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 .
Information Disclosure Statement
All of the I.D.S.’s have been considered. Some of the I.D.S.’s have NPL documents that have been lined through. It is unclear how the objection/rejection/allowance of claims with different combination of limitations is relevant to the instant application. Without any reasoning provided by Applicant, these NPL documents have not be considered.
Election/Restrictions
Applicant’s election without traverse of group II in the reply filed on 1-20-26 is acknowledged.
Specification
The disclosure is objected to because of the following informalities:
The abstract appears to be directed at features not incorporated by the claims.
Paragraph [0001] needs to be amended to indicate that 16/025,128 is now U.S. Patent 11,007,659 and 17/321,710 is now U.S. Patent 11,964,405.
Paragraph [0001] needs to include application 18/642,088 as it appears to have a relationship with the parent applications and the instant application.
The first and second cutting members need be discussed (see rejections below).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 26-39 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With regards to claim 26 and the specification, the “second cutting member” disclosure is unclear. It is unclear what structure represents the second cutting member. In light of the second cutting member, it is unclear what structure represents the first cutting member. Is the first cutting member cartridge 150 or is it blade 151? While there is support for multiple blades there does not appear to be support for multiple cartridges. However, claim 24 also discloses the sensor detects when the cutting member transverses the skin but claim 26 does not link the second cutting member in with this function. If the second cutting member is an additional blade in the same cartridge, it would transverse the skin of the user in the same manner and time as the first cutting member. What also adds to the confusion is the handle is operably coupled differently to the second member than to the first member. Further definition is needed.
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 24 and 26-39 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.
With regards to claim 24, the “instruction to adjust operation of the cutting member” is unclear. Does the system received the instruction and adjust operation or is instruction intended to be seen and understood by the user?
With regards to claim 24, the term “instruction” is unclear. It is unclear what can and cannot be considered “instruction”.
With regards to claim 24, it is unclear what structure allows for the microcontroller to “generate instruction to adjust operation of the cutting member”. It is believed that the microcontroller generates a signal which goes to the feedback indicator and it is the indicator generates an adjustment instruction. Claim 29 has the same issue. Claim 34 has the same issue with the display function.
With regards to claim 26, it is unclear what structures defines the first and second cutting members (see rejection above). It is unclear if the coupling between the first member and the handle and the coupling between the handle and the second member is what is different or if the first cutting member and the second cutting member are different. What structures define the differences?
With regards to claim 27, claim 24 discloses “generate an instruction to adjust operation”. As written, the feedback indicator does not play a role in the instruction which does not appear to be supported. Without the feedback indicator, it is unclear how the instruction is transmitted?
With regards to claim 28, as written, the microcontroller generates an instruction and separately generate a signal to the feedback indicator. The signal is unrelated to the generates an instruction function. Without the signal from the microcontroller to the indicator, the instruction cannot be transmitted or illuminated by the indicator. Claim 35 has the same issue.
With regards to claim 29, the phrase “a stroke of the shaving system” is unclear. It is unclear if the stroke represents the same or a different function than the “cutting member transversing the skin”. As written, the system transverses the skin and separate strokes across the region. It appears these functions are one in the same. Claim 39 has the same issue.
With regards to claim 29, it is unclear what structure takes part in the stroke. As written, the first and second cutting members do not play a role and it is unclear what other type of stroke can be completed where the cutting members are not utilized. It is believed that the cutting members are involved in the same manner as when the cutting member transverses the skin of claim 24.
With regards to claim 29, it is unclear what can and cannot be considered a stroke characteristic.
With regards to claims 31 and 32, it is unclear what structures of the system are associated with the load, optics, movement, friction, temperature, count, direction, pressure, duration and acceleration. Are the cutting members the structures?
With regards to claim 33, it is unclear what structure allows the cutting member to be associated with characteristic. Claim 29 depends on claim 26 which discloses the first and second cutting member but does not link the cutting members with the second sensor.
With regards to claim 33, the phrase “the cutting member” is unclear. It is unclear which of the cutting members is being referenced. Claim 39 has the same issue.
With regards to claim 37, the phrase “a feedback indicator configured to generate an indication based on the force detected by the second sensor” is unclear. It is unclear what structure allows for the indicator to cooperate with the second sensor without the microcontroller. Claim 37 goes on the disclose that the microcontroller connects the indicator and the second sensor and describes the functionality which is in addition to the function in the phrase above which is not supported. The portion “configured to generate an indication based on the force detected by the second sensor” should be deleted.
With regards to claim 39, what structure allows for the microcontroller to determine the density in a way that does not involve the sensor and the detected parameter?
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 24 is provisionally rejected on the grounds of nonstatutory obviousness-type double patenting as being unpatentable over claim 64 of copending Application No. 19/251,705 (reference application). Although the conflicting claims are not identical, they are not patentably distinct from each other because it is clear that all elements of claim 24 of the instant invention 19/312,503 are found in claim 64 of copending Application No. 19/251,705. The differences between claim 24 of 19/312,503 and claim claim 64 of copending Application No. 19/251,705 lies in the fact that copending Application No. 19/251,705 claim include many more features and is thus much more specific (for example, claim 64 requires a first force sensor and a feedback indicator). Thus claim 24 of 19/312,503 is in effect a “species” of the “generic” invention of claim 64 of copending Application No. 19/251,705. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 24 of 19/312,503 is anticipated by claim 64 of copending Application No. 19/251,705, it is not patentably distinct from claim 64.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims
It is to be noted that claims 26-39 have not been rejected over prior art. It may or may not be readable over the prior art but allowability cannot be determined at this time in view of the issues under 35 USC § 112. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In reSteele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON DANIEL PRONE whose telephone number is (571)272-4513. The examiner can normally be reached on Monday-Friday: 7:30 am-3:30 pm.
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10 February 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724