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 .
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.
Claims 1-3, 5, 12, 17, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rosenberg et al. (US 5,910,147) (“Rosenberg”).
Regarding claim 1, Rosenberg discloses (Figures 1-8) an extractor for treating a skin condition, comprising: an elongated handle (14) having a distal end (22); and a head coupled to the distal end, the head having an inner layer (12) surrounded by an outer layer (23), the inner layer (12) forming a rigid loop that couples to the elongated handle, the outer layer (23) including an elastomeric covering that at least partially surrounds the rigid loop to define a circular aperture at the head (Column 4, lines 52-58), wherein the elastomeric covering is configured to form the circular aperture (28) having a first diameter, and the elastomeric covering is capable of forming the circular aperture with a second diameter in response to applying a vertical force to a skin surface through the elongated handle (Column 4, lines 52-58), the second diameter being smaller than the first diameter, and wherein the elastomeric covering having the second diameter is capable of applying an inward pinching pressure to the skin condition encircled by the head.
Regarding claim 2, Rosenberg discloses that the inner layer (12) includes a rigid material (Column 4, lines 42-43; Column 5, lines 7-9) compared to the outer layer including the elastomeric covering (Column 4, lines 52-58).
Regarding claim 3, the elastomeric covering disclosed by Rosenberg is capable of deforming by flattening inward relative to the rigid loop in response to the vertical force (Column 4, lines 52-58), and wherein the inward pinching pressure is circumferentially applied by the head around the skin condition (Column 4, lines 32-34).
Regarding claim 5, Rosenberg discloses (Figure 4) that the rigid loop has a top side (26) and a bottom side (29) opposing the top side, the bottom side configured to face skin surrounding the skin condition (Figure 1b), the bottom side of the rigid loop being surrounded by the outer layer (23), and at least a portion of the top side being at least partially exposed (Figure 4).
Regarding claim 12, Rosenberg discloses (Figures 1-8) an extractor for treating a skin condition, comprising: an elongated handle (14) having a distal end (22); and a head coupled to the distal end, the head having an inner layer (12) surrounded by an outer layer (23), the inner layer forming a rigid loop that couples to the elongated handle, the outer layer (23) including an elastomeric covering that at least partially surrounds the rigid loop and defines an aperture at the head (Column 4, lines 52-58), wherein the elastomeric covering is configured to form the aperture (28) having a first dimension, and the elastomeric covering is capable of forming the aperture having a second dimension in response to applying a vertical force to a skin surface through the elongated handle (Column 4, lines 52-58), the second dimension being smaller than the first dimension, and wherein the elastomeric covering having the second dimension is capable of applying an inward pinching pressure to the skin condition surrounded by the head.
Regarding claim 17, Rosenberg discloses (Figure 4) that the rigid loop has a top side (26) and a bottom side (29) opposing the top side, the bottom side configured to face skin surrounding the skin condition (Figure 1b), the bottom side of the rigid loop being surrounded by the outer layer (23), and at least a portion of the top side being at least partially exposed (Figure 4).
Regarding claim 19, Rosenberg discloses (Figure 4) a cross-section of the inner layer (12) is non-circular.
Regarding claim 20, Rosenberg discloses (Figure 4) a cross-section of the outer layer (23) is non-circular.
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.
5. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg et al. (US 5,910,147) (“Rosenberg”).
Regarding claim 4, Rosenberg teaches that the elastomeric covering is bonded to the inner layer by dual-shot injection molding.
The claimed phrase "the elastomeric covering is bonded to the inner layer by dual-shot injection molding” is being treated as a product by process limitation. As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. § 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Rosenberg discloses that the elastomeric covering is fastened to the inner layer. Rosenberg is silent regarding how the elastomeric covering is fastened. However, since Rosenberg teaches that the outer layer includes an elastomeric covering that at least partially surrounds the rigid loop to define a circular aperture at the head, and that the elastomeric covering is bonded to the inner layer, it appears that the product taught by Rosenberg would be the same or similar as that claimed.
Claims 6, 7, 10, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg et al. (US 5,910,147) (“Rosenberg”) in view of Kang (WO 2008/097043 A1).
Regarding claim 6, Rosenberg discloses the invention substantially as claimed. However, Rosenberg fails to disclose that the outer layer fully encapsulates the inner layer.
In the same field of endeavor, Kang teaches (Figures 14-18) an extractor for treating a skin condition, comprising: an elongated handle (311) having a distal end; and a head (312) coupled to the distal end, the head having an inner layer (312d) surrounded by an outer layer (320), the outer layer including a covering that is detachable and fully encapsulates the inner layer to define an aperture at the head, wherein the covering is configured to form the aperture.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the elastomeric covering disclosed by Rosenberg to be detachable and to fully encapsulate the inner layer, as taught by Kang. This modification would allow the outer layer, which is contaminated by a patient’s diseased part when the acne is removed, to be disposed after the procedure and the handle to be reused. As modified, the apparatus is advantageous in that it may be reused without causing a sanitary problem, and can easily be used to remove acne (Kang, paragraph 30).
Regarding claim 7, Rosenberg discloses the invention substantially as claimed. However, Rosenberg fails to disclose that the elastomeric covering is a continuous sleeve that fully circumferentially surrounds the inner layer.
In the same field of endeavor, Kang teaches (Figures 14-18) an extractor for treating a skin condition, comprising: an elongated handle (311) having a distal end; and a head (312) coupled to the distal end, the head having an inner layer (312d) surrounded by an outer layer (320), the outer layer including a covering that is a continuous sleeve that fully circumferentially surrounds the inner layer to define an aperture at the head, wherein the covering is configured to form the aperture.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the elastomeric covering disclosed by Rosenberg to be detachable and to be a continuous sleeve that fully circumferentially surrounds the inner layer, as taught by Kang. This modification would allow the outer layer, which is contaminated by a patient’s diseased part when the acne is removed, to be disposed after the procedure and the handle to be reused. As modified, the apparatus is advantageous in that it may be reused without causing a sanitary problem, and can easily be used to remove acne (Kang, paragraph 30).
Regarding claim 10, Rosenberg discloses the invention substantially as claimed. However, Rosenberg fails to disclose that the elastomeric covering is configured to decouple from the rigid loop.
In the same field of endeavor, Kang teaches (Figures 14-18) an extractor for treating a skin condition, comprising: an elongated handle (311) having a distal end; and a head (312) coupled to the distal end, the head having an inner layer (312d) surrounded by an outer layer (320), the outer layer comprising a covering that is configured to decouple from the inner layer.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the elastomeric covering disclosed by Rosenberg to be configured to decouple from the rigid loop, as taught by Kang. This modification would allow the outer layer, which is contaminated by a patient’s diseased part when the acne is removed, to be disposed after the procedure and the handle to be reused. As modified, the apparatus is advantageous in that it may be reused without causing a sanitary problem, and can easily be used to remove acne (Kang, paragraph 30).
Regarding claim 14, Rosenberg discloses the invention substantially as claimed. However, Rosenberg fails to disclose that the aperture is tapered and curvilinear, the aperture having a first end of larger radius and a second end of smaller radius.
In the same field of endeavor, Kang teaches (Figures 3-5, 10-12) an extractor for treating a skin condition, comprising: an elongated handle (110) having a distal end; and a head (120) coupled to the distal end. Kang teaches that the head has an aperture (12) that is tapered and curvilinear, the aperture having a first end (12a) of larger radius and a second end (12d) of smaller radius.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the aperture disclosed by Rosenberg to be tapered and curvilinear, the aperture having a first end of larger radius and a second end of smaller radius, as taught by Kang. This modification would provide an aperture shape that allows removal of pimples of different sizes, shapes, and positions (Kang, paragraph 69).
Regarding claim 16, Rosenberg discloses the invention substantially as claimed. However, Rosenberg fails to disclose that the elastomeric covering is a continuous sleeve that fully surrounds the inner layer.
In the same field of endeavor, Kang teaches (Figures 14-18) an extractor for treating a skin condition, comprising: an elongated handle (311) having a distal end; and a head (312) coupled to the distal end, the head having an inner layer (312d) surrounded by an outer layer (320), the outer layer including a covering that is a continuous sleeve that fully surrounds the inner layer to define an aperture at the head, wherein the covering is configured to form the aperture.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the elastomeric covering disclosed by Rosenberg to be detachable and to be a continuous sleeve that fully surrounds the inner layer, as taught by Kang. This modification would allow the outer layer, which is contaminated by a patient’s diseased part when the acne is removed, to be disposed after the procedure and the handle to be reused. This modification would prevent the inner layer from contamination during the procedure. As modified, the apparatus is advantageous in that it may be reused without causing a sanitary problem, and can easily be used to remove acne (Kang, paragraph 30).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg et al. (US 5,910,147) (“Rosenberg”) in view of Britland (US 2020/0078035 A1).
Regarding claim 8, Rosenberg discloses the invention substantially as claimed. However, Rosenberg fails to disclose that a skin-contacting surface of the elastomeric covering includes protrusions or recesses that increase friction against skin.
Britland teaches (Figures 15-21) that it is known in the art for a skin-contacting surface to include protrusions or recesses that increase friction against skin (paragraphs 0079-0080).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the skin-contacting surface of the elastomeric covering disclosed by Rosenberg to have protrusions or recesses that increase friction against skin, as taught by Britland. This modification would provide an aid in gripping the skin the during the procedure (Britland, paragraphs 0079-0080).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg et al. (US 5,910,147) (“Rosenberg”) in view of Lampson (US 2013/0317314 A1).
Regarding claim 9, Rosenberg discloses the invention substantially as claimed. However, Rosenberg fails to disclose that the head is configured to decouple from the elongated handle.
In the same field of endeavor, Lampson teaches (Figures 6-9e) an extractor for treating a skin condition comprising an elongated handle (20) having a distal end (22); and a head (32) coupled to the distal end, wherein the head is configured to decouple (via 33) from the elongated handle (paragraph 0029).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the head disclosed by Rosenberg to be configured to decouple from the elongated handle, as taught by Lampson. This modification would allow different extractor heads to be attached to the elongated handle to treat different skin conditions (Lampson, paragraph 0031 and Figures 9a-9e).
Claims 13 and 15 rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg et al. (US 5,910,147) (“Rosenberg”) in view of Hall (US 6,475,172 B1).
Regarding claim 13, Rosenberg discloses the invention substantially as claimed. However, Rosenberg fails to disclose that the aperture is elliptical.
Hall teaches (Figures 1-5) an analogous extractor for treating a surface of human tissue. Hall teaches that the extractor comprises an elongated handle (202) having a distal end; and a head (212) coupled to the distal end, the head forming a rigid loop that couples to the elongated handle and defines an aperture at the head. Hall teaches that the aperture can be triangular in shape, but can have any desired shape such as square, rectangular, oval, or round (Column 4, lines 50-54).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the aperture disclosed by Rosenberg to be elliptical, as taught by Hall. This modification provides an aperture shaped for easy removal of debris and to hold debris so that it can be seen by the user (Hall, Column 5, lines 3-6).
Regarding claim 15, Rosenberg discloses the invention substantially as claimed. However, Rosenberg fails to disclose that the aperture is triangular.
Hall teaches (Figures 1-5) an analogous extractor for treating a surface of human tissue. Hall teaches that the extractor comprises an elongated handle (202) having a distal end; and a head (212) coupled to the distal end, the head forming a rigid loop that couples to the elongated handle and defines an aperture at the head. Hall teaches that the aperture can be triangular in shape, but can have any desired shape such as square, rectangular, oval, or round (Column 4, lines 50-54).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the aperture disclosed by Rosenberg to be triangular, as taught by Hall. This modification provides an aperture shaped for easy removal of debris and to hold debris so that it can be seen by the user (Hall, Column 5, lines 3-6).
Allowable Subject Matter
Claims 11 and 18 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: Claims 11 and 18 both recite that the elastomeric covering includes a first portion and a second portion, the first portion having a first compressibility and the second portion having a second compressibility, the second compressibility being different from the first compressibility. These limitations, in combination with the limitations of claims 1 or 12, are not disclosed or suggested in the prior art of record. The cited Rosenberg reference fails to disclose or suggest the elastomeric covering including a first portion and a second portion, the first portion having a first compressibility and the second portion having a second compressibility, the second compressibility being different from the first compressibility. The other references cited also fail to disclose or suggest these features.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Kang (US 2006/0155306 A1; Figures 1-7) and Marshall (US 2022/0240965 A1; Figures 1 and 2) disclose similar skin extractors.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAN D KNAUSS whose telephone number is (571)272-8641. The examiner can normally be reached M-F 12:30-8:30.
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/C.D.K/Examiner, Art Unit 3771
/DIANE D YABUT/Primary Examiner, Art Unit 3771
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