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 .
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. 11,925,780.
Although the claims at issue are not identical, they are not patentably distinct from each other because patent claim 1 discloses a method of treating a skin surface of a subject (Col. 29, line 18), comprising: conducting a first skin treatment on the skin surface of the subject at a facility (Col. 29, lines 20-21), wherein the first skin treatment comprises using a handpiece (Col. 29, lines 21-23) in fluid communication with a vacuum source (Col. 29, lines 50-56) and a material source, the material source containing a first treatment material (Col. 29, lines 24-37: the cartridge is the source of fluids in the patent, and corresponds to the material source); at least partially exfoliating the skin surface at the facility by contacting a distal end of the handpiece with the skin surface and moving the distal end relative to the skin surface (Col. 29, lines 38-45); wherein the at least partially exfoliating the skin surface at the facility comprises creation of suction along the distal end of the handpiece by activating the vacuum source (Col. 29, lines 46-56); and wherein suction created along the distal end helps transfer a volume of the first treatment material from the material source to the skin surface and enhances the first skin treatment (Col. 29, lines 23-37 and 50-56: the handpiece tip is in fluid communication with both the vacuum source and the interior of the cartridge, and therefore the applied suction is also applied to the interior of the cartridge to draw fluids out of it); and instructing the subject to conduct a second skin treatment, wherein the second skin treatment is performed by the subject following the first skin treatment and away from the facility (Col. 29, lines 62-65); wherein the second skin treatment comprises delivering a volume of a second treatment material to the skin surface (Col. 29, line 65 – Col. 30, line 6).
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Ignon et al. (US 2007/0156124 A1) in view of Yu et al. (US 5,834,510 A).
Regarding claim 1, Ignon discloses a method of treating a skin surface of a subject (¶0018), comprising: conducting a first skin treatment on the skin surface of the subject at a facility (¶0018, 0066, and 0074), wherein the first skin treatment comprises using a handpiece (Figs. 1-3, feat. 18; ¶0066-0067, 0074-0075, and 0078) in fluid communication with a vacuum source (Figs. 2A-3, feat. 52; ¶0078, 0081, 0086, 0100: vacuum may be applied through line 52) and a material source (Figs. 2A-3, feat. 50; ¶0078-0079 and 0086: fluid may be delivered from line 50), the material source containing a first treatment material (¶0068, 0081, and 0086); at least partially exfoliating the skin surface at the facility by contacting a distal end of the handpiece with the skin surface and moving the distal end relative to the skin surface (Figs. 2A-3, feat. 34; ¶0079-0081 and 0086); wherein the at least partially exfoliating the skin surface at the facility comprises creation of suction along the distal end of the handpiece by activating the vacuum source (¶0100); wherein suction created along the distal end helps transfer a volume of the first treatment material from the material source to the skin surface and enhances the first skin treatment (¶0100).
Ignon does not disclose instructing the subject to conduct a second skin treatment, wherein the second skin treatment is performed by the subject following the first skin treatment and away from the facility, wherein the second skin treatment comprises delivering a volume of a second treatment material to the skin surface.
Yu teaches methods for treating the skin (Col. 2, lines 39-42) comprising the topical application of 2-hydroxycarboxylic acids and related compounds (Col. 2, line 43 – Col. 3, line 6). Yu teaches treatment methods in which the patients treat themselves at home with a low to intermediate concentration composition (Col. 14, lines 9-61), in which the patients are treated at a facility with a high concentration or full-strength composition (Col. 14, line 62 – Col. 15, line 23), or in which office treatments with high concentration compositions are alternated with home treatments with low to intermediate concentration compositions (Col. 15, lines 24-44). When performing home treatments, patients receive instructions for how to use the compositions (Col. 14, lines 21-36). Yu teaches that combining office and home treatments may advantageously lead to more rapid therapeutic results (Col. 14, lines 9-19; Col. 15, lines 24-44). Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method disclosed by Ignon so that it comprises instructing the subject to conduct a second skin treatment, wherein the second skin treatment is performed by the subject following the first skin treatment and away from the facility, wherein the second skin treatment comprises delivering a volume of a second treatment material to the skin surface in order to achieve rapid therapeutic results as taught by Yu.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARJUNA P CHATRATHI whose telephone number is (571)272-8063. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Al-Hashimi can be reached at 5712727159. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ARJUNA P CHATRATHI/Examiner, Art Unit 3781
/SARAH AL HASHIMI/Supervisory Patent Examiner, Art Unit 3781
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