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 .
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.
Election/Restrictions
Claims 7-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 30 June 2026.
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 1-6 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 1 recites the limitation "the skin" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-6 are rejected by virtue of their dependency upon an indefinite base claim.
Claim Rejections - 35 USC § 102
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.
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sim Yang-Su (KR 20100021773).
Regarding claim 1, Sim Yang-Su discloses a red hot needle comprising: a needle body configured to be inserted into tissues beneath the skin (see needle 12/13, Figs. 1-2); a needle handle located on top of the needle body and having relatively greater thickness than the needle body (see handle 11, Fig. 2); and a heated needle handle located on top of the needle handle and having relatively lesser thickness than the needle handle (see smaller cylinder on top of needle handle 11 from which wires 22 exit, having a smaller thickness than the handle 11, Fig. 2).
Regarding claim 4, Yang-Su further discloses wherein the needle handle has the shape of a cylinder (as shown in Fig. 2).
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.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sim Yang-Su in view of Shin Min Shik (KR 20010086886).
Regarding claim 2, Sim Yang-Su discloses the limitations of claim 1, however Sim Yang-Su fails to specifically disclose wherein the needle body is made of gold and the needle handle and the heated needle handle are made of silver.
Shin Min Shik teaches a heated needle device (see Fig. 1) having a needle body (see needle body 10, Fig. 1) and a needle handle (see handle 20, Fig. 1), wherein the needle body is made of gold, and the needle handle is made of silver (see Technical Field section on pg. 2 of provided translation). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the needle body to be made of gold and the needle handle to be made of silver in order to provide the desired amount of thermal conductivity, and further since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sim Yang-Su.
Regarding claim 3, Sim Yang-Su discloses the limitations of claim 1 and fails to provide specific dimensions for the length and thickness of the needle body. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the needle body of Sim Yang-Su to have a length between 25 and 130 mm and thickness between 0.2 and 1.0 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the needle body of Sim Yang-Su would not operate differently with the claimed dimensions since the needle body is intended to penetrate the skin, and the device would function appropriately having the claimed dimensions. Further, applicant places no criticality on the range claimed.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sim Yang-Su in view of Shi (US 2009/0187205).
Regarding claim 6, Sim Yang-Su discloses the limitations of claim 1, however fails to further disclose wherein the heated needle handle is twisted to form a spiral groove on the outer peripheral surface thereof.
Shi teaches a needle device (see Fig. 1) comprising a needle handle (see wide part 21 and handle portion 2, Fig. 1), wherein the needle handle comprises a spiral structure having a spiral wound wire shape (see [0018], Fig. 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the heated needle handle of Sim Yang-Su to be twisted to form a spiral groove on the outer peripheral surface thereof in light of Shi, the motivation being to provide the additional benefit of providing the practitioner with a more comfortable grip when grasping the handle (see Shi [0018]).
Allowable Subject Matter
Claim 5 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.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record, Sim Yang-Su (KR 20100021773), Shi (US 2009/0187205), and Nakano (US 2007/0185517), fails to reasonably teach or suggest wherein the needle handle comprises three flat plates spaced apart from one another and two rhombuses for connecting the three flat plates with one another when read in combination with the additional requirements of the claim. The closest prior art generally teaches differently shaped handles, however the closest prior art fails to specifically teach the specific pattern of shapes as claimed and applicant shows criticality of the claimed feature in [0036] of the application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN W COLLINS whose telephone number is (408)918-7607. The examiner can normally be reached M-F 9:00 AM-5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached at 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN W COLLINS/Primary Examiner, Art Unit 3794
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