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 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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/29/2023 has been considered by the examiner.
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 1-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,115,689. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are narrower than the current claim set and overlap with minor differences in language.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “functional assembly” and “magnetic connection” in claims 1 and 2.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-9 and 11-16 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 pre-AIA the applicant regards as the invention.
-Regarding claims 1 and 2, the phrase “magnetic connection” is unclear. It is unclear as to the bounds of what can and cannot be considered a magnetic connection.
As currently claimed, there are no magnets, and the materials of the device have not been specified. Does the housing have magnets that cooperate with the switch? Does only the switch and/or housing have magnets that provide a “magnetic connection” to a material/surface on the receiving structure? The specification appears to provide the magnetic connection must be made via corresponding magnets (See Figures 3-4, 11A-11C and Page 10 of the specification noting switch magnets and housing magnets) and will be treated as such in the rejection below.
-Regarding claim 2, the phrase “wherein different positions have different forces to move the switch therefrom” is unclear. It is unclear how the positioning of the switch has different forces. What structure correlates to the forces that move the switch? A magnetic connection has been recited to moveably retain the switch to the housing, but there is no corresponding structure to provide for varying forces on the switch to allow for different positions. Do these different forces move the switch between positions? For the purposes of examination, any magnetic connection will be treated as having the ability to provide “variable forces” that allows for movement of the switch.
-The term “most force” in claim 4 is a relative term which renders the claim indefinite. The term “most” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Examiner notes it is unclear what the force requiring the “most force” refers to. It appears to correlate to the magnetic connection, however, there is no corresponding structural elements defining what difference allows for the differences in forces applied by the magnetic cinnection.
-Regarding claim 5, the language concerning the magnets is unclear. Examiner notes the switch and the housing are provided with a plurality of magnets configured to magnetically interact. However, claim 2 already provides for a magnetic connection, and the structure of claim 5 does not refer back to the magnetic connection. As such, the magnetic elements of claim 5 are separate from the magnetic connection of claim 2, which does not appear to be supported. For the purposes of examination, the magnets of claim 5 will be treated as the same magnetic connection recited within claim 2.
-Regarding claim 6, the phrase “wherein there is a different amount of housing magnets than switch magnets” is unclear. As currently claimed, this is a different s et of housing and switch magnets, which does not appear to be supported. For the purposes of examination, the magnets will be treated as the same as provided for in claim 5.
-Regarding claim 7, the phrase “wherein the amount or strength of magnets interacting with each other is different between at least two positions” is unclear. It is unclear how the “strength” of the magnets themselves may be different between different positions. As currently claimed, the magnets strength is variable once the switch has been repositioned, which does not appear to be supported. It appears the magnets have variable forces when repositioned in relation to the corresponding magnet and will be treated as such in the rejection below.
-Regarding claim 8, the phrase “wherein the force required to move the switch out of the off position and out of the on position is about the same” is unclear. It is unclear what the force refers to, and if an outside user force, may be provided to “move” the switch out of the on position. It is also unclear what can and cannot be considered “about the same” in regards to the force. For the purposes of examination, the force require will be treated as equal.
-Regarding claim 11, the phrase” wherein the single fastener is disposed in a well on the first piece configured to be hidden by the switch” is unclear. It is unclear what can and cannot be considered “hidden” as the device appears to be in an assembled state, and any internal components, would be “hidden” from a user once assembled. The term “hidden” appears to be based on viewpoint, such that if the user were to turn or manipulate the device such that the elements claimed are not “visible” they are “hidden”. For the purposes of examination, any component will be considered capable of being “hidden” when in an assembled state.
Claims 3-9 dependent from claim 2, claims 12-16 dependent from claim 11 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are rejected as being dependent from a rejected parent 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.
Claims 1-2 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsieh (U. S. Patent No. 4,918,818).
Regarding claim 1, Hsieh teaches a personal care device, comprising:
a housing (1);
a functional assembly (7) attached to the housing (Figure 1-3);
a motor (4) disposed within the housing and operatively connected to the functional assembly to move one or more components of the functional assembly (Figure 3); and
a switch (141) configured to move between at least two states, the at least two states including an on position wherein the motor is activated, and an off position wherein the motor is deactivated (Figure 1; Col. 2, Lines 13-25);
wherein the switch is moveably retained to the housing using a magnetic connection (142) and is otherwise not anchored to the housing (Figures 1-3).
Regarding claim 2, Hsieh teaches a personal care device, comprising:
a housing (1); a functional assembly (7) attached to the housing;
a motor (4) disposed within the housing and operatively connected to the functional assembly to move one or more components of the functional assembly; and
a switch (141) configured to move between at least two states, the at least two states including an on position wherein the motor is activated, and an off position wherein the motor is deactivated, wherein the switch is moveably retained to the housing using a magnetic connection, wherein different positions have different forces to move the switch therefrom (Figures 1-3; Col. 2, Lines 13-25).
Regarding claim 9, Hsieh teaches the personal care device of claim 2, and wherein the personal care device is a hair trimmer (Figure 1).
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.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hsieh (U. S. Patent No. 4,918,818) in view of Maichel (U.S. Patent Pub. No. 2011/0162207).
Regarding claim 3, Hsieh teaches the personal care device of claim 2, wherein the switch includes at least two states including the on position, the off position.
Hsieh does not provide the switch includes at least three states including the on position, the off position, and a lock position.
Maichel teaches it is known in the art of trimmers to incorporate a switch or knob having various lock positions, on/off positions, and various positions for different settings such as speed (Paragraph 0038).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the device of Hsieh to incorporate the teachings of Maichel to provide the switch with various lock and setting positions. In doing so, it allows for variable switch positioning as desired by the user.
Regarding claim 4, the modified device of Hsieh provides the personal care device of claim 3, wherein the magnetic connection in the lock position requires the most force to move the switch out of the lock state relative to the other positions (Hsieh Figure 1; Examiner notes the magnetic connection is capable of the lock position of Maichel to require the most force as best understood in light of the 112 rejection above).
Claim Rejections - 35 USC § 102/103
Claims 10-13 are rejected under 35 U.S.C. 102 or in the alternative 35 U.S.C. 103 as being unpatentable over Baumann (U.S. Patent No. 3,489,874).
Regarding claim 10, Baumann teaches a hair trimmer, comprising:
a clamshell housing (5) having a first piece and a second piece (11) configured to mate together (Figure 1);
a trimmer assembly (4) attached to the housing;
a motor disposed within the housing and operatively connected to the trimmer assembly to move one or more components of the trimmer assembly (Col. 2, Lines 40-47); and
a switch (7) configured to move between at least two states, the at least two states including an on position wherein the motor is activated, and an off position wherein the motor is deactivated, wherein the first piece of the housing and the second piece of the housing are connected together by two single fasteners (13) (Figure 1; As currently claimed, the device may have multiple single fasteners and the prior art of Baunmann teaches the housing pieces connected together by two single fasteners and not only one fastener).
However, should it be argued the device of Baumann must provide for only one fastener.
Baumann does not provide the housing is connected by only one fastener.
One of ordinary skill in the art would have good reason to pursue fastener numbers which are known to be useful for a fastening function. There are a finite number of total fasteners which pertain to a handheld trimming device allow for the two housing portions to be assembled. Thus, it would have been obvious to a person of ordinary skill in the art to try any reasonable number of fasteners, including only one fastener, in an attempt to provide an improved fastening function for the device, as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp with a reasonable expectation of success. KSR Int' l Co. V. Teleflex Inc. 550 U.S. _, 82 USPQ 2d 1385 (Supreme Court 2007) (KSR).
Regarding claim 11, the modified device of Bauman provides the hair trimmer of claim 10, wherein the single fastener is disposed in a well on the first piece configured to be hidden by the switch (Figure 1).
Regarding claim 12, the modified device of Bauman provides the hair trimmer of claim 11, wherein the first piece defines a switch housing configured to receive a top shaped switch (7) on an outside thereof, including a post well (122) configured to receive a post (119) of the switch (Figure 7).
Regarding claim 13, the modified device of Bauman provides the hair trimmer of claim 12, wherein the second piece includes a mounting structure defining a post aperture on an internal surface thereof to receive the post well (Figures 6 and 7).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Baumann (U.S. Patent No. 3,489,874) in view of Callahan (U.S. Patent Pub. No. 2007/0213742).
Regarding claim 15, the modified device of Baumann teaches the hair trimmer of claim 11, but does not provide further comprising a gasket disposed between the first piece and the second piece to seal internal components.
Callahan teaches it is known in the art of trimmers to incorporate o-rings, gaskets or bushings to seal the housing from contaminants (paragraph 0058).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the device of Baumnann to incorporate the teachings of Callahan to provide the housing with a gasket. Doing so reduces contaminants within the housing.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Baumann (U.S. Patent No. 3,489,874) as evidenced by Ojeda (U.S. Patent Pub. No. 2008/0163499) in view of Hsieh (U. S. Patent No. 4,918,818)
Regarding claim 16, the modified device of Baumann teaches the hair trimmer of claim 12, but does not provide wherein the first piece includes a plurality of magnets disposed in the switch housing to interact with one or more magnets on the switch.
Ojeda provides evidence it is known to use magnets to connect housing elements to ensure proper alignment and reduce the need for tools for removal of said housing elements (paragraph 0012).
Hsieh teaches it is known in personal care devices to provide a housing (1);
a functional assembly (7) attached to the housing (Figure 1-3); and a switch (141) configured to move between at least two states, the at least two states including an on position wherein the motor is activated, and an off position wherein the motor is deactivated (Figure 1; Col. 2, Lines 13-25); wherein the switch is moveably retained to the housing using a magnetic connection (142) and is otherwise not anchored to the housing (Figures 1-3).
In light of the evidence of Ojeda and the teaching of Hsieh, one of ordinary skill in the art would have good reason to pursue complimentary magnets for attaching two pieces useful for a particular connecting function. There are a finite number of possible connection means which pertain to a handheld personal care devices and allow for the housing and switch elements to be connected. Thus, it would have been obvious to a person of ordinary skill in the art to try any reasonable connection means, including corresponding magnets in an attempt to provide an improved connection of the housing elements and the switch, as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp with a reasonable expectation of success. KSR Int' l Co. V. Teleflex Inc. 550 U.S. _, 82 USPQ 2d 1385 (Supreme Court 2007) (KSR).
Related Prior Art
Below is an analysis of the relevance of references cited but not used
- "892 cited references A-B on page 1 establish the state of the art with a variety of shaver and with different cutting elements/blades using a variety of driving mechanisms for the cutting elements and blades.
Conclusion
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/RICHARD D CROSBY JR/ 03/26/2026Examiner, Art Unit 3724