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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 18 recites “wherein the locking cap is machines from a sheet or block of metal…” however the specification instead recites that “The locking cap 120 may be made from plastic, metal, rubber, or a combination thereof. In one embodiment, the locking cap 120 may be formed from a thermoplastic material using an injection molding process. In another embodiment, the locking cap 120 may be formed from metal using a mill, lathe, or water jet cutting machine or other process to form protrusions 175 that are integrated with cap 120” (PP [0030]). It is recommended that the claim be amended to recite that the locking cap is “formed” or “made” rather than “machined”, which does not have antecedent basis in the specification.
Claim Objections
Claims 1, 8, and 18 are objected to because of the following informalities:
Claim 1 includes the preamble “A tattoo machine, comprising;” which ends in a semicolon despite the preamble to independent claim 19 ending with a colon. It is recommended that the preamble of claim 1 be amended to also end with a colon in order to match independent claim 19.
Claim 8 depends from claim 1, yet recites “the middle second ring” in line 2, which is a structure that is introduced in claim 2. It is recommended that the dependency of claim 8 be fixed such that it depends from claim 2 instead so that the terminology of claim 8 has proper antecedent basis.
Claim 18 recites “wherein the locking cap is machines”, which appears to have a spelling mistake. It is recommended that the claim be amended to recite “wherein the locking cap is machined” instead.
Appropriate correction is required.
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.
Claims 1-4 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Siciliano (US PGPub 2021/0244928 A1).
With respect to claim 1, Siciliano discloses a tattoo machine (abstract, see Figs. 2 and 3), comprising;
a tattoo grip section (301 and 200 in Fig. 3) in which a tattoo motor is housed (PP [0081]: “the motor housing 200”) and defining a longitudinal axis along a length of the tattoo grip section (see unmarked assembled view in Figs. 5A-B with section A-A, PP [0080]: “Section A-A defines the central axis about which the exterior of the wireless tattoo machine has a substantially radially symmetric shape”);
a battery housing (100) that detachably couples to the grip section (301 and 200) and has a battery housing exterior surface (exterior surface of 100);
a locking cap (200D in Figs. 7A-D) that detachably couples to the battery housing (100) and has a plurality of integrated protrusions (200C) that extend radially relative to the longitudinal axis farther than the battery housing (100) exterior surface (PP [0081]: “the motor housing 200 includes three twist-lock mating features 200C dimension to correspond to twist-lock features of the battery pack such that the battery pack housing may be reversibly rotationally coupled to the motor housing”, PP [0083]: “The battery housing 100 also may have twist-lock mating features or partial circumferential ridges 100A to facilitate connection of the battery housing 100 to the main unit of the wireless tattoo machine… During assembly, the battery housing 100 can be inserted into the mating end of the motor housing 200 such that the partial circumferential ridge 100A advances internally past the partially circumferential internal ridge 200C, at which point, a user can twist or rotate battery housing 100, motor housing 200, or both, and such that the partial circumferential ridge 100A slides within a slot created internally to each partially circumferential internal ridge 200C and locks in place”).
Regarding claim 2, Siciliano further discloses wherein the locking cap (proximal end of 200 not including 200A-B in Figs. 7A-D, see Fig. 3, proximal is to the right and distal is to the left in general in these views but often swapped in single component views, in Figs. 7A and 7C, proximal is to the left and distal is to the right) further comprises a proximal first ring (proximal-most edge of 200, see annotation below), a middle second ring (distal edge of larger proximal end, see annotation below), and a distal convex portion (portion of 200 including 240, this part has rounded convex shape in Figs. 7B and D, see annotation below), wherein the proximal first ring (proximal-most edge of 200,) is fixedly attached to a proximal side of the middle second ring (distal edge of larger proximal end), wherein the middle second ring (distal edge of larger proximal end) is fixedly attached to a proximal side of the distal convex portion (portion of 200 including 240, this part is fixedly attached to the rest of 200 including the distal edge of the larger proximal edge, see annotation below).
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Regarding claim 3, Siciliano further discloses wherein an outer diameter of the middle second ring (outer peripheral edge of 200D in Fig. 7A) is larger than an outer diameter of the proximal first ring (ring formed by 200C extends further inwardly relative to the outer peripheral edge of 200D, defining a smaller inner diameter than a diameter of 200D).
Regarding claim 4, Siciliano further discloses wherein the distal convex portion (portion of 200 including 240 in Figs. 7A and 7C) includes recesses (240) and a flat surface (flat surface between and surrounding 240) on a distal side of the distal convex portion (240 are on a distal side of that portion of 200).
Regarding claim 17, Siciliano further discloses wherein the locking cap (proximal end of 200 not including 200A-B in Figs. 7A-D) is made out of plastic, metal, rubber or a combination thereof (PP [0036]: “Embodiments of the present disclosure may include components manufactured from materials suitable for human use in medically sterile settings. Such materials are those which are durable, cleanable, or autoclaveable, and are contemplated to be within the scope of the present disclosure. By way of example and not limitation, materials may be stainless steel, tungsten, anodized aluminum, their alloys, or polycarbonates”, stainless steel is a metal).
Regarding claim 18, Siciliano further discloses wherein the locking cap (proximal end of 200 not including 200A-B in Figs. 7A-D) is machine[d] from a sheet or block of metal using a mill, lathe, or water jet cutting machine (MPEP 2113: "[E]ven 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 product was made by a different process").
With respect to claim 19, Siciliano discloses a tattoo device (abstract, see Figs. 2 and 3), comprising;
a tattoo grip section (301 and 200 in Fig. 3) in which a tattoo motor is housed (PP [0081]: “the motor housing 200”) and defining a longitudinal axis along a length of the tattoo grip section (see unmarked assembled view in Figs. 5A-B with section A-A, PP [0080]: “Section A-A defines the central axis about which the exterior of the wireless tattoo machine has a substantially radially symmetric shape”), wherein the tattoo grip section (301 and 200) detachably couples to a battery housing (100);
a locking cap (200D in Figs. 7A-D) that detachably couples to the battery housing (100) and has a plurality of integrated protrusions (200C) that extend radially relative to the longitudinal axis farther than the battery housing (100) exterior surface (PP [0081]: “the motor housing 200 includes three twist-lock mating features 200C dimension to correspond to twist-lock features of the battery pack such that the battery pack housing may be reversibly rotationally coupled to the motor housing”, PP [0083]: “The battery housing 100 also may have twist-lock mating features or partial circumferential ridges 100A to facilitate connection of the battery housing 100 to the main unit of the wireless tattoo machine… During assembly, the battery housing 100 can be inserted into the mating end of the motor housing 200 such that the partial circumferential ridge 100A advances internally past the partially circumferential internal ridge 200C, at which point, a user can twist or rotate battery housing 100, motor housing 200, or both, and such that the partial circumferential ridge 100A slides within a slot created internally to each partially circumferential internal ridge 200C and locks in place”).
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 5-7 are rejected under 35 U.S.C. 103 as being unpatentable further over Siciliano (US PGPub 2021/0244928 A1), as applied to claim 1 above.
Regarding claim 5, Siciliano fails to discloses wherein the distal end of the battery housing further includes a cavity for receiving the proximal first ring of the locking cap, since the distal end of the battery housing (100 in Fig. 3) is instead received within the proximal first ring of the locking cap (proximal end of 200) which includes a cavity for receiving a distal ring (portion of 100 including 100A) of the locking cap (100).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date to have modified the Siciliano device and swapped the female/male coupling structures of the locking cap and the battery housing such that the distal end of the battery housing further includes a cavity for receiving the proximal first ring of the locking cap. One of ordinary skill in the art would have been motivated to perform this modification because doing so would have been obvious to try, as, relating to the recognized problem of attachment mechanisms between these two components, there are a finite number of identified, predictable solutions that one of ordinary skill in the art would have been able to explore with a reasonable expectation of success. Modifying the Siciliano reference such that the battery housing includes the distal female connection mechanism and the locking cap includes a proximal male connection mechanism would not have altered the main operating principle of the device and would have simply changed the direction of the existing connection mechanism between the battery housing and the locking cap.
Regarding claim 6, Siciliano further discloses wherein the proximal first ring includes tabs on an exterior radial surface (100A in Figs. 9A-E, in the modification as proposed these tabs would be on the proximal end of the locking cap), wherein the tabs are received by notches (notches between 200C in Fig. 7A, PP [0081]: “partially circumferential internal ridge 200C”, in the modification as proposed above these notches would be on the distal end of the battery housing) in the cavity on the distal end of the battery housing, wherein the locking cap (proximal end of 200 in Fig. 3) is secured to the battery housing (100) by placing the tabs of the proximal first ring (100A) within the notches (notches defined between 200C) on the distal end of the battery housing (100) and rotating the locking cap in either a clockwise or counterclockwise direction (PP [0083]: “the battery housing 100 can be inserted into the mating end of the motor housing 200 such that the partial circumferential ridge 100A advances internally past the partially circumferential internal ridge 200C, at which point, a user can twist or rotate battery housing 100, motor housing 200, or both, and such that the partial circumferential ridge 100A slides within a slot created internally to each partially circumferential internal ridge 200C and locks in place”, the modification as proposed swaps these structures).
Regarding claim 7, Siciliano further discloses wherein the cavity further includes stops (200C in Fig. 7A) located a distance from the notches (notches between 200C, the notches are defined by the stops which are located discretely away from the spaces therebetween), wherein the tabs (100A in Figs. 9A-E) abut against the stops (200C) when the locking cap (proximal end of 200) is rotated in either direction (PP [0083]: “the partial circumferential ridge 100A advances internally past the partially circumferential internal ridge 200C, at which point, a user can twist or rotate battery housing 100, motor housing 200, or both, and such that the partial circumferential ridge 100A slides within a slot created internally to each partially circumferential internal ridge 200C and locks in place”).
Claims 8-13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Siciliano (US PGPub 2021/0244928 A1), as applied to claim 1 above, and further in view of Bandera et al. (US Patent No. 4,739,536).
Regarding claim 8, Siciliano fails to disclose wherein the plurality of integrated protrusions are located on an exterior radial surface of the middle second ring.
In the field of screwdrivers (abstract), which is relevant to tattoo machines because screwdrivers are also handled tools configured to be comfortably gripped by a user, Bandera et al. teaches a screwdriver grip (see Figs. 1-3) comprising a plurality of integrated protrusions (4) located on an exterior radial surface of the handle portion (K).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date to have modified the Siciliano device according to the Bandera et al. reference to include a plurality of integrated protrusions on an exterior radial surface of the middle second ring. One of ordinary skill in the art would have been motivated to perform this modification because doing so would have constituted the use of a known technique to improve a similar device’s handle in the same way to yield predictable results, since performing the modification as suggested would not alter the main operating principle of the Siciliano device but would simply prevent the tattoo machine from rolling away when placed down by the user (Bandera et al. col. 2, lines 60-61: “the handle will not roll away when laid down”), which would similarly improve the Siciliano tattoo machine.
Regarding claim 9, Siciliano as modified by Bandera et al. further discloses wherein the plurality of integrated protrusions (4 in Figs. 1-3 of Bandera et al.) prevent the tattoo machine from rolling when the tattoo machine is placed on a flat surface (col. 2, lines 60-61: “the handle will not roll away when laid down”), wherein the protrusions (4) project radially outward from an exterior radial surface (see Fig. 2 of Bandera et al.) of the locking cap (proximal end of 200 in Fig. 3 of Siciliano, the combination as proposed would yield the protrusions on the locking cap 200).
Regarding claim 10, Siciliano as modified by Bandera et al. further discloses wherein each of the plurality of integrated protrusions (4 in Figs. 1-3 of Bandera et al.) comprises angled surfaces (see angled surfaces along curvature of 4), wherein the angled surfaces comprise a first surface, a second surface, a third surface, a fourth surface, a fifth surface, and a sixth surface (see annotation of Fig. 1 below).
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Regarding claim 11, Siciliano as modified by Bandera et al. further discloses wherein the first and sixth surfaces (see annotated Fig. 1 of Bandera et al. above) are acutely angled from the exterior radial surface (the first and sixth surfaces are less “steep” compared to the second and fifth surfaces, rendering them more acutely angled) of the locking cap (proximal end of 200 in Fig. 3 of Siciliano), wherein the first and sixth surfaces (see annotated Fig. 1 of Bandera et al. above) form a transitional area between the protrusion (4) and the exterior radial surface of the locking cap (proximal end of 200 in Fig. 3 of Siciliano, the combination as proposed would place the grip geometry of Bandera et al. onto the locking cap of Siciliano such that these surfaces form a transitional area with the external surface of the locking cap).
Regarding claim 12, Siciliano as modified by Bandera et al. further discloses wherein the second and fifth surfaces (see annotated Fig. 1 of Bandera et al. below) are less acutely angled than the first and sixth surfaces (the second and fifth surfaces are more sharply angled upwards compared to the first and sixth surfaces, rendering them less acutely angled), wherein the second and fifth surfaces form shoulders of the protrusion (4, the second and fifth surfaces angle upwards to help define the beginning of the protrusion).
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Regarding claim 13, Siciliano as modified by Bandera et al. further discloses wherein the third and fourth surfaces (see annotated Fig. 1 of Bandera et al. above) form an apex of the protrusion (4, the third and fourth surfaces are the highest point of the protrusion 4 and thus form the apex).
Regarding claim 16, Siciliano fails to disclose wherein an exterior surface of the locking cap is rubberized to provide additional grip to a user when turning the locking cap.
In the field of screwdrivers (abstract), which is relevant to tattoo machines because screwdrivers are also handled tools configured to be comfortably gripped by a user, Bandera et al. teaches a screwdriver grip (see Figs. 1-3) that is rubberized (col. 2, lines 38-42: “the tapered zones according to FIG. 2, that is, the two truncated cones, are fashioned as soft gripping zones W, i.e., they consist on the outside for most of the elastically-yielding, compressible material, for instance, soft plastic, rubber or similar”).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date to have modified the Siciliano device according to the teachings of Bandera et al. to include wherein an exterior surface of the locking cap is rubberized. One of ordinary skill in the art would have been motivated to perform this modification as doing so constitutes the use of a known technique to improve a similar device’s grip portion to yield predictable results, as rubberizing the locking cap of Siciliano would not change the main operating principle of the Siciliano tattoo machine and would simply enable easier torquing of this hand-rotatable component (Bandera et al. col. 1, lines 35-37: “The application of a higher torque is reserved, though, to the area of the handle end with the soft sheathing”, the soft sheathing in question is the rubber portion).
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Siciliano (US PGPub 2021/0244928 A1) as modified by Bandera et al. (US Patent No. 4,739,536), as applied to claim 10 above, and further in view of Lafferty (US PGPub 2008/0142554 A1).
Regarding claim 14, Siciliano as modified by Bandera et al. fails to diclose wherein the angled surfaces include textured surfaces to provide additional grip to a user when turning the locking cap.
In the related field of fluid dispensing devices (abstract), which is relevant because a tattoo machine is also a fluid dispensing device comprising interfacing components, Lafferty teaches a fluid dispensing device (10 in Fig. 1) comprising a removable rotatable head cap assembly (154) comprising a textured surface (112) to provide additional grip to a user when deconstructing or assembling the device (PP [0043]: “The knurled grip 112 of the head cap assembly 154 aids the user assemble the device by providing a gripping surface to thread the manual head assembly 100 onto said case assembly 500 thus forming a unitary body”).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date to have further modified the combination as proposed to incorporate the teachings of Lafferty and add textured surfaces to provide additional grip when turning the locking cap. One of ordinary skill in the art would have been motivated to perform this modification because doing so would have constituted the use of a known technique on a known device ready for improvements to yield predictable results, as adding the texture taught by Lafferty would not alter the main operating principle of the modified Siciliano device and would simply “aid the user” (PP [0043] of Lafferty) in gripping the locking cap, thereby facilitating the twisting of the locking cap for removal or attachment.
Regarding claim 15, Siciliano as modified by Bandera et al. and Lafferty further discloses wherein the textured surfaces (112 in Fig. 1 of Lafferty) include knurling or crosshatching patterns (PP [0043]: “a knurled grip 112”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bridget E. Rabaglia whose telephone number is (571)272-2908. The examiner can normally be reached Monday - Thursday, 7am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIDGET E. RABAGLIA/Examiner, Art Unit 3771
/TAN-UYEN T HO/Supervisory Patent Examiner, Art Unit 3771