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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/517,757, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Regarding claims 3, 6 and 14-15, the prior-filed application does not teach silk weave.
Regarding claims 10-16, the prior-filed application does not disclose any methods and/or method steps.
Regarding claim 18, the prior-filed application does not teach a fabric strip configured into a patch.
Regarding claim 19, the prior-filed application does not teach a fabric strip comprising a cotton weave.
Regarding claim 20, the prior-filed application does not teach Uttwiler Spälauber apples.
Claims 3, 6, 10-16 and 18-20 are considered to have an effective filing date of 8/5/2024.
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 10-16 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 10 recites the limitation "the space" in line 13 and “the direction” in line 18. There is insufficient antecedent basis for these limitations in the claim.
Claim 11 recites the limitation "the face" in line 13. There is insufficient antecedent basis for this limitation in the claim. Previous recitation refer to “a human face”.
Claim 16 recites the limitation "the weight of an unborn baby" in lines 2-3 and “the fascia” in line 3. There is insufficient antecedent basis for these limitations in the claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1)(2) as being anticipated by Hicken et al. (US 2015/0217098).
With reference to claim 1, Hicken et al. (hereinafter “Hicken”) discloses a therapeutic apparatus providing at least two therapeutic modalities, a mechanical modality and a bioactive modality [0005], comprising:
a fabric strip having a length and width dimension and having a first side and a second side (see figures); and
said fabric strip being elastic in at least one of said length dimension or said width dimension [0040];
an adhesive located on said first side of said fabric strip [0035];
said adhesive being configured and composed so as to permit said fabric strip to be adhered to human skin [0040];
a therapeutic composition located on said first side of said fabric strip [0030], said therapeutic composition comprising: i) magnesium and ii) one or more ingredients selected from the group consisting of hyaluronic acid, collagen, stems cells of green apples, jojoba oil, and tocopherol [0050]; and
wherein said fabric strip is configured to be applicable to a skin surface to provide a first therapeutic modality, comprising a structural therapeutic modality (i.e., elasticity) as set forth in [0026-0027]; and
said therapeutic composition is composed to provide a second therapeutic modality, comprising a bioactive modality (i.e., therapeutic composition) as set forth in [0028].
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hicken et al. (US 2015/0217098).
With reference to claim 2, Hicken teaches the invention substantially as claimed as set forth in the rejection of claim 1.
Hicken discloses a therapeutic apparatus wherein said therapeutic composition comprises: magnesium and tocopherol as set forth in [0050].
The difference between Hicken and claim 2 is the provision that the therapeutic composition includes jojoba oil.
Hicken acknowledges that the composition may include oils as set forth in [0030].
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the composition of Hicken with jojoba oil since the substitution of one type of oil for another is considered to be within the level of ordinary skill in the art.
With reference to claim 3, Hicken teaches the invention substantially as claimed as set forth in the rejection of claim 1.
The difference between Hicken and claim 3 is the provision that the fabric strip comprises a silk weave.
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the fabric strip of Hicken as a silk weave because Hicken discloses that the fabric may be made of any natural strands formed by weaving as set forth in [0040].
As to claim 4, Hicken discloses a therapeutic apparatus wherein said fabric strip is anisotropic as set forth in [0040].
Claims 5-7, 9, 11, 13, 15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hicken et al. (US 2015/0217098) in view of WO 99/54053 and further in view of CN 103494723.
With reference to claim 5, Hicken teaches the invention substantially as claimed as set forth in the rejection of claim 1.
Hicken discloses a therapeutic apparatus wherein said therapeutic composition comprises magnesium as set forth in [0050].
The difference between Hicken and claim 5 is the provision that the composition also includes green apple stem cells, collagen and hyaluronic acid.
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the composition with collagen, green apple stem cells and/or hyaluronic acid because Hicken discloses that the composition may include recovery agents as set forth in [0050] and these agents are known in the art to function as recovery agents.
Alternatively, WO 99/54053 (hereinafter “Hargraves”) teaches an analogous skin care kit that includes a therapeutic composition having magnesium (page 38, 3rd paragraph), collagen (page 40, 1st full paragraph) and hyaluronic acid (page 40, 2nd full paragraph).
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the therapeutic composition of Hicken with the specific materials as taught by Hargraves in an effort the help regulate skin conditions and to provide skin conditioning as taught by Hargraves on page 2, 3rd paragraph.
Additionally, CN 103494723 (hereinafter “Ma”) teaches an analogous stem cell skin composition that includes green apple stem cells as set forth in [0034].
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the composition of Hicken modified with green apple stem cells to enhance skin function and improve fine wrinkles as taught by Ma in [0034].
As to claim 6, see the rejection of claim 3.
As to claim 7, Hicken discloses a therapeutic apparatus wherein said fabric strip is anisotropic as set forth in [0040].
As to claims 9 and 13, see the rejection of claim 8.
With respect to claim 11, Hicken discloses a method of treating a user [0048]
concurrently with two therapeutic modalities [0005], comprising:
applying a fabric strip to a region of a user’s body with an adhesive [0026-0027],
said fabric strip having a length and width dimension and having a first side and a second side (see figures); and
an adhesive located on said first side of said fabric strip [0035];
said adhesive being configured and composed so as to permit said fabric strip to be adhered to human skin [0040];
said fabric strip being elastic in the length dimension [0040] and includes a therapeutic composition located on said first side of said fabric strip [0030], said therapeutic composition comprising magnesium as set forth in [0050].
The difference between Hicken and claim 11 is the provision that the therapeutic composition green apple stem cells, collagen and hyaluronic acid and that the method includes specific steps for applying the tape to human face.
Initially, it would have been obvious to one of ordinary skill in the art at the time of the invention to provide the composition with collagen, green apple stem cells and/or hyaluronic acid because Hicken discloses that the composition may include recovery agents as set forth in [0050] and these agents are known in the art to function as recovery agents.
Alternatively, Hargraves teaches an analogous skin care kit that includes a therapeutic composition having magnesium (page 38, 3rd paragraph), collagen (page 40, 1st full paragraph) and hyaluronic acid (page 40, 2nd full paragraph).
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the therapeutic composition of Hicken with the specific materials as taught by Hargraves in an effort the help regulate skin conditions and to provide skin conditioning as taught by Hargraves on page 2, 3rd paragraph.
Additionally, CN 103494723 (hereinafter “Ma”) teaches an analogous stem cell skin composition that includes green apple stem cells as set forth in [0034].
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the composition of Hicken modified with green apple stem cells to enhance skin function and improve fine wrinkles as taught by Ma in [0034].
With respect to the application of the tape to face, Hicken utilizes the two modalities of the tape to provide a benefit the skin of the user and also anticipates the product for use as a wellness product [0077].
The therapeutic elastic tape is a multi-purpose externally applied tape (supra-cutaneous) that may that may concomitantly facilitate and inhibit musculoskeletal, neuromuscular, and physiological system processes and may adhere to or be attached to the user (or patient) or be configured to wrap around limbs or a portion of the user's body as set forth in [0026].
Hicken provides a tape that is identical to that disclosed and would ultimately be considered to anchor and/or stretch as required by the recited method.
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the tape as taught by Hicken with the method of application to the face of a user in order to incorporate the benefits of the composition as taught by Hicken to provide the benefit to a specific area as desired.
Regarding claim 15, see the rejection of claim 3.
As to claim 17, Hicken discloses a therapeutic apparatus wherein said fabric strip is configured into a tape as set forth in the abstract.
With reference to claim 18, Hicken teaches the invention substantially as claimed as set forth in the rejection of claim 1.
The difference between Hicken and claim 18 is the provision that the fabric strip is configured into a patch.
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the fabric strip of Hicken as a patch, as desired, because Hicken discloses that the overall shape of the strip may vary as set forth in [0046] and the mere change in size and/or shape of an element previously set forth in the prior art is considered to be within the level of ordinary skill in the art.
With reference to claim 19, Hicken teaches the invention substantially as claimed as set forth in the rejection of claim 1.
The difference between Hicken and claim 19 is the provision that the fabric strip comprises a cotton weave.
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the fabric strip of Hicken as a cotton weave because Hicken discloses that the fabric may be cotton that is formed by weaving as set forth in [0040].
With reference to claim 20, Hicken modified teaches the invention substantially as claimed as set forth in the rejection of claim 5.
The difference between Hicken modified and claim 20 is the provision that the green apple stem cells are stem cells from Uttwiler Spätlauber apples.
It would have been obvious to one of ordinary skill in the art at the time of the invention to substitute one type of green apple stem cells for another since it has been held Hicken modified provides for the inclusion of green apple stem cells and the substitution of one type of green apple for another is considered to be within the level of ordinary skill in the art.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hicken et al. (US 2015/0217098) in view of WO 99/54053.
With reference to claim 8, Hicken teaches the invention substantially as claimed as set forth in the rejection of claim 1.
The difference between Hicken and claim 8 is the provision that the composition provides magnesium in a specific amount.
Hargraves teaches an analogous skin care kit that includes a therapeutic composition having magnesium in the claimed amount as set forth on page 38 in the second and third paragraph.
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the therapeutic composition of Hicken with the specific amount of magnesium as taught by Hargraves in order to provide protection against skin damage as taught by Hargraves on page 38, 1st paragraph.
Claims 10, 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hicken et al. (US 2015/0217098) and further in view of JP 2021019647.
With respect to claim 10, Hicken discloses a method of treating a user [0048]
concurrently with two therapeutic modalities [0005], comprising:
applying a fabric strip to a region of a user’s body with an adhesive [0026-0027],
said fabric strip having a length and width dimension and having a first side and a second side (see figures); and
an adhesive located on said first side of said fabric strip [0035];
said adhesive being configured and composed so as to permit said fabric strip to be adhered to human skin [0040];
said fabric strip being elastic in the length dimension [0040] and includes a therapeutic composition located on said first side of said fabric strip [0030], said therapeutic composition comprising: i) magnesium and ii) tocopherol as set forth in [0050].
The difference between Hicken and claim 10 is the provision that the therapeutic composition includes jojoba oil and that the method includes specific steps for applying the tape to the abdomen of a pregnant woman.
Initially, Hicken acknowledges that the composition may include oils as set forth in [0030].
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the composition of Hicken with jojoba oil since the substitution of one type of oil for another is considered to be within the level of ordinary skill in the art.
With respect to the application of the tape to the abdomen, JP 2021019647 (hereinafter “Kaoru”) teaches a method of applying adhesive tape to the abdomen of a pregnant woman to prevent stretch marks and/or a pregnancy line as set forth in the disclosure ad as shown in the figures.
It is noted that Hicken utilizes the two modalities of the tape to provide a benefit the skin of the user and also anticipates the product for use as a wellness product [0077].
The therapeutic elastic tape is a multi-purpose externally applied tape (supra-cutaneous) that may that may concomitantly facilitate and inhibit musculoskeletal, neuromuscular, and physiological system processes and may adhere to or be attached to the user (or patient) or be configured to wrap around limbs or a portion of the user's body as set forth in [0026].
Hicken provides a tape that is identical to that disclosed and would ultimately be considered to anchor and/or stretch as required by the recited method.
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the tape as taught by Hicken with the method of application as taught by Kaoru in order to incorporate the benefits of the composition as taught by Hicken in a specific population (i.e., pregnant women) to provide a specific benefit (i.e., the reduction of prevention of stretch marks in a specific area) as suggested by Kaoru in the disclosure.
As to claim 14, see the rejection of claim 3.
With respect to claim 16, Hicken discloses a method that includes forces to lift (i.e., treat) the fascia as set forth in [0049].
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hicken et al. (US 2015/0217098) in view of JP 2021019647 and further in view of WO 99/54053.
With reference to claim 12, Hicken modified teaches the invention substantially as claimed as set forth in the rejection of claim 10.
The difference between Hicken and claim 12 is the provision that the composition provides magnesium in a specific amount.
Hargraves teaches an analogous skin care kit that includes a therapeutic composition having magnesium in the claimed amount as set forth on page 38 in the second and third paragraph.
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the therapeutic composition of Hicken with the specific amount of magnesium as taught by Hargraves in order to provide protection against skin damage as taught by Hargraves on page 38, 1st paragraph.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELE M KIDWELL whose telephone number is (571)272-4935. The examiner can normally be reached Monday-Friday, 7AM-4PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rebecca Eisenberg can be reached at 571-270-5879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELE KIDWELL/ Primary Examiner, Art Unit 3781
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