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.
Claim 1 recites in line 6 “the hand-held shell defines a signaling portion” and line 10 recites “the signaling portion of the hand-held shell”. It is unclear if these limitations are intended to be drawn to the same structure. The dependent claims fail to provide any clarity as some claims recite “the signaling portion” and other claims recite “the signaling portion of the hand-held shell”. If these limitations are intended to be distinct, the claims lack sufficient structure necessary to render the limitations as clearly distinct. Claim 18 is rejected similarly.
Claim 4 recites the electrical connector is an elastic piece. It is unclear how the Applicant is intending to define “elastic piece” and what materials would meet the claimed limitation of elastic while also providing an electrical connection which would appear to inherently require a conductive material.
Claim 10 recites the limitation "the bottom cover" in line 5. There is insufficient antecedent basis for this limitation in the claim.
In claim 10 it is unclear what structure is required based on the relative limitation “with respect to the movement assembly” as the location of the position of the movement assembly is undefined in the claim.
Claim 13 recites the limitation "the hand-held portion" in line 5. There is insufficient antecedent basis for this limitation in the claim.
In claim 13, it is unclear if the “flexible circuit board” is the same as the circuit board of claim 1. It is also unclear if the Applicant is claiming that the device only requires either a conductive wire or a flexible circuit board.
Claim 16 recites the limitation "the non-signaling portion" in line 2. There is insufficient antecedent basis for this limitation in the claim.
In claim 20, it is unclear if the “flexible circuit board” is the same as the circuit board of claim 1. It is also unclear if the Applicant is claiming that the device includes an embodiment which requires a circuit board, a conductive wire, and a flexible circuit board. It is also unclear how the Applicant is intending to define “elastic piece” and what materials would meet the claimed limitation of elastic while also providing an electrical connection which would appear to inherently require a conductive material.
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.
Claim(s) 1-6, 11, and 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jeng et al. (US 2023/0181300 A1).
In re. claims 1 and 18 as best understood, with reference to [0018], [0031-0032], and [0038], Jeng et al. disclose an oral care device comprising a hand-held shell; a circuit board; a communication assembly, and an electrical connector; wherein the hand-held shell defines a signaling portion; the circuit board is disposed inside the hand-held shell; the communication assembly comprises a communication module, the communication module is disposed on and electrically connected to the circuit board; the electrical connector is disposed inside the hand-held shell, the communication module is electrically connected to the signaling portion of the hand-held shell via the electrical connector, the signaling portion of the hand-held shell and the communication module jointly form a signal transceiver, and the signal transceiver is configured to send signals to an exterior of the hand-held and/or receive external signals from the exterior of the hand-held shell. However if not, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
In re. claims 2, 11, 14-16, and 19 as best understood, with reference to the Figures, Jeng et al. disclose the hand-held shell comprises a hand-held portion and a bottom cover, the bottom cover is mounted to a bottom end of the hand- held portion, the signaling portion is disposed on the hand-held portion. Not disclosed is the hand-held shell, the hand-held portion, and the signaling portion being made of metal. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the claimed components from any known, suitable material for the intended use of the device, including metal, 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. In re Leshin, 125 USPQ 416.
In re. claim 3 as best understood, with reference to [0006] and [0031], Jeng et al. disclose a first end of the electrical connector is fixed to the circuit board and is electrically connected to the communication module, and a second end of the electrical connector is electrically connected to an inner wall of the signaling portion of the hand-held shell.
In re. claim 4 as best understood, with reference to [0006] and [0031], Jeng et al. disclose the inner wall of the signaling portion is capable of contacting with the electrical connector for being electrically connected to the electrical connector. Not specifically disclosed is an elastic piece. However, 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 electrical connector to be made from any known, suitable material in the art, 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.
In re. claim 5 as best understood, with reference to the Figures, Jeng et al. disclose the hand-held shell comprises a hand-held portion and a bottom cover, the bottom cover is mounted to a bottom end of the hand- held portion. Jeng et al. does not appear to specifically disclose the signaling portion is defined on the bottom cover, and the electrical connector being electrically connected to the signaling portion on the bottom cover. One of ordinary skill in the art could have combined the elements as claimed by known methods and that in combination, each element merely would have performed the same function. One of ordinary skill in the art would have recognized that the results of the combination were predictable. All the claimed elements were known in the prior art and one of ordinary skill in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. It has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
In re. claim 6 as best understood, Jeng et al., as modified above, discloses structure capable of meeting the broad requirement of the signaling portion comprising a structure protruding or extending from the bottom and the electrical connector abutting that structure.
In re. claims 13 and 20 as best understood, with reference to [0031-0032], and [0038], Jeng et al. as modified disclose the electrical connector is electrically connected to the communication module the to the signaling portion. Not specifically disclosed is a conductive wire or a flexible circuit board. However, the claimed elements were known in the prior art and one of ordinary skill in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. The limitation requiring the electrical connector to be “soldered” is considered a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
In re. claim 17 as best understood, Jeng et al. disclose the claimed invention as described above except for a distance between the signaling portion and a top end of the hand-held shell is not greater than 1/4 of a length of the hand-held shell; or a distance between the signaling portion and a bottom end of the hand-held shell is not greater than 1/4 of the length of the hand-held shell. However, 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 position of the signaling portion depending on the intended use of the device, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. Examiner lists referenced documents on PTO-892 because the references present other/alternative or conceptual designs similar in scope that illustrate relevant features, which may demonstrate the level of novelty in comparison to Applicant’s inventive submission. The record relates to Applicant’s identified material and Examiner’s discovered references concerning Applicant’s subject matter relevant for a patentability determination.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA L PERRY whose telephone number is (571)270-3113. The examiner can normally be reached Monday-Friday 10am-6pm.
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/MONICA L PERRY/Primary Examiner, Art Unit 3644
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