DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The disclosure is objected to because of the following informalities: “first arm 318b” in [0066] should recite - - first arm 318a - -.
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitation of “the first and second portions are separated by a first distance between them” in claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Instead, the drawings currently show the second (318b) and third portions (318a) are separated by a first distance (vertical distance) between them in Fig. 4. This is further evidenced by the discussion of the first distance between the second and third portions as discussed in dependent claim 7 (also see for example how independent claims 12 and 15 each recite a first distance separating the second and third portions). The first (305) and second portions (318b) are instead shown joined to one another and not separated by any distance. Applicant may obviate the drawing objection by amending claim 1 to recite - - the second and third portions are separated by a first distance between them - -.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “322” has been used to designate both the gap in Fig. 3 ([0069]) and flattened finger region/indentation in Fig. 10 ([0071, [0135]).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 7 and 12 are objected to because of the following informalities:
Claim 7, line 1, “the first distance is between the second and third portions is at a first point” should recite - - the first distance between the second and the third portions is at a first point” to correct the grammatical error of the extra first “is”.
Claim 12 recites the limitation "the first and second ports" in line 17. The first and second ports are not defined until line 20 and onward in the same claim. The Examiner recommends restructuring claim 12 such that lines 14-19 are moved below lines 20-26, such that the first and second ports are defined first.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 7, 15-20 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 7 recites “the first distance is [sic] between the second and the third portion is at a first point”. However, claim 1 refers to the first distance as the distance between the first and second portions. Therefore, it is unclear if this first distance is in reference to the same first distance as claim 1 or another distance. For examination purposes and as best understood by the Examiner in light of the specification, the Examiner will interpret the first distance of claim 7 to refer to the same first distance introduced in claim 1, and that the first distance in claim 1 is the distance separating the second and third portions.
Claim 15 is unclear because it recites “an axis” twice in lines 21-22. It is unclear if Applicant is referring to the same axis in these instances or two different axes. For examination purposes and as best understood by the Examiner in light of the specification, the Examiner will interpret, line 21 to be - - a first axis - - and line 22 to be - - a second axis - -.
Claim(s) 16-20 is/are rejected as being dependent on, and failing to cure the deficiencies of, their rejected respective parent claims.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2, 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 7 and 19 of U.S. Patent No. 9,775,645.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2, 15-20 recite a method that would have been made obvious by the apparatus as claimed in patent claims 1-4, 6, 7 and 19.
Claim 2 of the instant application recites the structures of the apparatus in claim 19 of the patent.
Claim 15 of the instant application recites the structures of the apparatus in claim 1 of the patent.
Claim 16 of the instant application recites the structures of the apparatus in claim 2 of the patent.
Claim 17 of the instant application recites the structures of the apparatus in claim 3 of the patent.
Claim 18 of the instant application recites the structures of the apparatus in claim 4 of the patent.
Claim 19 of the instant application recites the structures of the apparatus in claim 6 of the patent.
Claim 20 of the instant application recites the structures of the apparatus in claim 7 of the patent.
The difference between the patent and the instant claims are that the instant claims recite a method comprising steps of forming the apparatus in the patent claims. The term “forming” in its broadest, reasonable interpretation as defined by the Oxford Languages dictionary means to “bring together parts to combine to create (something)”. As claims 1-4, 6, 7 and 19 of the patent claims are directed to a man-made product (not a naturally occurring element), it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus patent claims to the method claims of “forming” each of the structure as recited in claims 2, 15-20 of the instant application as the elements necessarily need to be combined to thereby achieve the apparatus of the patent claims.
Claim 15 of the instant application further recites the steps of “coupling” the first port to an end of the second portion and “coupling” the second port to an end of the third portion. Claim 1 of the patent recites “a first port, coupled to an end of the second portion” and “a second port, coupled to an end of the third portion”. It would have been obvious to one of ordinary skill in the art been before the effective filing date of the invention to modify claim 1 of the patent to include the step of “coupling” since in order for the first port and second port to be “coupled” to the portions as recited in the patent claim, a step of “coupling” would necessarily need to occur.
Similarly, claim 18 of the instant application recites the steps of “coupling” the first port to a vacuum source” and “coupling the second port to a fluid source”. Claim 4 of the patent recites “the first port is to be coupled to a vacuum source, the second port is to be coupled to a fluid source”. It would have been obvious to one of ordinary skill in the art been before the effective filing date of the invention to modify claim 4 of the patent to include the step of “coupling” since in order for the first port and second port to be “coupled” to the sources as recited in the patent claim, a step of “coupling” would necessarily need to occur.
Claims 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 7 of U.S. Patent No. 11,013,534 in view of Chang et al (US 2014/0378887).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 15-20 recite a method that would have been made obvious by the apparatus as claimed in patent claims 1-6 in view of Chang et al.
Claim 15 of the instant application recites similar structures of the apparatus in claim 1 of the patent.
Claim 16 of the instant application recites similar structures of the apparatus in claim 2 of the patent.
Claim 17 of the instant application recites similar structures of the apparatus in claim 3 of the patent.
Claim 18 of the instant application recites similar structures of the apparatus in claim 4 of the patent.
Claim 19 of the instant application recites similar structures of the apparatus in claim 5 of the patent.
Claim 20 of the instant application recites similar structures of the apparatus in claim 6 of the patent.
One of the differences between the patent and the instant claims is that the instant claims recite a method comprising steps of forming the apparatus in the patent claims. The term “forming” in its broadest, reasonable interpretation as defined by the Oxford Languages dictionary means to “bring together parts to combine to create (something)”. As claims 1-6 and 7 of the patent claims are directed to a man-made product (not a naturally occurring element), it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus patent claims to the method claims of “forming” each of the structure as recited in claims 15-20 of the instant application as the elements necessarily need to be combined to thereby achieve the apparatus of the patent claims.
Claim 15 of the instant application further recites the steps of “coupling” the first port to an end of the second portion and “coupling” the second port to an end of the third portion. Claim 1 of the patent recites “a first port, coupled to an end of the second portion” and “a second port, coupled to an end of the third portion”. It would have been obvious to one of ordinary skill in the art been before the effective filing date of the invention to modify claim 1 of the patent to include the step of “coupling” since in order for the first port and second port to be “coupled” to the portions as recited in the patent claim, a step of “coupling” would necessarily need to occur.
Claim 15 of the instant application recite “an axis passing through the first opening does not pass through the second opening, and an axis passing through the second opening does not pass through the first opening” absent from claim 1 of the patent. Claim 1 of the patent instead recites “the first opening is separate from the second opening”. In the same field of endeavor, Chang et al teaches a microdermabrasion system with a handpiece (100A) which comprises a first opening coupled (see annotated figure below) to an abrasive element channel opening (124a or 124b) and a second opening (see annotated figure below) not coupled to the abrasive element channel opening, where an axis passing through the first opening does not pass through the second opening because the axes are parallel and do not ever intersect (see annotated figure below, wherein the two parallel dashed lines illustrate the axis passing through each respective opening). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify patent claim 1 to include the axis passing through the first opening does not pass through the second opening and an axis passing through the second opening does not pass through the first opening to allow two separate channels to perform two distinct functions during the microdermabrasion process, irrigating and aspirating, at the same time (as illustrated by the arrows in Fig. 1B of Chang et al; [0043]).
PNG
media_image1.png
338
704
media_image1.png
Greyscale
Similarly, claim 18 of the instant application recites the steps of “coupling” the first port to a vacuum source” and “coupling the second port to a fluid source”. Claim 4 of the patent recites “the first port is to be coupled to a vacuum source, the second port is to be coupled to a fluid source”. It would have been obvious to one of ordinary skill in the art been before the effective filing date of the invention to modify claim 4 of the patent to include the step of “coupling” since in order for the first port and second port to be “coupled” to the sources as recited in the patent claim, a step of “coupling” would necessarily need to occur.
Allowable Subject Matter
Claims 1-11 would be allowable if rewritten to obviate the drawing objection as interpreted by the Examiner above (or if new drawings can be provided without adding new matter) and if the double patenting rejection above is obviated as well for claim 2.
Claims 12-14 would be allowable if rewritten to obviate the claim objections as interpreted by the Examiner above.
Claims 15-20 would be allowable if rewritten to obviate the 35 U.S.C. 112 rejection as interpreted by the Examiner above and if the double patenting rejections above are obviated as well.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record, Bernabei et al (US 6322568) discloses a microdermabrasion device, including the method of forming a tip (most distal end of 1720) of a handpiece (Fig. 17) of a microdermabrasion system at a distal end; forming a first portion (1720) of a handle of the handpiece coupled to the tip; forming a curved second portion (1740) of the handle, coupled to the first portion; forming a curved third portion (1750) of the handle, coupled to the first and second portions, wherein a first curve of the curved second portion is in an opposite direction of a second curve of the curved third portion (Fig. 17); wherein the first, second, and third portions are joined together at a first portion of the handpiece, wherein the second and third portions are separated by at least a first distance (vertical spacing in Fig. 17) between them; forming a first port (at proximal end of 1740) at an the end of the second portion, wherein the first port couples to a first internal channel passing through the second and first portions of the handle (Figs. 17, 19), the first internal channel is coupled to an opening (1930) at the tip; forming a second port (at proximal end of 1750), coupled to the end of the third portion, wherein the second port couples to a second internal channel passing through the third and first portions of the handle (Figs. 17, 19), the second internal channel is coupled to another opening (1950) near the tip, a first distance (see annotated figure below), separating the curved second and third portions, is between the curved second and third portions is at a first point, a second region (see annotated figure below) is where the first, second, and third portions are joined, and a third point (see annotated figure below) is where the first and second ports are, and a second distance (see annotated figure below), separating the curved second and third portions, is between the first point and third point, and the second distance is less than the first distance (see annotated figure below, wherein the curved portions curve back towards the longitudinal axis and therefore the second distance is decreased from the first distance).
PNG
media_image2.png
375
630
media_image2.png
Greyscale
In regards to independent claim 1, the prior art of record does not disclose or fairly suggest either singly or in combination the claimed method comprising, inter alia, the steps of forming a first channel opening at the tip, forming a second channel opening at the tip, and inserting a tip holder over the tip, wherein the tip holder is secured in place to the tip by a friction fit over an O-ring coupled to a groove in the tip, and the tip holder comprises a tip holder opening, and the first and second channel openings are within an enclosed space of the tip, formed between the tip and the tip holder and inside of the tip holder opening.
In regards to independent claim 12, the prior art of record does not disclose or fairly suggest either singly or in combination the claimed method comprising, inter alia, the steps of forming a first channel opening at the tip; forming a second channel opening at the tip; inserting a tip holder over the tip, wherein the tip holder is secured in place to the tip by a friction fit over a surface of the tip, and the tip holder comprises a tip holder opening, and the first and second channel openings are within an enclosed space of the tip, formed between the tip and the tip holder and inside of the tip holder opening.
In regards to independent claim 15, the prior art of record does not disclose or fairly suggest either singly or in combination the claimed method comprising, inter alia, the steps of forming an abrasive element of the tip, wherein the abrasive element comprises a first abrasive element channel opening at a proximal end, a second abrasive element channel opening at a distal end, and an abrasive member at the distal end; forming a first opening that is not coupled to the first abrasive element channel opening, and forming a second opening that is removably coupled to the first abrasive element channel opening.
Therefore, in view of the prior art and its deficiencies, Applicant’s invention is rendered novel and non-obvious, and thus, is allowable as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE SHI whose telephone number is (571)270-5620. The examiner can normally be reached Mon-Fri, 8-4 EST.
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, Kelly Bekker can be reached on (571) 272-2739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHERINE M SHI/Primary Examiner, Art Unit 3771