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 . 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 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. There is a total of 15 claims and claims 26, 30-34,37, 38,40-46 are pending.
Response to Amendment
Applicant's argument, filed on February 17, 2026 has been entered and carefully considered. Claims 26,30-34, 37,38,40 and 45 are amended and claims 27-29,35,36 and 39 are canceled. Claim 46 is new. Claims 26, 30-34,37, 38,40-46 are pending.
The rejection of claims 28-33, 35-39 under 35 U.S.C. 112(a) are withdrawn.
Response to Arguments
Applicant's arguments filed on 02/17/2026 remarks have been fully considered but are moot in view of the new ground(s) of rejection which is deemed appropriate to address all of the needs at this time.
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 (b), 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 26, 30, 31, 32, 34, 37, 38 and 46 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 pre-AIA the applicant regards as the invention.
Claim 26, 30, 31, 32, 34, 37, 38 and 46 recites the limitation "the other comedone extractor". There is insufficient antecedent basis for this limitation in the claim. It is suggested to amend to "an other comedone extractor” or define “an other comedone extractor” earlier in the claim.
Specification
The disclosure is objected to because of the following informalities: there are spelling or typo error that need to be corrected as follows:
See paragraph [0091] ; “and/oraportable microscope”
Appropriate correction is required.
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 26-45 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 26-45 of U.S. Patent No. 12,089,876 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because they are substantially similar in scope and they use the same limitations, using varying terminology, and the claims are obvious variants of each other because:
The independent claims 26 of the current application include broader limitations of the independent claims 26 of the U.S. Patent No. 12,089,876 B2.
The limitations of claims 26 of the current application can be read on the limitations of the independent claims 26 of the U.S. Patent No. 12,089,876 B2.
The limitation of claim 27-45 of the current application can be read on limitations of claims 27-45 of the U.S. Patent No. 12,089,876 B2.
Nonetheless, claims 26-45 of the present application made the claim a broader version of claims 26-45 of U.S. Patent No. 12,089,876 B2. Therefore, since omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before (In re Karlson (CCPA) 136 USPQ 184 (1963)), claim 26-45 is not patentably distinct from claim 26-45 of U.S. Patent No. 12,089,876 B2.
Claims 26 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,266,443 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because they are substantially similar in scope and they use the same limitations, using varying terminology, and the claims are obvious variants of each other because:
The independent claims 26 of the current application include broader limitations of the independent claims 1 of the U.S. Patent No. 11,266,443 B2.
Nonetheless, claims 26of the present application made the claim a broader version of claims 1 of U.S. Patent No. 11,266,443 B2. Therefore, since omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before (In re Karlson (CCPA) 136 USPQ 184 (1963)), claim 26 is not patentably distinct from claim 1of U.S. Patent No. 11,266,443 B2.
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.
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.
Claims 26, 30-34,37, 40-46 are rejected under 35 U.S.C. 103 as being unpatentable over Bodduluri et al. (US 2009/0306498 A1) in view of Matern et al. (WO 2001/67956 A2; given by the applicant in the IDS) and further in view of Mark et al.( US 5,910,147 A ).
Regarding claim 26, , Bodduluri teaches a system for comedone extraction([para 0035-0036]- the term "tool," or "biological unit removal tool," or "dissection tool" as used herein refers to any number of tools or end effectors that are capable of removing or harvesting various biological tissues, for example, follicular units ("FUs") from a body surface, and/or dissecting (or separating) them from a surrounding tissue; in para 0036 stated "Biological units" as referenced in the present application include discrete units used in cosmetic, diagnostic and dermatological procedures, for example, various tissues, including that extracted for biopsies or grafting, fat units, skin units, moles, etc. Examples of the biological units particularly useful with the present invention are hair grafts, or follicles, or "follicular unit(s) comprising: a portable, digital microscope ([see in fig. 1 and para 0046 and 0048-0049]-a p); and a comedone extractor coupled with the portable([para 0035-0036]- the term "tool," or "biological unit removal tool," or "dissection tool" as used herein refers to any number of tools or end effectors that are capable of removing or harvesting various biological tissues, for example, follicular units ("FUs") from a body surface, and/or dissecting (or separating) them from a surrounding tissue; in para 0036 stated "Biological units" as referenced in the present application include discrete units used in cosmetic, diagnostic and dermatological procedures, for example, various tissues, including that extracted for biopsies or grafting, fat units, skin units, moles, etc. Examples of the biological units particularly useful with the present invention are hair grafts, or follicles, or "follicular unit(s)).
However, Bodduluri does not explicitly disclose digital microscope wherein at least a portion of the comedone extractor is positioned at least within a field of view of the portable, digital microscope.
In an analogous art, Matern teaches discloses digital microscope wherein at least a portion of the comedone extractor is positioned at least within a field of view of the portable, digital microscope ([see in fig. 3 and para 0044]-slip 71). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Matern to the modified system of Bodduluri a dermatology image recording system for examination of pigmented skin Vera end stanchions for early diagnosis of malignant melanomas [Matern; para 003-004].
However, the combination of Bodduluri and Matern do not explicitly disclose utilizing a skin tool head support coupled with the portable, digital microscope and coupled with the comedone extractor, wherein the comedone extractor is detachable from the skin tool head support and replaceable with another comedone extractor coupled with the skin tool head support and wherein the other comedone extractor is positioned at least within the field of view of the portable, digital microscope.
In an analogous art, Mark discloses utilizing a skin tool head support coupled with the portable, digital microscope and coupled with the comedone extractor, wherein the comedone extractor is detachable from the skin tool head support and replaceable with another comedone extractor coupled with the skin tool head support and wherein the other comedone extractor is positioned at least within the field of view of the portable, digital microscope([abstract]- a replaceable comedone extractor includes a body, a pimple drain member and a lancet. The body has a length, and a substantial middle region shaped for being held by a thumb and forefinger. A first end of the body is formed into the shape of a pimple drain member. In a first preferred embodiment, the replaceable comedone extractor is intended to be replaceable, the lancet is molded into the second end of the body. In a second preferred embodiment, the replaceable comedone extractor has a second end which has a horizontal slot and at least one retaining notch formed therein to receive a disposable lancet. In a third preferred embodiment, the replaceable comedone extractor has a second end which has a horizontal bore formed therein to firmly receive a retractable lancet assembly. In a fourth preferred embodiment, an angled replaceable comedone extractor has a second end which is bent up toward the first end at an obtuse angle). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Mark to the modified system of Bodduluri and Matern an angled replaceable comedone extractor which is shaped differently to provide better control to the user and is less expensive to manufacture [col. 1, lines 11-16].
Claims 27-29(canceled).
Regarding claim 30, Matern teaches wherein the skin tool head support is configured to couple with the comedone extractor and the ([see in fig. 3]- vertical and angled portions other comedone extractor with a bolt).
Regarding claim 31, Matern teaches wherein the skin tool head support is configured to couple with the comedone extractor and the other comedone extractor with a wing nut ([see in fig. 3]- vertical and angled portions).
Regarding claim 32, Matern teaches wherein at least the comedone extractor and the other comedone extractor are configured to rotate with respect to the skin tool head support([see in fig. 3]- vertical and angled portions; [see also para 0028 ]).
Regarding claim 33, Bodduluri teaches wherein the comedone extractor is displaced from a first position to a second position through rotation. ([see in Fig. 4; para 0035;0052 and 0055]- as seen in FIG. 4B, the fluid delivery subsystem 60 is located on a distal end of the nut 94. In addition, a gear 96 is keyed to and rotates the piston 90, and thus the outer tube 76. In this particular system, therefore, the inner and outer tubes 70, 76 translate coaxially with respect to one another (or in concert) and are displaced by independently controlled piston/cylinder mechanisms. Of course, the mechanisms for linearly displacing the two tubes 70, 76 may be linear motors or other alternatives. Furthermore, the outer tube 76 rotates with respect to the inner tube 70, and may be rotated in a constant or pulsed manner as it travels in a distal direction over the inner tube 70 and into the skin).
Regarding claim 34, Bodduluri teaches wherein the other comedone extractor is displaced from the second position to the first position through the rotation ([see in Fig. 4; para 0035;0052 and 0055]- as seen in FIG. 4B, the fluid delivery subsystem 60 is located on a distal end of the nut 94. In addition, a gear 96 is keyed to and rotates the piston 90, and thus the outer tube 76. In this particular system, therefore, the inner and outer tubes 70, 76 translate coaxially with respect to one another (or in concert) and are displaced by independently controlled piston/cylinder mechanisms. Of course, the mechanisms for linearly displacing the two tubes 70, 76 may be linear motors or other alternatives. Furthermore, the outer tube 76 rotates with respect to the inner tube 70, and may be rotated in a constant or pulsed manner as it travels in a distal direction over the inner tube 70 and into the skin).
Claims 35-36(cancleled).
Regarding claim 37, Matern teaches wherein the skin tool head support is configured to couple with the comedone extractor or the other comedone extractor utilizing a magnet([abstract; para 0040 and 0043]- magnets, not shown).
Regarding claim 40, Bodduluri teaches wherein the comedone extractor is configured to displace from a first position to a second position ([see in Fig. 4; para 0035;0052 and 0055]- as seen in FIG. 4B, the fluid delivery subsystem 60 is located on a distal end of the nut 94. In addition, a gear 96 is keyed to and rotates the piston 90, and thus the outer tube 76. In this particular system, therefore, the inner and outer tubes 70, 76 translate coaxially with respect to one another (or in concert) and are displaced by independently controlled piston/cylinder mechanisms. Of course, the mechanisms for linearly displacing the two tubes 70, 76 may be linear motors or other alternatives. Furthermore, the outer tube 76 rotates with respect to the inner tube 70, and may be rotated in a constant or pulsed manner as it travels in a distal direction over the inner tube 70 and into the skin).
Regarding claim 41, Bodduluri teaches wherein the comedone extractor is configured to displace from the first position to the second position through rotation ([see in Fig. 4; para 0035;0052 and 0055]- as seen in FIG. 4B, the fluid delivery subsystem 60 is located on a distal end of the nut 94. In addition, a gear 96 is keyed to and rotates the piston 90, and thus the outer tube 76. In this particular system, therefore, the inner and outer tubes 70, 76 translate coaxially with respect to one another (or in concert) and are displaced by independently controlled piston/cylinder mechanisms. Of course, the mechanisms for linearly displacing the two tubes 70, 76 may be linear motors or other alternatives. Furthermore, the outer tube 76 rotates with respect to the inner tube 70, and may be rotated in a constant or pulsed manner as it travels in a distal direction over the inner tube 70 and into the skin).
Regarding claim 42, Bodduluri teaches wherein the comedone extractor is configured to displace from the first position to the second position through rotation around an axis of the skin tool head support ([see in Fig. 4; para 0035;0052 and 0055]- as seen in FIG. 4B, the fluid delivery subsystem 60 is located on a distal end of the nut 94. In addition, a gear 96 is keyed to and rotates the piston 90, and thus the outer tube 76. In this particular system, therefore, the inner and outer tubes 70, 76 translate coaxially with respect to one another (or in concert) and are displaced by independently controlled piston/cylinder mechanisms. Of course, the mechanisms for linearly displacing the two tubes 70, 76 may be linear motors or other alternatives. Furthermore, the outer tube 76 rotates with respect to the inner tube 70, and may be rotated in a constant or pulsed manner as it travels in a distal direction over the inner tube 70 and into the skin).
Regarding claim 43, Bodduluri teaches wherein the comedone extractor is configured to displace from the first position to the second position through rotation around a pivot point positioned between the skin tool head support and the comedone extractor ([see in Fig. 4B and para 0055]- as seen in FIG. 4B, the fluid delivery subsystem 60 is located on a distal end of the nut 94. In addition, a gear 96 is keyed to and rotates the piston 90, and thus the outer tube 76. In this particular system, therefore, the inner and outer tubes 70, 76 translate coaxially with respect to one another (or in concert) and are displaced by independently controlled piston/cylinder mechanisms. Of course, the mechanisms for linearly displacing the two tubes 70, 76 may be linear motors or other alternatives. Furthermore, the outer tube 76 rotates with respect to the inner tube 70, and may be rotated in a constant or pulsed manner as it travels in a distal direction over the inner tube 70 and into the skin).
Regarding claim 44, Bodduluri teaches wherein the comedone extractor is configured to displace from the first position to the second position through displacement along an axis parallel to an axis of the portable, digital microscope ([see in Fig. 4B and para 0055]- as seen in FIG. 4B, the fluid delivery subsystem 60 is located on a distal end of the nut 94. In addition, a gear 96 is keyed to and rotates the piston 90, and thus the outer tube 76. In this particular system, therefore, the inner and outer tubes 70, 76 translate coaxially with respect to one another (or in concert) and are displaced by independently controlled piston/cylinder mechanisms. Of course, the mechanisms for linearly displacing the two tubes 70, 76 may be linear motors or other alternatives. Furthermore, the outer tube 76 rotates with respect to the inner tube 70, and may be rotated in a constant or pulsed manner as it travels in a distal direction over the inner tube 70 and into the skin).
Regarding claim 45, Bodduluri teaches wherein the skin tool head support is configured to displace along an axis parallel to an axis of the portable, digital microscope ([see in Fig. 4B and para 0055]- as seen in FIG. 4B, the fluid delivery subsystem 60 is located on a distal end of the nut 94. In addition, a gear 96 is keyed to and rotates the piston 90, and thus the outer tube 76. In this particular system, therefore, the inner and outer tubes 70, 76 translate coaxially with respect to one another (or in concert) and are displaced by independently controlled piston/cylinder mechanisms. Of course, the mechanisms for linearly displacing the two tubes 70, 76 may be linear motors or other alternatives. Furthermore, the outer tube 76 rotates with respect to the inner tube 70, and may be rotated in a constant or pulsed manner as it travels in a distal direction over the inner tube 70 and into the skin).
Regarding claim 46, Mark discloses wherein the skin tool head support includes at least an angled portion or an arced portion such that the comedone extractor or the other comedone extractor is positioned within at least the field of view of the portable, digital microscope([abstract]- a replaceable comedone extractor includes a body, a pimple drain member and a lancet. The body has a length, and a substantial middle region shaped for being held by a thumb and forefinger. A first end of the body is formed into the shape of a pimple drain member. In a first preferred embodiment, the replaceable comedone extractor is intended to be replaceable, the lancet is molded into the second end of the body. In a second preferred embodiment, the replaceable comedone extractor has a second end which has a horizontal slot and at least one retaining notch formed therein to receive a disposable lancet. In a third preferred embodiment, the replaceable comedone extractor has a second end which has a horizontal bore formed therein to firmly receive a retractable lancet assembly. In a fourth preferred embodiment, an angled replaceable comedone extractor has a second end which is bent up toward the first end at an obtuse angle).
Claims 38 is rejected under 35 U.S.C. 103 as being unpatentable over Bodduluri in view of Matern as applied to claim 26 above and further in view of Hunsaker et al. (US Pat. No. 1,842,403 A) .
Regarding claim 38, the combination of Bodduluri and Matern don’t exclusively disclose wherein the skin tool head support is configured to couple with the comedone extractor or the other comedone extractor utilizing a threaded portion.
In an analogous art, Hunsaker teaches wherein the skin tool head support is configured to couple with the comedone extractor or the other comedone extractor utilizing a threaded portion ([see in fig. 1]-via screw 4). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Hunsaker to the modified system of Bodduluri and Matern a device that may be efficiently used by an unskilled 'SU operator for the removal of split hairs, in growing hairs, pimples, blackheads, splinters and any and all small foreign, or irritating, matter that may 'become attached or secured, to the patient [Hunsaker; col. 1(right hand side), lines 48-55].
Claim 39(canceled).
Citation of Pertinent Prior Art
The prior art are made of record and not relied upon but considered pertinent to applicant’s disclosure:
1. GILBERT; Jerome, US 2012/0172685 A1, discloses A system for analyzing at least one characteristic of the skin (1) and by extension hair, via optics.
2. Rassman, US 6,572,625 B1, discloses extraction of hair grafts from a donor area and more particularly to a device for controllably positioning a hair extraction instrument for removing follicular units of hair.
3. Cracraft, US 5,370,648 A, discloses medical instruments and, more particularly, to a medical instrument especially adapted for removing slivers and splinters from a person’s skin.
Conclusion
THIS ACTION IS MADE FINAL. 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 MD NAZMUL HAQUE whose telephone number is (571)272-5328. The examiner can normally be reached IFW.
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, David Czekaj can be reached at 5712727327. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MD N HAQUE/Primary Examiner, Art Unit 2487