in the plurality of radiation sources emits a light beam having a wavelength that is in the visible range (see Claim 8).
Regarding claim 7, Hantash claims the invention of claim 1, Hantash further claims further comprising a radiation source holder, wherein the plurality of radiation sources are mounted to the radiation source holder and the radiation source holder is made of a thermally conductive plastic (see Claim 9).
Regarding claim 8, Hantash claims the invention of claim 3, Hantash further claims wherein the plurality of radiation sources irradiate a region of tissue between the perimeter of the front surface of the tip and the vacuum opening (see Claim 4).
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.
(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.
Claim(s) 1-2 and 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ignon (US 2007/0156124 A1).
Regarding claim 1, Ignon discloses:
A microdermabrasion system (skin treatment system 10, see Fig. 1) comprising:
a console (console 12, see Fig. 1);
a hand piece (handpiece 18, see Fig. 2) comprising:
a hand piece proximal end (proximal end 40, see Fig. 2) and a hand piece distal (distal end 36, see Fig. 2) end a tip (tip 34, see Fig. 2), coupled to a fluid tube (line 20, see Fig. 2) coupled to the console (see Para. [0069] and Figs. 1-2);
wherein the tip comprises a tip proximal end (skirt 64, see Fig. 2) attached to the hand piece distal end (see Fig. 2 and Para. [0084]), a tip distal end comprising an abrading surface (inner member 124, distal side 224 of pad 128, see Figs. 5A, 10A-10D and Para. [0105]) formed on a front surface of the tip (see Fig. 5A) and a plurality of fluid channels (flow channels 229, see Figs. 10A-10D);
wherein the plurality of fluid channels terminate on a side surface (inner member 120) of the tip between the tip proximal and distal ends (see Para. [0094], [0096] and [0110], see also Figs. 6A end 10E);
a vacuum opening (connector 44, see Fig. 2A and Para. [0078]-[0079] and [0081]-[0083] mentioning wherein through-holes 114 and 122 are configured to have a vacuum supplied therethrough via output line 50 which is coupled to connector 44), coupled to a vacuum tube (output line 50, see also Para. [0144]) coupled to the console (see Para. [0144]), wherein the vacuum opening is outside a periphery of the tip (see Fig. 2A); and
a plurality of radiation sources (energy sources 151, see Para. [0102]), each radiation source coupled to an electrical wire coupled to the console (each energy source is coupled to a wire providing connection to a power source in order to activate their associated LED elements, see Para. [0102]).
Regarding claim 2, Ignon discloses the invention of claim 1, Ignon further discloses wherein the plurality of radiation sources are between the tip and the vacuum opening (see Figs. 3 and 6A-6B).
Regarding claim 5, Ignon discloses the invention of claim 1, Ignon further discloses wherein the plurality of radiation sources comprises at least one of a light emitting diode, a laser diode, a radio frequency diode, or a microwave antenna (see Para. [0102]).
Regarding claim 6, Ignon discloses the invention of claim 1, Ignon further discloses wherein at least one radiation source in the plurality of radiation sources emits a light beam having a wavelength that is in the visible range (see Para. [0102] and [0140]).
Regarding claim 7, Ignon discloses the invention of claim 1, Ignon further discloses a radiation source holder, wherein the plurality of radiation sources are mounted to the radiation source holder (portion of the radially-outward facing tip housing each energy element therein, see Fig. 6A) and the radiation source holder is made of a thermally conductive plastic (see Para. [0114]; polymers encompass plastic and all materials possess at least nominal thermal conductivity therefore the limitations of the claim are met).
Regarding claim 9, Ignon discloses:
A microdermabrasion device (see Fig. 2), comprising:
a body (body 30, see Fig. 2A) having a longitudinal axis (see Fig. 2A);
a substantially non-abrasive tip (tip 34, see Fig. A; structure of tip 34 is understood to be non-abrasive due to later mention of an abrasive inner member 124 disposed therein, see Para. [0105]) attached to an end of said body (see Fig. 2A) and having at least one opening therethrough (through-hole 114, see Fig. 2A);
an abrasive member (inner member 124, distal side 224 of pad 128, see Figs. 5A, 10A-10D and Para. [0105]) located internally of said body and tip (see Figs. 5A and 10A-10D);
a vacuum access opening (connector 44, see Fig. 2A and Para. [0078]-[0079] and [0081]-[0083] mentioning wherein through-holes 114 and 122 are configured to have a vacuum supplied therethrough via output line 50 which is coupled to connector 44) adapted to apply negative pressure to a skin surface of a patient through said tip (see Para. [0078]-[0079] and [0081]-[0083]) outside a periphery of said abrasive member (see Fig. 2A showing wherein the connector is outside a periphery of the distal portion of the device), thereby drawing a portion of the skin into contact with said abrasive member (see Para. [0100]); and
a plurality of radiation sources (energy sources 151, see Para. [0102]), each radiation source coupled to an electrical wire, wherein the electrical wire passes through a channel in the body (each energy source is coupled to a wire passing between the proximal console and the distal tip providing connection to a power source in order to activate their associated LED elements, see Para. [0102]).
Regarding claim 10, Ignon discloses:
A skin treatment system (skin treatment system 10, see Fig. 1) comprising:
an elongated handle (handpiece 18, see Fig. 2A) including a tubular passageway (see Fig. 3);
an annular vacuum formed around at least a portion of the tubular passageway (see Para. [0079] and [0081]-[0086]);
a substantially planar abrasive surface (inner member 124, distal side 224 of pad 128, see Figs. 5A, 10A-10D and Para. [0105]);
a treatment tip (tip 34, see Fig. 2) with at least one opening therethrough (through-holes 114, see Fig. 2A), wherein a vacuum is applied outside a periphery of the abrasive surface through the at least one opening (see Para. [Para. [0078]-[0079] and [0081]-[0083] mentioning wherein through-holes 114 and 122 are configured to have a vacuum supplied therethrough via output line 50 which is coupled to connector 44);
a vacuum source (see Para. [0100] and fluid reservoir (see Para. [0011] mentioning wherein a fluid connection between the distal tip and the proximal console which holds a fluid source), wherein a flow path is from a distal end of the tubular passageway (see Para. [0012]), outward at the distal end (see Para. [0012]-[0017]), and into the annular vacuum and when a vacuum is applied (see Para. [0012]-[0017]), a fluid in the fluid reservoir is drawn into the passageway of the system, applied to skin at a treatment site, and drawn into the annular vacuum (see Para. [0079]-[0086]); and
a plurality of radiation sources (energy sources 151, see Para. [0102]) coupled to the elongated handle (see Fig. 6A), wherein at least one radiation source is positioned to provide a beam of light into skin at the treatment site (see Para. [0102] and [0140]).
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.
Claim(s) 3-4 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ignon (US 2007/0156124 A1) in view of Fox (US 5395361 A).
Regarding claim 3, Ignon discloses all of the limitations of the invention of claim 1.
However, while Ignon discloses wherein the plurality of radiation sources are spread out along a perimeter of the front surface of the tip (see Fig. 6B), Ignon does not expressly disclose wherein the plurality of radiation sources are evenly distributed about said perimeter of the front surface of the tip.
In the same field of endeavor, namely surgical devices configured to delivery electrical energy to a specific desired tissue to provide treatment thereto, Fox teaches wherein a fiber optic catheter (see Fig. 1) comprising a plurality of radiation sources (optical fibers 14,see Fig. 1), distributed evenly (see circular array in Fig. 1) about a perimeter of the front surface of the distal tip of the device (see Fig. 1 and 5, see also Col. 4, Lines 56-64 and Col. 5, Lines 20-30) to delivery energy evenly about the circumference of the device, wherein the optical fibers are configured to delivery energy to remove an undesired portion or region of tissue (see Col. 6, Lines 35-40).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the energy sources of Ignon to be distributed around the entire circumference at evenly spaced intervals as disclosed by Fox to, in this case, provide electrical energy evenly about the entire circumference of the device.
Regarding claim 4, Ignon discloses all of the limitations of the invention of claim 1.
However, while Ignon discloses wherein the plurality of radiation sources are spread out along a perimeter of the front surface of the tip (see Fig. 6B), Ignon does not expressly disclose wherein an angle between the radiation sources is 360 degrees divided by a total number of radiation sources (see Fig. 6B).
In the same field of endeavor, namely surgical devices configured to delivery electrical energy to a specific desired tissue to provide treatment thereto, Fox teaches wherein a fiber optic catheter (see Fig. 1) comprising a plurality of radiation sources (optical fibers 14,see Fig. 1), distributed evenly (see circular array in Fig. 1 and Col. 5, Lines 20-25) about a perimeter of the front surface of the distal tip of the device (see Fig. 1 and 5, see also Col. 4, Lines 56-64 and Col. 5, Lines 20-30) to delivery energy evenly about the circumference of the device, wherein the optical fibers are configured to delivery energy to remove an undesired portion or region of tissue (see Col. 6, Lines 35-40).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the energy sources of Ignon to be distributed around the entire circumference at evenly spaced intervals (i.e., 360 degrees divided by total number of radiation sources) as disclosed by Fox to, in this case, provide electrical energy evenly about the entire circumference of the device.
Regarding claim 8, the combination of Ignon and Fox discloses the invention of claim 3, Ignon further discloses wherein the plurality of radiation sources irradiate a region of tissue between the perimeter of the front surface of the tip and the vacuum opening (because the energy sources of Ignon, as modified by Fox, are locate within a recessed region of the tip (see Fig. 6A), the illumination of said energy sources would irradiate tissue positioned between the distal-most point of the tip and connector disposed at the proximal end of the device).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s
disclosure. See the attached PTO-892 Notice of References Cited. Specifically, US 9053193 B2 to Ignon, US 8986323 B2 to Boone, US 8814836 B2 to Ignon, US 2010/0049177 A1 to Boone, US 2009/0222023 A1 to Boone, US 7318828 B1 to Revivo, US 2007/0156124 A1 to Ignon, US 2003/0212415 A1 to Karasiuk and US 2003/0097139 A1 to Karasiuk all disclose surgical skin treatment devices comprising at least one radiation source and a vacuum system disposed therein for the removal and treatment of skin cells and the dermis generally.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MITCHELL B HOAG whose telephone number is (571)272-0983. The examiner can normally be reached 7:30 - 5:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at 5712724695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.B.H./Examiner, Art Unit 3771
/DARWIN P EREZO/Supervisory Patent Examiner, Art Unit 3771