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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,375,794 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Reissue Declaration
The reissue oath/declaration filed September 23, 2025, is defective because it fails to specifically identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. In a broadening reissue, the reissue declaration must specifically identify a word, phrase, or expression in an original patent claim and how it renders the original patent wholly or partly inoperative or invalid. See MPEP § 1414, subsection II. In other words, the error statement must specifically point out the word, phrase or expression that was present in original patent claim 1 the gives rise to the error being corrected in the new claims (e.g., a limitation that was present in original claim 1 that is being omitted in the broader reissue claims).
The examiner notes that recovery of non-elected inventions or recapture of surrendered subject matter are not errors that can be corrected by filing a reissue application. See MPEP §§ 1412.01, subsection II, and 1412.02.
Additionally, the examiner notes for completeness of the record that the September 23 reissue declaration is unsigned (recognizing that it is Applicant’s express intention, see Remarks, pg. 4, to have the reissue declaration duly executed after the language of the error statement is found to be acceptable by the examiner).
Claim Rejections – 35 USC § 251 – Reissue Declaration
35 U.S.C. 251(a) states:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 1-18 and 23-30 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. The nature of the defects in the declaration is set forth in the discussion above in this Office action.
Claim Rejections – 35 USC § 251 – Lack of Defect or Error
MPEP § 1412.01, subsection II, states:
Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a continuing application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application. A reissue applicant’s failure to timely file a continuing application is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Accordingly, this is not correctable by reissue of the original patent under 35 U.S.C. 251. See In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986); In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977); see also In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978). In this situation, the reissue claims should be rejected under 35 U.S.C. 251 for lack of any defect in the original patent and lack of any error in obtaining the original patent.
Claims 18 and 23-30 are rejected under 35 U.S.C. 251 for lack of defect in the original patent and lack of error in obtaining the original patent.
During prosecution of the ‘794 patent, election was required between Species A-H, corresponding to Figs. 1a-2d, 3a-b, 4a-b, 5a-b, 6a-b, 7a-b, 8a-b, and 9a-c respectively. Applicant elected Species B (Figs. 3a-b). See Non-final Office action mailed May 27, 2020, in U.S. Application No. 16/208,854 (hereinafter the ‘854 application); and Response filed August 26, 2020. Species B (Figs. 3a-b) includes “at least one bendably resilient element configured to be pushed toward the actuator shaft” as recited in patent claim 1. Independent patent claims 11 and 17 each recite “a first grip and a second grip” wherein the spring is compressed “by forces on the first grip and the second grip” that are “directed substantially perpendicular to the longitudinal axis of the shaft.” Patent claims 11 and 17 each encompass elected Species B as well as Species C (Figs. 4a-b) and Species D (Figs. 5a-b) which each include first and second actuating levers (405, 407; 505, 507) corresponding to the claimed first and second grips upon which force is directed substantially perpendicular to the longitudinal axis of the actuating shaft (401, 501). Thus, the patented invention is understood to encompass Species B, C, and D. Applicant permitted the claims to issue as a patent without filing a continuing application on non-elected Species A and E-H.
Applicant’s failure to timely file a continuing application on the non-elected species is not considered to be an error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim and is thus not correctable by filing a reissue application.
New reissue claims 18 and 23-30, as currently amended, encompass patented Species C and D (Figs. 4a-b and 5a-b) as well as non-elected Species H (Figs. 9a-c), each of which include first and second grips positioned on opposite sides of the actuator shaft and each contacting a pin that moves from the second end to the first end of the slot in the handle body in response to forces being applied to the first and second grips, and exclude elected Species B (Figs. 3a-b), which does not include a pin moving in a slot as claimed. Claim 18 has been broadened to encompass the non-elected Species H by omitting the distinctive features of the elected Species B (common to Species C and D) that were relied on to obtain the patent, namely, the limitation regarding the grips being “pushed toward” or “directed substantially perpendicular to a longitudinal axis,” while also being narrowed to exclude elected Species B. Claims 18 and 23-30 are thus not generic to the elected species. Applicant argues that sub-generic linking claims 18 and 23-30 are proper in view of In re Doyle, 293 F.3d 1355, 63 USPQ2d 1161 (Fed. Cir. 2002), where the court permitted filing of a linking claim broad enough to read on an elected invention together with a non-elected invention. See Remarks, pg. 5. However, this argument is not persuasive because the claims in Doyle were broadened to encompass both the elected species and the non-elected species, but in this case, elected Species B is excluded by the sub-generic linking claim. The non-elected invention of Species H cannot be recovered by filing of this reissue application. Thus, claims 18 and 23-30 are rejected under 35 U.S.C. 251 for lack of any defect in the original patent and lack of any error in obtaining the original patent.
Recapture
Applicant’s argument, see Remarks, pg. 6-8, that claims 18 and 23-30 are directed to overlooked aspects, specifically the embodiment of Fig. 9a-c which was never claimed, is persuasive. The recapture rejection is accordingly withdrawn. However, as discussed in MPEP § 1412.01, subsection III:
Even though claims drawn to overlooked aspects are not subject to recapture, the failure to present such claims may not be a proper error under 35 U.S.C. 251. Specifically, where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a continuing application on the non-elected invention(s) or on non-claimed subject matter distinct from the invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application.
Therefore, even though claims 18 and 23-30 are drawn to overlooked aspects and thus not subject to recapture, the failure to present such claims is not a proper error under 35 U.S.C. 251 because an election of species requirement was made in the underlying application and applicant permitted the elected invention to issue as a patent without filing a continuing application on the non-elected species, as set forth above in the rejection under 35 U.S.C. 251 above based on lack of error.
Claim Rejections - 35 USC § 103
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 18 and 23-30 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (US Patent Pub. 2017/0265616, hereinafter Sato) in view of Kerr (US Patent No. 2,458,911, hereinafter Kerr).
Regarding claim 18, Sato discloses a hair puller (“hair remover,” ¶ 13, Fig. 1) comprising:
an actuator shaft (see annotated Fig. 1 below) having a first end portion (carrying the front end part 1) and a second end portion (opposite the first end portion 1), and a shaft length extending between the first and second end portions;
a helical spring (2) surrounding a portion of the actuator shaft at the first end portion (¶ 15), the helical spring (2) being configured to receive hairs into the helical spring (¶ 17) and to grip the hairs in the helical spring as the helical spring moves from an open position (Fig. 1) to a closed position (¶ 15), where the helical spring is substantially fully compressed in the closed position (“completely compressed,” ¶ 17);
a handle body having a length and defining an opening (axial bore of handle body, Fig. 1), the actuator shaft slidably positioned at least partially within the opening (¶ 15), a slot extending through the handle body transverse to the length of the handle body (Fig. 1), the slot having a first end and a second end, a portion of the handle body forming part of an exterior of the hair puller, and the slot being at least partially exposed to the exterior (see Fig. 1); and
a first grip (first finger hole 3) and a second grip (second finger hole 3) positioned on opposite sides of the actuator shaft, the first and second grips (3) being connected to the actuator shaft such that the actuator shaft moves with the first and second grips from the second end of the slot toward the first end of the slot in response to forces being applied to the first and second grips (3);
wherein the moving from the open position to the closed position causes the handle body to move axially along the actuator shaft in a direction toward the helical spring (“If a user places his/her second finger and middle finger into finger holes 3 and pushes a rear end part 4 with the thumb, the spring 2 can be easily compressed,” ¶ 15).
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It is clear from Sato’s disclosure that the actuator shaft moves with the grips (3) to compress the spring (4). One of ordinary skill in the art would have readily understood that this conjoint movement requires a connection between the actuator shaft and the grips. However, Sato is silent with respect to the specific structure connecting the actuator shaft to the grips and does not explicitly teach a hole in the shaft with a pin extending through the hole and the slot, with the grips contacting the pin to move the pin from the second end toward the first end in response to the forces applied to the grips.
However, Kerr teaches a similar hair puller (Figs. 1-3) comprising a pin (transverse pin d) extending through a hole in an actuator shaft (central rod or pin c) and through a slot (i) in a handle body (stationary member f; col. 1:19-31), the pin (d) being movable between a first and second ends of the slot (i), with a helical spring (a) that surrounds the actuation shaft (c) biasing the pin (d) to the second end of the slot (i) in an open position (as shown in Figs. 1 and 3, the spring a being “in the normally open state,” col. 1:8-14), the helical spring (a) being compressed in response to the pin (d) moving toward a first end of the slot (i, Fig. 2; col. 1:26-31), the helical spring (a) being in a closed position (Fig. 2) when the pin (d) is at the first end. A gripping part (sliding member e, configured for “operative movement by the fingers,” col. 1:32-35) on the actuator shaft (c) contacts the pin (the gripping part e being attached to the shaft c by the pin d, col. 1:21-23), such that the pin (d) moves from the second end toward the first end in response to forces being applied to the gripping part (e). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Sato to include a pin as taught by Kerr extending through a hole in the actuator shaft and the slot in the handle body, with each of Sato’s grips contacting the pin, in order to supply the structure the connects the grips to the actuator shaft to accomplish the conjoint sliding of the grips and the actuator shaft with respect to the handle body.
Regarding claims 23-25, the modified Sato teaches the claimed invention substantially as claimed, as set forth above for claim 18. Sato further teaches the slot is positioned at an intermediate location between a first handle end (4) and a second handle end of the handle body (see Fig. 1 above) (claim 23); wherein the slot has a slot length extending along a portion of the length of the handle body (see Fig. 1 above) (claim 24); wherein the slot length is defined between the first and second ends of the slot (Fig. 1) (claim 25).
Regarding claims 26 and 27, the modified Sato teaches the claimed invention substantially as claimed, as set forth above for claim 18. Sato does not explicitly teach that the slot length is less than half (claim 26) or less than one quarter (claim 27) of the length of the handle body. However, Kerr further teaches that a slot length less than one half (claim 26) or less than one quarter of (claim 27) of the length of the handle body (f; see Fig. 3) is sufficient for the purpose of compressing the spring to grip the hairs (“the slots being long enough to allow for sufficient movement of the sliding member to fully compress the spring so that any hairs trapped between the coils thereof are firmly held,” col. 1:36-31). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Sato by configuring the slot length to be less than one half or less than one quarter of the length of the handle body, as taught by Kerr, since Kerr teaches that the claimed slot length was already known to be suitable for the intended function. Additionally, one of ordinary skill in the art would have recognized that the slot length corresponds to the distance the grips are moved to effect compression of the spring, and that it may be desirable to configure the slot with a shorter length relative to the handle body, as taught by Kerr, for greater efficiency of effort by the user when operating the device.
Regarding claim 28, the modified Sato teaches the claimed invention substantially as claimed, as set forth above for claim 18. Sato further teaches that the handle body includes at least a first section with a first outer diameter (see part labeled “handle body” in annotated Fig. 1 above) and a second section (adjacent to spring 2) with a second outer diameter, wherein the first outer diameter is smaller than the second outer diameter (see Fig. 1).
Regarding claims 29-30, the modified Sato teaches the claimed invention substantially as claimed, as set forth above for claim 18. Sato does not teach that the smaller diameter is adjacent the helical spring (claim 29) or that the slot extends through the second section (claim 30). However, Kerr further teaches the handle body (f) includes at least a first section with a first outer diameter (at top in Figs. 1-3, adjacent to spring a) and a second section with a second outer diameter (at bottom in Fig. 3, adjacent to bottom end of member h), wherein the first outer diameter is smaller than the second outer diameter (see Fig. 3), wherein the first section is adjacent the helical spring (a) (claim 29) and the actuation slot (i) extends through the second section (see Fig. 3) (claim 30). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Sato to include a smaller diameter section adjacent the spring, with the slot in a larger diameter section, as taught by Kerr, in order to more comfortably access nasal hairs within a nostril.
Allowable Subject Matter
Patent claims 1-17 are allowable over the prior art for the reasons discussed during prosecution of the ‘794 patent. See Notice of Allowance mailed October 1, 2021, pg. 4. However, patent claims 1-17 are rejected under 35 U.S.C. 251 in this reissue application because the present record does not indicate that there is an error in the patent claims that would be correctable by reissue, as discussed above.
Response to Arguments
Applicant's arguments filed September 23, 2025, have been fully considered.
Applicant’s argument that sub-generic linking claims 18 and 23-30 are proper in view of Doyle, see Remarks, pg. 5, is not persuasive because claims 18 and 23-30 are not generic to the elected species, as discussed in detail above.
Applicant’s arguments with respect to recapture and overlooked aspects, see Remarks, pg. 6-8, are persuasive, as discussed above. Accordingly, the recapture rejection has been withdrawn.
Applicant’s arguments with respect to the rejection under 35 U.S.C. 102 as anticipated by Kerr have been fully considered but are moot because the new ground of rejection relies on Sato to teach the features argued to be missing from Kerr, including first and second grips on opposite sides of the actuator shaft and the slot being exposed to the exterior of the device, as set forth above in response to Applicant’s amendment.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura L. Davison whose telephone number is (571)270-0189. The examiner can normally be reached Monday - Friday, 8:00 a.m. - 4:00 p.m. ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at (571)272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Laura Davison/Reexamination Specialist, Art Unit 3993
Conferees:
/SARAH B MCPARTLIN/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993