The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
FINAL REJECTION
The merits of this case have been carefully reexamined in light of applicant's response received 3/03/2026. It is the Examiner's position that the specification objection and some of the rejection of record under 35 USC § 112 (a)(b) has been overcome by applicant's amendment. However, in light of this amendment, the claim now necessitates the FINAL rejection under 35 USC 112 (a) & , 35 USC 112 a&b set forth below.
Claim Rejection - 35 U.S.C. § 112 A
The claim is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement thereof since the needle of microneedling pen is not supported by the original disclosure. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that the inventor was in possession of the design now claimed at the time the application was filed. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
Specifically, there is no support in the original disclosure :
A. In the original Fig. 1.3-1.4 a solid line highlighted by A. was illustrated, however, in the replacement Fig. 1.4 the corresponding line element is surface shading.
B. In the original Fig. 1.4 a solid line highlighted by B. was illustrated, however, in the replacement Fig. 1.4, the corresponding line element is surface shading.
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Annotated Fig. 1.4 & replacement Fig. 1. 4
C. In the original Fig. 1.5 a solid line semi-circle highlighted by C. was illustrated, however, in the replacement Fig. 1.5 the corresponding semi-circle element is surface shading.
D. In the original Fig. 1.5 a solid line semi-circle highlighted by D. was illustrated, however, in the replacement Fig. 1.5 the corresponding semi-circle element is surface shading.
E. In the original Fig. 1.5, the U-shaped element highlighted by E is illustrated as being intersected by two small lines, however in the replacement Fig. 1.5 no small lines intersect in the corresponding U-shaped element.
F. In the original Fig. 1.5 a solid line circle highlighted by F. was illustrated, however, in the replacement Fig. 1.5 the corresponding circle element is surface shading.
G. In the original Fig. 1.5 a solid line circle highlighted by G. was illustrated, however, in the replacement Fig. 1.5 the corresponding circle element is surface shading.
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Annotated Fig. 1.5 & replacement Fig. 1. 5
H. In the original Fig. 1.6, the oval-shaped element highlighted by H. was illustrated in two lines, intersected by eight small lines. However, in the replacement Fig. 1.6 only a single broken line is illustrated in the corresponding place.
I. In the original Fig. 1.6 a solid line highlighted by I. was illustrated, however in the replacement Fig. 1.6, surface shading is illustrated in the corresponding place.
J. In the original Fig. 1.6 a solid line highlighted by J. was illustrated, however in the replacement Fig. 1.6, surface shading is illustrated in the corresponding place.
K. In the original Fig. 1.6 a solid line highlighted by K. was illustrated, however in the replacement Fig. 1.6, no line is illustrated in the corresponding place.
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Annotated Fig. 1.6 & replacement Fig. 1. 6
This is not an exhaustive list of elements that constitute new matter with the replacement drawings. To overcome this rejection, applicant may attempt to demonstrate (by means of argument or evidence) that the original disclosure establishes that the inventor had possession of the amended claim
Claim Rejections - 35 USC § 112
The claim is rejected under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails 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.
In Fig. 1.6, the circle, trapezoid, rectangle, and oval shapes highlighted in gray are unknown. Applicant replaced the drawing where the circle and oval elements were in broken lines (in white below), however the rest of the area highlighted in gray is still unknown. With no other views of the bottom of the needle of microneedling pen, it is open to conjecture whether these elements are surface indicia, protrusions, or indentations.
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Annotated Fig. 1.6
In order to overcome this rejection, applicant should consistently illustrate the needle of microneedling pen elements throughout the drawings. Applicant may also overcome this rejection by placing the unknown elements into broken lines, and thus disclaiming them. Additionally, these broken lines should be translated to the rest of the drawing disclosure.
Applicant is advised that all of the preceding issues must be addressed to overcome this rejection,without the introduction of anything that was not shown in the original disclosure (i.e., new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121 ), either by the addition or removal of features of the claimed design.
New matter is anything (structure, features, elements) which was not apparent (seen) in the drawings asoriginally filed. It is possible for new matter to consist of the removal as well as the addition of structure,features or elements. Further, the clarification of drawings with poor line quality can introduce new matter.
Notes on Correspondence
Please note that, at this time, the examiner is prohibited from initiating or returning international telephone calls. If applicant wishes to communicate by telephone, the examiner may be reached by email to arrange a time for a telephone interview: gilbert.ford@uspto.gov. The merits of the application may not be discussed via email unless an appropriate authorization for email communication is placed in the U.S. application file at the USPTO. For those applications where applicant wishes to communicate with the examiner via Internet communications, e.g., email or video conferencing tools, the following is a sample authorization form which may be used by applicant:
"Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file."
Please see MPEP 502.03 II (Article 5) for more details.
Discussion of the Merits of the Case
A Power of Attorney (POA), filed with the USPTO in the specific case, is required whether or not attorney for the applicant has POA authority in a foreign IP office. Examiner may not discuss the merits or specifics of a case without a proper POA on file. https://www.usDto.aov/web/forms/sb0080.Ddf
The POA form submitted in the international phase is not effective for purposes of the US. The proper form is available at: https://www.uspto.gov/web/forms/sb0080.pdf
When Responding to Official USPTO Correspondence
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Hand-carry to USPTO's Alexandria, Virginia Customer Service Window
https://www.uspto.gov/patents-maintaining-patent/responding-office-actions
Conclusion
In conclusion the claim stands Finally Refused under 35 U.S.C. § 112, (a) and (b).
Applicant is reminded that any reply to this Refusal must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GILBERT B FORD whose telephone number is (571)272-9218. The examiner can normally be reached Mon-Friday 9AM-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lilyana Bekic can be reached at (571) 272-7425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GF/
Examiner, Art Unit 2944
/JOSEPH KUKELLA/Primary Examiner, Art Unit 2961
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