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 (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.
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, 14 and 15 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 “a sensitivity of the application surface between at least a first sensitivity and a second sensitivity is selected” and it is unclear what is meant by sensitivity, how it might be measured and selected. Prior art has been applied as best understood.
Claim 9 recites “wherein the hot and the cold temperature are regulated by more or less 2oC when the outside temperature is less than 24oC and by more or less 5oC when the outside temperature is greater than or equal to 24oC.” It is unclear what is mean by “regulated by more or less 2oC….more or less 5oC”. Does applicant mean for the regulation to be around these numbers or would any number greater than or less than 2oC and 5oC read on the claimed limitation?
Regarding claim 14, it is unclear what applicant means by “a pair of devices according to any one of claims 10 to 13, the hot and cold end pieces being arranged symmetrically between left-hand and right-hand devices” as claims 10-13 require a device with both a hot and cold piece and therefore it is unclear how these device could be arranged symmetrically between a left and right hand devices.
Claim 14 recites the limitation "the left-hand and right-hand devices" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
All claims not specifically discussed above are necessarily rejected as being dependent on a rejected claim.
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.
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.
Claim(s) 1-3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0121900 A1 to Yamazaki (Yamazaki) in view of EP 3 493 776 B1 to Bosma (Bosma).
Regarding claim 1, Yamazaki teaches a non-therapeutic method (Fig. 5) for alternately applying hot and cold to an application surface, notably the epidermis of a user, with the aid of a device (beauty treatment device 10) for alternately applying hot and cold comprising a first end piece (warm plate 160a) extending in a first direction (Fig. 1A) and a second end piece (cool plate 160b) extending in a second direction (fig. 1B), said end pieces being disposed at one end of the device (Fig. 2), the first direction and the second direction forming an angle off less than or equal to 90o with respect to one another (Fig. 2), wherein a hot temperature of between 35oC and 48oC is applied to the application surface by the first piece for a period of time ([0022]), the application device is pivoted ([0015]), immediately upon pivoting a cold temperature is applied to the application surface for a period of time ([0022]).
However, Yamazaki does not teach applying the hot temperature for a period of between 2 min and 6 min, pivoting by at most a quarter of a tube, for a period of less than or equal to 5 seconds, applying a cold temperature of between 0oC and 15oC for a period of between 2 min and 6 min, or wherein prior to application of a temperature to the application surface, a sensitivity of the application surface between at least a first sensitivity and a second sensitivity is selected and a treatment mode chosen from a group comprising at least a first mode and a second mode is selected.
Bosma teaches an analogous method and device to that of Yamazaki ([0015]) as well as teaching wherein prior to application of a temperature to the application surface, a sensitivity of the application surface between at least a first sensitivity and a second sensitivity is selected and a treatment mode chosen from a group comprising at least a first mode and a second mode is selected ([0043, 0061, 0065]). 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 Yamazaki to include the sensitivity detection and treatment mode selection based on sensitivity as taught by Bosma to allow for better conformation to the condition of the user’s skin ([0065]).
Regarding the period of time for applying the hot temperature, the cold temperature and pivoting, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected an appropriate time range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
While Yamazaki teaches a cool temperature range of between 8oC and 20oC, Yamazaki does not specifically teach applying a cold temperature of between 0oC and 15oC. 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 Yamazaki to apply a temperature of between 0oC and 15oC, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 2, the combination teaches the method of claim 1 as well as Bosma teaching wherein the selection of the sensitivity of the application surface is carried out manually by the user or automatically by an electronic control unit of the application device, said electronic control unit being configured to retrieve data originating from members for acquiring physical data of the user’s epidermis and to analyze the condition of the application surface ([0043, 0061, 0065]).
Regarding claim 3, the combination teaches the method of claim 2 as well as Bosma teaching wherein the period of application of hot and/or cold is determined by the chosen treatment mode and/or by the electronic control unit as a function of the condition of the analyzed application surface ([0043, 0061, 0065]).
Regarding claim 6, the combination teaches the method according to any one of claims 1-3 as well as Bosma teaching wherein, at the end of the step of applying heat, an audible or visual signal is emitted to alert the user ([0065]).
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki and Bosma as applied to claims 1-3 and 6 above, and further in view of WO 2018/014107 A1 to Badmus et al. (Badmus).
Regarding claim 7, Yamazaki in view of Bosma teaches the method according to any one of claims 1-3 and 6, but not at least a first product applied to the application surface prior to or at the same time as the step of applying hot and/or cold.
Badmus teaches an analogous device (title “Portable Compress Device and Method of Use”) to that of Yamazaki including a member (a refillable reservoir or liquid dispenser 204) for packaging and dispensing product is connected to each of the end pieces ([0045]). 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 method of Yamazaki to include the dispensing of Badmus to allow for the benefit of a highly concentrated saline solution in which pathogenic bacteria cannot survive as taught by Badmus ([0045]).
Regarding claim 8, the combination teaches the method according to claim 7, but not wherein the product is applied automatically by the product dispensing member disposed in the product application device. It would have been obvious to one having ordinary skill in the art before the effective filling date of the claimed invention to have automatically dispensed the product, since it has been held that broadly providing a mechanical or automatic means to replace a manual activity which has accomplished the same result involves only routine skill in the art.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki.
Regarding claim 10, Yamazaki teaches a device (beauty treatment device 10) for alternately applying hot and cold to an application surface for the implementation of the application method according to any one of the preceding claims, comprising a first, hot end piece (warm plate 160a) extending in a first direction (Fig. 1A) for the application of a hot temperature of between 35oC and 48oC (A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.), and a second, cold end piece (cool plate 160b) extending in a second direction (Fig. 1B) for application of a cold temperature of between 0oC and 15oC (A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.), said end pieces being disposed at one end of the device (Figs. 2), the first direction and the second direction forming an angle of less than or equal to 90o with respect to one another (Fig. 2), said device comprising a member (temperature sensor 197) for acquiring physical data of the application surface ([0031] which states in part “The temperature sensor 197 is electrically connected to the thermostat 150 and measures the temperature of the warm plate 160a in collaboration with the thermostat 150.”), a data retrieval module (thermostat 150) configured to retrieve the data originating from said members for acquiring physical data of the application surface ([0031]), and an electronic control unit (controller 198) configured to analyze said application surface and to automatically adjust the temperature and the period of application of hot and/or cold by the end pieces ([0031]).
However, while Yamazaki teaches a member for acquiring physical data of the application surface, it is silent with respect to a plurality of members for acquiring physical data of the application surface. It is asserted that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have included multiple members for acquiring physical data of the application surface, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki as applied to claim 10 above, and further in view of Badmus.
Regarding claim 11, Yamazaki as modified above teaches the device of claim 10, but not a member for packaging and dispensing product which is configured to deliver at least one dose of product to the outside of the application device. Badmus teaches an analogous device (title “Portable Compress Device and Method of Use”) to that of Yamazaki including a member (a refillable reservoir or liquid dispenser 204) for packaging and dispensing product is connected to each of the end pieces ([0045]). 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 Yamazaki to include the dispenser of Badmus to allow for the benefit of from a highly concentrated saline solution in which pathogenic bacteria cannot survive as taught by Badmus ([0045]).
Regarding claim 12, the combination teaches the device of claim 11 as well as Badmus teaching wherein the member of packaging and dispensing the produce is connected to the end piece (Figs. 2 and 5). While Badmus does not teach multiple members, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have included multiple members for packaging and dispensing product, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art.
Regarding claim 13, the combination teaches the device of claim 12 as well as Badmus teaching an actuator ([0045] which states in part “shown in FIG. 5 where the solution from the liquid dispenser, secured adjacent to the heating surface 200, may be applied to the pad by user input (e.g. when a button on the dispenser is pressed).”) which is configured to displace the product contained in the member for packaging and applying product ([0045]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAITLYN E SMITH whose telephone number is (571)270-5845. The examiner can normally be reached Monday-Friday 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne M Rodden can be reached at (303) 297-4726. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KAITLYN E SMITH/Primary Examiner, Art Unit 3794
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