DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claim 1 is objected to because of the following informalities: The title “DEVICES, SYSTEMS AND METHODS FOR SKIN TREATMENT” is present at the end of the claim. Appropriate correction is required.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
Claim 1 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
Ignon et al. US Patent Application Publication 2003/0208159.
As to claim 1, Ignon teaches a device for treating a skin surface (Abstract), comprising: a handpiece assembly 63a (Fig. 5; para. 0056) having a distal end and a proximal end,
the handpiece assembly 63a comprising at least one delivery conduit 87 and at least one waste conduit 67a (Fig. 5);
a recess within the handpiece assembly 63a, the recess being configured to receive a cartridge 72 (Fig. 5; para. 0058) comprising an interior cavity 70 (Fig. 5; para. 0058);
wherein the interior cavity of the cartridge is placed in fluid communication with the fluid delivery conduit 87 when the cartridge is secured within the recess; and
a tip 90 configured to be positioned along the distal end of the handpiece assembly (Fig. 5; para. 0058), the tip 90 being configured to contact the skin surface (para. 0058);
wherein the tip comprises a peripheral lip 92 – where Ignon teaches tip 90 comprises a nozzle 92 that directs materials toward an aperture 94 through which a portion of a patient’s skin enters (para. 0058),
a first opening in fluid communication with the fluid delivery conduit 87 – opening at the distal end of 87; and a second opening in fluid communication with the waste conduit and an abrasive element – second opening at distal end of return conduit 67a (Fig. 5; paras. 0057-0058).
Ignon teaches the present invention substantially as claimed. Ignon does not specifically teach the first opening, the second opening and the abrasive element (microdermabrasion media and growth factors, para. 0058) are positioned along an interior of the peripheral lip. Ignon shows the waste conduit is in the interior of the hand piece, but is slightly shorter than the delivery conduit 87. However, since shifting the position of the second opening, along the waste or return conduit 67a would not have modified the operation of the device, it would have been obvious to one having ordinary skill in the art before the invention was originally filed to position the second opening along the interior of the peripheral lip in order to increase the volume of used liquid returning to the return conduit 67a and mitigating the chance of the used liquid mixing with the microdermabrasion media and growth factors from the delivery conduit.
The at least one waste conduit 67a is configured to be in fluid communication with a vacuum 65a (para. 0057) to selectively remove debris away from the tip (para. 0057); and
wherein the at least one delivery conduit 87 is placed in fluid communication with the at least one waste conduit 67a and the vacuum 65a when the peripheral lip contacts a skin surface 96 (Fig. 5; paras. 0057-0058).
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,056,193. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 9,056,193 contain each and every limitation of claim 1 of the instant application as well as additional features. The claims of the US Patent are narrower than the claims of the instant application, and effectively anticipate the instant claims. Thus the invention of the patent claim 1 are in effect a "species" of the "generic" invention of the instant claim 1. It has been held that the generic invention is “anticipated” by the “species". See ln re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACQUELINE F STEPHENS whose telephone number is (571)272-4937. The examiner can normally be reached 8:30-5:00.
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/JACQUELINE F STEPHENS/ Primary Examiner, Art Unit 3781
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