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 III in the reply filed on 1-26-26 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.
Appropriate correction is required.
Claim Objections
Claim 33 is objected to because of the following informalities:
On line 7, the phrase “associated with” should be replaced with “representative of”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 34-36 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 claims 34, 35, and 36, each of these claims depends from claim 26 but claim 26 already discloses the specific sensors of claims 34, 35, and 36. The dependency of these claims should go back to claim 24.
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.
Claims 24-32 and 34-36 are provisionally rejected on the grounds of nonstatutory obviousness-type double patenting as being unpatentable over claims 68-74 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 claims 24-32 and 34-36 of the instant invention 19/312,512 are found in claims 68-74 of copending Application No. 19/251,705. The differences between claims 24-32 and 34-36 of 19/312,512 and claims 68-74 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 68 requires a first force sensor and a feedback indicator). Thus claims 24-32 and 34-36 of 19/312,512 is in effect a “species” of the “generic” invention of claims 68-74 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 24-32 and 34-36 of 19/312,512 is anticipated by claims 68-74 of copending Application No. 19/251,705, it is not patentably distinct from claims 68-74.
Copending Application No. 19/251,705 claims 68-74 incorporate an alternate claim dependency. It would have been obvious to utilize any claim dependency including the one incorporated by the instant application because the shaving system is an invention incorporating all of these limitations as supported by the specification.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 24, 26, and 33 are provisionally rejected on the grounds of nonstatutory obviousness-type double patenting as being unpatentable over claims 24, 26, and 29-32 of copending Application No. 19/312,503 (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 claims 24, 26, and 33 of the instant invention 19/312,512 are found in claims 24, 26, and 29-32 of copending Application No. 19/312,503. The differences between claims 24, 26, and 33 of 19/312,512 and claims 24, 26, and 29-32 of copending Application No. 19/312,503 lies in the fact that copending Application No. 19/312,503 claims include many more features and is thus much more specific (for example, claim 26 requires a second cutting member). Thus claims 24, 26, and 33 of 19/312,512 is in effect a “species” of the “generic” invention of claims 24, 26, and 29-32 of copending Application No. 19/312,503. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since 24, 26, and 33 of 19/312,512 is anticipated by claims 24, 26, and 29-32 of copending Application No. 19/312,503, it is not patentably distinct from claims 24, 26, and 29-32.
Copending Application No. 19/312,503 claims 24, 26, and 29-32 incorporate an alternate claim dependency. It would have been obvious to utilize any claim dependency including the one incorporated by the instant application because the shaving system is an invention incorporating all of these limitations as supported by the specification.
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.
Claims 24-31 and 34-36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2009/076301.
With regards to claim 24, WO 2009/076301 discloses the same invention including a shaving system (page 4 line 2) having a handle (16), a cutting member operably coupled to the handle and configured to contact a region of skin (6), a sensor (20) configured to detect a parameter representative of a stroke of the shaving system across the region (page 4 lines 19-20), a microcontroller (24) operably connected to the sensor and configured to determine a stroke characteristic based on the detected parameter and generate a stroke performance indicator based on the determined stroke characteristic (claims 5 and 6).
With regards to claims 25-31 and 34-36, WO 2009/076301 discloses the stroke characteristic includes a stroke count (claim 6), the microcontroller being configured to generate the stroke performance indicator further based on a comparison between the stroke characteristic and a threshold characteristic (claim 5), the sensor is a load cell, an optical sensor, or a movement sensor (page 5 lines 1-7), the stroke characteristic is indicative of a remaining life of the cutting member (page 1 lines 22-27), the microcontroller is configured to generate a message to display the stroke performance indicator to a user (page 7 lines 17-29), a feedback indicator (28), the microcontroller is further configured to generate a signal to cause the feedback indicator to provide feedback representative of the stroke performance indicator (page 7 lines 17-29) includes an indicator display (28), and the stroke performance indicator is a quantitative indicator (claim 5).
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.
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2009/076301 in view of Jacobsen (6,634,104).
With regards to claim 25, WO 2009/076301 fails to disclose the microcontroller is further configured to generate audio feedback to a user.
Jacobsen teaches it is known in the art of shaving systems to incorporate audio feedback (claim 15). It would have been obvious to have utilized any known and reasonable means to communicate with the user. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to have replaced the communication means of WO 2009/076301 with the audio feedback as taught by Jacobsen, because the substitution of one known element for another would have yielded predictable results and all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results.
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: 7:00 am-3:00 pm.
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12 February 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724