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 .
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 1-20 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.
Regarding claims 1, 5, and 13, each of these claims are directed to a method but the preamble of each claim recites “the massage system comprises” and the some of the components recited are not found within the body of the claims. Therefore it is not clear whether applicant is intending to claim the components in the preamble or whether the components of the massage system are intended use limitations.
For the purpose of examination, examiner has interpreted the claims to require the components recited in the preamble.
The remaining claims are rejected due to dependence on a rejected base claim.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
Claim(s) 1-2, 5-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi (US 2019/0167941) in view of Legrain (WO 2004/039303), Scirbona (US 6,785,950), and Nishidate (US 2015/0155814).
Regarding claim 1, Yamaguchi discloses (Figs. 1-16) a method of controlling a massage system comprising massage elements (vibration elements 14-17), a sensor (drive monitor 31) for detecting a parameter related to drowsy driving of a driver (detects facial expression of driver to see if drowsiness exists, i.e. number of blinks, closing state of eyelid, etc. See paragraph [0064]), and a controller (control device 40) for determining whether the driver is drowsy driving based on the parameter (paragraph [0064]) and for controlling an operation of the drive motor through an operation switch (ON/OFF switch 33) including an ON terminal directly connecting the power supply to the drive motor and an OFF terminal connecting the power supply to the drive motor (paragraphs [0067] and [0073]), wherein the method comprises: determining, by the controller, whether the driver is drowsy driving (paragraph [0064]); and entering, by the controller, a relax mode when the driver is drowsy driving (paragraph [0064]-[0067]), wherein the controller connects the power supply to the ON terminal of the operation switch to operate the drive motor at the relax mode (paragraphs [0067] and [0073]).
Yamaguchi does not disclose the massage element includes a sliding member formed with at least one roller member, a housing member including at least one cam, each cam being formed of a cam profile on which each roller is movable, the cam profile including a valley portion and a peak portion and having a shape protruding convex toward the sliding member, a drive motor capable of transmitting the torque to the drive gear module, and a drive gear module capable of transmitting a torque to the sliding member.
However, Legrain teaches (Figs. 1-5) a massage element includes a sliding member (second part 7) formed with at least one roller member (radial flange 8 with ramps 9), a housing member (housing 1) including at least one cam (first part 6), each cam being formed of a cam profile on which each roller is movable (has ramp 5 which ramps 9 of radial flange 8 move along), the cam profile including a valley portion (cavity of ramp 5) and a peak portion (tip of ramp 5) and having a shape protruding convex toward the sliding member (see convex protrusion in Fig. 3), a drive motor (“drive motor”, page 5 paragraphs 1-2) capable of transmitting the torque to a drive gear module (“capable” interpreted to mean that the motor is capable of providing this function. Because the motor of Legrain is a rotary electric motor, the motor of Legrain is capable of transmitting torque to a drive gear module and thus this limitation is comprehended by Legrain). While Legrain does not disclose a drive gear module capable of transmitting a torque to the sliding member, Scirbona further teaches (Figs. 1-2) a percussion device comprising a motor (motor 18) and a drive gear module (gear system 22) capable of transmitting a torque to the sliding member (transmits torque to sliding member 60 and causes speed reduction and torque increase, Col. 1 lines 52-55).
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 massage element of Yamaguchi to include a sliding member formed with at least one roller member, a housing member including at least one cam, each cam being formed of a cam profile on which each roller is movable, the cam profile including a valley portion and a peak portion and having a shape protruding convex toward the sliding member, a drive motor capable of transmitting the torque to the drive gear module, as taught by Legrain, for the purpose of providing a suitable vibration structure for stimulating a drowsy user and dissipating fatigue (page 1 paragraph 2 Legrain); and to further modify the invention of modified Yamaguchi to include a drive gear module capable of transmitting a torque to the sliding member, as taught by Scirbona, for the purpose of reduces the motor speed while increasing its torque (Col. 1 lines 52-55 Scirbona).
Modified Yamaguchi does not disclose a position determining module including first and second parts electrically isolated from each other, a first terminal electrically connecting a power supply to the first part, and a second terminal capable of contacting with the first part or the second part according to a rotation of the drive motor, an operation switch including an ON terminal directly connecting the power supply to the drive motor and an OFF terminal connecting the power supply to the drive motor through the position determining module.
However, Nishidate teaches (Figs. 1-3) a massage device comprising a position determining module including first and second parts (first member 11 and second member 16) electrically isolated from each other (electrically isolated when contact parts of each member are disconnected, see Fig. 1 and paragraph [0050]), a first terminal electrically connecting a power supply to the first part (terminal 14 connecting power source 23 to first part 11, paragraph [0059]), and a second terminal capable of contacting with the first part or the second part according to a rotation of the drive motor (second terminal 19 contacting second part 16 according to rotation of drive motor, paragraph [0040] and [0053]). Regarding the limitation “operation switch including an ON terminal directly connecting the power supply to the drive motor and an OFF terminal connecting the power supply to the drive motor through the position determining module”, because modified Yamaguchi already discloses an operation switch that includes an ON terminal connecting the power supply to the drive motor and an OFF terminal connecting the power supply to the drive motor, and Nishidate discloses the positioning determining module is used to connect/disconnect the ON/Off terminals (paragraph [0059] Nishidate), one of ordinary skill would recognize that by combining these teachings form these references that the combined invention would arrive at this claim limitation and thus this limitation is comprehended by the modified Yamaguchi reference.
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 method of modified Yamaguchi to include a position determining module including first and second parts electrically isolated from each other, a first terminal electrically connecting a power supply to the first part, and a second terminal capable of contacting with the first part or the second part according to a rotation of the drive motor, an operation switch including an ON terminal directly connecting the power supply to the drive motor and an OFF terminal connecting the power supply to the drive motor through the position determining module, as taught and suggested by Nishidate, for the purpose of allowing a user to switch the massager between different modes so that therapy can be better customized (paragraph [0059] Nishidate).
Regarding claim 2, modified Yamaguchi discloses stopping the relax mode when the OFF terminal is selected by a user or a predetermined relax mode stop condition is satisfied (massage is stopped when Off terminal is selected, paragraph [0067] Yamaguchi), wherein the controller connects the power supply to the OFF terminal of the operation switch at the stopping of the relax mode (paragraph [0067] Yamaguchi).
Regarding claim 5, Yamaguchi discloses (Figs. 1-16) a method of controlling a massage system comprising massage elements (vibration elements 14-17), a sensor (drive monitor 31) for detecting a parameter related to drowsy driving of a driver (detects facial expression of driver to see if drowsiness exists, i.e. number of blinks, closing state of eyelid, etc. See paragraph [0064]), wherein the method comprises: determining the driver is drowsy driving (paragraph [0064]); and entering a relax mode when the driver is drowsy driving (paragraph [0064]-[0067]).
Yamaguchi does not disclose the massage element includes a sliding member formed with at least one roller member, a housing member including at least one cam, each cam being formed of a cam profile on which each roller is movable, the cam profile including a valley portion and a peak portion and having a shape protruding convex toward the sliding member, a drive motor capable of transmitting the torque to the drive gear module, and a drive gear module capable of transmitting a torque to the sliding member.
However, Legrain teaches (Figs. 1-5) a massage element includes a sliding member (second part 7) formed with at least one roller member (radial flange 8 with ramps 9), a housing member (housing 1) including at least one cam (first part 6), each cam being formed of a cam profile on which each roller is movable (has ramp 5 which ramps 9 of radial flange 8 move along), the cam profile including a valley portion (cavity of ramp 5) and a peak portion (tip of ramp 5) and having a shape protruding convex toward the sliding member (see convex protrusion in Fig. 3), a drive motor (“drive motor”, page 5 paragraphs 1-2) capable of transmitting the torque to a drive gear module (“capable” interpreted to mean that the motor is capable of providing this function. Because the motor of Legrain is a rotary electric motor, the motor of Legrain is capable of transmitting torque to a drive gear module and thus this limitation is comprehended by Legrain). While Legrain does not disclose a drive gear module capable of transmitting a torque to the sliding member, Scirbona further teaches (Figs. 1-2) a percussion device comprising a motor (motor 18) and a drive gear module (gear system 22) capable of transmitting a torque to the sliding member (transmits torque to sliding member 60 and causes speed reduction and torque increase, Col. 1 lines 52-55).
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 massage element of Yamaguchi to include a sliding member formed with at least one roller member, a housing member including at least one cam, each cam being formed of a cam profile on which each roller is movable, the cam profile including a valley portion and a peak portion and having a shape protruding convex toward the sliding member, a drive motor capable of transmitting the torque to the drive gear module, as taught by Legrain, for the purpose of providing a suitable vibration structure for stimulating a drowsy user and dissipating fatigue (page 1 paragraph 2 Legrain); and to further modify the invention of modified Yamaguchi to include a drive gear module capable of transmitting a torque to the sliding member, as taught by Scirbona, for the purpose of reduces the motor speed while increasing its torque (Col. 1 lines 52-55 Scirbona).
Modified Yamaguchi does not disclose a position sensor including first and second parts electrically isolated from each other; a first terminal electrically connecting a power supply to the first part; a second terminal contactable with the first part or the second part according to a rotation of the drive motor; an operation switch including an ON terminal directly connecting the power supply to the drive motor and an OFF terminal connecting the power supply to the drive motor through the position sensor.
However, Nishidate teaches (Figs. 1-3) a massage device comprising a position determining module including first and second parts (first member 11 and second member 16) electrically isolated from each other (electrically isolated when contact parts of each member are disconnected, see Fig. 1 and paragraph [0050]), a first terminal electrically connecting a power supply to the first part (terminal 14 connecting power source 23 to first part 11, paragraph [0059]), and a second terminal capable of contacting with the first part or the second part according to a rotation of the drive motor (second terminal 19 contacting second part 16 according to rotation of drive motor, paragraph [0040] and [0053]). Regarding the limitation “operation switch including an ON terminal directly connecting the power supply to the drive motor and an OFF terminal connecting the power supply to the drive motor through the position determining module”, because modified Yamaguchi already discloses an operation switch that includes an ON terminal connecting the power supply to the drive motor and an OFF terminal connecting the power supply to the drive motor, and Nishidate discloses the positioning determining module is used to connect/disconnect the ON/Off terminals (paragraph [0059] Nishidate), one of ordinary skill would recognize that by combining these teachings form these references that the combined invention would arrive at this claim limitation and thus this limitation is comprehended by the modified Yamaguchi reference.
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 method of modified Yamaguchi to include a position determining module including first and second parts electrically isolated from each other, a first terminal electrically connecting a power supply to the first part, and a second terminal capable of contacting with the first part or the second part according to a rotation of the drive motor, an operation switch including an ON terminal directly connecting the power supply to the drive motor and an OFF terminal connecting the power supply to the drive motor through the position determining module, as taught and suggested by Nishidate, for the purpose of allowing a user to switch the massager between different modes so that therapy can be better customized (paragraph [0059] Nishidate).
Regarding claim 6, modified Yamaguchi discloses a controller (control device 40 of Yamaguchi), wherein the controller connects the power supply to the ON terminal of the operation switch to operate the drive motor at the relax mode (paragraphs [0067] and [0073] Yamaguchi).
Regarding claim 7, modified Yamaguchi discloses stopping the relax mode when the OFF terminal is selected by a user or a predetermined relax mode stop condition is satisfied (massage is stopped when Off terminal is selected, paragraph [0067] Yamaguchi), wherein the controller connects the power supply to the OFF terminal of the operation switch at the stopping of the relax mode (paragraph [0067] Yamaguchi).
Regarding claim 10, modified Yamaguchi discloses further comprising stopping the relax mode in response to a predetermined relax mode stop condition being satisfied (massage is stopped when Off terminal is selected, paragraph [0067] Yamaguchi), wherein the controller connects the power supply to the OFF terminal of the operation switch at the stopping of the relax mode (paragraph [0067] Yamaguchi).
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 13 and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, respectively, of U.S. Patent No. 12,090,113.
Although the claims are not identical, they are not patentably distinct from one another. The application claims are broader in at least one aspect and also recite additional features not claimed in the patent claims.
For claim 13:
Regarding the broadening aspect of the application claims, the following comparison between the patent claims and the application claims highlights (see underlined features in the patent claims) what elements have been excluded in the presentation of the application claims.
Patent claim 1
Application claim 13
A massage system for a seat of a vehicle, comprising:
a drive motor; a sliding member having a hollow pillar shape, a first end of the sliding member being blocked by a plate member and a second end of the sliding member being opened;
a housing member having a hollow pillar shape, a first end of the housing member being blocked by a partition and a second end of the housing member being opened; and
a drive gear module operably connected to the drive motor and configured to receive torque of the drive motor and to provide the torque to one of the sliding member and the housing member in order to rotate the one of the sliding member and the housing member;
wherein at least one roller member is extended toward the housing member at an edge of the plate member, and
at least one cam protruding toward the sliding member is formed at a circumference of the partition; and wherein a cam profile is formed at a surface of the cam facing toward the sliding member along a circumferential direction of the cam, and the roller member is configured to move on the cam profile when the sliding member or the housing member rotates such that the sliding member is moved towards or away from a seated occupant.
A method of controlling a massage system for a seat of a vehicle, wherein the massage system comprises:
a drive motor; a sliding member having a hollow pillar shape, a first end of the sliding member being blocked by a plate member and a second end of the sliding member being opened;
a housing member having a hollow pillar shape, a first end of the housing member being blocked by a partition and a second end of the housing member being opened;
a drive gear module operably connected to the drive motor;
a roller member extended toward the housing member at an edge of the plate member; and
a cam protruding toward the sliding member and formed at a circumference of the partition, wherein a cam profile is formed at a surface of the cam facing toward the sliding member along a circumferential direction of the cam;
wherein the method comprises: receiving torque of the drive motor at the drive gear module;
providing the torque to one of the sliding member or the housing member in order to rotate the one of the sliding member or the housing member; and
moving the roller member on the cam profile when the one of the sliding member or the housing member rotates such that the sliding member is moved towards or away from an occupant of the seat.
Thus, it is apparent, for the broadening aspect, that patent claim 1 includes features that are not in application claim 13. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Since application claim 13 is anticipated by patent claim 1, with respect to the broadening aspect, and since anticipation is the epitome of obviousness, then application claim 13 is obvious over patent claim 1 with respect to the broadening aspect.
For dependent claims 15-20, the recited limitations are contained in patent claims 2-7, respectively.
Claims 14 is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1 of U.S. Patent No. 12,090,113 in view of Yamaguchi (US 2019/0167941).
Regarding claim 14, claim 1 of patent discloses a roller member, but does not disclose the method includes determining that the occupant is drowsy driving, wherein the roller member is moved in response to determining that the occupant is drowsy driving.
However, Yamaguchi teaches (Figs. 1-16) a method of controlling a massage system comprising determining whether the driver is drowsy driving (paragraph [0064]); wherein the roller member is moved in response to determining that the occupant is drowsy driving (user receives vibrations from rolling member (vibrator 17), paragraph [0064]-[0067]).
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 method of claim 1 patent to include determining that the occupant is drowsy driving, wherein the roller member is moved in response to determining that the occupant is drowsy driving, as taught by Yamaguchi, for the purpose of preventing user car crash by allowing user to be stimulated when drowsiness detected.
Allowable Subject Matter
Claims 3-4, 8-9, and 11-12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Park (US 2019/0366129) discloses a camming structure similar to that claimed.
Tsai (US 2010/0137907) discloses a cam with a ramp.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R MOON whose telephone number is (571)272-2554. The examiner can normally be reached Monday-Thursday 7:30am-5:30pm.
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, Timothy Stanis can be reached at 571-272-5139. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW R MOON/Examiner, Art Unit 3785
/TIMOTHY A STANIS/Supervisory Patent Examiner, Art Unit 3785
