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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 20, 2026, has been entered.
Status of Claims
This Action is in response to the amendment filed on April 20, 2026.
As directed by the amendment: Claims 1 and 8-11 were amended. Claims 1-11 are pending and currently under consideration for patentability under 37 CFR 1.104.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are
“a restraining member… disposed on a side of the first plate away from the second plate, and the restraining member being configured to restrain against the first plate and drive the first plate towards the second plate to thereby clamp the steering member” in claim 1. The corresponding structure appears to be “restraining member 150” (see Figs. 1-2) which “is a nut 151, which has an internal thread that cooperates with the external thread of the limiting shaft 160 … [and] also includes a rotating member 152” see the first sentence of [0039]).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 32 recites “the third connection portion” and Examiner suggests --the third connector portion-- to use consistent language.
Claim 1, lines 36-37 recite “when the rotational or directional adjustment of the main body with respect to the base is not desired, the steering device is removed” and the phrase “the steering device is removed” is method language. Examiner suggests amending “the steering device is removed” to --the steering device is selectively removable-- to clarify.
Claim 1, the third to last line recites “first massaging state” and Examiner suggests --first massage state-- to use consistent language.
Claim 1, the third to last line recites “second massaging state” and Examiner suggests --second massage state-- to use consistent language.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, lines 2-3 recite “main body configured as the sole component of the massage tool for implementing a massaging function thereof” which is new matter. This is a negative limitation, and “[a]ny negative limitation or exclusionary proviso must have basis in the original disclosure … [and] a lack of literal basis in the specification for a negative limitation may not be sufficient to establish [support]” (MPEP 2173.05(i)).
The remaining claims are rejected based on their dependence on a rejected base claim.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8, lines 4-5 recite “the external surface” which lacks antecedent basis.
Claim 9 is rejected based on its dependence on claim 8.
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.
Claims 1, 3-6, 8, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (2016/0151235) in view of Levy et al. (2,896,901), and Hutchison (2017/0087049).
Regarding claim 1, Yu discloses a massage tool (shaft 1, massage member 2, and triangular base 3, see Figs. 9-10), comprising:
a main body (1, 2, Figs. 9-10) having a first connector portion (fastening means 111, Fig. 9);
a base (base 31, Figs. 9-10);
a steering device (swivel joint 32, Figs. 9-10) that is configured to be interposed between the main body (1, 2, Figs. 9-10) and the base (31, Figs. 9-10) of the massage tool, the steering device enabling positional adjustment of the main body (1, 2) relative to the base (31, the swivel joint 32 can swivel to different positions, “so that the massage device can be operated to provide additional massage functions” see para. [0047] and the last sentence of [0051], Fig. 18, Fig. 20) when interposed therebetween (see Figs. 9-10, the steering device “swivel joint” 32 is interposed between the main body 1, 2, and the base 31 and it is able to swivel to different positions);
wherein the steering device (32) comprises:
a main holder (support element 4, Figs. 9-10), the main holder comprising a first plate (leftmost lug 321, Figs. 9-10), a second plate (rightmost lug 321, Figs. 9-10) arranged opposite to the first plate (see Figs. 9-10);
a steering member (T-shaped rod 322 and fork-shaped element 323, Figs. 9-10), the steering member being connected between the first plate and the second plate (T-shaped rod 322 is shown to connect between the first and second plates 321, 321, see Figs. 9-10), and one end of the steering member (upper end of fork-shaped element 323, at recess 32321, Figs. 9-10) being provided with a fourth connector portion (recess 32321, Figs. 9-10. Note, lines 1-7 and lines 22-27 of para. [0051] state the connector 11 can instead be a female coupling that threads on corresponding male threads of swivel joint 32); and
wherein, when rotational or directional adjustment of the main body with respect to the base is desired (the swivel joint 32 allows directional adjustment, as the swivel joint can swivel to different positions, “so that the massage device can be operated to provide additional massage functions” see para. [0047] and the last sentence of [0051], Fig. 18, Fig. 20), the steering device (32, Figs. 9-10) is selectively engageable between the main body (1, 2) and the base (31, Figs. 9-10; see lines 1-7, lines 22-27, and the last sentence of [0051]. The steering device 32 can be attached to main body 1, 2, and thus selectively interposed between the main body and the base, or it can be detached) such that the fourth connector portion (recess 32321, Figs. 9-10) of the steering device directly and detachably connects with the first connector portion (fastening means 111, Fig. 9) of the main body, thereby forming a first massage state (the state shown in Fig. 10),
wherein, when the rotational or directional adjustment of the main body with respect to the base is not desired, the steering device (32) is removed from between the main body (1, 2) and the base (31; the swivel joint 32 can be removed from between the main body and the base when its use is not desired, as in Fig. 1 and Fig. 19; see lines 1-7, lines 22-27, and the last sentence of [0051]) thereby forming a second massage state (a state where the main body 1, 2, is detached from the base as in Fig. 19),
wherein a rotation angle between the main body (1, 2) and the base (31) is adjustable in the first massaging state (adjustable via steering device 32, that can swivel to different positions “so that the massage device can be operated to provide additional massage functions” see para. [0047] and the last sentence of [0051]) and is not adjustable in the second massaging state (the steering device 32 is not used in the second massaging state, Fig. 19), and
a massaging function of the main body (1, 2) remains substantially unchanged between the first massage state and the second massage state (in both massage states, the massaging function is performed by pressing massage member 2 against their body, see Figs. 19-20).
Yu is silent regarding the main body configured as the sole component of the massage tool for implementing a massaging function thereof; the base having a second connector portion, the main body and the base being detachably connectable to each other via the first connector portion and the second connector portion; the main holder having a third connector portion; a restraining member, the restraining member being disposed on a side of the first plate away from the second plate, and the restraining member being configured to restrain against the first plate and drive the first plate towards the second plate to thereby clamp the steering member; the third connection portion of the steering device engages with the second connector portion of the base in the first massage state; the second massage state including the first connector portion of the main body directly engages the second connector portion of the base to form a direct connection therewith without requiring any adapter or intermediate component.
Levy teaches a related adjustable tilting support stand (Fig. 1, Fig. 5) that includes a first plate (clamping member 21, Fig. 1) and a second plate (clamping member 20, Fig. 1) arranged opposite the first plate (see Fig. 1), and a steering member (tongue 13, Fig. 1) being connected between the first plate and the second plate (see Fig. 1, Figs. 5-6). Levy includes a restraining member (wing nut 23, Fig. 1), the restraining member being disposed on a side (outer side) of the first plate (21, Fig. 1) away from the second plate (20, Fig. 1), the restraining member being configured to restrain against the first plate (wing nut 23 is able to be rotated to press against plate 21 to provide clamping with tongue 13, see Fig. 1 and see col. 2, lines 8-10 and col. 2, lines 44-46) and drive the first plate towards the second plate to thereby clamp the steering member (13; see col. 2, lines 8-10 and col. 2, lines 44-46, the two plates are pressed against the cooperating surfaces 14, 15, of the tongue 13). This provides an expected result of allowing the tilt angle of the steering member to be selectively adjusted in an incremental manner (see col. 1, lines 34-37).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second plates and steering member of Yu to include a restraining member disposed on a side of the first plate away from the second plate, configured to restrain against the first plate and drive the first plate towards the second plate to thereby clamp the steering member via geared/serrated surfaces as taught by Levy because this allows the user to easily adjust the tilting angle of the steering member and lock it into the desired angle.
The modified Yu/Levy device is still silent regarding the main body configured as the sole component of the massage tool for implementing a massaging function thereof; the base having a second connector portion, the main body and the base being detachably connectable to each other via the first connector portion and the second connector portion; the main holder having a third connector portion; the third connection portion of the steering device engages with the second connector portion of the base in the first massage state; the second massage state including the first connector portion of the main body directly engages the second connector portion of the base to form a direct connection therewith without requiring any adapter or intermediate component.
However, it is noted that it has been held that if it were considered desirable for any reason to obtain access to the removed part (here, to have Yu’s steering device 32 removably connected with the base 31), it would be obvious to make the element removable for that purpose (MPEP 2144.04(V)(C). Furthermore, providing a modular massage tool is known in the art and provides a reason to obtain access to the various modular parts to allow customization so the user can choose which modules to attach, depending on whether they want the function associated with each module.
For example, Hutchison teaches a related modular massage tool (i.e., Fig. 1, Figs. 13-17) including a base (base module 2, Figs. 1-2, 9, 12, 14, and 16-17) having a second connector portion (connection means 9a associated with base module 2, see Fig. 2; see also [0102]-[0106] which state several different connection means are suitable, including male and female screw threads), and a main body (head module 4, Figs. 1, 4, 13, and 16-17) having a first connector portion (connection half 7a associated with head module 4, see Figs. 4, 13), the main body (4) and the base (2) being detachably connectable to each other via the first connector portion (7a) and the second connector portion (9a; “connection second half 7a is formed on the base end 41 so that the head module 4a can be connected to a connection first half 6a, such as that on one end of the shaft module 3a, or that on the base module 2a” see Fig. 2, Fig. 4, lines 1-4 of [0098], and see the first two configurations on the left in Figure 17). Hutchison includes a main holder (i.e., an optional intermediate connection, the shaft 3, Figs. 1, 3, 5-8, 10, 13, and 16-17) being removably interposed between the base (2) and main body (4; see Figs. 13-17), the main holder (3) having a third connector portion (connection half 7a associated with shaft 3, see Figs. 3, 5, 8), the third connection portion (7a, associated with 3, see Figs. 3, 5, 8) engages with the second connector portion (connection means 9a associated with base module 2, see Fig. 2; see also [0102]-[0106] which state several different connection means are suitable, including male and female screw threads) of the base (2, see Fig. 1, Figs. 13-17; see lines 1-4 of [0098]) in a first massage state (such as the second configuration on the left as seen in Figure 17, where intermediate shaft 3 is connected to base 2). Hutchison additionally has a second massage state (such as the first configuration on the left as seen in Figure 17, where main body 4 is directly attached to the base 2, without an intermediate shaft 3) including the first connector portion (connection half 7a associated with head module 4, see Figs. 4, 13) of the main body (4) directly engages the second connector portion (connection means 9a associated with base module 2, see Fig. 2) of the base (2) to form a direct connection therewith without requiring any adapter or intermediate component (the first configuration on the left as seen in Figure 17 has the main body 4 directly attached to base 2, without any adapter or intermediate component).
Hutchison states that the connector portions are substantially identical to allow each module to be selectively attached/removed (the use of identical connection mechanisms allows the different parts to be “mixed and matched” in a variety of configurations, as desired, see lines 1-4 of [0098], para. [0116], and Figs. 13-17). Hutchison also discloses a base that includes a suction cup to be attached to a surface (suction cup 10/17, Fig. 9; see para. [0118]), and the main holder (3) has various possible functional modules (see Fig. 1, Figs. 15-17) including a flexible connection such that the position and orientation can be adjusted or modified (see the last sentence of [0121]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the base (31, Yu) and main holder (4, Yu) of Yu/Levy to have the base include a second connector portion that is selectively connectable to both a third connector portion of the main holder and a first connector portion of the main body of the massage tool, with each connector portion being substantially identical to be interchangeable as taught by Hutchison so a kit of different parts can be mixed and matched to a variety of configurations to allow the massage tool to be customized as desired. This provides a predictable advantage of allowing the user to selectively attach different modules, including a suction cup base to allow the massage tool to be mounted to a flat surface such as a floor, table, or wall, and allowing the user to add or omit functional modules such as the steering device, depending on whether the user desires the function of the associated module.
The modified device as currently combined is silent regarding the main body (1, 2) configured as the sole component of the massage tool for implementing a massaging function because the base (31, Fig. 9 of Yu) has an optional removable massage ball (5, Fig. 9 of Yu).
However, it is noted that it has been held that omission of additional elements (such as the massage ball 5) would have been obvious if the function of the element(s) (massage ball 5 is “used for deep supraspinatus muscle and teres minor muscle massage” see para. [0064] of Yu) were not desired (see MPEP 2144.04(II)A).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the base of Yu/Levy/Hutchison to omit the massage ball for users that do not require its function of massaging supraspinatus muscle and teres minor muscle(s), and since this would advantageously reduce costs.
The massaging states of the modified Yu/Levy/Hutchison device will now be described:
When rotational or directional adjustment of the main body (1, 2, Yu) with respect to the base (31 of Yu, as modified by base(s) 2 of Hutchison) is desired (by steering device 32 of Yu, as modified by Levy), the steering device (32, Yu) is selectively engageable between the main body (1, 2, Yu) and the base (31, Yu) such that the third connection portion (7a, associated with intermediate component 3, Hutchison) of the steering device (the steering device 32 of Yu has been modified to include a connector portion as taught by 7a of Hutchison) engages with the second connector portion (9a, associated with base 2, Hutchison) of the base (the base 31 of Yu has been modified to include a connector portion as taught by 9a of Hutchison) and the fourth connector portion (recess 32321, Figs. 9-10 of Yu, as modified by Hutchison to be compatible with the other connector portion(s)) of the steering device (32, Yu) directly and detachably connects with the first connector portion (111, Fig. 9 of Yu, as modified by Hutchison to be compatible with the other connector portion(s)) of the main body (1, 2, Yu), thereby forming a first massage state (the state in Fig. 10 of Yu, which allows rotational adjustment by swiveling the swivel joint 32); and
wherein when the rotational or directional adjustment of the main body (1, 2, Yu) with respect to the base (31 of Yu, as modified by base(s) 2 of Hutchison) is not desired, the steering device (32, Yu) is removed (the steering device 32 of Yu has been modified to be selectively removable, as taught by Hutchison’s modular function modules) from between the main body (1, 2) and the base (31 of Yu, as modified by base(s) 2 of Hutchison) such that the first connector portion (111, Fig. 9 of Yu, as modified by Hutchison to be compatible with the other connector portion(s)) of the main body (1, 2, Yu) directly engages the second connector portion (connector portion (9a, associated with base 2, Hutchison) of the base (the base 31 of Yu has been modified to include a connector portion as taught by 9a of Hutchison) to form a direct connection therewith (the main body 1, 2, of Yu can be connected directly to the base, similar to how main body 4 of Hutchison is connected directly to base 2 as seen in the left-most configuration of Fig. 17) without requiring any adapter or intermediate component (steering device 32 has been selectively removed), thereby forming a second massage state (main body 1, 2, Yu, being directly connected to a base such as the suction cup base 2 of Hutchison),
wherein a rotation angle between the main body (1, 2, Yu) and the base (31 of Yu, as modified by Hutchison) is adjustable in the first massaging state (via steering device 32, Yu) and is not adjustable in the second massaging state (the steering device has been removed in the second state).
Regarding claim 3, the modified Yu/Levy/Hutchison device discloses the steering device (32, Yu, as modified by Levy) further comprising: a limiting shaft (bolt 22, Fig. 1 of Levy), the limiting shaft passing sequentially (from right to left as seen in Fig. 1 of Levy, which appears to be the same sequence as in Fig. 3 of the instant application) through the first plate (21, Fig. 1 of Levy), the steering member (13, Fig. 1 of Levy), and the second plate (20, Fig. 1 of Levy), wherein the restraining member (23, Fig. 1 of Levy) is threadedly connected to the limiting shaft (the distal end of shaft 22 is shown to be threaded in Fig. 1 of Levy, and note that 23 is a wing nut that would be rotated on these threads to tighten).
Regarding claim 4, the modified Yu/Levy/Hutchison device discloses wherein, in the steering device (32, Yu, as modified by Levy) the second plate (20, Fig. 1 of Levy) is provided with a polygonal through hole (square shaped hole 25, Fig. 1 of Levy), and a portion (square shank portion 24, Fig. 1 of Levy) of the limiting shaft (22) disposed within the polygonal through hole (25) is engaged with an inner wall of the polygonal through hole (the square shank portion 24 is engaged with an inner wall of the polygonal through hole 25 when assembled so that it does not turn, see Fig. 1, Fig. 6, and col. 2, lines 10-13 of Levy).
Regarding claim 5, the modified Yu/Levy/Hutchison device discloses wherein, in the steering device (32, Yu, as modified by Levy), the second plate (20, Fig. 1 of Levy) is provided with a plurality of first gear teeth on one side thereof closer to the first plate (each of plates 20, 21, are “substantially identical” and each have a plurality of serrations/gear teeth such as 29, to engage the roughened surfaces 14, 15, of tongue 13, see Fig. 1; see col. 2, lines 2-8 and col. 2, lines 14-33 of Levy. These teeth are on the side of the plate that is facing/closer to the opposing plate), the plurality of first gear teeth being evenly spaced along an outer periphery of the limiting shaft (see Fig. 1 of Levy, the serrations 29 are evenly spaced around the outer periphery of shaft 22), and wherein a side of the steering member (13, Levy) adjacent to the second plate (20, Fig. 1 of Levy) is provided with a plurality of second gear teeth (serrations 16, Fig. 1 of Levy) capable of engaging with the first gear teeth (see col. 2, lines 2-8 and col. 2, lines 14-33 of Levy).
Regarding claim 6, the modified Yu/Levy/Hutchison device does not specifically disclose wherein, in the steering device, an angle between two said first teeth adjacent to each other (serrations such as 29, Fig. 1 of Levy) is from 8 degrees to 15 degrees. However, one of ordinary skill in the art would have understood from Levy that the angular spacing of these teeth merely corresponds to the number of incremental angular options for the user to selectively lock the tilting device in place. Furthermore, there does not appear to be any stated criticality to this selection of 8 to 15 degrees.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the angle between two adjacent first teeth of Yu/Levy/Hutchison to be between 8 and 15 degrees since it has been held that where the general conditions of a claim are disclosed in the prior art (providing a plurality of serrated teeth formed in a ring about the limiting shaft and corresponding to teeth on the steering member, thereby allowing different angular options for the user to selectively lock the tilting device in place), discovering the optimum or workable ranges (i.e., 8 to 15 degrees between adjacent teeth) involves only routine skill in the art. In re Aller, 105 USPQ 233. MPEP 2144.05.
Regarding claim 8, the modified Yu/Levy/Hutchison device discloses a suction cup holder (Hutchison teaches an interchangeable base 2 with a suction cup holder, see suction cup 10/17 in Fig. 9 and see para. [0118]), the suction cup holder being detachably connected (by the connection mechanism such as 6a, Fig. 9 of Hutchison) to the third connector portion (connection half 7a associated with shaft 3, see Figs. 3, 5, 8 of Hutchison) of the main holder (shaft 3, Figs. 1, 3, 5-8, 10, 13, and 16-17, has a female coupling connection half 7a, Figs. 3, 5, 8 of Hutchison), and the suction cup holder being usable for a fixed connection with the external surface (used to keep the adult toy stationary or mounted to a surface, see para. [0118] of Hutchison).
Regarding claim 10, the modified Yu/Levy/Hutchison device discloses wherein the fourth connector portion (recess 32321, Figs. 9-10 of Yu, which also states this may be a male coupling, as modified by Hutchison to be connection means such as 6a, Fig. 3; see also [0102]-[0106] of Hutchison) is provided with an external thread (the connection means may include using male and female threads, see para. [0104] of Hutchison) threadably engageable with the first connector portion (as taught by Hutchison, the male coupling is able to be coupled to the main body of the massage tool such as 4 of Hutchison, see para. [0098], Figs. 13-17).
Regarding claim 11, the modified Yu/Levy/Hutchison device discloses wherein in the first massage state (Fig. 10 of Yu), the steering member (13, Fig. 1 of Levy) is steerable with respect to the base (31 of Yu, as modified by Hutchison to have a connector portion such as a male thread) about an axis extending through the first and second plates (the steering member 13 is rotatable about axis 18, which extends through plates 20, 21, see Fig. 1, Fig. 5; see col. 3, lines 1-11 of Levy), thereby enabling the main body to be positioned at an arbitrary angle (the arbitrary angle is chosen by the user and then clamped into place, see col. 3, lines 1-11 of Levy) within a predetermined range with respect to the base (the range is predetermined by the base providing a physical limit that the main body would not be able to rotate beyond) via the steering member (13, Fig. 1 of Levy).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (2016/0151235) in view of Levy et al. (2,896,901) and Hutchison (2017/0087049) as applied to claim 1 above, and further in view of Lin (6,988,701)
Regarding claim 2, the modified Yu/Levy/Hutchison device is silent regarding wherein, in the steering device (32 of Yu, as modified by Levy), a connection between the first plate (21, Levy) and a body of the main holder (4, Yu) is resilient.
Lin teaches a related adjustable tilting support stand (Fig. 1) that has a main holder (plate 11, Fig. 1) with a first plate (left flap 12, Fig. 1) and a second plate (right flap 12, Fig. 1), a steering member (seat 20, Fig. 1), and a restraining member (wing nut 43, Fig. 1). Lin’s first plate and second plate (12) are made of a resilient material to allow them to be slightly forced toward each other by the fastener (41; see col. 3, lines 13-18). Thus, the connection between the first plate and the body of the main holder is resilient, because the first plate is resilient.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the first and second plates of Yu/Levy/Hutchison to be resilient as taught by Lin to allow the plates to be slightly forces toward each other by movement of the clamping restrainer and shaft.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (2016/0151235) in view of Levy et al. (2,896,901) and Hutchison (2017/0087049) as applied to claim 1 above, and further in view of Wang (2007/0278371)
Regarding claim 7, the modified Yu/Levy/Hutchison device discloses wherein, in the steering device (32 of Yu, as modified by Levy), the restraining member (23, Levy) comprises a nut (23 is a wingnut or lock nut) threaded to the limiting shaft (bolt 22, Fig. 1 of Levy). The modified device is silent regarding a rotating member being configured to be able to be socketed on the nut.
Wang teaches a related adjustable tilting mount (Fig. 2) that similarly has a limiting shaft (pin 90, Fig. 2) extending between first and second plates (42, 42, Fig. 2) and has a restraining member (knob 92 and nut 922, Fig. 2) comprising a nut (nut 922, Fig. 2) threaded to the limiting shaft (“open end of the second pin 90 is extended beyond the other arm 42 into the sixth through hole 920 to threadedly secure to the nut 922” see para. [0024] and Fig. 2) and a rotating member (knob 92, Fig. 2), the rotating member being configured to be able to be socketed on the nut (the knob 92 is placed around/socketed on the nut 922, see Fig. 2) to be rotated to clamp the plates (see para. [0024]). This provides an expected result of a convenient knob handle (92) that may be turned more easily compared to a wingnut that needs to be gripped in a particular location.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the restraining member of Yu/Levy/Hutchison to be a rotating knob and nut, the nut being threaded to the limiting shaft and the rotating member/knob being socketed on the nut as taught by Wang because this is a combination of prior art elements according to known techniques (a knob and a nut that is threaded on a shaft) that provide expected results (the knob and nut combination can be rotated conveniently to adjust a clamping pressure via a limiting shaft). Furthermore, as stated above the use of a knob handle would be turned more easily compared to a wingnut that needs to be gripped in a particular location.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (2016/0151235) in view of Levy et al. (2,896,901) and Hutchison (2017/0087049) as applied to claim 8 above, and further in view of Nan (2008/0017764).
Regarding claim 9, the modified Yu/Levy/Hutchison device is silent regarding wherein the steering device further comprises a connecting shaft, both ends of the connecting shaft are provided with external threads, and the main holder and the suction cup holder are each configured to threadedly engage with connecting shaft.
Nan teaches a related adjustable mount for a massage tool (Fig. 1), including a connecting shaft (threaded stud 32, Fig. 3), both ends of the connecting shaft (32) are provided with external threads (it is a “threaded” stud, see the last sentence of [0037] and Fig. 3), and a main holder (cup member 36, Fig. 3) and a suction cup holder (socket body 26, Fig. 3) are each configured to threadedly engage with the connecting shaft (see Fig. 3, see the last sentence of [0036], and the last sentence of [0037]. Both the main holder 36 and suction cup holder 26 are “threadedly connected” to the connecting shaft 32 via internal threaded socket 30 and by the threads of 32 extending into main holder 36). This provides an expected result of allowing the main holder to be conveniently attached to a suction cup holder to fix to a flat surface.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the main holder and suction cup holder of Yu/Levy/Hutchison to be connected by a connecting shaft provided with external threads as taught by Nan because this is a combination of prior art elements according to known techniques (providing threaded male/female connections) to provide expected results (the suction cup holder can be easily attached or detached by the screw connection and the massage tool can then be fixed to a flat surface by the suction cup).
Response to Arguments
Applicant's arguments filed April 20, 2026, have been fully considered but they are not persuasive.
Regarding the argument that in Hutchison, the modular shaft modules 3a are removably provided to lengthen the overall device configuration, but Yu already provides a lengthening mechanism (telescopic shaft 1) and thus there would be no reason to turn to the teachings of Hutchison since Yu already can extend or retract its length (see the first paragraph of page 10 of the Remarks), this argument is not persuasive.
Length adjustment is not the only reason Hutchison provides modular elements. Hutchison teaches a wide variety of modules that can be mixed and matched to provide different designs, massage textures, materials, massage features, and base configurations (see lines 4-6 of [0116], lines 1-3 of [0124], Fig. 9, and Figs. 13-17). As seen in Figures 13-17 of Hutchison, the user can select different main body designs/shapes (head modules 4a-f, Fig. 13, Figs. 16-17), different base module designs (base modules 2a-d, Fig. 14), including a base module having a suction cup (suction cup 10/17, see Fig. 9, Fig. 16, and the first two configurations on the left in Fig. 17; see para. [0136]-[0138]), and different intermediate modules (3a-c, Fig. 15, Figs. 16-17) that offer a variety of different functions including an ability to adjust the position and orientation relative to the base (“The appendage additions can also have a flexible connection to the shaft/base module such that their position and orientation can be adjusted or modified” see the last sentence of [0121]).
Keeping in mind that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” it is maintained that Hutchison’s teaching of modular intermediate connections with various functions would suggest that Yu’s steering member should be removably connected so the user can mix and match different parts to a variety of configurations to allow the massage tool to be customized as desired. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). The user would add or omit modular parts such as the steering device, depending on whether the user desires the function of the associated modular part.
Regarding the argument that even in combination, the cited references fail to achieve a massage tool that is operable in two distinct states: (1) a first massage state, in which the steering device is engaged between the main body and the base, whereby rotational or directional adjustment of the main body with respect to the base is enabled, and (ii) a second massage state, in which the steering device is removed from between the main body and the base such that the main body and the base are directly connected with no other component therebetween (see the second paragraph of page 10 of the Remarks), this argument is not persuasive.
Yu’s massage tool is clearly operable in the recited first massage state (Fig. 10), in which the steering device (32, Fig. 10) is engaged between the main body (1, 2, Fig. 10) and the base (31, Fig. 10), whereby rotational or directional adjustment of the main body (1, 2) with respect to the base (31) is enabled (the swivel joint 32 can swivel to different positions, “so that the massage device can be operated to provide additional massage functions” see para. [0047] and the last sentence of [0051], Fig. 18, Fig. 20).
In the modified device, Yu’s steering device (32) is now selectively removable from the base, and the main body (1, 2) can be directly attached to the base (31) based upon Hutchison’s teaching. Hutchison’s head module(s) (4) is analogous to Yu’s main body (1, 2). Hutchison’s optional, intermediate shaft module(s) (3) that can provide positional adjustment relative to the base (see the last sentence of [0121]) are analogous to Yu’s Steering device (32). Hutchison’s base (2) is analogous to Yu’s base (31). Hutchison states that the head module(s) (4) can be either attached to the intermediate shaft module (3), or attached directly to the base (2): “connection second half 7a is formed on the base end 41 so that the head module 4a can be connected to a connection first half 6a, such as that on one end of the shaft module 3a, or that on the base module 2a” (see Fig. 2, Fig. 4, lines 1-4 of [0098], and see the first two configurations on the left in Figure 17).
Thus, the modified device can selectively have a second massage state in which the main body (1, 2, Yu) is directly attached to the base (31 of Yu, as modified by base 2 of Hutchison). Thus, the steering device (32, Yu) is removed from between the main body (1, 2) and the base (31) such that the main body and the base are directly connected with no other component therebetween (similar to the leftmost configuration in Figure 17 of Hutchison).
Regarding the argument that MPEP 2144.04(V)(C) relates to obviousness of making a component removable if it is desirable to “obtain access” to the prior-art component to which access was previously restricted, and this situation is not analogous to “removal” of an integral structural component (see the last paragraph of page 10 of the Remarks), this argument is not persuasive. Yu’s steering device (32) is not an “integral” structural component, and Yu even shows the massage device being used without the steering device (see Figure 19). Hutchison’s modular massage tool provides an additional reason to obtain access to the steering device, so its steering function can be selectively added or omitted from a mixed and matched modular massage tool.
Regarding the argument that if Yu was modified to “remove” the steering device 32, the resulting device would be unsatisfactory for its intended purpose because Yu’s swivel joint (32) serves as the sole physical linkage between the shaft (1) and the base (31), and would leave the shaft (1) with no mechanical means by which it can be secured to the base (31), rendering the system physically impossible to assemble and structurally inoperable (see the first two paragraphs of page 11 of the Remarks), this argument is not persuasive.
First, Yu specifically suggests utilizing the device with the shaft (1) detached from the base (see Figure 19). Thus, removing the steering device would not make the device inoperable.
Second, this argument ignores the fact that Yu was additionally modified by Hutchison, and the modified device can have Yu’s main body (1, 2) directly attached to the steering device (32), or directly attached to the base (2; “the head module 4a can be connected to a connection first half 6a, such as that on one end of the shaft module 3a, or that on the base module 2a” see Fig. 2, Fig. 4, lines 1-4 of [0098], and see the first two configurations on the left in Figure 17 of Hutchison).
Regarding the argument that Yu fails to disclose whereby the main body and the base are engaged with one another in both the first massage state and the second massage state, either directly or via the steering device (see the third paragraph of page 11 of the Remarks, through the first paragraph of page 12), this argument is not persuasive. Yu alone does not disclose both claimed massage states, but Yu has been modified by Hutchison. The modified Yu/Levy/Hutchison device is configured to achieve both recited massage states, as outlined above.
Regarding the argument that amended claim 1 recites that the main body is configured as the sole component of the massage tool, but Hutchison has each of the components of the device incorporating a sexual stimulation function and thus it would not be obvious to replace a single-functional unit with a multi-module assembly as such modification would be unable to achieve the structural simplicity of the claimed massage tool (see the first full paragraph of page 12 of the Remarks), this argument is not persuasive.
First, Hutchison does not require each module to have a massaging function. For example, Hutchison’s base (2, Fig. 9, Figs. 16-17) may include a suction cup (suction cup 10/17, see Fig. 9, Fig. 16, and the first two configurations on the left in Figure 17) that is used to keep the massage device “stationary or mounted to a surface in use” (see lines 1-4 of [0118]).
Second, when Yu is modified by the teachings of Hutchison, the main body (1, 2, Yu) can be selectively attached directly to the base (31 of Yu, as modified by base 2 of Hutchison). In this configuration, there is the same structural simplicity of the claimed massage device.
Regarding the argument that if the entire device of Hutchison when combined could be considered to read on the “main body” of claim 1, the combination of Yu and Hutchison still does not achieve the structure of claim 1, whereby the massage tool is operable in both the first and second massage states (see the last paragraph of page 12 of the Remarks), this argument is not persuasive. Applicant is arguing an interpretation that was not taken. As stated in the rejection(s), Hutchison’s head module (4) is considered the corresponding structure of Yu’s “main body” (1, 2).
Regarding the argument that Hutchison’s base 2, shaft module 3, and head 4, all possess telescopic and sexual stimulation functions, which would most reasonably correspond to the “main body” of Yu (1, 2), which likewise possesses telescopic and stimulation functions (see the last paragraph of page 12 of the Remarks), this argument is not persuasive. None of Hutchison’s modules have telescopic functions. Hutchison’s head module(s) (4) is analogous to Yu’s main body (1, 2). Hutchison’s optional, intermediate shaft module(s) (3) that can provide positional adjustment relative to the base (see the last sentence of [0121]) are analogous to Yu’s Steering device (32). Hutchison’s base (2) is analogous to Yu’s base (31).
Regarding the argument that amended claim 1 has the massage tool operable in both a “direct mode,” in which the main body is directly engaged with the base vi aa mechanical interface, allowing for stable, hands-free massaging at a fixed angle, and s “steering mode,” in which the steering device is interposed as a modular bridge, allowing for dynamic rotating and directional adjustment of the main body relative to the base (see the second paragraph of page 13 of the Remarks), this argument is not persuasive. Yu’s massage device has the same “steering mode” in which the steering device (32) is interposed to allow dynamic rotating and directional adjustment (via swivel joint 32) of the main body (1, 2) relative to the base (31). In the 103 rejection(s) above, Yu has been modified by Hutchison to have Yu’s steering device (32) selectively detachable. This allows Yu’s main body (1, 2) to be either attached to the steering device for the “steering mode,” or directly attached to the base in a “direct mode” (Hutchison’s modular connectors allow a main body, such as head module 4, to be connected to “one end of the shaft module 3a, or that on the base module 2a” see Fig. 2, Fig. 4, lines 1-4 of [0098], and see the first two configurations on the left in Figure 17 of Hutchison).
Conclusion
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/CHRISTOPHER E MILLER/ Examiner, Art Unit 3785
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