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 .
Formal Matters
Applicant’s Response and Amendments filed preliminary amendments filed 13 April 2026 are acknowledged. Claims 1, 2, and 4-16 are currently amended. New claims 17-22 are added. Claims 1-22 are pending and under examination.
Objections/Rejections Withdrawn
The objection to claim 9 because of the recitation of “(B)” in line 2 is withdrawn in light of Applicant’s amendments.
The rejections of claims 5 and 7 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as lacking antecedent basis is withdrawn in light of Applicant’s amendments.
The rejection of claims 1-16 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, regarding the “optionally” terminology, is withdrawn in light of Applicant’s amendments.
The rejection of claims 4, 7-11, 13, and 16 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, regarding broad ranges cited together with narrower ranges, is withdrawn in light of Applicant’s amendments.
The rejection of claims 9-11 and 13 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, regarding the phrase “such as” is withdrawn in light of Applicant’s amendments.
The rejection of claims 4, 7-10, 13, 15, and 16 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, regarding the term “preferably”, is withdrawn in light of Applicant’s amendments.
The rejection of claims 2, 5-7, 11-13, 15, and 16 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regarding the term “in particular”, is withdrawn in light of Applicant’s amendments.
The rejection of claim 7 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, regarding the list of preferred diameters for the backing pad and recitations of “in particular” and multiple “preferentially” embodiments, is withdrawn in light of Applicant’s amendments.
Response to Arguments
In the response filed 13 April 2026, Applicant traverses the art-based rejections under 35 USC 102(a)(1) over Rhoades (US 20060058714) and 35 USC 103 over Rhoades and Ignon (US 20090192442) and Rhoades and Menke (US 20110028993).
Applicant argues that Rhoades does not teach the layered (laminated) structure as claimed. Applicant argues that the claim language “establishes a precise three-layer sandwich construction in which a foam core serves as the central structural element with fabric or film layers bonded to both the upper and lower surfaces of the foam core by means of adhesive layers. Applicant argues that Rhoades does not anticipate the claims and that the rejection relies on an “improper piecing together of disparate passages from Rhoades that discuss several different structural elements in different contexts”. Applicant argues that the structure of the device taught by Rhoades does not teach the layers as claimed (Remarks, p. 8-9). Applicant argues that Rhoades addresses different aspects of the device in different locations of the reference and that the claim mapping amounts to “an improper picking and choosing”.
Applicant’s arguments have been fully considered, but they are not persuasive. Applicant’s claims recite the open-language transitional phrase “comprising”. As such, the device (product) need only comprise the components set forth in the claim as essential elements. Other elements may be added and still form a construct within the scope of a claim. MPEP 2111.03. Additionally, MPEP 2123 expressly states that a patent is still relevant for all that it would have reasonably suggested to one of ordinary skill in the art including nonpreferred or alternative embodiments. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
The rejections clearly point out that tool 110 of Rhoades is the applicable tool for comparative purposes. The skin abrasion device is identified as attachment 200. The paragraph numbers of Rhoades are not the defining factor when determining whether the reference is teaching the same embodiment of a product. Rather it is whether the reference teaches multiple embodiments of the product having different features or configurations. Any reference may take as many pages, paragraphs, columns, and line numbers as they need to explain different parts of the products/devices/methods, etc. Applicant’s reliance on “lists of components” as in In re Arkley and the “picking and choosing” in Net MoneyIN, Inc. v. VeriSign, Inc., is not well founded.
In Net MoneyIN, the CAFC stated that the reference must “clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” [emphasis added] (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)). In the present situation, Rhoades teaches the components in a single embodiment as cited in the rejection (attachment 200). There is no need to “pick and choose” to combine based on several selections from lists disclosed in the reference. In the case of porous material and fabrics, the listing of particular species from the genus of fabrics or film, does not detract from the teaching because the genus is expressly taught in the same embodiment. Similarly, the genus of “fabric or film” is recited in the claims. Mapping to a list of anticipatory species (members of the claimed genus) when the claimed genus is expressly included in the embodiment cited in the prior art does not detract from the anticipatory nature of the reference.
As explained in the rejection, regarding the structure of the abrasive product, the examiner specifically pointed to a single embodiment shown in FIGs 4A/B. In FIGs 4A/B, the figure annotates several structures of the hand-held cordless skin abrasion device. The examiner specifically pointed to applicator attachment 200 (¶52) that includes pad 220 (¶52), cushioning layer 261 (¶52) exterior surface portion 255 (¶52) abrasive surface and backing (¶52), and body 265 (¶52). The adhesive taught in ¶60 is still expressly taught in reference to applicator attachment 200. Thus, although the adhesive may be taught in a different paragraph, it is still expressly taught as a component of the same embodiment. Similarly, FIG 4A, indicates the head portion as element 120. Rhoades teaches that treatment attachments to head portions 120 (same embodiment as FIG 4A) at ¶96. In ¶96 Rhoades teaches that the treatment attachment has a porous material such as a sponge. Although this is recited as a finite list of species of porous material, it is expressly taught as a finite list directly related to the treatment attachment comprising a porous material (genus) comprising a sponge (species). The paragraph (¶96) also teaches that the treatment attachment may be attached to head portion 120 by a non-porous material such as fabric (¶96). Accordingly, all of these components and species of recited genera are taught as being associated with the same single embodiment FIGs 4A/B which is also identified as head portion 120. As addressed by the CCPA in Arkley, the claim embodiments mapped to the Rhoades reference are DIRECTLY related to each other by teachings in the reference, as expressly demonstrated by the same figures (4A/B) and element number (head portion 120). Accordingly, Applicant’s argument that the Office Action has improperly engaged in “picking and choosing” from lists or among embodiments is unpersuasive.
Regarding the rejection of Rhoades and Ignon over claims 5 and 16, Applicant argues that the rationale for the combination “is flawed … conclusory and improper as not being based on rational underpinnings” (Remarks, p. 10). Applicant argues that the examiner does not explain why a person of ordinary skill seeking to improve Rhoades device would look to wireless control features, what problem such wireless control would solve, or why a skilled artisan would have a reasonable expectation that incorporating Ignon’s wireless communication system into Rhoades device would successfully achieve the claimed invention (Remarks pp. 10-11). Applicant’s arguments have been fully considered, but they are not persuasive.
As stated of record, Rhoades and Ignon both teach devices comprising handpiece assemblies for treating the skin. Rhoades discloses the device comprising means for preselecting the rpm of said oscillating motion (¶44, motion selection switch 285). Ignon specifically addresses the inclusion of a device controller for changing the settings of the device through a wireless connection, including Bluetooth (¶114). Because Ignon includes a wireless communication (Bluetooth standard) setting along with several other manual control setting means, a person of ordinary skill in the art, seeking to control the revolutions per second of oscillating motion or the length of time of the oscillating motion using means for wireless communication with a second device using Rhoades’ architecture would reasonably consult Ignon’s handpiece assembly solution. Rhoades already expressly teaches motion selection switch 285 as a means of preselecting the rpm of the oscillating motion (¶44).
One of ordinary skill in the art desiring to control the same process by another means would reasonably look to known and established means for controlling the same process in the same field of endeavor. Ignon’s solution is in the same field of endeavor and demonstrates what was well known as of the effective filing date of the invention, that of providing various means of setting controls. Ignon includes a wireless communication (Bluetooth standard) setting along with several other manual control setting means in its handpiece assemblies for treating skin. A person of ordinary skill in the art, seeking to control the revolutions per second of oscillating motion or the length of time of the oscillating motion using means for wireless communication would reasonably consult Ignon’s handpiece assembly solution, as one of ordinary skill in the art generally appreciates the field in which they work.
Ignon’s wireless communication can be incorporated alongside Rhoades’ handpiece assembly (same general location and interaction with the handpiece assembly 100 and applicator attachment 200) using known assembly methods without redesigning Rhoades’ core device handpiece and applicator attachment. It is well established that obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. In re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (discussing rationale underlying the motivation-suggestion-teaching test as a guard against using hindsight in an obviousness analysis).
Contrary to Applicant’s arguments, the rejection has set forth a reasonable rationale for the combination. Applicant is free to disagree with the rationale and there may be other rationales available for the combination. However, Applicant is mistaken in the requirement for the level and degree of questioning and explanation required as set forth on pp. 10-11 of the Remarks filed 13 April 2026. The applicable legal standard has long been established in Graham v. Deere, 383 US 1 (1966), which the Office Action provided in the rejection made under 35 USC 103. See also MPEP 2141.
Applicant’s argument regarding that the Office Action “has not established why this existing control mechanism would be considered inadequate or why wireless control would represent a predictable improvement” is not persuasive. Implicit motivation to combine cited prior art references exists if the claimed improvement is technology-independent and combination results in a product or process that is more desirable, as well as if the suggestion to combine may be gleaned from the prior art as a whole. Motivation to combine exists in such circumstance even in the absence of a suggestion in the references themselves, since the desire to enhance commercial opportunities by improving products or processes is universal and even common-sensical, and in such a situation the proper question is whether the ordinary artisan possesses knowledge and skill render him or her capable of combining prior art references. (Dystar Textilfarben GmbH & Co., Deutschland KG v. C.H. Patrick Co., 80 USPQ2d 1641 at pp. 1651 and 1653 (Fed. Cir. 2006), citing Pro-Mold & Tool Inc., v. Great Lakes Plastics, Inc., 75 F.3d 1568, 37 USPQ2d 1626 (Fed. Cir. 1996)).
Contrary to Applicant’s assertions, providing wireless control features as of the effective filing date was old, ordinary, and common place, as demonstrated by the “Internet of Things”. Adding Bluetooth wireless connectivity was common place as of the effective filing date and was not unexpected. Moreover, it is well-established manual, mechanical device can be made automated or can be made compatible with automated technology is well-known (MPEP 2144.04(III), citing In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958)). In this case, like in In re Venner, the wireless connection accomplishes the same result as the switch of Rhoades. Accordingly, the mere automation of the manual activity performed by the switch is not sufficient to distinguish over the prior art. There is no new or unexpected result. In this case, the preselection of rpm of the oscillating motion and/or length of time of the oscillating motion is not new or unexpected in light of the automation. There is no evidence of a specific improvement in the way the automation is achieved. Ignon shows that it is routine. The automation does not solve a recognized problem in the art. Again, Ignon shows that automation is not a recognized problem in the art because it has already been done in handpiece assembly devices for treating the skin.
Regarding Applicant’s argument as to claims 6-13 over Rhoades and Menke, Applicant argues that the structural arrangements “are neither interchangeable with nor combinable with Rhoades” (Remarks pp 11-12). Applicant argues that Menke’s laminate structure requires abrasive material throughout the finer layer. Applicant argues that the structural requirements of Menke’s fibers are different what is required in the claims (Remarks, p. 12). Applicant argues that Menke’s teaching that abrasive material “means that Menke fails to teach or suggest a laminate comprising a fabric layer, a foam core, and a separate abrasive resin layer of the type claimed” and also that Rhoades cannot cure the deficiencies of Menke (Remarks p. 12). Applicant argues that Menke’s structural arrangements do not comport with claim 1 (Remarks, pp. 12-13). Applicant argues that Menke provides multiple embodiments and that “there is no teaching or suggestion or valid rationale for combining Menke’s distinct embodiments” (Remarks, p. 14). Applicant argues that the abrasive particles on the lower nonwoven material could not be attached to the loop-engageable fastener of the device because the abrasive particles on that side would interfere with the hook and loop engagement (Remarks, p. 14). Applicant also argues that “the selection of which embodiment to use as a starting point and which features to combine would require the exercise of inventive judgement and the reference does not suggest that features from these different embodiments should be combined nor does not provide guidance as to how such a combination would be accomplished or what advantages would result” (Remarks, p. 15).
Additionally, with regard to claims 6-13, Applicant argues that while Menke teaches a hook and loop attachment system, Menke does not teach or suggest modifying the structure to have abrasives only on the upper side while providing a lower fabric side suitable for loop engagement on the lower side (Remarks, p. 15). With regard to claims 7-13, Applicant argues that the specific dimensional and material characteristics for the layers of the laminated structure have a different configuration in Menke than what is claimed (Remarks. p. 16). Applicant argues that the Office Action has provided no technical analysis explaining why dimensional specifications from Menke’s different structure would be directly applicable to the claimed structure (Remarks, p. 16).
Applicant’s arguments have been fully considered, but they are not persuasive. Menke need not teach what is taught by Rhoades. Additionally, Applicant’s arguments over the rejection of claims 6-13 are directed against the teachings of Menke alone, rather than the combination of Rhoades and Menke. Menke need not teach the structure of the abrasive pad or other components taught by Rhoades. Applicant is also reminded that Menke and Rhoades are relevant for all that they contain and would have reasonably suggested to one having ordinary skill in the art. MPEP 2123.
Claim 6 is directed to a backing pad using a hook and loop system. As explained of record, Rhoades teaches that the skin abrasion device can be detachably connected to device or tool 110 by a hook and loop coupling material (¶61). Rhoades also teaches that a treatment attachment may be replaced by switching the treatment attachment with a similar or different type of treatment attachment after none, one, or many uses (¶76). Rhoades does not expressly teach that the abrasive product is attached to the backing pad using a hook and loop system wherein the backing pad comprises the hook part of said system, and wherein the abrasive product comprises the loop part of said system positioned at the lower fabric side of said abrasive product. Menke teaches a hand held mechanical skin resurfacing device wherein the attachable abrasive product is attached to a backing pad using a hook and loop system (FIG 2; loop-engageable surface 27, ¶61), wherein the backing pad comprises the hook part of said system (FIG 2; ¶53), and wherein the abrasive product comprises the loop part of said system positioned at the lower fabric side of said abrasive product (FIG 2; ¶54).
The Office Action mailed 1/13/2026 explained that Rhoades and Menke both teach devices comprising hand held assemblies for treating the skin and both teach that the devices may include hook and loop systems. Menke specifically addresses the structure of the hook and loop system attaching the adhesive product to the backing. A person of ordinary skill in the art, seeking to utilize a hook and loop system to reversibly or temporarily attach an adhesive product to the device’s backing pad, would reasonably consult Menke’s solution given that it specifically addresses a way to add and remove disposable adhesive pads, especially in light of the hook and loop material coupling taught by Rhoades at (¶61). Menke’s adhesive product/backing hook and loop system can be incorporated alongside Rhoades’ handpiece assembly using known assembly methods without redesigning the layers of Rhoades’ abrasive product component, given that Menke teaches the hook and loop system attaching the adhesive product to the backing.
Regarding Applicant’s arguments as to claims 7-13, Menke need not teach what is taught by Rhoades. It is unclear why Applicant argues Menke alone when the rejection was made as a combination of Rhoades in view of Menke and the laminated structure is expressly taught by Rhoades as recited in the rejection over claim 1, as further explained above.
Additionally, insofar as claims 7-13 are drawn to the dimensions of the components of the device of claim 1, Applicant is referred to the rejections of record and as set forth herein, which teach the claimed dimensions or an overlapping range. Regarding Applicant’s argument that the Office Action has provided no technical analysis explaining why dimensional specifications from Menke’s different structure would be directly applicable to the claimed structure, Applicant is reminded that the rejection is a combinatorial rejection over Rhoades and Menke. Additionally, Applicant is referred to MPEP 2144.04 and Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In Gardner the Federal Circuit held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Rejections Maintained and Modified – Necessitated by Amendment
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.
Claims 1-4, 14, and 15 remain rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rhoades, US 20060058714 (16 March 2006), for the reasons of record and the reasons set forth herein.
Regarding claim 1, Rhoades teaches a hand-held (Abstract, tool 100), cordless (FIGs 4A-B; ¶39 battery powered) skin abrasion device (Abstract; attachment 200), comprising
a housing portion (¶140, handle 130),
an internal electric drive (¶42, motor 260),
a backing pad (¶52, pad 220), and
an attachable abrasive product (¶52, “exterior surface portion 255 (abrasive surface and backing)”), and
wherein said backing pad extends from said housing portion (FIGs 4A-B; ¶52),
said backing pad is configured to be set in an oscillating and/or random orbital or rotating motion by said electric drive (¶43, motor 260 drives eccentric mass 264 which rotates in rhythmic motions producing a vibration; ¶78), and
said attachable abrasive product is attached to said backing pad (¶52, “exterior surface portion 255 (abrasive surface and backing)”), in a mechanical manner (¶60, adhesive, heat bonding, tape, glue) said abrasive product has a laminated structure (FIG 4A; ¶52 pad 220, cushioning layer 261, exterior surface portion 255, abrasive surface and backing, body 265; ¶60, adhesive, heat bonding, tape, glue) with a foam core layer (¶52, cushioning layer 261; ¶96, sponge material) and a fabric or film layer (¶96, fabrics, used in conjunction with porous (sponge) material) which is adhered (¶60, adhesive, heat bonding, tape, glue) to an upper side of said foam core layer (¶52, cushioning layer 261; ¶96, sponge material) forming an upper fabric or film side of said abrasive product (FIG 4A; (¶52, “exterior surface portion 255 (abrasive surface and backing)”), and
to a lower side of said foam core layer (FIG 4A; ¶52 pad 220, cushioning layer 261, exterior surface portion 255, abrasive surface and backing) forming a lower fabric or film side of said abrasive product (FIG 4A; ¶52 “exterior surface portion 255 (abrasive surface and backing)”), and
said fabric or film layer is each adhered to said foam core layer by way of an adhesive layer (¶24, “being attached to that surface with an adhesive”; ¶60, adhesive, heat bonding, tape, glue), and
said upper fabric or film side comprises an abrasive layer (FIG 4A; (¶52, “exterior surface portion 255 (abrasive surface and backing)”) comprising abrasive particles (¶47).
Regarding claim 2, Rhoades teaches the device of claim 1, as set forth above,
wherein said device is driven by a battery (¶39 battery powered; ¶41, two AA batteries).
Regarding claim 3, Rhoades teaches the device of claim 1, as set forth above, wherein the handle portion is ergonomically formed (¶40, suitable for gripping by the human hand), and/or wherein the handle portion and the housing portionFIGs 4A-B; ¶40).
Regarding claim 4, Rhoades teaches the device of claim 1, as set forth above, wherein said backing pad is configured to be set in an oscillating motion of 1000 to 15000 rpm by said electric drive (¶78, “6,000 or fewer revolutions per minute”).
Regarding independent claim 14, Rhoades teaches a non-therapeutic method of abrading skin from at least one subject (FIG 12; ¶¶124-125), the method comprising:
(a) providing a skin abrasion device as defined in claim 1 (FIG 12; ¶125, tool 110, applicator attachment 200; ¶52, comprising exterior portion 255; ¶58 treatment attachments with abrasive particles), comprising a first attachable abrasive product with a selected first particle size of the abrasive particles (FIG 12; ¶126; ¶58 treatment attachments with abrasive particles; ¶129 exfoliated);
(b) conducting a first abrading step, wherein skin is abraded from a subject using the skin abrasion device of step (a) (FIG 12; ¶129 exfoliated);
(c) removing said first attachable abrasive product from said skin abrasion device, and attaching a second attachable abrasive product with a selected second particle size of the abrasive particles (FIG 12; ¶128); and
(d) conducting a second abrading step, wherein skin is abraded from a subject using the skin abrasion device resulting from step (c) (FIG 12; ¶131).
Regarding claim 15, Rhoades teaches the method of claim 14, as set forth above, wherein the subject in step (b) and step (d) is the same subject (FIG 12; ¶¶125-133).
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.
Claims 5 and 16 remain rejected under 35 U.S.C. 103 as being unpatentable over Rhoades, US 20060058714 (16 March 2006) in view of Ignon et al., US 20090192442 (July 30 2009) for the reasons of record and the reasons set forth herein.
Regarding claim 5, Rhoades teaches the device of claim 1, as set forth above, wherein said device comprises means for preselecting the rpm of said oscillating motion (¶44, motion selection switch 285).
The specification refers to “means for preselecting the rpm of said oscillating motion” as a device component or feature such as a button (Specification, p. 3) or speed adjustment control (Specification p. 3). These references are separately described from a means for a wireless connection with a second device, which are taught at p. 4 of the Specification and include an exemplary embodiment (“e.g.”) as using a Bluetooth standard (p. 4). The “said means for wireless communication is also exemplified as “for instance, a radio transceiver or receiver. Said second device may be a terminal device or a user equipment, or both” (Specification p. 4). Accordingly, the “means for preselecting the rpm of said oscillating motion” is broadly interpreted as a structure of a device, component, or feature such as a button (Specification, p. 3) or speed adjustment control (Specification p. 3) and equivalents thereof as well as device encompassing a radio transceiver, receiver, a terminal device, user equipment, a Bluetooth standard, and equivalents thereof.
Rhoades teaches motion selection switch 285. Rhoades teaches a device comprising a means within Applicant’s definition of a means for preselecting the rpm of said oscillating motion. Based on Applicant’s disclosure, the means may be a simple on/off button, an adjustment control mechanism, or a transceiver/receiver device. Accordingly, the “and/or” alternative requirements of the claim are met in the alternative reading, given the teachings of Rhoades.
However, in the interests of compact prosecution and to the extent that Rhoades does not teach the alternative claim limitations, a combinatorial rejection drawn to Rhoades in view of Ignon is applicable.
Rhoades does not teach the alternative length in time of said oscillating motion, in particular, wherein said means comprise means for wireless communication with a second device and wherein the rpm of said oscillating motion and/or the length in time of said oscillating motion are selected in response to receiving a message defining the rpm of said oscillating motion and/or the length in time of said oscillating motion from said second device via the wireless connection.
Ignon teaches handpiece assembly 100 for treating the skin (Abstract) comprising wireless communication via a controller that is separate from the handpiece assembly that can be connected through a wireless connection including Bluetooth (¶114). Ignon teaches that handpiece assembly 100 comprises a display that is adapted to provide information comprising settings and that the display can be configured to permit users to made adjustments (¶114). Selection devices or features including knobs, buttons, dials, and/or displays can be positioned on the handpiece assembly 100 (¶114).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine the teachings of Rhoades and Ignon, given that the prior art included each element claimed, although not necessarily in a single reference. Rhoades and Ignon both teach devices comprising handpiece assemblies for treating the skin. Although, Rhoades discloses the device comprising means for preselecting the rpm of said oscillating motion (¶44, motion selection switch 285), Rhoades does not teach the alternative embodiments of the claim comprising: and/or the length in time of said oscillating motion, in particular, wherein said means comprise means for wireless communication with a second device and wherein the rpm of said oscillating motion and/or the length in time of said oscillating motion are selected in response to receiving a message defining the rpm of said oscillating motion and/or the length in time of said oscillating motion from said second device via the wireless connection.
Ignon specifically addresses the inclusion of a device controller for changing the settings of the device through a wireless connection, including Bluetooth (¶114). Because Ignon includes a wireless communication (Bluetooth standard) setting along with several other manual control setting means, a person of ordinary skill in the art, seeking to control the revolutions per second of oscillating motion or the length of time of the oscillating motion using means for wireless communication with a second device in Rhoades’ architecture would reasonably consult Ignon’s handpiece assembly solution. Ignon’s wireless communication can be incorporated alongside Rhoades’ handpiece assembly (same general location and interaction with the handpiece assembly 100 and applicator attachment 200) using known assembly methods without redesigning Rhoades’ core device handpiece and applicator attachment.
Because the references address the same engineering problem (control mechanisms for handpiece assemblies used in skin treatment procedures) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (adding a display and wireless communication (Bluetooth) controller to the handpiece), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Regarding claim 16, Rhoades teaches the method of claim 14, as set forth above, further comprising after step (a) and prior to step (b), and/or after step (b) and prior to step (d) (FIG 12), preselecting the rpm of the oscillating motion of said device and/or the length in time of said oscillating motion of said device (turning on the device to engage the motor 160; ¶78.
Rhoades does not teach the optional recitation wherein the rpm and/or the time of said oscillating motion is selected via a wireless connection using a second device, in particular wherein said wireless connection uses a Bluetooth standard.
Ignon teaches handpiece assembly 100 for treating the skin (Abstract) comprising wireless communication via a controller that is separate from the handpiece assembly that can be connected through a wireless connection including Bluetooth (¶114). Ignon teaches that handpiece assembly 100 comprises a display that is adapted to provide information comprising settings and that the display can be configured to permit users to made adjustments (¶114). Selection devices or features including knobs, buttons, dials, and/or displays can be positioned on the handpiece assembly 100 (¶114).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine the teachings of Rhoades and Ignon, given that the prior art included each element claimed, although not necessarily in a single reference. Rhoades and Ignon both teach devices comprising handpiece assemblies for treating the skin. Although, Rhoades discloses the device comprising means for preselecting the rpm of said oscillating motion (¶44, motion selection switch 285), Rhoades does not teach the alternative embodiments of the claim comprising: and/or the length in time of said oscillating motion, in particular, wherein said means comprise means for wireless communication with a second device and wherein the rpm of said oscillating motion and/or the length in time of said oscillating motion are selected in response to receiving a message defining the rpm of said oscillating motion and/or the length in time of said oscillating motion from said second device via the wireless connection.
Ignon specifically addresses the inclusion of a device controller for changing the settings of the device through a wireless connection, including Bluetooth (¶114). Because Ignon includes a wireless communication (Bluetooth standard) setting along with several other manual control setting means, a person of ordinary skill in the art, seeking to control the revolutions per second of oscillating motion or the length of time of the oscillating motion using means for wireless communication with a second device in Rhoades’ architecture would reasonably consult Ignon’s handpiece assembly solution. Ignon’s wireless communication can be incorporated alongside Rhoades’ handpiece assembly (same general location and interaction with the handpiece assembly 100 and applicator attachment 200) using known assembly methods without redesigning Rhoades’ core device handpiece and applicator attachment. Because the references address the same engineering problem (control mechanisms for handpiece assemblies used in skin treatment procedures) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (adding a display and wireless communication (Bluetooth) controller to the handpiece), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Claims 6-13 remain rejected under 35 U.S.C. 103 as being unpatentable over Rhoades, US 20060058714 (16 March 2006) in view of Menke et al., US 20110028993 (3 February 2011), for the reasons of record and the reasons set forth herein.
Regarding claim 6, Rhoades teaches the device of claim 1, as set forth above.
Rhoades does not expressly teach wherein said attachable abrasive product is attached to said backing pad using a hook and loop system; wherein the backing pad comprises the hook part of said system, and wherein the abrasive product comprises the loop part of said system positioned at the lower fabric side of said abrasive product.
However, Rhoades teaches that skin abrasion device (200) can be detachably connected to device or tool 110 by a hook and loop coupling material (¶61). Rhoades also teaches that a treatment attachment may be replaced by switching the treatment attachment with a similar or different type of treatment attachment after none, one, or many uses (¶76).
Menke teaches a hand held mechanical skin resurfacing device (Abstract; FIG 2, system 1) wherein said attachable abrasive product (FIG 2, 21; ¶64) is attached to a backing pad using a hook and loop system (FIG 2; loop-engageable surface 27, ¶61); wherein the backing pad comprises the hook part of said system (FIG 2; ¶53), and wherein the abrasive product comprises the loop part of said system positioned at the lower fabric side of said abrasive product (FIG 2; ¶54).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine the teachings of Rhoades and Menke, given that the prior art included each element claimed, although not necessarily in a single reference. Rhoades and Menke both teach devices comprising hand held assemblies for treating the skin. Although, Rhoades teaches that skin abrasion device can be detachably connected to device or tool 110 by a hook and loop coupling material (¶61) and Rhoades teaches that a treatment attachment may be replaced by switching the treatment attachment with a similar or different type of treatment attachment after none, one, or many uses (¶76), Rhoades does not expressly teach wherein said attachable abrasive product is attached to said backing pad using a hook and loop system; in particular wherein the backing pad comprises the hook part of said system, and wherein the abrasive product comprises the loop part of said system positioned at the lower fabric side of said abrasive product); optionally wherein the abrasive product is a disposable abrasive product.
Menke specifically addresses the structure of the hook and loop system attaching the adhesive product to the backing and also the optional embodiment where the abrasive product is a disposable abrasive product. Because both Rhoades and Menke teach a hook and loop system as an attachment mechanism and Menke specifically teaches the hook and loop system attaching the attachable abrasive component to the backing pad component, a person of ordinary skill in the art, seeking to utilize a hook and loop system to reversibly or temporarily attach an adhesive product to the device’s backing pad, would reasonably consult Menke’s device solution. Menke’s hook and loop system can be incorporated alongside Rhoades’ handpiece assembly (same general location and interaction with the handpiece assembly and applicator attachment) using known assembly methods without redesigning Rhoades’ core device handpiece and applicator attachment. Because the references address the same engineering problem (hook and loop attachment as a reversable attachment mechanism for component parts, including optional disposable component parts) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (adding hook and loop materials as a connecting mechanism), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Regarding claim 7, Rhoades teaches the device of claim 1, as set forth above.
Rhoades does not specifically teach that the backing pad and the abrasive product each have an independently round shape, wherein a diameter of the backing pad is smaller than a diameter of the abrasive product.
However, Rhoades teaches head portion 120 that has a rounded shape (FIGs 4B; ¶67, head portion 120 has a diameter of about 2.5cm - 5cm (about 25mm to about 50mm.)
Menke teaches a hand held mechanical skin resurfacing device wherein the diameter of the backing pad is smaller than the diameter of the abrasive product (FIG 2, buffer region 26; ¶53). Menke also teaches an example of abrasive layers being cut into circular pads having a diameter of 41 mm (¶110).
Although Menke does not teach the exact diameter of the difference between the backing pad and the abrasive product, Menke teaches that the purpose of the overhang region 26 (FIG 2) is “such that is less likely, even with some misalignment of the skin-contactable element 29 and the loop-engageable surface 27, for portions of the loop-engageable surface 27 to contact the skin in use” (¶53). Thus, the teaching and suggestion of Menke would reasonably convey to a person of ordinary skill in the art to have a minimal buffer region to reduce the chance of the loop-engageable surface of the pad from contacting the skin in the event of misalignment.
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine the teachings of Rhoades and Menke, given that the prior art included each element claimed, although not necessarily in a single reference. Rhoades and Menke both teach devices comprising hand held assemblies for treating the skin.
Because Rhoades teaches a base head portion 120 on which the backing pad and abrasive pad reside comprises a circular/round shape, a person of ordinary skill in the art, seeking to optimize the pad/skin contact on a curved human facial surface in order to have a minimal buffer region to reduce the chance of the loop-engageable surface of the pad from contacting the skin in the event of misalignment, as expressly motivated by Menke, would reasonably consult Menke’s round shape solution. Menke’s round shaped pads can be incorporated alongside Rhoades’ round base head portion 120 using known assembly methods without redesigning the shape of the active region of the Rhoades’ device. Further, given that Menke also teaches examples of abrasive layers being cut into circular pads having a diameter of 41 mm (¶110) and Rhoades teaches a backing pad with a diameter of about 25mm to about 50mm, one of ordinary skill in the art would reasonably be able to determine the optimal overhang without undue experimentation from these two comparably sized devices and their components.
Moreover, the suggestions of Menke would reasonably convey to a person of ordinary skill in the art a reason to have a buffer region to reduce the chance of the loop-engageable surface of the pad from contacting the skin in the event of misalignment. Determining the optimal range of overhang, given the express teachings of buffer 26 by Menke would amount to nothing more than routine experimentation that can be optimized on an individual device basis (see In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977; and In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)).
Because both Rhoades and Menke teach an abrasive product attached to a backing pad and both teach a comparable range of sizes and round shapes and Menke teaches a buffer 26 overlap for the purposes of avoiding skin-contact with the loop-engageable surface of the backing pad, a person of ordinary skill in the art, seeking to reduce or prevent damage to the skin beyond the non-therapeutic abrasion, would reasonably consult Menke’s circular pad and differential pad size solution. Because the references address the same engineering problem (shape and dimensional design of the abrasive and backing pads) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (adjusting the dimensions for optimal effect while protecting the skin from damage), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings. Moreover, the difference in the diameter of the overhang may be accomplished by routine methods and without undue experimentation based on the express teachings in Rhoades and Menke. Applicant’s attention is also drawn to MPEP 2144.04(IV)(A) and (B). There is no disclosure in the specification as to the criticality of the dimensions or shape of the backing pad and abrasive product. Accordingly, changes in size and shape are not sufficient to distinguish over the prior art. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See also, In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Regarding claim 8, Rhoades teaches the device of claim 1, as set forth above.
Rhoades does not expressly teach wherein the abrasive product has a thickness of 1 to 10 mm.
Menke teaches wherein the abrasive product has a thickness of 1 to 10 mm (¶46, the skin-contactable element has a thickness from about 0.1mm to about 20mm).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine the teachings of Rhoades and Menke, given that the prior art included each element claimed, although not necessarily in a single reference. Rhoades and Menke both teach devices comprising hand held assemblies for treating the skin.
Although, Rhoades teaches the device of claim 1, Rhoades does not teach the thickness of the abrasive product. Menke specifically addresses this and teaches that the skin-contactable element has a thickness from about 0.1mm to about 20mm (¶46).
Because both Rhoades and Menke teach similar hand held assembly devices with abrasive components and backing pad components with similar diameters, a person of ordinary skill in the art, seeking to utilize a similarly sized device to Rhoades’ base device would reasonably consult Menke’s device solution where the abrasive/skin-contactable element has a thickness from about 0.1 mm to about 20 mm. Menke’s abrasive element thickness can be incorporated alongside Rhoades’ handpiece assembly, head portion (similar and overlapping diameters), abrasive pad and backing, using known assembly methods without redesigning Rhoades’ core device handpiece and applicator attachment. Because the references address the same engineering problem (skin abrading devices with similarly sized abrasive products) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (adjusting the thickness of the abrasive product), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Applicant’s attention is also drawn to MPEP 2144.04(IV)(A) and (B). There is no disclosure in the specification as to the criticality of the dimensions or shape of the abrasive product. Accordingly, changes in size and shape are not sufficient to distinguish over the prior art. In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See also, In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Regarding claim 9, Rhoades teaches the device of claim 1, as set forth above. Rhoades teaches that the treatment attachment may comprise a porous material such as a sponge, a polyurethane sponge pad, a latex sponge pad, or other closed-cell sponge material having dimensions suitable for contacting an area of human skin or body part (¶96).
Rhoades does not expressly teach wherein said foam core layer (B) has a thickness of 1 to 10 mm or where the foam has a hardness such that it can adapt to the contour of the skin to be abraded.
However, Rhoades does teach that the sponge material having dimensions suitable for contacting an area of human skin or body part (¶96). Additionally, hardness is a physical property of the composition. Insofar as Rhoades teaches a polyurethane foam/sponge pad, as also recited in claim 9, the hardness requirement for a polyurethane foam/sponge material is inherently met in the absence of evidence to the contrary.
Menke teaches a laminate of nonwoven material with abrasives and formulations and an added layer of foam material (¶76), as well as loop-engageable fasteners (¶76) and films (¶77).
Menke teaches the skin-contactable element to have a thickness that is from about 0.1 mm to about 20 mm.
Menke does not expressly teach the thickness of the foam core layer, but given the alternatives in the laminated structure taught at ¶76, one of ordinary skill in the art seeking to utilize a similarly sized device to Rhoades’ base device would reasonably consult Menke’s solution where the skin-contactable element has a thickness from about 0.1 mm to about 20 mm overall and the laminated layers and foam material (B) comprises an A:B or A:B:A arrangement or with the foam (B) material under the loop-engageable fastener for added compressibility of the system (¶76).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine the teachings of Rhoades and Menke, given that the prior art included each element claimed, although not necessarily in a single reference. Rhoades and Menke both teach devices comprising hand held assemblies for treating the skin.
Menke’s foam element thickness can be incorporated alongside Rhoades’ handpiece assembly comprising layered head portion components (similar and overlapping diameters), including backing pad and abrasive pad, using known assembly methods without redesigning Rhoades’ core device and applicator attachment. Because the references address the same engineering problem (skin abrading devices with similarly sized layered skin-contacting products) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (adjusting the thickness of the foam core depending on the desired structure of the skin-contactable element/product), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Applicant’s attention is also drawn to MPEP 2144.04(IV)(A) and (B). There is no disclosure in the specification as to the criticality of the dimensions or shape of the core layer. Accordingly, changes in size and shape are not sufficient to distinguish over the prior art. In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See also, In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Regarding claim 10, Rhoades teaches the device of claim 1, as set forth above.Rhoades teaches that the device comprises a fabric layer of cotton, natural, or synthetic fabrics (¶96).
Rhoades does not teach wherein said fabric or film layer each independently has a thickness of less than 1 mm and/or wherein said fabric layer is a woven or non-woven fabric layer made from one or more synthetic polymer fibers. Menke teaches suitable fibrous material comprising woven or non-woven fabrics including polymers and polyamides (¶50). Menke teaches that the fibers have a thickness of about 0.5 mm to about 5 mm (¶51).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine the teachings of Rhoades and Menke, given that the prior art included each element claimed, although not necessarily in a single reference. Rhoades and Menke both teach devices comprising hand held assemblies for treating the skin.
Because both Rhoades and Menke teach similar hand held assembly devices with layered fabric or film components, a person of ordinary skill in the art, seeking to utilize a similarly sized device to Rhoades’ base device for facial comfort, ease of use, skin protection against inadvertent damage and pad wear, and commercial suitability would reasonably consult Menke’s device solution where the fabric or film elements have a thickness from about 0.5 mm to about 5 mm. The thickness of Menke’s fabric or film element can be incorporated alongside Rhoades’ handpiece assembly and head portion (with similar and overlapping component structures and elements) using known assembly methods without redesigning Rhoades’ core device handpiece and applicator attachment. Because the references address the same engineering problem (layered skin abrading devices with similar components) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (adjusting the thickness of the fabric or film component), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Applicant’s attention is also drawn to MPEP 2144.04(IV)(A) and (B). There is no disclosure in the specification as to the criticality of the dimensions or shape of the fabric or film layer. Accordingly, changes in size and shape are not sufficient to distinguish over the prior art. In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding claim 11, Rhoades teaches the device of claim 1, as set forth above.
Rhoades teaches wherein said abrasive layer comprises abrasive particles with a grit number selected within the range of 80 to 4000 according to FEPA, (¶47, particle grit size between 320 and 30 grit). Rhoades teaches wherein the abrasive particles in the abrasive layer are made of silicon carbide (¶47). Rhoades abrasive particles with an average particle size in diameter of 3 to 201 µm (¶22, average particle size of 34 microns).
Rhoades does not teach the thickness of the abrasive layer, wherein said abrasive layer has a thickness of less than 0.5 mm.
Menke teaches a hand held mechanical skin resurfacing device (Abstract; FIG 2, system 1) comprising discrete abrasive units (¶64) that form a skin-contactable surface (FIG 2, 21) where the skin-contactable element has a thickness from about 0.1 mm to about 20 mm (¶46). Menke teaches wherein said abrasive layer has a thickness of less than 0.5 mm (¶46, skin-contactable element has a thickness from about 0.1 mm to about 20 mm).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine the teachings of Rhoades and Menke, given that the prior art included each element claimed, although not necessarily in a single reference. Rhoades and Menke both teach devices comprising hand held assemblies for treating the skin. Although, Rhoades teaches wherein said abrasive layer comprises abrasive particles with a grit number selected within the range of 80 to 4000 according to FEPA (¶47, particle grit size between 320 and 30 grit), Rhoades teaches wherein the abrasive particles in the abrasive layer are made of silicon carbide (¶47), and Rhoades abrasive particles with an average particle size in diameter of 3 to 201 µm (¶22, average particle size of 34 microns). Rhoades does not expressly teach the thickness of the abrasive layer, wherein said abrasive layer has a thickness of less than 0.5 mm.
Menke specifically addresses the thickness of the abrasive layer within the recited range. Because both Rhoades and Menke teach an abrasive layer and Menke teaches the thickness of the abrasive layer, a person of ordinary skill in the art, seeking to utilize or optimize an adhesive layer thickness, would reasonably consult Menke’s device solution. Menke’s abrasive layer thickness can be incorporated alongside Rhoades’ handpiece assembly (same general location and interaction with the handpiece assembly 100 and applicator attachment 200) using known assembly methods without redesigning Rhoades’ core device handpiece and applicator attachment. Because the references address the same engineering problem (an abrasive pad as an applicator attachment) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (adjusting the thickness of the abrasive layer within a specified range to most effectively abrade the skin, which is the intended purpose of the abrasive particle layer in both devices), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Applicant’s attention is also drawn to MPEP 2144.04(IV)(A). There is no disclosure in the specification as to the criticality of the dimensions of abrasive layer. Accordingly, changes in size and shape are not sufficient to distinguish over the prior art. In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding claim 12, Rhoades teaches the device of claim 1, as set forth above.
Rhoades does not teach wherein said abrasive particles are embedded in an abrasive layer using a cured resin.
Menke teaches a skin abrasive system (¶67; 43) where the abrasive system (43) comprises a resin (¶70). See also the embodiment at ¶109. Menke teaches that the resin polymer is selectable so as to provide enough hardness so as to be abrasive to skin, but not so hard as to cause scratching or discomfort (¶68).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine the teachings of Rhoades and Menke, given that the prior art included each element claimed, although not necessarily in a single reference. Rhoades and Menke both teach devices comprising hand held assemblies for treating the skin.
Although, Rhoades teaches the device of claim 1, Rhoades does not teach wherein said abrasive particles are embedded in said abrasive layer using a cured resin, in particular thermally cured resin or radiation cured resin. Menke specifically addresses a skin abrasive system (¶67; 43) comprising a cured resin (¶70). See also the embodiment at ¶109. Because both Rhoades and Menke teach an abrasive layer and Menke teaches that abrasive particles are embedded in an abrasive layer using a thermosetting polymer resin (¶70) a person of ordinary skill in the art, seeking to utilize a cured resin with embedded abrasive particles that would function to abrade skin without overtly damaging it, as expressly motivated by Menke, would reasonably consult Menke’s solution.
Menke’s abrasive layer comprising a cured resin can be incorporated alongside Rhoades’ handpiece assembly (same general location and interaction with the handpiece assembly 100 and applicator attachment 200) using known assembly methods without redesigning Rhoades’ core device handpiece and applicator attachment. Because the references address the same engineering problem (an abrasive pad as an applicator attachment) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (adjusting the abrasive particle layer in skin abrasion devices), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Regarding claim 13, Rhoades teaches the device of claim 1, as set forth above.
Rhoades teaches treatment attachments may be made of plastic, polyurethane, and/or polymer and may be attachable by adhesive (¶109). Treatment attachments may be attached by adhesive, heat bonding glue, or other sufficient attachment systems (¶60).
Rhoades does not teach wherein said adhesive layer has independently each a thickness of less than 0.5 mm.
Menke teaches adhesives as layer 28 (FIG 2; ¶54), but does not expressly recite the thickness of the adhesive.
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine the teachings, suggestions, and motivations of Rhoades and Menke, given that the prior art included each element claimed, although not necessarily in a single reference. Rhoades and Menke both teach devices comprising hand held assemblies for treating the skin.
Although, Rhoades teaches treatment attachments may be made of plastic, polyurethane, and/or polymer and may be attachable by adhesive (¶109) and that treatment attachments may be attached by adhesive, heat bonding glue, or other sufficient attachment systems (¶60), Rhoades does not teach wherein said adhesive layer has independently each a thickness of less than 0.5 mm. Menke teaches adhesives as layer 28 (FIG 2; ¶54), but does not expressly recite the thickness of the adhesive. Menke teaches that it is desirable for the skin-contactable element to have a thickness that is from about 0.1 mm to about 20 mm (¶46).
Menke specifically addresses the thickness of the skin-contactable element within the recited range, although it is not broken down by component part, such as adhesive-specific basis. However, the general lower limit of 0.1 mm is taught by Menke. Because both Rhoades and Menke teach an adhesive layer and Menke teaches a range of thickness of the skin-contactable element within a range of 0.1 mm to 20 mm, a person of ordinary skill in the art, seeking to utilize or optimize an adhesive layer thickness, would reasonably consult Menke’s solution. Menke’s adhesive layer thickness can be incorporated alongside Rhoades’ handpiece assembly (same general location and interaction with the handpiece assembly 100 and applicator attachment 200) using known assembly methods without redesigning Rhoades’ core device handpiece and applicator attachment. Because the references address the same engineering problem (an adhesive layer as a point of layer attachment) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (adjusting the thickness of the adhesive layer within the specified range to most effectively join the respective layers of the device), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Applicant’s attention is also drawn to MPEP 2144.04(IV)(A). There is no disclosure in the specification as to the criticality of the dimensions of adhesive layer. Accordingly, changes in size and shape are not sufficient to distinguish over the prior art. In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
New Claim Rejections – Necessitated by Amendment
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.
New claims 17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rhoades, US 20060058714 (16 March 2006).
Regarding new claim 17, Rhoades teaches the device of claim 1, as set forth above.
Rhoades teaches the device further comprising a dust extractor suitable for the removal of abrasion skin dust (¶27, brush attachment for cleaning skin “to remove exfoliated or abraded skin particles after exfoliation, to clean and/or polish the area of the skin”).
Regarding new claim 19, Rhoades teaches method of claim 14, as set forth above.
Rhoades teaches wherein steps (c) and (d) are repeated at least one more time (FIG 12; 133).
New claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Rhoades, US 20060058714 (16 March 2006) in view of Menke et al., US 20110028993 (3 February 2011).
Regarding new claim 18, Rhoades modified by Menke teaches the device of claim 6, as set forth above, for the reasons set forth above.
Menke teaches a hand held mechanical skin resurfacing device (Abstract; FIG 2, system 1) wherein said attachable abrasive product (FIG 2, 21; ¶64) is attached to a backing pad using a hook and loop system (FIG 2; loop-engageable surface 27, ¶61); wherein the abrasive product is a disposable abrasive product (¶98).
New claims 20 is rejected under 35 U.S.C. 103 as being unpatentable over Rhoades, US 20060058714 (16 March 2006).
Regarding new claim 20, Rhoades teaches the method of claim 15, as set forth above.
Rhodes teaches a first abrading product comprising a first particle size (exfoliated with applicator attachment 200 (particle size between 320 and 30 grit, ¶47).
Rhoades does not expressly teach the grit range of the second particle size.
However, Rhoades teaches a second abrading product (for cleaning and/or polishing with brush attachment 300, including bristles 320 comprising abrasive particles, in, on, or as part of and/or at the tip suitable to treat skin and body parts, ¶53). Rhoades also teaches the range of microparticle grit sizes at ¶22.
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine the teachings and suggestions in the different embodiments of Rhoades, given that Rhodes teaches a wide range of abrasive particle sizes and teaches a first and second abrading product where the first is for the exfoliation of skin (applicator attachment 200) comprising a particle size between 320 and 30 grit (¶47) and a second abrading product for cleaning and/or polishing (brush attachment 320, comprising bristles including abrasive particles). Given the intended purpose of the cleaning/polishing compared to the exfoliation application, one of ordinary skill in the art would readily appreciate that a cleaning/polishing product would necessarily need to be finer grained than that of a rough exfoliation product. The analogy to the use of sandpaper grit on wood is an applicable comparison. The rougher grit (larger particle) abrades the best. However, in polishing and cleaning, a fine grit (smaller particle) is required.
Additionally, Rhoades teaches a broad range of particle sizes from 320 to 30 grit. One of ordinary skill in the art would recognize the size of the grit for its proper and intended use and would be skilled in using a larger abrasive particle in a first abrasive exfoliation product and a smaller less abrasive particle for a cleaning/polishing product with without undue experimentation. Because Rhoades addresses both the first and second products, even though the grit of the cleaning/polishing component is not recited with specificity as to that product, one of ordinary skill in the art would reasonably understand the purpose of the grit range from 320 to 30 grit and would be able to make modifications are mechanically compatible and implemented by routine engineering practices (adjusting the abrasive particle size according to the intended use), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining the different embodiments taught by Rhoades.
Applicant’s attention is also drawn to MPEP 2144.04(IV)(A). There is no disclosure in the specification as to the criticality of the size of the abrasive particles in the first abrasive product and the second abrasive product. Accordingly, changes in size and shape are not sufficient to distinguish over the prior art. In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
New claims 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Rhoades, US 20060058714 (16 March 2006) in view of Ignon et al., US 20090192442 (July 30 2009).
Regarding new claim 21, Rhoades modified by Ignon teaches the method of claim 16, as set forth above, for the reasons set forth above.
Rhoades does not teach wherein the rpm and/or the time of said oscillating motion is selected via a wireless connection using a second device.
Ignon teaches handpiece assembly 100 for treating the skin (Abstract) comprising wireless communication via a controller that is separate from the handpiece assembly that can be connected through a wireless connection including Bluetooth (¶114). Ignon teaches that handpiece assembly 100 comprises a display that is adapted to provide information comprising settings and that the display can be configured to permit users to made adjustments (¶114). Selection devices or features including knobs, buttons, dials, and/or displays can be positioned on the handpiece assembly 100 (¶114).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine the teachings of Rhoades and Ignon, given that the prior art included each element claimed, although not necessarily in a single reference. Rhoades and Ignon both teach devices comprising handpiece assemblies for treating the skin. Although, Rhoades discloses the device comprising means for preselecting the rpm of said oscillating motion (¶44, motion selection switch 285), Rhoades does not teach the alternative embodiments of the claim comprising: and/or the length in time of said oscillating motion, in particular, wherein said means comprise means for wireless communication with a second device and wherein the rpm of said oscillating motion and/or the length in time of said oscillating motion are selected in response to receiving a message defining the rpm of said oscillating motion and/or the length in time of said oscillating motion from said second device via the wireless connection.
Ignon specifically addresses the inclusion of a device controller for changing the settings of the device through a wireless connection, including Bluetooth (¶114). Because Ignon includes a wireless communication (Bluetooth standard) setting along with several other manual control setting means, a person of ordinary skill in the art, seeking to control the revolutions per second of oscillating motion or the length of time of the oscillating motion using means for wireless communication with a second device in Rhoades’ architecture would reasonably consult Ignon’s handpiece assembly solution. Ignon’s wireless communication can be incorporated alongside Rhoades’ handpiece assembly (same general location and interaction with the handpiece assembly 100 and applicator attachment 200) using known assembly methods without redesigning Rhoades’ core device handpiece and applicator attachment. Because the references address the same engineering problem (control mechanisms for handpiece assemblies used in skin treatment procedures) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (adding a display and wireless communication (Bluetooth) controller to the handpiece), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Regarding new claim 22, Rhoades modified by Ignon teaches the method of claim 16, as set forth above, for the reasons set forth above.
Rhoades teaches wherein the rpm of said oscillating motion is selected within the range of 1000 to 15000 rpm (¶78, “6,000 or fewer revolutions per minute”).
Claim Objection
Claim 13 is objected to because of the following informalities: the phrase “said adhesive layer has independently each a thickness of less than” is awkwardly worded. Appropriate correction is recommended.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CHERIE M POLAND/Examiner, Art Unit 3771
/SHAUN L DAVID/Primary Examiner, Art Unit 3771
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