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 .
A complete action on the merits of pending claims 1-17 appears herein.
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. 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). Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the subject matter of claims 1-17 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
The drawings are objected to under 37 CFR 1.83(a) because they fail to show any details of the disclosed invention as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). 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.
The drawings are objected to under 37 CFR 1.83(b) because they are incomplete. 37 CFR 1.83(b) reads as follows:
When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
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.
Claim Objections
Claims 1 and 6 are objected to because of the following informalities:
Regarding claim 1, the limitation “the dielectric has having a treatment surface” should read --the dielectric has a treatment surface--
Regarding claim 6, the phrase “the electrical contacting” should read –the electrical bolt contacting--
Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-6, and 9-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dirk (WO 2020083992 A1) in view of Brannan (US 2011/0077636 A1).
Regarding claim 1, Dirk teaches a plasma treatment device for treating a skin surface containing living cells with a dielectric barrier plasma, (Fig. 4a-c) comprising:
a housing with a grip; (Fig. 3, Char. 9: housing)
a treatment head arranged on the housing; (Fig. 3-4, Char. 15: brush head)
an electrode arrangement provided on the treatment head, (Fig. 3-4, Char. 5: electrode arrangement) wherein the electrode arrangement comprises at least one electrode (Fig. 3-4, Char. 3: electrode) and a dielectric that completely covers the at least one electrode with respect to the skin surface to be treated, (Fig. 3-4, Char. 7 and 33) wherein the dielectric has having a treatment surface on a surface section, (Fig. 3-4, Char. 7: dielectric) wherein the plasma treatment device is configured such that the surface section comprising the treatment surface projects out of the treatment head towards the skin surface to be treated; (Fig. 3-4) and
a high-voltage stage arranged in the housing for generating high-voltage signals required for generating the plasma, (Par. [0137] and Fig. 1 and 4, Char. 65: high-voltage stage) wherein said high-voltage stage is or can be brought into electrical contact with the at least one electrode of the electrode arrangement by a connection arrangement (Fig. 4a-c, Char. 10, 71, and 73) comprising at least one high-voltage supply line; (Par. [0137] and [0154]; Fig. 1 and 4, Char. 10: high-voltage supply line)
Dirk, as applied to claim 1 above, is silent regarding the dielectric of the electrode arrangement being formed at least partially from a polyurethane gel which is not a hydrogel.
Brannan, in a similar field of endeavor, teaches an electrosurgical device for treating a skin surface (Par. [0009]) comprising a dielectric spacer formed from a polymer-based material; (Par. [0049]) and that polyurethane gel which is not a hydrogel is a dielectric polymer-based material. (Par. [0047])
It has been held that “the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination”- MPEP 2144.07 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 Dirk to incorporate the teachings of Brannan and have the dielectric (7) of Dirk be/include a polyurethane gel which is not a hydrogel since this materials is recognized by Brannan as being suitable for use as an insulating material.
Regarding claim 2, the combination of Dirk/Brannan, as applied to claim 1 above, teaches the polyurethane gel is covered by a skin layer at least on the treatment surface. (Dirk: Fig. 4c: The surface tissue contacting surface of dielectric (7) would contact the patient’s skin during use, thereby being covered by a skin layer)
Regarding claim 3, the combination of Dirk/Brannan, as applied to claim 1 above, teaches the dielectric is arranged in the treatment head on a flat carrier of a dielectric support. (Dirk: Fig. 3-4: Char. 19: bristle carrier; Par. [0152]: Bristle carrier (19) supports dielectric layers (33) and dielectric (7))
Regarding claim 4, the combination of Dirk/Brannan, as applied to claim 1 above, teaches the electrode arrangement is detachably arranged on the housing, (Dirk: Fig 4a-c and Par. [0153]) and wherein the connection arrangement connects the at least one electrode to the high-voltage stage when the electrode arrangement is mounted on the housing in an inserted position. (Dirk: Fig. 4a-c and Par. [0154]: Connection (73) is designed as a connecting pin configured to be received by contact arrangement (71) designed as a connecting socket)
Regarding claim 5, the combination of Dirk/Brannan, as applied to claim 1 above, teaches the at least one electrode is led out of the dielectric with an electrical connecting bolt on a rear side of the treatment head opposite the treatment surface, (Dirk: Fig. 4, Char. 73; Par. [0154]: Connection (73) is designed as a connecting pin) wherein the at least one electrode is surrounded by an electrically insulating cover, (Dirk: Fig. 4a and Par. [0046]: Bristle carrier (19) can be formed completely from a rigid dielectric plastic; Based on Fig. 4b, it appears the rest of removable part (45) is also made of the same material as bristle carrier (19)) wherein the electrical connecting bolt has a contact surface (Dirk: Fig. 4a-c and Par. [0154]: The surface of connection (73) that contacts contact arrangement (71)) that engages with a counter contact provided in the housing for electrical contacting when the electrode arrangement is mounted on the housing in the inserted position. (Dirk: Fig. 4a-c and Par. [0154]: Connection (73) is designed as a connecting pin configured to be received by contact arrangement (71) designed as a connecting socket)
Regarding claim 6, the combination of Dirk/Brannan, as applied to claim 5 above, teaches the electrically insulating cover protrudes beyond the contact surface of the electrical connecting bolt (Dirk: Fig. 4a-b) so that
the electrical contacting with the counter contact occurs inside the insulating cover when the electrode arrangement is mounted on the housing in the inserted position, (Dirk: Fig. 3a-c)
or that
the contact surface of the electrical connecting bolt protrudes beyond the electrically insulating cover so that the electrical contacting with the counter contact occurs outside of the insulating cover in a mount in the housing when the electrode arrangement is mounted on the housing in the inserted position. (This limitation is not positively recited and is not required by the current claim language so long as the limitation “the electrical contacting with the counter contact occurs inside the insulating cover when the electrode arrangement is mounted on the housing in the inserted position” is met.)
Regarding claim 9, the combination of Dirk/Brannan, as applied to claim 1 above, teaches the treatment head is moveably mounted in the housing and is operatively connected to a motor arranged in the treatment head such that the electrode arrangement is moveable while the dielectric barrier plasma is generated. (Dirk: Par. [0066] and Par. [0140])
The combination of Dirk/Brannan, as applied to claim 1 above, is silent regarding the motor being arranged in the housing.
However, absent a statement of criticality AND unexpected results, 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 combination of Dirk/Brannan, as applied to claim 9 above, such that the drive unit of Dirk is disposed within the housing (9) instead of the brush head (15) since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claim 10, the combination of Dirk/Brannan, as applied to claim 1 above, teaches an electric energy store in the housing that is configured to supply the high-voltage stage with electrical energy. (Dirk: Fig. 3, Char. 61: battery; Par. [0137])
Regarding claim 11, the combination of Dirk/Brannan, as applied to claim 1 above, teaches the high-voltage stage is or can be connected to an external energy source. (Dirk: Par. [0165])
Regarding claim 12, the combination of Dirk/Brannan, as applied to claim 1 above, teaches the treatment surface of the dielectric has a spacer with elevations and depressions between them for forming a gas space. (Dirk: Par. [0060]-[0061])
Regarding claim 13, the combination of Dirk/Brannan, as applied to claim 1 above, teaches the electrode arrangement is configured such that the at least one electrode interacts with the skin surface to be treated as a counter electrode to generate the plasma. (Dirk: Par. [0137])
Regarding claim 14, Dirk teaches a treatment head for a dielectric barrier plasma discharge (Fig. 4a-c, Char. 15: brush head) when used with a plasma treatment device, (Fig. 4a-c, Char. 43: handle part) comprising:
an electrode arrangement (Fig. 3-4, Char. 5: electrode arrangement) with at least one electrode (Fig. 3-4, Char. 3: electrode) and a dielectric completely covering the electrode to a skin surface to be treated, (Fig. 3-4, Char. 7 and 33) wherein the dielectric has a treatment surface, (Fig. 3-4, Char. 7: dielectric) wherein the treatment surface projects with a surface section comprising the treatment surface out of the treatment head towards the surface to be treated (Fig. 4a-b) and is at least partially formed of a dielectric material. (Fig. 3-4, Char. 33 and 7)
Dirk, as applied to claim 1 above, is silent regarding the dielectric material being a polyurethane gel.
Brannan, in a similar field of endeavor, teaches an electrosurgical device for treating a skin surface (Par. [0009]) comprising a dielectric spacer formed from a polymer-based material; (Par. [0049]) and that polyurethane gel is a dielectric polymer-based material. (Par. [0047])
It has been held that “the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination”- MPEP 2144.07 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 Dirk to incorporate the teachings of Brannan and have the dielectric (7) of Dirk be/include a polyurethane gel which is not a hydrogel since this materials is recognized by Brannan as being suitable for use as an insulating material.
Regarding claim 15, the combination of Dirk/Brannan, as applied to claim 1 above, is silent regarding the dielectric is produced from a reaction of at least one polyol with at least one isocyanate, and wherein an immobilized disperse phase of the polyurethane gel is formed by the at least one polyol.
However, the claim limitation “the dielectric is produced from a reaction of at least one polyol with at least one isocyanate, and wherein an immobilized disperse phase of the polyurethane gel is formed by the at least one polyol” is a product-by-process limitation and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product in the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698; 227 USPQ 964, 966 (Fed. Cir. 1985) As Brannan teaches the end product of the polyurethane gel in the Dirk/Brannan combination applied to claim 2 above, Brannan teaches the claim limitations as the patentability of the product does not depend on its method of production.
Regarding claim 16, the combination of Dirk/Brannan, as applied to claim 1 above, is silent regarding a water content of the polyurethane gel is below 5% by weight.
However, the polyurethane gel of Brannan would have a water content. Absent a statement of criticality AND unexpected results, the water content in the polyurethane gel of Brannan is interpreted as reading on the claimed “below 5% by weight.”
Regarding claim 17, the combination of Dirk/Brannan, as applied to claim 2 above, teaches the electrode arrangement with the treatment head is interchangeable. (Dirk: Fig. 4a-c: Brush head (15) is detachable and therefore interchangeable with another brush head (15))
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dirk (WO 2020083992 A1) in view of Brannan (US 2011/0077636 A1), as applied to claim 5 above, and further in view of Weber (US 5,035,695).
Regarding claim 7, the combination of Dirk/Brannan, as applied to claim 5 above, teaches the insulating cover is coupled to the housing via a snap-fit connection. (Dirk: Par. [0143]-[0144]: Removable part (45) and the handle (43) are designed as a snap connection.)
The combination of Dirk/Brannan, as applied to claim 5 above, is silent regarding at least one spring-loaded tappet is arranged radially to the insulating cover in the housing, said at least one spring-loaded tappet interacting via a snap-in section in a recess in the insulating cover for detachably mounting the electrode arrangement on the housing in the inserted position.
Weber, in a similar field of endeavor, teaches an electrode blade comprising at least one spring-loaded tappet (Fig. 7A-B, Char. 129: spring-like protrusions) interacting via a snap-in section in a recess in an instrument for detachably mounting the electrode blade within said instrument. (Fig. 7A-B; and Col. 5, Lines 41-68: Spring-like protrusions (129) formed on body (89) facilitate the snap-in retention of body (89) and captivated electrode (71) within instrument (9))
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 combination of Dirk/Brannan, as applied to claim 5 above, to incorporate the teachings of Weber, and to configure the receptacle within the housing (9) of Dirk for receiving removable part (45) of Dirk to comprise the spring-like protrusions (129) of Weber configured to interact with at least one recess in removable part (45). Doing so would be a simple substitution of one snap-fit arrangement for another for the predictable result of securing removable part (45) of Dirk within housing (9) of Dirk.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dirk (WO 2020083992 A1) in view of Brannan (US 2011/0077636 A1), as applied to claim 4 above, and further in view of Wandke (US 2020/0170098 A1).
Regarding claim 8, the combination of Dirk/Brannan, as applied to claim 4 above, teaches an inserted position of the electrode arrangement in the housing. (Dirk: Fig. [0153]-[0154] and Fig. 3-4: Whatever position/orientation brush head (15) assumes when inserted into the housing (9))
The combination of Dirk/Brannan, as applied to claim 4 above, is silent regarding at least one position sensor is designed to detect the inserted position of the treatment head in the housing, wherein the high-voltage stage is switched off unless the inserted position is detected by the at least one position sensor.
Wandke, in a similar field of endeavor, teaches at least one position sensor designed to detect the inserted position of a treatment head in a housing, (Fig. 10-11 and Par. [0052]: Optical reading instruments (44) may detect when the electrode assembly is inserted into the housing via optical encoding) wherein the detected position of the treatment head is used to activate/control an electrosurgical supply unit. (Claim 6: The encoding actuates at least one switch of the supply unit)
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 combination of Dirk/Brannan, as applied to claim 8 above, to incorporate the teachings of Wandke, and configure the brush head (15) of Dirk to include the optical encoding (43) of Wandke and to configure the housing (9) of Dirk to include the optical reading instrument (44) of Wandke and at least one switch (26) of Wandke, such that energy delivery to the electrodes (3) of Dirk is controlled based on the detected connection/detachment of brush head (15). Doing so would minimize the risk of injury/damage caused delivering energy through contact arrangement (71) of Dirk while brush head (15) of Dirk is detached and connection (73) of Dirk is uncoupled from contact arrangement (71).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS SHEA BORSCH whose telephone number is (571)272-5681. The examiner can normally be reached Monday-Thursday 7:30AM-5:30PM EST.
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/N.S.B./ Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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