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 .
Status of Claims
Claims 1-2 are pending and examined on the merits.
Information Disclosure Statement
The references cited by applicants in the information disclosure statements filed on 1/17/2025 have been made of record. Examiner has considered the voluminous references to the best of her ability.
While the statements filed do not comply with the guidelines set forth in MPEP 2004 regarding both the number of references cited and the elimination of clearly irrelevant art and marginally cumulative information, compliance with these guidelines is not mandatory. Furthermore, 37 CFR 1.97 and 1.98 does not require that the information be material; rather, they allow for submission of information regardless of its pertinence to the claimed invention. Also, there is no requirement to explain the materiality of the submitted references. However, the cloaking of a clearly relevant reference by inclusion in a long list of citations may not comply with Applicant’s duty of disclosure. See Penn Yan Boats, Inc. v. Sea Lark boats Inc., 359 F. Supp. 948, aff’d 479 F. 2d. 1338.
Applicant is advised that the MPEP states the following with respect to large information disclosure statements:
Although a concise explanation of the relevance of information is not required for English language information, applicants are encouraged to provide a concise explanation of why the English-language information is being submitted. Concise explanations (especially those that point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more is highly relevant to patentability. MPEP § 609.04(a)(III).
This statement is in accord with dicta from Molins PLC v. Textron, Inc., 48 F.3d 1172 (Fed. Cir. 1995), states that forcing the Examiner to find “a needle in a haystack” is “probative of bad faith.” Id. at 1888. This case presented a situation where the disclosure was in excess of 700 pages and contained more than fifty references. Id. 1888.
The MPEP provides more support for this position. In a subsection entitled “Aids to Compliance With Duty of Disclosure,” item thirteen states:
It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant information and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to Applicant’s attention and/or are known to be of the most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F.Supp 948 (S.D. Fla. 1972) aff’d 479 F.2d 1338 (5th Cir 1974). See also MPEP § 2004.
Therefore, it is recommended that if any information that has been cited by Applicants in the previous disclosure statement is known to be material for patentability as defined by 37 CFR 1.56, Applicant should present a concise statement as to the relevance of that/those particular documents therein cited.
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. 11,241,357. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 1 recites a method of promoting hair growth by applying vacuum through a handpiece, moving the handpiece along a targeted skin surface of a user, and applying a treatment material to the skin surface, wherein the application of vacuum or suction helps promote hair growth or stimulate hair. The patented claim recites more details than the current claim.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 11,717,326. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 12 recites a method of applying vacuum through a handpiece, moving the handpiece along a skin surface of a user, and applying a treatment material to the skin surface. The patented claim recites more details than the current claim but does not disclose that the skin surface is where hair growth is desired, but since the scalp is a type of skin, it would be obvious to one skilled in the art that a device that can be applied to skin in general is likely also capable of being applied to the scalp where hair growth is desired. The limitation in current claim 1 “wherein the application of vacuum or suction helps promote hair growth or stimulate hair” is a natural result of the step of applying vacuum.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,517,350. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 2 recites a method of applying positive pressure through a handpiece and applying a treatment fluid to the skin surface. The patented claim recites more details than the current claim but does not disclose that the skin surface is where hair growth is desired, but since the scalp is a type of skin, it would be obvious to one skilled in the art that a device that can be applied to skin in general is likely also capable of being applied to the scalp where hair growth is desired. The limitation in current claim 2 “wherein the application of positive pressure helps promote hair growth or stimulate hair” is a natural result of the step of applying positive pressure.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20, 33, or 37 of copending Application No. 17/592,432 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims each recites a method of applying positive pressure (inherently exerted by “massaging”) through a handpiece onto scalp (where there is hair) and applying a treatment material to the skin surface. The reference application claim recites more details than the current claim but does not explicitly disclose that the method is for promoting hair growth, but since reference claims recite a method for promoting scalp health, it would be obvious to one skilled that hair growth/stimulation is a likely result of healthier scalp.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/054,667 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claim 1 recites a method of applying vacuum through a handpiece, moving the handpiece along a skin surface of a user, and applying a treatment material to the skin surface. The reference application claim recites more details than the current claim but does not disclose that the skin surface is where hair growth is desired, but since the scalp is a type of skin, it would be obvious to one skilled in the art that a device that can be applied to skin in general is likely also capable of being applied to the scalp where hair growth is desired. The limitation in current claim 1 “wherein the application of vacuum or suction helps promote hair growth or stimulate hair” is a natural result of the step of applying vacuum.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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.
Claim 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anderson et al. (US 2010/0305495).
Regarding claim 2, Anderson teaches a method of promoting hair growth or hair stimulation in a subject (e.g., [0013]), the method comprising:
applying positive pressure (e.g., [0014] “applying a therapeutic substance under pressure to follicle areas of skin”) using a handpiece assembly (apparatus 200) along a targeted portion of the subject's skin surface where hair growth or hair stimulation is desired; and
providing at least one treatment material to said targeted portion of the subject's skin surface (e.g., [0039] “deliver substances into a hair follicle”);
wherein the application of positive pressure helps promote hair growth or stimulate hair ([0014] “Such application can improve the penetration of the substance into certain skin structures, which may improve their efficacy.”).
Claim Rejections - 35 USC § 102/103
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Anderson.
Re Claim 1, Anderson teaches a method of promoting hair growth or hair stimulation in a subject (e.g., [0013]), the method comprising:
applying vacuum or suction using a handpiece assembly (e.g., apparatus 200) along a targeted portion of the subject's skin surface where hair growth or hair stimulation is desired (e.g., [0039] “Vacuum conduit 220 can be provided in communication with a vacuum or low-pressure source (not shown) through a vacuum tube 225.”); and
providing at least one treatment material to said targeted portion of the subject's skin surface (e.g., [0039] “deliver substances into a hair follicle”).
Anderson does not explicitly indicate that the application of vacuum or suction helps promote hair growth or stimulate hair. However, this limitation appears to be simply reciting a natural result of applying vacuum to the scalp. As such, one skilled in the art has reason to expect that applying vacuum would promote hair growth and thus Anderson’s method would either inherently lead to better hair growth or likely result in better hair growth when combined with the treatment material.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kinoshita (US 2010/0010507) discloses a handheld device that improves hair growth by utilizing vacuum to cause hair follicles to approach the skin surface so as to be more receptive to light irradiation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSAN S SU whose telephone number is (408)918-7575. The examiner can normally be reached M-F 9:00 - 5:00 Pacific.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rebecca Eisenberg can be reached at 571-270-5879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUSAN S SU/ Primary Examiner, Art Unit 3781
19 September 2026
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