DETAILED ACTION
Status of Submission
This Office action is responsive to the preliminary amendment filed on February 28, 2024, which has been entered.
Restriction Requirement
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Original patent claims 1-25, drawn to a vertical motion adjuster for a thermotherapy device having a moxibustion device, classified in A61H 39/06.
II. New reissue claims 26-33, drawn to a method of operating a bed-type massage device having massage rollers, classified in A61H 15/0078.
The inventions are independent or distinct, each from the other because Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product; or (2) the product as claimed can be used in a materially different process of using that product. See MPEP 806.05(h).
In the instant case, method claims 26-33 are not limited to the use of a vertical motion adjuster having the specific structure required by claims 1-25, including (i) a support frame pivotally installed at a pivot shaft on an upper surface of the support unit, (ii) a moxibustion device mounted on the support frame, (iii) a through-hole formed in a center portion of the conveyance unit, and (iv) a portion of the elevation unit passed through the through-hole. Thus, the claimed process (claims 26-33) can be practiced with a product that is materially different from the claimed product (claims 1-25).
Further, product claims 1-25 are not limited to use in a process having the specific steps required by claims 26-33, including: (i) providing a bed-type massage device comprising (a) a plurality of massage rollers, and (b) a mat having a lying surface and a hollow section extending in a longitudinal axis; and (ii) causing the vertical motion adjuster (or massage module) to travel within the hollow section along the longitudinal axis and also causing hinged movement of the support unit (or support member) such that at least part of the massage rollers simultaneously generates a first massaging effect by traveling along the longitudinal direction and a second massaging effect by the hinged movement. Thus, the claimed product (claims 1-25) can be used in a process that is materially different from the claimed process (claims 26-33).
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions have acquired a separate status in the art in view of their different classification; the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Should applicant traverse this restriction requirement on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under pre-AIA 35 U.S.C. 103(a) of the other invention.
Constructive Election
Pursuant to 37 CFR 1.176, the subject matter of original patent claims 1-25 is held to be constructively elected since a disclaimer of all the patent claims has not been filed in the instant reissue application.
Accordingly, new reissue claims 26-33 are constructively non-elected and withdrawn from examination in this reissue application because these claims are drawn to a new independent and distinct invention.
As explained in MPEP 1450, applicant is advised that:
The claims to the original patented invention will continue to be examined in the instant reissue application and the non-elected claims will be held in abeyance in a withdrawn status.
A divisional reissue application directed to the constructively non-elected invention may be filed.
The non-elected claims will only be examined if filed in a divisional reissue application.
If the original patent claims are found allowable in the instant reissue application and no error (other than the failure to present the non-elected claims) is being corrected in this application, and if a divisional application has been filed for the non-elected claims, further action in the instant reissue application will be suspended pending resolution of the divisional application.
Prior Reissue Application
The same restriction requirement set forth above was made in prior Reissue Application No. 17/665,140 filed on February 4, 2022, now abandoned. In the prior reissue application, the subject matter of original patent claims 1-25 was held to be constructively elected pursuant to 37 CFR 1.176 since a disclaimer of all the patent claims was not filed in that application. Thus, patent claims 1-25 were examined in the prior reissue application, and new reissue claims 26-33 were withdrawn from examination as being drawn to a new independent and distinct invention.
The instant application was filed as a continuation reissue of prior Reissue Application No. 17/665,140. Since the instant application was not filed as a divisional reissue of prior Reissue Application No. 17/665,140, and since prior Reissue Application No. 17/665,140 is now abandoned, the same restriction requirement set forth above is proper in this continuation reissue application.
Claims Subject to Examination
Original patent claims 1-25 are subject to examination. New reissue claims 26-33 are withdrawn for the reasons given above.
Original Disclosure – Definition
The instant application seeks reissue of US Patent No. 10,548,806 B2, which issued from US Application No. 13/884,209, which was the national stage of International Application No. PCT/KR2011/008519. The “original disclosure” is the disclosure of International Application No. PCT/KR2011/008519 as filed on November 9, 2011. Any subject matter added to the disclosure (including the claims) during the examination of the instant reissue application or during the earlier-concluded examination of either US Application No. 13/884,209 or International Application No. PCT/KR2011/008519 does not constitute a part of the “original disclosure”.
Prohibition of New Matter
35 USC 132(a) states, in part, that “No amendment shall introduce new matter into the disclosure of the invention.”
35 USC 251(a) states, in part, that “No new matter shall be introduced into the application for reissue.”
PCT Article 19(2) states that “The amendments shall not go beyond the disclosure in the international application as filed”.
New Matter Added During Earlier-Concluded Examination
New matter was improperly added to the disclosure during the earlier examination of Application No. 13/884,209. See the detailed explanation that follows.
The amendment filed on May 8, 2013 amended the specification by adding the following new paragraph:
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The new incorporation by reference of the entire contents of each of International Application No. PCT/KR2011/008519, Korean Application No. 10-2011-0064845 and Korean Application No. 10-2010-0110787 improperly added new matter to the disclosure because the entire contents of these applications was not a part of the original disclosure. It is noted that the entire contents of such applications include more than just the specification, drawings and claims of such applications.
The amendment filed on September 18, 2018 and the amendment made on November 15, 2019 (which was an examiner’s amendment authorized by applicant) amended claim 1 to recite “wherein the conveyance unit (100) includes a plate-shaped body, wherein the conveyance unit includes a through-hole (140) formed in a center portion of the plate-shaped body of the conveyance unit (100), the elevation unit (300) passing through the through-hole (140), and wherein at least a portion of the elevation unit (300) is passed through the through-hole (140) to be placed under the conveyance unit (100) when the support unit (200) is settled on the conveyance unit (100)” (ll. 14-20).
The new recitation of “a through-hole (140) formed in a center portion of the plate-shaped body of the conveyance unit (100)” (claim 1, ll. 15-16) improperly introduced new matter for the following reasons. The original disclosure describes the first disclosed embodiment shown in Figs. 2-7 as having a conveyance unit 100 that includes a plate-shaped body. See col. 5, ll. 36-38 of the patent specification (which is part of the description of the first disclosed embodiment found at col. 1, l. 65 to col. 9, l. 9). The original disclosure describes the second disclosed embodiment shown in Figs. 8-16 as having a through-hole 140 formed at the center of the conveyance unit 100. See col. 13, ll. 1-9. However, the conveyance unit 100 of the second disclosed embodiment is distinct from the conveyance unit 100 of the first disclosed embodiment at least due to the provision of (i) an accommodating space 130, and (ii) reinforcement ribs 150. See col. 12, ll. 58-67; col. 13, ll. 10-20. This distinct conveyance unit 100 of the second disclosed embodiment is not described in the original disclosure as having a plate-shaped body, and the through-hole 140 is not disclosed as being formed in a center portion of such a plate-shaped body.
The new requirement that “at least a portion of the elevation unit (300) is passed through the through-hole (140) to be placed under the conveyance unit (100) when the support unit (200) is settled on the conveyance unit (100)” (claim 1, ll. 18-20) improperly introduced new matter for the following reasons. The original disclosure describes the guide member(s) 310 of the elevation unit 300 as passing through the through hole 140. See col. 13, ll. 1-4; Figs. 9, 11 and 12A. Due to the “at least a portion of the elevation unit” claim language, the claim encompasses a configuration in which other portions of the elevation unit (other than the guide member(s) 310) pass through the through hole 140 to be placed under the conveyance unit 100. However, the specification fails to disclose an embodiment in which any other portions of the elevation unit pass through the through hole 140 to be placed under the conveyance unit 100. The original disclosure also fails to describe the support unit 200 as being “settled on” the conveyance unit 100 at a time when the guide member(s) 310 are passed through the through-hole 140.
The amendment filed on July 11, 2016 amended claim 5 to recite “wherein the conveyance unit (100) includes a driving member (330)” (ll. 1-2). However, the original disclosure defines the driving member 330 as a component of the elevation unit 300. See col. 6, ll. 33-36. The driving member 330 cannot be considered to be a component of the conveyance unit 100 if it is defined as a component of the separate elevation unit 300. Further, the original disclosure describes the driving member 330 as being installed under the conveyance unit 100. See col. 7, ll. 52-54. However, this disclosure (that the driving member 330 is installed under the conveyance unit 100) does not provide support for the claim requirement that the conveyance unit 100 includes the driving member 330.
The amendment filed on September 6, 2017 amended claim 13 to recite “wherein the protrusion (223) includes a first side extending generally toward the first moxibustion device (211) and a second side extending generally toward the second moxibustion device (212), wherein a first inclination angle is defined between the first side of the protrusion (223) and a plane parallel to an upper surface of the support unit (200), and a second inclination angle is defined between the second side of the protrusion (223) and the plane, and wherein the first inclination angle is smaller than the second inclination angle.” The original disclosure describes (i) the protrusion 223 as extending downward and formed at the lower end of the support frame, and (ii) the inclination angles α2, β2 as formed at a lower end of the protrusion 223, with the inclination angle α2 directed toward the one moxibustion device 211 being smaller than the inclination angle β2 directed toward the other moxibustion device 212. See col. 11, ll. 17-23; Fig. 12B. However, the original disclosure fails to describe the protrusion 223 as including a first side extending generally toward the first (one) moxibustion device 211 and a second side extending generally toward the second (other) moxibustion device 212. As shown in Fig. 12B, the angled sides/surfaces of the protrusion 223 that define boundaries of the inclination angles α2, β2 are not illustrated as “extending generally toward” the moxibustion devices 211, 212. The original disclosure also fails to describe the inclination angles α2, β2 as being defined with respect to “a plane parallel to an upper surface of” the support unit 200. The support unit 200 is not shown in Fig. 12B, and this figure does not establish the claimed “parallel” relationship.
The amendment filed on September 6, 2017 amended original claim 23 (later renumbered as patent claim 19) to recite “a plurality of reinforcement ribs (150) formed on the conveyance unit (100) to surround the through-hole (140), and wherein at least one of the plurality of reinforcement ribs (150) is formed in a lengthwise direction of the conveyance unit (100).” The original disclosure describes a singular reinforcement rib 150 formed along an edge of the conveyance unit 100 to surround the through hole 140. See col. 13, ll. 10-14; Fig. 11. Further, the original disclosure describes a plurality of reinforcement ribs 150 formed in a lengthwise direction of the conveyance unit 100. See col. 13, ll. 15-20; Figs. 9 and 11. However, the original disclosure does not provide support for a plurality of such reinforcement ribs formed on the conveyance unit 100 to surround the through hole 140. Nor does the original disclosure provide support for at least one such reinforcement rib that both (i) surrounds the through hole 140, and (ii) is formed in a lengthwise direction of the conveyance unit 100.
The amendment filed on September 18, 2018 added new claim 28 (later renumbered as patent claim 24), with this new claim reciting “a second resilient member (214) configured to apply a resilient force to the moxibustion device (210) tending to move the moxibustion device (210) upward”. The original disclosure describes the temperature detecting member 213 as including a second resilient member 214 that applies a resilient force in a direction in which the moxibustion device 210 is moved upward such that, when the moxibustion device 210 is moved upward, the temperature detecting member 213 is also moved upward by the second resilient member 214. See col. 10, ll. 39-47. While the original disclosure states that the second resilient member 214 applies a resilient force in a direction in which the moxibustion device 210 is moved upward, it does not describe the second resilient member 214 as “configured to apply a resilient force to” the moxibustion device 210. Rather, the original disclosure describes the second resilient member 214 as functioning to move the temperature detecting member 213 upward when the moxibustion device 210 is moved upward.
The amendment filed on September 18, 2018 added new claim 29 (later renumbered as patent claim 25), and the amendment made on November 15, 2019 (which was an examiner’s amendment authorized by applicant) amended this claim to recite “wherein the support unit (200) and the driving member (330) are positioned on opposite sides of the plate-shaped body of the conveyance unit (100) such that the plate-shaped body of the conveyance unit separates the support unit (200) from the driving member (330).” See the above discussion of the original disclosure’s description of the second disclosed embodiment shown in Figs. 8-16, including the explanation concerning the recited “plate-shaped body”. Further, the specification describes this second disclosed embodiment as having connecting members 420 installed at the support unit 200, with one end of the connecting members 420 extending downward to be inserted into the conveyance unit 100. See col. 12, ll. 33-52; Figs. 10A, 12A and 13. As a result of this configuration, one end of the connecting members 420 are not separated from the driving member 330 by the body of the conveyance unit 100.
For these reasons, the amendments made in Application No. 13/884,209 violated the prohibition of new matter under 35 USC 132(a).
Applicant is required to cancel the new matter in the reply to this Office Action.
New Matter Added During Present Examination
The amendment filed in the instant application on February 28, 2024 is objected to under 35 USC 132(a) and 35 USC 251(a) because it improperly introduces new matter for the following reason.
The amendment filed on February 28, 2024 amends the first paragraph of the specification as follows:
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The new incorporation by reference of the entire contents of US Application No. 17/665,140, US Patent No. 10,548,806 B2 and US Application No. 13/884,209 improperly adds new matter to the disclosure because the entire contents of these applications and patent was not a part of the original disclosure. It is noted that the entire contents of such an application or patent includes more than just the specification, drawings and claims.
For these reasons, the amendment filed in the instant application on February 28, 2024 violates the prohibition of new matter under both 35 USC 132(a) and 35 USC 251(a).
Applicant is required to cancel the new matter in response to this Office action.
Reissue Oath/Declaration
OBJECTION 1: The Reissue Application Declaration By The Assignee (Form PTO/AIA /06) filed on February 28, 2024 is defective because it is improperly executed on behalf of the assignee. As explained in the reissue declaration itself, applicant seeks to broaden the claims in the instant reissue application. For such a broadening reissue application, the reissue declaration may only be executed on behalf of the assignee if the application for the original patent was filed by the assignee of the entire interest under the AIA version of 37 CFR 1.46.
As explained above, Application No. 13/884,209 was the national stage of International Application No. PCT/KR2011/008519. Due to its international filing date of November 9, 2011, Application No. 13/884,209 was subject to the pre-AIA version of 37 CFR 1.46, which did not allow for the application to be made by the assignee. Accordingly, the Filing Receipt issued in Application No. 13/884,209 on June 19, 2013 did not identify the assignee as the applicant; rather, it identified the sole inventor as the applicant. Likewise, the front page of US Patent No. 10,548,806 B2 does not identify the assignee as the applicant.
OBJECTION 2: The Reissue Application Declaration By The Assignee (Form PTO/AIA /06) filed on February 28, 2024 is defective because the box is checked indicating that “The application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest.” This statement is inaccurate for the reasons given above.
OBJECTION 3: The Reissue Application Declaration By The Assignee (Form PTO/AIA /06) filed on February 28, 2024 is defective because it fails to properly and specifically identify at least one error which can be relied upon to support the reissue application. See 37 CFR 1.175 and MPEP 1414-1414.01.
As required by 37 CFR 1.175(a), the reissue oath/declaration must specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue. In identifying the error, it is sufficient that the reissue oath/declaration identify a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. It is not sufficient to merely state that applicant seeks to broaden or narrow the scope of a patent claim. Further, a statement in the reissue oath/declaration of “…failure to include a claim directed to…” and then reciting all the limitations of a newly added claim would not be considered a sufficient error statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa.
In the present case, the declaration’s error statement reads as follows:
The patentee had a right to claim more than what was claimed in U.S. Patent No. 10,548,806 (the “‘806 patent”). The present reissue application includes new claims that are different from (e.g., broader than) Claims 1-25 of the ‘806 patent. For example, independent Claim 1 of the ‘806 patent is directed to a vertical motion adjuster for a thermotherapy device and recites “a conveyance unit” and “an elevation unit.” On the other hand, new independent Claim 30 of the present reissue application is directed to a method of operating a bed-type massage device (an overlooked aspect) and does not recite “a conveyance unit” or “an elevation unit.”
This statement fails to identify an error which can be relied upon to support this reissue application. As explained above, new reissue claims 26-33 are constructively non-elected and, thus, will not be examined in this reissue application. As a result, new reissue claims 26-33 cannot be relied upon as the basis for this reissue application, i.e., as the means by which an error in the original patent claims is corrected. Further, there are no claims presently subject to examination that correct the alleged error in patent claim 1.
OBJECTION 4: The Reissue Application Declaration By The Assignee (Form PTO/AIA /06) filed on February 28, 2024 is improper because it is a copy of the reissue declaration filed in prior Reissue Application No. 17/665,140 on March 16, 2022. The filing of a copy of the declaration from the prior reissue application is not permitted since (i) it is not signed by the inventor, and (ii) original Application No. 13/884,209 was not filed under 37 CFR 1.46. See MPEP 1410.01.
Claim Rejections - 35 USC § 251
The following is a quotation of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(b) MULTIPLE REISSUED PATENTS.—The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
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(c) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
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(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS. No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
GROUND 1: Claims 1-25 are rejected under 35 U.S.C. 251 as being based upon a defective reissue oath/declaration. See 37 CFR 1.175. See the explanation above.
GROUND 2: Claims 1-25 are rejected under 35 U.S.C. 251 because there is no “error” in the original patent that is corrected by the instant reissue application. As explained above, new reissue claims 26-33 are constructively non-elected. Thus, for the purposes of this reissue application, claims 26-33 do not serve to correct an error in the patent. Further, no other error in the patent is currently corrected by this reissue application.
Claim Rejections - 35 USC § 112
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.
GROUND 3: Claims 1-25 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because these claims recite new matter. See the explanation above. Claims 2-4, 6-12, 14-18 and 20-23 are included in the rejection because of their dependencies.
GROUND 4: Claims 4, 7, 8 and 22-24 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. These claims contain 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 inventors or a joint inventor had possession of the claimed invention at the time the application was filed.
The written description requirement serves both to satisfy applicant’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the inventor(s) was in possession of the invention that is claimed. It is not enough that a skilled artisan could theoretically construct his/her own version of the claimed invention. Rather, applicant bears the burden of setting forth sufficient information to show that the inventor had possession of the claimed invention. Thus, the written description requirement requires applicant to go beyond a discussion of mere concepts and suggestions. It is not sufficient to merely outline desired results that the claimed invention is expected to achieve. Rather, the specification must explain how the invention is structured and how it functions in order to achieve the desired results. While subject matter that is conventional or well known in the art need not be described in detail, the specification must provide a complete description of each of the essential features recited in the claims which enable the claimed invention to achieve the desired results.
Claim 4 recites “wherein the guide member (310) is one of a plurality of guide members (310) and wherein the rotary member (320) is one of a plurality of rotary members (320).” This broad recitation allows for a configuration including three, four, five or even more guide members, and an equal number or an unequal number of rotary members. However, the original disclosure does not describe any embodiment having (i) three or more guide members, (ii) three or more rotary members, or (iii) a plurality of rotary members of unequal number to a plurality of guide members. While the provision of a plurality of guide members and a plurality of rotary members is mentioned broadly in the specification, their specific structure/arrangement is not described in the specification or illustrated in the drawings in the case of three or more guide members, three or more rotary members, or rotary members of unequal number to guide members. Absent such disclosure in a manner that is commensurate in scope with the claims, the specification fails to demonstrate that the inventor(s) was in possession of the invention that is claimed.
Claim 7 recites “a limit switch (120) at one of the conveyance unit (100) and the guide member (310), wherein a detection protrusion (312) is installed at the other one of the conveyance unit and the guide member, and when the detection protrusion (312) enters the limit switch (120), a lowering operation of the support unit (200) is stopped.” Such an arrangement is discussed in broad terms at col. 12, ll. 3-11 of the patent specification. However, the specification fails to disclose and the drawings fail to illustrate the specific manner in which (i) the limit switch 120 and the protrusion 312 are structured, (ii) the limit switch 120 and the protrusion 312 are installed on the conveyance unit 100 and the guide member 310, (iii) the protrusion 312 enters and activates the limit switch 120, and (iv) activation of the limit switch causes a lowering operation of the support unit 200 to be stopped. No explanation is provided as to the specific structure required to achieve the desired result. Absent the disclosure of essential features, the specification fails to demonstrate that the inventor(s) was in possession of the invention that is claimed.
Claim 8 recites “a rotation detection member configured to detect a raising operation of the guide member (310) is installed at the driving member (330).” Such an arrangement is discussed in broad terms at col. 12, ll. 12-19 of the patent specification. However, the specification fails to disclose and the drawings fail to illustrate the specific manner in which the rotation detection member 331 (i) is structured, (ii) is installed on the driving member 330, (iii) interacts with the driving member and/or the guide member 310, and (iv) functions to detect a raising operation of the guide member 310. No explanation is provided as to the specific structure required to achieve the desired result. Absent the disclosure of essential features, the specification fails to demonstrate that the inventor(s) was in possession of the invention that is claimed.
Claim 22 recites “a cover member installed at an inner surface in the lengthwise direction of the long hole (190).” Such an arrangement is discussed in broad terms at col. 3, ll. 39-40 of the patent specification. However, no such cover member is illustrated in the drawings. Further, the specification fails to disclose the specific manner in which the cover member is (i) structured, and (ii) installed at an inner surface in the lengthwise direction of the long hole 190. No explanation is provided as to the specific structure required to achieve the desired result. Absent the disclosure of essential features, the specification fails to demonstrate that the inventor(s) was in possession of the invention that is claimed.
Claim 23 recites “wherein the first resilient member (222) is configured to apply a resilient force to the support frame (220) such that one moxibustion device (211) adjacent to a coupling position of the conveyance unit (100) and the support unit (200) is moved upward.” Such an arrangement is discussed in broad terms at col. 10, ll. 10-33 of the patent specification. However, the specification fails to disclose and the drawings fail to illustrate the specific manner in which the first resilient member 222 is (i) structured, (ii) installed so as to interact with the support frame 220 and the support unit 200, and (iii) configured to apply a resilient force to the support frame 220 such that one moxibustion device 211 is moved upward. An insufficient explanation is provided as to the specific structure required to achieve the desired result. Absent the disclosure of essential features, the specification fails to demonstrate that the inventor(s) was in possession of the invention that is claimed.
Claim 24 recites “a second resilient member (214) configured to apply a resilient force to the moxibustion device (210) tending to move the moxibustion device (210) upward, wherein the second resilient member (214) is installed at the temperature detecting member (213).” Such an arrangement is discussed in broad terms at col. 10, ll. 34-51 of the patent specification. However, the specification fails to disclose and the drawings fail to illustrate the specific manner in which the second resilient member 214 is (i) structured, (ii) installed so as to interact with the moxibustion device 210 and the temperature detecting member 213, and (iii) configured to apply a resilient force to the moxibustion device 210 tending to move the moxibustion device upward. An insufficient explanation is provided as to the specific structure required to achieve the desired result. Absent the disclosure of essential features, the specification fails to demonstrate that the inventor(s) was in possession of the invention that is claimed.
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.
GROUND 5: Claims 1-25 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites the broad limitation “a moxibustion device (210) placed on the support unit (200)” (l. 10). The term “moxibustion” is defined as:
The burning of moxa on the skin in treating various diseases or disorders.1
A method of treatment, originally in Chinese medicine, in which a moxa is burned on the skin.2
The therapeutic use of moxa.3
(In Eastern medicine) the burning of moxa on or near a person’s skin as a counterirritant.4
The term “moxa” is defined as:
A soft, downy material, burned on the skin as a cauterizing agent or counterirritant, esp. in traditional Chinese and Japanese medicine.5
A flammable substance or material obtained from the leaves of certain Chinese and Japanese wormwood plants, especially Artemisia moxa; this substance or a similar one of cotton, wool, or the like, placed on the skin usually in the form of a cone or cylinder and ignited for use as a counterirritant.6
A soft woolly mass prepared from the ground young leaves of a Eurasian artemisia (especially Artemisia vulgaris) that is used in traditional Chinese and Japanese medicine typically in the form of sticks or cones which are ignited and placed on or close to the skin or used to heat acupuncture needles.7
A downy substance obtained from the dried leaves of an Asian plant related to mugwort. It is burned on or near the skin in Eastern medicine as a counterirritant.8
Thus, the ordinary meaning of the claim term “moxibustion device” requires a device used to burn the substance known as moxa and place this burning substance on or near a person’s skin as a form of medicinal treatment. However, applicant’s disclosure provides no discussion of this type of device. Rather, the patent specification broadly states that “The moxibustion device 210 includes a cap type moxibustion device and a roller type moxibustion device, which are configured to provide a warm moxibustion effect and an acupressure therapy effect to the user's neck and waist areas” (col. 5, ll. 51-55). Absent from the specification is any description of the manner in which the moxibustion device is “configured to provide a warm moxibustion effect”. The scope of the vague term “warm moxibustion effect” is not defined. Based on the disclosure of a “roller type” device, and the illustration of rollers in the drawing figures, the person of ordinary skill in the art would not necessarily conclude that the disclosed “roller type” device is capable of being used to burn the substance known as moxa and place this burning substance on or near a person’s skin as a form of medicinal treatment. Thus, it is unclear how the claimed moxibustion device is structured, and it is also unclear how it functions to produce the disclosed moxibustion effect. The specification further states that “a temperature detecting member 213 configured to detect a temperature of the moxibustion device 210 is provided” (col. 10, ll. 34-36). This indicates that the claimed moxibustion device possesses and/or produces a sufficient level of heat to be detected by the disclosed temperature detecting member. However, the patent specification does not disclose that the claimed moxibustion device is actively heated, and fails to provide any explanation of the source of heat used. The skilled artisan would not consider the combustion of moxa as a heat source to be consistent with the disclosed “roller type” device.
For these reasons, the scope of the claimed “moxibustion device” cannot be determined with a reasonable degree of certainty. It is unclear whether this term limits the claim to a device used to burn the substance known as moxa and place this burning substance on or near a person’s skin as a form of medicinal treatment. Absent the necessary supporting disclosure, it is unclear what structure(s) is encompassed by the claim and what structure(s) is excluded thereby.
Claim 1 first recites the broad limitation “a moxibustion device (210) placed on the support unit (200)” (l. 10) and later recites the narrower limitations “a support frame (220) on which the moxibustion device (210) is mounted, wherein the support frame (220) is installed at an upper surface of the support unit (200) and the support frame (220) is pivotally installed at a pivot shaft (221)” (ll. 11-13). Such a recitation of a broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) is considered indefinite because the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. That is, there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 recites “the conveyance unit (100) includes a plate-shaped body” (l. 14). This subject matter is indefinite because “plate-shaped” is ambiguous. A plate can be circular or polygonal. It can also be flat or cupped/recessed. Since no precise shape is necessarily associated with the term “plate”, it is not possible to ascertain with any degree of certainty what shapes are encompassed by the claim and what shapes are excluded thereby.
Claim 1 first recites the limitation “the elevation unit (300) passing through the through-hole (140)” (ll. 16-17) and later recites the limitation “wherein at least a portion of the elevation unit (300) is passed through the through-hole (140) to be placed under the conveyance unit (100) when the support unit (200) is settled on the conveyance unit (100)” (ll. 18-20). Such a recitation of a broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) is considered indefinite because the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. That is, there is a question or doubt as to whether the feature introduced by the narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 recites “the elevation unit (300) passing through the through-hole (140)” (ll. 16-17). This recitation inaccurately implies and/or encompasses a configuration in which the entire elevation unit 300 passes through the through hole 140. In contrast, the original disclosure only describes embodiments in which the guide member(s) 310 of the elevation unit 300 passes through the through hole 140. See col. 13, ll. 1-4; Figs. 9, 11 and 12A. Thus, the claim is indefinite due to the inconsistency between the scope of the claim and the scope of the disclosure.
Claim 1 recites “at least a portion of the elevation unit (300) is passed through the through-hole (140) to be placed under the conveyance unit (100) when the support unit (200) is settled on the conveyance unit (100)” (ll. 18-20). Due to the “at least a portion of the elevation unit” claim language, the claim encompasses a configuration in which other portions of the elevation unit (other than the guide member(s) 310) pass through the through hole 140 to be placed under the conveyance unit 100. Thus, the claim is indefinite due to the inconsistency between the scope of the claim and the scope of the disclosure.
In claim 3, the term “a detachable gear surface” (l. 2) is indefinite because a “surface” is not a structural element and, thus, is incapable (by itself) of being “detachable”. Rather, the surface must be a feature of a structural element, with the structural element being detachable. Thus, the claim is indefinite because no detachable structural element is claimed.
Claim 3 recites “the detachable gear surface (311) is installed inside the guide member (310)” (ll. 2-3). This subject matter is indefinite because a “surface” is not a structural element and, thus, is incapable (by itself) of being “installed”. Rather, the surface must be a feature of a structural element, with the structural element being installed. Thus, the claim is indefinite because no installed structural element is claimed.
Claim 3 recites “the detachable gear surface (311) is installed inside the guide member (310), and the rotary member (320) is a pinion (321) installed inside the guide member (310)” (ll. 2-4). Due to the phrase “installed inside”, the claim encompasses a configuration in which the gear surface 311 and the pinion 321 are both situated within the outer boundaries or confines of the guide member 310. However, such a definition of the gear surface 311 and the pinion 321 does not comport with the specification. As shown in Fig. 12A, the gear member 350 extends from the guide member 310 such that its gear surface is not “installed inside” the guide member 310. Further, the pinion 321 is separate from the guide member 310 and is not “installed inside” the guide member 310.
Claim 4 recites “wherein the guide member (310) is one of a plurality of guide members (310) and wherein the rotary member (320) is one of a plurality of rotary members (320).” This broad recitation allows for a configuration including three, four, five or even more guide members, and an equal number or an unequal number of rotary members. However, the original disclosure does not describe any embodiment having (i) three or more guide members, (ii) three or more rotary members, or (iii) a plurality of rotary members of unequal number to a plurality of guide members. While the provision of a plurality of guide members and a plurality of rotary members in mentioned broadly in the specification, their specific structure/arrangement is not described in the specification or illustrated in the drawings in the case of three or more guide members, three or more rotary members, or rotary members of unequal number to guide members. Thus, the claim is indefinite due to the inconsistency between the scope of the claim and the scope of the disclosure.
Claim 5 recites “wherein the conveyance unit (100) includes a driving member (330)” (ll. 1-2). However, the original disclosure defines the driving member 330 as a component of the elevation unit 300. See col. 6, ll. 33-36. The driving member 330 cannot be considered to be a component of the conveyance unit 100 if it is defined as a component of the separate elevation unit 300. Further, the original disclosure describes the driving member 330 as being installed under the conveyance unit 100. See col. 7, ll. 52-54. However, this disclosure (that the driving member 330 is installed under the conveyance unit 100) does not comport with the claim requirement that the conveyance unit 100 includes the driving member 330. Thus, the claim is indefinite due to the inconsistency between the claim and the disclosure.
Claim 6 recites “a gear surface (311) is installed at the guide member (310)” (ll. 2-3). This subject matter is indefinite because a “surface” is not a structural element and, thus, is incapable (by itself) of being “installed”. Rather, the surface must be a feature of a structural element, with the structural element being installed. Thus, the claim is indefinite because no installed structural element is claimed.
Claim 6 recites “a gear surface (311) is installed at the guide member (310)” (ll. 2-3). This subject matter is indefinite because it is unclear what structural relationships are encompassed by the unconventional phrase “installed at”. Does this require the gear surface to be installed on the guide member? Does it encompass other relationships between the gear surface and the guide member? Thus, the claim is indefinite because it is not possible to ascertain with a reasonable degree of certainty what subject matter is encompassed by the claim and what subject matter is excluded thereby.
Claim 7 recites “a limit switch (120) at one of the conveyance unit (100) and the guide member (310), wherein a detection protrusion (312) is installed at the other one of the conveyance unit and the guide member” (ll. 2-4). The recited term “at” and the recited phrase “installed at” render the claim indefinite for essentially the same reasons given above with respect to claim 6.
Claim 7 recites “…and when the detection protrusion (312) enters the limit switch (120), a lowering operation of the support unit (200) is stopped” (ll. 4-5). Such an arrangement is discussed in broad terms at col. 12, ll. 3-11 of the patent specification. However, the specification fails to disclose and the drawings fail to illustrate the specific manner in which activation of the limit switch causes a lowering operation of the support unit 200 to be stopped. No explanation is provided as to the specific structure required to achieve the desired result. Absent the necessary supporting disclosure, the claim is rendered indefinite. Further, the claim fails to recite the structure necessary to cause a lowering operation of the support unit 200 to be stopped. Thus, the claim is incomplete for omitting an essential element(s), such omission amounting to a gap between the elements.
Claim 8 recites “a rotation detection member configured to detect a raising operation of the guide member (310) is installed at the driving member (330).” Such an arrangement is discussed in broad terms at col. 12, ll. 12-19 of the patent specification. However, the specification fails to disclose and the drawings fail to illustrate the specific manner in which the rotation detection member 331 (i) is structured, (ii) is installed on the driving member 330, (iii) interacts with the driving member and/or the guide member 310, and (iv) functions to detect a raising operation of the guide member 310. Absent the necessary supporting disclosure, the claim is rendered indefinite.
Claim 9 recites “the conveyance unit (100) and the support unit (200) are hinged through a hinge unit (400).” This subject matter is indefinite because it is unclear whether it requires that the conveyance unit 100 and the support unit 200 “are hinged” to one another, or whether it requires these elements to be hinged to some other element.
Claim 10 recites “a connecting member (420) installed adjacent the protrusion member (410)” (l. 4). This subject matter is indefinite because it requires the connecting member 420 to be “installed”, but it fails to specify what element the connecting member 420 is installed on. The requirement that the connecting member 420 is “adjacent the protrusion member” does not limit the connecting member 420 to being installed on any particular element.
Claim 11 recites “wherein an upwardly moving distance of the first moxibustion device (211) adjacent to a coupling position of the conveyance unit (100) and the support unit (200) is different from an upwardly moving distance of the second moxibustion device (212) opposite to the first moxibustion device (211) with respect to the pivot shaft (221).” This subject matter is indefinite because the claim fails to recite the structure necessary to cause an upwardly moving distance of the first moxibustion device 211 to be different from an upwardly moving distance of the second moxibustion device 212. Thus, the claim is incomplete for omitting an essential element(s), such omission amounting to a gap between the elements.
Claim 12 recites “the upwardly moving distance of the first moxibustion device (211) is larger than the upwardly moving distance of the second moxibustion device (212).” This subject matter is indefinite because the claim fails to recite the structure necessary to cause the upwardly moving distance of the first moxibustion device 211 to be larger than the upwardly moving distance of the second moxibustion device 212. Thus, the claim is incomplete for omitting an essential element(s), such omission amounting to a gap between the elements.
Claim 13 recites “a protrusion (223) that extends downward from a lower end of the support frame (220)” (l. 2). The original disclosure describes the protrusion 223 as extending downward and formed at the lower end of the support frame 220. See col. 11, ll. 17-20