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 .
Claims 1-20 are presented for examination.
This application is a CON of 18/475,202 filed on 09/26/2023 now PAT 12,237,060 which is a CON of 18/057,751 filed on 11/21/2022 now PAT 11,798,664 which is a CON of 16/624,899 filed on 12/19/2019 now PAT 11,515,019 which is a 371 of PCT/CA2018/050753 filed on 06/21/2018 which has PRO 62/522,906 filed on 06/21/2017.
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,798,664 (hereinafter referred as '664). Although the claims at issue are not identical, they are not patentably distinct from each other because all the claims are expressly found in the claimed application. For instance, claim 1 of the present application recites the following limitations:
A system for manufacturing an artificial covering for a user's anatomical surface, the system comprising: a 3D surface scanning module configured to obtain an image of the user’s anatomical surface; a manufacturing module; and a central processing module operatively connected to the 3D surface scanning module and the manufacturing module, the central processing module being operable to receive the image, generate a 3D model corresponding to an artificial covering and based on the image, and convey the 3D model to the manufacturing module for manufacturing the artificial covering; wherein the manufacturing module is configured to add a device to the artificial covering during manufacturing thereof.
Whereas claim 1 of '664 application, the applicant claims:
A system for manufacturing a custom fit artificial surface for a user's anatomical extremity, the system comprising: a 3D surface scanning module; a 3D manufacturing module; and a central processing module operatively connected to the 3D surface scanning module and the 3D manufacturing module, the central processing module being operable to: operate the 3D surface scanning module to obtain an image of the user's anatomical extremity; process the image to create an input 3D model of the anatomical extremity of the user; generate an output 3D model corresponding to an artificial surface matching dimensions of the user's anatomical extremity according to the 3D input model; operate the 3D manufacturing module to manufacture the artificial surface according to the output 3D model; process the image to identify one or more predetermined features of the user's anatomical extremity; generate medical data by correlating the identified predetermined features of the user's anatomical extremity with known medical conditions, in order to diagnose a medical condition of the user which is known to exhibit the identified features as a symptom; and wherein the 3D manufacturing module comprises an embedder configured to embed a premanufactured object into the artificial surface during the 3D manufacturing process; and wherein the premanufactured object comprises an embedded device or a sensor or both, and wherein the central processing system is further operable to link to the embedded device or the sensor with a user account stored on a server.
The instant claims obviously encompass the claimed invention of '664 patent and differ only by terminology. To the extent that the present claims are broader and therefore generic to the claimed invention of '664 patent, In re Goodman 29 USPQ 2d 2010 CAFC 1993.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the application term by prohibiting claims in a second application not patentably distinct from claims of a first application. In re Vogel, 164 USPQ 619 (CCPA 1970).
Claim 2 recites similar limitations as of claim 2 of '664 patent.
Claims 3-8 are rejected under double patent as being dependent of claim 1.
Claim 9 recites similar limitations as of claim 9 of '664 patent.
Claim 10 recites similar limitations as of claim 10 of '664 patent.
Claim 11 recites similar limitations as of claim 14 of '664 patent.
Claim 12 recites similar limitations as of claim 15 of '664 patent.
Claim 13 recites similar limitations as of claim 16 of '664 patent.
Claim 14 recites limitations enclosed in claim 1 of '664 patent.
Claims 15-17 recite limitations enclosed in claim 1 of '664 patent.
Claims 18 and 20 recite similar limitations enclosed in claim 17 of '664 patent.
Claim 19 recites similar limitations as of claim 13 of '664 patent.
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.
Claim(s) 1 and 9-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Papshev et al. (US 2016/0309877).
Re Claims 1, 18 and 20: Papshev et al. {hereinafter referred as “Papshev”} teaches system and method for a nail manipulation, which includes a 3D surface scanning module {herein Papshev discloses new possibilities of implementing e.g. 3D shapes for the artificial nails, which can be created based on the real-time scanning method for the nail surface of a particular person} configured to obtain an image of the user’s anatomical surface (¶ 33+); a manufacturing module {herein the system may be configured to model said object data into any suitable form for controlling said system to manufacture a new object corresponding said imaged one} (¶ 18-26+, 56-62+); and a central processing module operatively connected to the 3D surface scanning module and the manufacturing module, the central processing module being operable to receive the image, generate a 3D model {herein the system may perform the modelling with the help of the data processing means 522 } corresponding to an artificial covering and based on the image, and convey the 3D model to the manufacturing module for manufacturing the artificial covering (¶ 49+); wherein the manufacturing module {herein nail design modeling unit 509} is configured to add a device to the artificial covering during manufacturing thereof (¶ 59-64+).
Papshev also teaches that the manufacturing module is configured to add a medicinal ingredient {herein medical treatment or curing medium for curing any fungi} into the artificial covering during manufacturing thereof (¶ 8-9+).
Re Claim 9: Papshev teaches system and method, wherein the 3D surface scanning module comprises at least one sensor of a first type operable to capture shapes {herein the shape information providing means 107} of the anatomical surface of the users and at least one sensor of a second type {herein the second system is configured to produce the object of the nail} operable to capture surface features of the anatomical surface of the user (¶ 45+).
Re Claim 10: Papshev teaches system and method, wherein the manufacturing module is operable to add at least one medicinal ingredient {herein medical treatment or curing medium for curing any fungi} to the manufactured artificial covering, and wherein the central processing module is operable to select the medicinal ingredient based on a medical condition diagnosed for the user (¶ 8-9+).
Re Claim 11: Papshev teaches system and method, wherein the system is configured to manufacture a plurality of the artificial coverings {herein covering member 401} for respective anatomical surfaces of the user (¶ 57+).
Re Claim 12: Papshev teaches system and method, wherein the manufacturing module is configured to use one or more techniques selected from the group consisting of additive manufacturing {herein Gels and additives can be applied}, extrusion, light polymerized manufacturing, powder bed manufacturing, laminated manufacturing, wire fed manufacturing, Stereolithography (SLA), Digital Light Processing (DLP), Fused Deposition Modeling (FDM), Selective Laser Sintering (SLS), Selective Laser Melting (SLM), Electronic Beam Melting (EBM) and Laminated Object Manufacturing (LOM) (¶ 57+).
Re Claim 13: Papshev teaches system and method, wherein the manufacturing module comprises a 3D printing module 102/515 (¶ 42+, 56-59+).
Re Claim 14: Papshev teaches system and method, wherein the device comprises a sensor {herein means of detecting curvature of the nail or the edge of the mask} (¶ 10-11+).
Re Claim 15: Papshev teaches system and method, wherein the manufacturing module comprises an embedder {herein interpreted as dispenser 201 may use multiple dispenser syringes for different primer} that is configured to embed the device into the artificial covering during manufacturing thereof (¶ 54+).
Re Claim 16: Papshev teaches system and method, wherein the device is embedded within a thickness of the artificial covering {herein means to control the operation of the manipulation means, such as operational parameter, e.g. coordinated movements, size or amount of the dose of different material} (¶ 19+).
Re Claims 17 and 19: Papshev teaches system and method, wherein the artificial covering is configured for use with a human as the user, and the anatomical surface is a part of a hand or a foot of the user (¶ 31+).
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Papshev et al. (US 2016/0309877) in view of Niedermann (US 2015/0213352 A).
The teachings of Papshev have been discussed above. Papshev teaches an RFID tag (¶ ).
Papshev fails to specifically teach that the device comprises an RFID chip.
Niedermann teaches artificial fingernail or toe nail with an electronic transponder, wherein the device comprises an RFID chip 2 (see fig.# 1; ¶ 14+).
In view of Niedermann’s teachings, it would have been obvious to an artisan of ordinary skill in the art at the time the invention was made to employ into the teachings of Papshev that the device comprises an RFID chip so as to enable means of wireless receiving/storing and transmitting user’s personal information/data. Such modification would be beneficial by allowing interrogation and/or displaying of medical data of the user onto an external reader and thereby assisting concerned professional for making proper decisions either in manufacturing the artificial nail or providing care to the user based on said medical conditions.
Allowable Subject Matter
Claims 3-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to specifically teach the central processing module is configured to generate medical data by correlating identified predetermined features of the user’s anatomical surface with known medical conditions, in order to diagnose a medical condition of the user which is known to exhibit the identified feature as a symptom. These limitations in conjunction with other limitations in the claimed invention were not shown by the prior art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Felzer et al. (US 2018/0242708) teaches apparatus and method for electronic artificial nail.
Cassion et al. (US 11,503,892) teaches illuminated press on nail.
Shiga et al. (US 2018/0365456) teaches information processing system, unit and method.
Sun et al. (US 2008/0091121) teaches system and method for detecting a force applied to a finger.
Kikuchi (JP 2000311194 A) teaches system for authenticating individual.
Kawamura (JP 2016126792 A) teaches support requiring person confirmation tool.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWYN LABAZE whose telephone number is (571)272-2395. The examiner can normally be reached 8:30AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. STEVE PAIK can be reached at 571-272-2404. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWYN LABAZE/Primary Examiner, Art Unit 2876