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 .
Election/Restrictions
Applicant's election with traverse of Species A in the reply filed on 7/28/26 is acknowledged. Applicant has identified Claims 1-18, as reading on Species A. The traversal is on the ground(s) that: i) the species are not patentably distinct, ii) the species are not mutually exclusive, and iii) there would be no search burden. Argument (i) is not persuasive because Applicant has not shown that the species would be obvious over one another. If Applicant believes that meeting Species A would make Species B obvious over Species A, and meeting Species B would make Species A obvious over Species A, then that should be clearly stated on record. Merely restating the differences between the two alternative embodiments and stating that they collectively define the same inventive concept, is not sufficient to show that the two are not distinct. Furthermore, the instant Application is a bypass application, not a national stage application, thus arguments regarding “inventive concept” are not persuasive. Argument (ii) is not persuasive because Applicant has admitted (in the specification, the claims, and in their arguments) that the two embodiments are alternative embodiments. How else would Applicant arrive at identifying which claims belong to which species? How do alternative embodiments not have mutually exclusive features? What makes them alternative, if not their mutually exclusive features? For example, Claim 19 recites that the connecting band originates “from the pair of slots of the face mask that runs parallel to the strap, the strap having a connecting piece at back of the user’s head”, which does not appear in Claims 1 or 12. In addition, Claim 19 does not recite that the connecting band originates from a forehead portion of the face mask, as recited in Claims 1 and 12. Argument (iii) is not persuasive because the differences between the alternative embodiments, examples of which are discussed above, require a different field of search (e.g. searching different classes/subclasses or electronic resources, or employing different search strategies or search queries, as discussed above for the different features of the alternative embodiments, e.g. overhead band with controller vs. band and strap in parallel with controller).
The requirement is still deemed proper and is therefore made FINAL.
Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species B, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/28/26.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the light bead hole (Claim 8) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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: “connecting piece” in claims 1 and 12, “external communication device” in claim 6, “heating/cooling element” in claim 13.
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 Objections
Claims 1-18 are objected to because of the following informalities: 1) In Claim 1, line 1, “to face” should be “to the face”, 2) In Claim 1, line 6, “a pair of slot” should be corrected, 3) In Claim 1, line 9, “at back” should be “at a back”, 4) In Claim 1, line 1, “to face” should be “to the face”, 5) In Claim 12, line 6, “a pair of slot” should be corrected, 6) In claim 12, “at back” should be “at a back”, 7) In Claim 6, “command and instruction” should be corrected to “a command and an instruction” or “commands and instructions” or similar, 8) In Claim 7, “passed” should be “passes”, 9) In Claim 9, “wherein face mask” should be “wherein the face mask”, 10) In Claim 10, “the length” should be “a length”, 11) In Claim 13, “peltier” should be “Peltier”. Appropriate correction is required.
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 1-18 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.
Regarding Claims 1 and 12, the limitation “a user’s head” in the body of the claim (lines 6-7) is unclear as to whether it refers to the “a user” of the preamble or a different user. It is not clear how many users the claim refers to. Furthermore, every subsequent reference to “the…user”, becomes unclear to which of the user it refers to.
Regarding Claims 3 and 14, “the direction” in “the direction of the forehead of the user” lacks clear antecedence, because it is not inherent that at forehead has a single direction. It is also unclear which direction of the forehead is referenced here.
Regarding Claim 8, it is not clear what a “light bead hole” is meant to convey. A hole for a light bead? A hole for a light “beam”? A bead shape hole? There is nothing in the specification or the drawings or the art to explain what this is meant to convey. The claim recites all LEDs passing through a single light bead hole. It is not clear from the specification what that “light bead hole” is meant to be.
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 1-2, 7, 9, 11-13, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0070977 by Molina in view of US 2017/0246076 by Miller.
Regarding Claim 1, Molina teaches a face mask for providing therapy to face of a user (e.g. abstract, Fig. 1: phototherapy face mask), the face mask comprising:
an outer layer (e.g. ¶ 58, Fig. 2: exterior mask 40);
an inner layer (e.g. ¶ 56, Fig. 2: inner mask 26);
a circuit board positioned between the outer layer and the inner layer (e.g. Fig. 2: PCB 34 is positioned between the inner mask 26 and the exterior mask 40);
a plurality of LEDs arranged on the circuit board (e.g. ¶ 44, 46, 57-58, Fig. 2: LEDs are arranged on PCB 34);
a pair of slot in the face mask (e.g. ¶¶ 55,59, Fig. 1, Fig. 4A, Fig. 5A: metal loops 24 form slots therein, and are interpreted as part of the face mask, thus the slots are in the face mask) capable of the intended use of “to install a strap to secure the face mask around a user’s head” (the strap is not positively recited. Nevertheless, the loops 24 explicitly permit lower strap 20 to be secured around the user’s head, see ¶¶ 55, 59, Fig. 1);
a connecting band originating from a forehead portion of the face mask (e.g. ¶¶ 55-56, Fig. 1-2: upper strap 20 originates from a portion of the face mask that corresponds to a forehead) having a connecting piece (e.g. ¶¶ 55, 59, Fig. 2: ring 22) to attach with the strap at back of the user’s head (as noted above, the strap is not positively recited, but nevertheless Molina teaches lower strap 22 which is attachable to ring 22)
and a control box (e.g. ¶¶ 8-10, 62-67: control box 76/96, can be wired or wireless).
Molina does not explicitly disclose that the control box is affixed to the connecting band.
However, Miller teaches an analogous phototherapy face mask with a control box that is attached to a connecting head-band of the face mask (e.g. abstract, ¶¶ 26, 34, Fig. 13: LED face mask 150, control unit 162 on headband 28). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to attach the control box to any or both of the connecting bands of a device according to the teachings of Molina, as: a) this would predictably permit control of the LED sources, b) it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1993) and MPEP 2144.04.V.B, c) proximity of the controller to the sources would ensure more reliable communication, be it wired or wireless, d) this would enhance efficiency in terms of space, both for the user and the manufacturer, and e) this would enhance the longevity and reliability of the system, with less separate parts, more so given that loss of a separate controller may affect the system as a whole or even require replacement of the system as a whole.
Regarding Claim 2, Molina as modified in Claim 1 teaches the face mask of claim 1, wherein the control box is electrically connected to the circuit board (e.g. ¶¶ 9, 54, 57: selective control of the LEDs on the PCB).
Regarding Claim 7, Molina as modified in Claim 1 teaches the face mask of claim 1, wherein the outer layer comprises a fixed column and the circuit board comprises a first fixed hole such that the fixed column passed through the first fixed hole (e.g. ¶ 56, and as shown in Fig. 2 for eye columns 56 which extend through holes in PCB 32 to inner layer 26 and holes 62).
Regarding Claim 9, Molina as modified in Claim 1 teaches the face mask of claim 1, wherein face mask comprises an eye opening detachably connected with an eye protective cover (e.g. ¶ 58, Fig. 2: detachable eye patch 42).
Regarding Claim 11, Molina as modified in Claim 1 teaches the face mask of claim 1, wherein the control box is positioned at the back of the user’s head when the face mask is worn by the user (e.g. this limitation is a matter of intended use that depends on the user and their manner of use, rather that the device itself. Anywhere one places the control box on the connecting band, the device would be capable of said intended use, as it would depend for example on the size of the head or how the user places the mask. For example, a child would be able to use an adult face mask to meet said function. Furthermore, Miller teaches placing the box in the back of the head as shown in Fig. 13, when one describes the head as having two portions, a front half and a back half).
Regarding Claim 12, Molina teaches a face mask for providing therapy to face of a user (e.g. abstract, Fig. 1: phototherapy face mask), the face mask comprising:
an outer layer (e.g. ¶ 58, Fig. 2: exterior mask 40);
an inner layer (e.g. ¶ 56, Fig. 2: inner mask 26);
a circuit board positioned between the outer layer and the inner layer (e.g. Fig. 2: PCB 34 is positioned between the inner mask 26 and the exterior mask 40);
a plurality of LEDs arranged on the circuit board (e.g. ¶ 44, 46, 57-58, Fig. 2: LEDs are arranged on PCB 34);
a pair of slot in the face mask to install a strap to secure the face mask around a user’s head (e.g. ¶¶ 55,59, Fig. 1, Fig. 4A, Fig. 5A: metal loops 24 form slots therein, and are interpreted as part of the face mask, thus the slots are in the face mask);
a connecting band originating from a forehead portion of the face mask having a connecting piece to attach with the strap at back of the user’s head (e.g. ¶¶ 55-56, Fig. 1-2: upper strap 20 originates from a portion of the face mask that corresponds to a forehead); and
a control box (e.g. ¶¶ 8-10, 62-67: control box 76/96, can be wired or wireless).
Molina does not explicitly disclose that the control box is affixed to the connecting band or the strap.
However, Miller teaches an analogous phototherapy face mask with a control box that is attached to a connecting head-band of the face mask (e.g. abstract, ¶¶ 26, 34, Fig. 13: LED face mask 150, control unit 162 on headband 28). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to attach the control box to any or both of the connecting bands of a device according to the teachings of Molina, as: a) this would predictably permit control of the LED sources, b) it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1993) and MPEP 2144.04.V.B, c) proximity of the controller to the sources would ensure more reliable communication, be it wired or wireless, d) this would enhance efficiency in terms of space, both for the user and the manufacturer, and e) this would enhance the longevity and reliability of the system, with less separate parts, more so given that loss of a separate controller may affect the system as a whole or even require replacement of the system as a whole.
Regarding Claim 13, Molina as modified in Claim 12 teaches the face mask of claim 12, yet does not explicitly disclose wherein the face mask further comprising at least one stimulation element selected from a group consisting of a heating element, a cooling element, a peltier element, a micro-current electrode.
However, Miller teaches an analogous face mask which includes micro-current electrode stimulation (e.g. ¶ 26, Fig. 2: electrode 34 stimulation with micro-currents of 0.5 mA/cm2). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to incorporate a micro-current electrode in a face mask according to the teachings of Molina, as taught by Miller, in order to predictably stimulate facial tissue or perform iontophoresis, as suggested by Miller (¶26).
Regarding Claim 18, Molina as modified in Claim 12 teaches the face mask of claim 12, wherein the control box is positioned at the back of the user’s head when the face mask is worn by the user (e.g. this limitation is a matter of intended use that depends on the user and their manner of use, rather that the device itself. Anywhere one places the control box on the connecting band, the device would be capable of said intended use, as it would depend for example on the size of the head or how the user places the mask. For example, a child would be able to use an adult face mask to meet said function. Furthermore, Miller teaches placing the box in the back of the head as shown in Fig. 13, when one describes the head as having two portions, a front half and a back half).
Allowable Subject Matter
Claims 3-6, 8, 10 and 14-17 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANOLIS Y PAHAKIS whose telephone number is (571)272-7179. The examiner can normally be reached M-F 9-5, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JENNIFER MCDONALD can be reached at (571) 270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MANOLIS PAHAKIS/Examiner, Art Unit 3796
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