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 Objections
Claim 22 is objected to because of the following informalities:
In claim 22, line 18, “the leg-receiving channel” is read as “a leg-receiving channel”.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-4, 6-7, 9-11, 14, 16, 22 and 24-26 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 1 recites “the upper attachment member and the lower attachment member do not contact directly the leg”, claim 9 recites “the upper attachment member and the lower attachment member do not contact directly the leg” and claim 22 recites “wherein said at least one attachment member does not contact directly the leg”, which are directed to a human organism, i.e. “the leg”. It is suggested that the limitations should be changed to “the upper attachment member and the lower attachment member are configured not to contact directly the leg” in claim 1, “the upper attachment member and the lower attachment member are configured not to contact directly the leg” in claim 9 and “wherein said at least one attachment member is configured not to contact directly the leg” in claim 22.
Any remaining claims are rejected as depending from a rejected base claim.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 7, 9-11, 16, 22, 24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Ouellet (US 2022/0339523) in view of Litz (US 4633529).
Regarding claim 1, Ouellet teaches a leg pad (fig. 1, leg pad 10) adapted for a hockey goaltender having a leg with a knee, a shin, a calf and a foot with an ankle and a forefoot, the leg pad being wearable on the leg to protect the leg, the leg pad comprising:
a pad body (fig. 1, skin 11 with core 12) adapted to be positioned adjacent to a front part of the leg, the pad body comprising an outer side (fig. 1, front portion 11FO) of the leg pad, a medial portion (annotated fig. 1 below) adapted to be positioned adjacent to a medial part of the leg, a lateral portion adapted (annotated fig. 1 below) to be positioned adjacent to a lateral part of the leg (fig. 1), a bottom portion (annotated fig. 1 below) to be positioned adjacent the forefoot and an inner side (fig. 1, para. [0033], rear portion 11RO) adapted to at least partially face the shin, the pad body further comprising medial and lateral wall portions (fig. 1, medial and lateral wall portions extending between portion 11FO and portion 11RO) extending between the outer and inner sides of the pad body and defining therewith a protective padding receiving space (fig. 1, a space for receiving core 12);
a cuff member (figs. 1-2, inner flaps 13, 14) extending rearwardly from the inner side (fig. 2), the cuff member extending from the medial portion of the pad body toward the lateral portion of the pad body and being adapted to be positioned at least partially on the calf (fig. 1);
an attachment member (fig. 1, inner strap 16) extending from the cuff member and adapted to secure the cuff member to the calf, the attachment member extending from the medial portion of the pad body towards the lateral portion of the pad body (figs. 1-2), and
wherein the attachment member is capable of not contacting directly the leg (when there is another layer of another garment between the leg of the user and the attachment member, such as pants, socks);
a lateral protective panel (fig. 1, outer flap 13) extending rearwardly from the inner side and not extending from the lateral wall portion of the pad body (fig. 1, para. [0035]), the lateral protective panel configured to extend along a lateral side of the calf and adapted to at least partially cover the lateral side of the calf (fig. 1);
a medial protective panel (fig. 2, outer flap 14) extending rearwardly from the inner side (para. [0036]), the medial protective panel configured to extend along a medial side of the calf and being adapted to at least partially cover the medial side of the calf; and
an outer strap (figs. 1-2, outer strap 16) to bring toward each other and at least partially assemble the medial and lateral protective panels in an assembled configuration for affixing the medial and lateral protective panels to the leg, wherein the medial and lateral protective panels define an outer channel (fig. 1, para. [0037]);
wherein the attachment member affixes the cuff member to the leg in the assembled configuration (fig. 1);
wherein, in use, the cuff member and a portion of the inner side define a longitudinal leg-receiving channel in which the calf is at least partially received (fig. 1), wherein the cuff member at least partially surrounds the calf and wherein the cuff member substantially conforms to a contour of the leg within the leg-receiving channel to tightly maintain the leg therein (fig. 1, para. [0037]) while allowing rotation of the leg and/or movement of the leg between a standing position and a knelt position (para. [0002], as the pad is for ice hockey goalkeepers, the pad allows rotation of the leg and/or movement of the leg between a standing position and a knelt position), and
wherein the leg-receiving channel extends at least partially within the outer channel at least partially delimited by the medial and lateral protective panels in the assembled configuration (fig. 1).
Ouellet does not teach the attachment member comprises an upper attachment member and a lower attachment member.
However, in the same field of endeavor, Litz teaches a shin guard (fig. 1, guard 10) comprising a front plate and the liner (annotated fig. 2 below) extending rearwardly from the inner side of the front plate. The liner comprises an upper attachment member (fig. 1, upper strap 20) extending from the liner and adapted to secure the liner to an upper part of the calf, and a lower attachment member (fig. 1, lower strap 20) extending from the liner and adapted to secure the liner to a lower part of the calf, the upper and lower attachment members extending from the medial portion of the pad body through respective upper and lower rings (fig. 6, rings 96) positioned on the lateral portion of the pad body.
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to add one more strap to the inner flap of Ouellet as suggested by Litz for the benefit of further securing the device to the user’s leg in a simple and reliable way (Litz, column 1, lines 54-66).
It is noted that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See MPEP 2144.04, section VI, sub section B.
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Regarding claim 2, the modified structure Ouellet-Litz teaches the cuff member comprises a medial cuff member (Ouellet, inner flap 14) extending rearwardly from a medial portion of the inner side and a lateral cuff member (Ouellet, inner flap 13) extending rearwardly from a lateral portion of the inner side, wherein considered in a direction substantially transversal to a longitudinal axis of the leg pad, the medial and lateral cuff members extend between the medial and lateral protective panels (annotated Ouellet figs. 1-2 above).
Regarding claim 3, the modified structure Ouellet-Litz teaches the medial cuff member comprises a medial side portion extending rearwardly from the medial portion of the inner side (Ouellet, fig. 2, a medial side portion of the inner flap 14) and wherein the medial side portion extends along the leg-receiving channel from a bottom edge to an upper edge along a longitudinal distance such that the medial side portion of the medial cuff member at least partially covers the calf (Ouellet, fig. 1), and the medial and lateral cuff members together are configured to conform to the contour of the leg within the leg-receiving channel (Ouellet, fig. 1, para. [0037], when in use, the inner flap 13 and the inner flap 14 are drawn together following the outline of the leg by straps 16).
Regarding claim 4, the modified structure Ouellet-Litz teaches the longitudinal distance is a first longitudinal distances and wherein the lateral cuff member (Ouellet, fig. 2, the inner flap 13) extends along the leg-receiving channel from a bottom edge to an upper edge along a second longitudinal distance such that the lateral cuff member at least partially covers the lateral side of the calf (Ouellet, figs. 1-2).
Regarding claim 7, the modified structure Ouellet-Litz teaches the bottom portion comprises a flat surface (annotated Ouellet fig. 1 below) extending from the medial portion toward the lateral portion, and wherein the flat surface of the bottom portion extends up to a point where a protuberance or projection is located, wherein said protuberance or projection is adapted to contact a lateral side of the foot and/or of skate worn by the goaltender.
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Regarding claim 9, Ouellet teaches a leg pad (fig. 1, leg pad 10) adapted for a hockey goaltender having a leg with a knee, a shin, a calf and a foot with an ankle and a forefoot, the leg pad being wearable on the leg to protect the leg, the leg pad comprising:
a pad body (fig. 1, skin 11 with core 12) adapted to be positioned adjacent to a front part of the leg, the pad body comprising an outer side (fig. 1, front portion 11FO) of the leg pad, a medial portion (annotated fig. 1 above) adapted to be positioned adjacent to a medial part of the leg, a lateral portion (annotated fig. 1 above) adapted to be positioned adjacent to a lateral part of the leg, a bottom portion (annotated fig. 1 above) to be positioned adjacent the forefoot and an inner side adapted to at least partially face the shin, the pad body further comprising medial and lateral wall portions extending between the outer and inner sides of the pad body (fig. 1, medial and lateral wall portions extending between portion 11FO and portion 11RO) and defining therewith a protective padding receiving space (fig. 1, a space for receiving core 12);
a cuff member (figs. 1-2, inner flaps 13, 14) comprising: a medial cuff member (fig. 2, inner flap 14) extending rearwardly from a medial portion of the inner side and a lateral cuff member (fig. 2, inner flap 13) extending rearwardly from a lateral portion of the inner side, the medial cuff member extending toward the lateral cuff member and being adapted to be positioned at least partially on the calf (fig. 1);
an attachment member (fig. 1, inner strap 16) extending from the cuff member and adapted to secure the cuff member to the calf, the attachment member extending from the medial portion of the pad body towards the lateral portion of the pad body (figs. 1-2);
a lateral protective panel (fig. 1, outer flap 13) extending rearwardly from the inner side and not extending from the lateral wall portion of the pad body (fig. 1, para. [0035]), the lateral protective panel configured to extend along a lateral side of the calf and adapted to at least partially cover the lateral side of the calf (fig. 1);
a medial protective panel (fig. 1, outer flap 14) extending rearwardly from the inner side (para. [0036]), the medial protective panel configured to extend along a medial side of the calf and being adapted to at least partially cover the medial side of the calf (fig. 1); and
an outer strap (figs. 1-2, outer strap 16) to bring toward each other and at least partially assemble the medial and lateral protective panels in an assembled configuration for affixing the medial and lateral protective panels to the leg (fig. 1), wherein the medial and lateral protective panels define an outer channel (fig. 1, para. [0037]),
wherein the attachment member is capable of not contacting directly the leg (when there is another layer of another garment between the leg of the user and the attachment member, such as pants, socks), and
wherein the cuff member is configured to be sandwiched between the leg and the medial and lateral protective panels in the assembled configuration (fig. 1),
wherein, in use, the medial and lateral cuff members and a bottom portion of the inner side define a longitudinal leg-receiving channel (fig. 1, para. [0037]) in which the calf is at least partially received, wherein the medial and lateral cuff members substantially conform to a contour of the leg within the leg-receiving channel to tightly maintain the leg therein (fig. 1, para. [0037]) while allowing rotation of the leg and/or movement of the leg between a standing position and a knelt position (para. [0002], as the pad is for ice hockey goalkeepers, the pad allows rotation of the leg and/or movement of the leg between a standing position and a knelt position), and
wherein the leg-receiving channel extends at least partially within the outer channel at least partially delimited by the medial and lateral protective panels in the assembled configuration (fig. 1).
Ouellet does not teach the attachment member comprises an upper attachment member and a lower attachment member.
However, in the same field of endeavor, Litz teaches a shin guard (fig. 1, guard 10) comprising a front plate and the liner (annotated fig. 2 above) extending rearwardly from the inner side of the front plate. The liner comprises an upper attachment member (fig. 1, upper strap 20) extending from the liner and adapted to secure the liner to an upper part of the calf, and a lower attachment member (fig. 1, lower strap 20) extending from the liner and adapted to secure the liner to a lower part of the calf, the upper and lower attachment members extending from the medial portion of the pad body through respective upper and lower rings (fig. 6, rings 96) positioned on the lateral portion of the pad body.
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to add one more strap to the inner flap of Ouellet as suggested by Litz for the benefit of further securing the device to the user’s leg in a simple and reliable way (Litz, column 1, lines 54-66).
It is noted that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See MPEP 2144.04, section VI, sub section B.
Regarding claim 10, the modified structure Ouellet-Litz teaches the medial cuff member comprises a medial side portion extending rearwardly from the medial portion of the inner side (Ouellet, fig. 2, a medial side portion of the inner flap 14), wherein the medial side portion extends along the leg-receiving channel from a bottom edge to an upper edge along a longitudinal distance such that the medial side portion at least partially covers the calf (Ouellet, fig. 1), and wherein the medial and lateral cuff members together are configured to conform to the contour of the leg within the leg-receiving channel (Ouellet, fig. 1, para. [0037], when in use, the inner flap 13 and the inner flap 14 are drawn together following the outline of the leg by straps 16).
Regarding claim 11, the modified structure Ouellet-Litz teaches the longitudinal distance is a first longitudinal distances and wherein the lateral cuff member (Ouellet, fig. 2, the inner flap 13) extends along the leg-receiving channel from a bottom edge to an upper edge along a second longitudinal distance such that the lateral cuff member at least partially covers the lateral side of the calf (Ouellet, figs. 1-2).
Regarding claim 16, the modified structure Ouellet-Litz teaches the bottom portion comprises a flat surface (annotated Ouellet fig. 1 above) extending from the medial portion toward the lateral portion, and wherein the flat surface of the bottom portion extends up to a point where a protuberance or projection is located, wherein said protuberance or projection is adapted to contact a lateral side of the foot and/or of skate worn by the goaltender.
Regarding claim 22, Ouellet teaches a leg pad (fig. 1, leg pad 10) adapted for a hockey goaltender having a leg with a knee, a shin, a calf and a foot with an ankle and a forefoot, the leg pad being wearable on the leg to protect the leg, the leg pad comprising:
a pad body (fig. 1, skin 11 with core 12) adapted to be positioned adjacent to a front part of the leg, the pad body comprising an outer side (fig. 1, front portion 11FO) of the leg pad, a medial portion (annotated fig. 1 above) adapted to be positioned adjacent to a medial part of the leg, a lateral portion (annotated fig. 1 above) adapted to be positioned adjacent to a lateral part of the leg, a bottom portion (annotated fig. 1 above) to be positioned adjacent the forefoot and an inner side adapted to at least partially face the shin, the pad body further comprising medial and lateral wall portions extending between the outer and inner sides (fig. 1, medial and lateral wall portions extending between portion 11FO and portion 11RO) and defining therewith a protective padding receiving space (fig. 1, a space for receiving core 12);
a cuff member (figs. 1-2, inner flaps 13, 14) extending rearwardly from the inner side, wherein the cuff member comprises a medial cuff member (figs. 1-2, inner flap 14) extending rearwardly from a medial portion of the inner side and a lateral cuff member (figs. 1-2, inner flap 13) extending rearwardly from a lateral portion of the inner side, the medial cuff member (14) comprising a medial side portion extending rearwardly from the medial portion, the cuff member substantially conforming to a contour of the leg within the leg-receiving channel to tightly maintain the leg therein (fig. 1, para. [0037]) while allowing rotation of the leg and/or movement of the leg between a standing position and a knelt position (para. [0002], as the pad is for ice hockey goalkeepers, the pad allows rotation of the leg and/or movement of the leg between a standing position and a knelt position);
at least one attachment member (fig. 1, inner strap 16) extending from the cuff member, the attachment member extending from the medial portion of the pad body towards the lateral portion of the pad body (figs. 1-2);
a lateral protective panel (fig. 1, outer flap 13) extending rearwardly from the inner side and not extending from the lateral wall portion of the pad body (fig. 1, para. [0035]), the lateral protective panel configured to extend along a lateral side of the calf and adapted to at least partially cover the lateral side of the calf (fig. 1);
a medial protective panel (fig. 1, outer flap 14) extending rearwardly from the inner side (para. [0036]), the medial protective panel configured to extend along a medial side of the calf and being adapted to at least partially cover the medial side of the calf (fig. 1); and
an outer strap (figs. 1-2, outer strap 16) to bring toward each other and at least partially assemble the medial and lateral protective panels in an assembled configuration for affixing the medial and lateral protective panels to the leg (fig. 1), wherein the medial and lateral protective panels define an outer channel (fig. 1, para. [0037]),
wherein the at least one attachment member is configured to affix the cuff member to the leg in the assembled configuration (fig. 1).
Ouellet does not teach at least one projection extending from the medial side portion toward the lateral cuff member and being adapted to be positioned on a part of the calf arranged below the knee and above the ankle.
However, in the same field of endeavor, Litz teaches a shin guard (fig. 1, guard 10) comprising a front plate and the liner (annotated fig. 2 above) extending rearwardly from the inner side of the front plate; and at least one projection (annotated fig. 2 below) extending from the medial portion toward the lateral portion and being adapted to be positioned on a part of the calf arranged below the knee and above the ankle.
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to combine Ouellet with at least one projection as suggested by Litz for the benefit of providing attachment between the medial strap to the medial side portion and further securing the device to the user’s leg in a simple and reliable way (Litz, column 1, lines 54-66).
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Regarding claim 24, the modified structure Ouellet-Litz teaches the medial side portion and the at least one projection extend along a first transversal distance such that the medial side portion of the medial cuff member and the at least one projection at least partially cover the calf, and wherein the lateral cuff member extends a second transversal distance such that the lateral cuff member at least partially covers the lateral side of the calf (Ouellet in view of fig. 2 of Litz below).
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Regarding claim 26, the modified structure Ouellet-Litz teaches the bottom portion comprises a flat surface (annotated Ouellet fig. 1 above) extending from the medial portion toward the lateral portion, and wherein the flat surface of the bottom portion extends up to a point where a protuberance or projection is located, wherein said protuberance or projection is adapted to contact a lateral side of the foot and/or of skate worn by the goaltender.
Claims 6, 14 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Ouellet (US 2022/0339523) and Litz (US 4633529), as applied to claims 3, 10 and 22 above, and further in view of Mechling (US 2012/0180183).
Regarding claim 6, the modified structure Ouellet-Litz does not teach the medial side portion comprises a longitudinal pad extending from the bottom edge to the upper edge and wherein the longitudinal pad comprises a longitudinal flexing zone extending from the bottom edge to the upper edge.
However, in the same field of endeavor, Mechling teaches the medial side portion comprises a longitudinal pad extending from the bottom edge to the upper edge (fig. 6, para. [0041], foam materials 40 of the medial side portion) and wherein the longitudinal pad comprises a longitudinal flexing zone extending from the bottom edge to the upper edge (as foam materials comprise a longitudinal flexing zone).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to combine the modified structure Ouellet-Litz with a longitudinal pad as taught by Mechling for the benefit of providing shock-absorbing features to disperse force applied to the shin area of the user (Mechling, para. [0031]).
Regarding claim 14, the modified structure Ouellet-Litz does not teach the medial side portion comprises a longitudinal pad extending from the bottom edge to the upper edge and wherein the longitudinal pad comprises a longitudinal flexing zone extending from the bottom edge to the upper edge.
However, in the same field of endeavor, Mechling teaches the medial side portion comprises a longitudinal pad extending from the bottom edge to the upper edge (fig. 6, para. [0041], foam materials 40 of the medial side portion) and wherein the longitudinal pad comprises a longitudinal flexing zone extending from the bottom edge to the upper edge (as foam materials comprise a longitudinal flexing zone).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to combine the modified structure Ouellet-Litz with a longitudinal pad as taught by Mechling for the benefit of providing shock-absorbing features to disperse force applied to the shin area of the user (Mechling, para. [0031]).
Regarding claim 25, the modified structure Ouellet-Litz teaches the medial cuff member extends along the leg-receiving channel from a bottom edge to an upper edge (Ouellet, fig. 1).
The modified structure Ouellet-Litz does not teach the medial side portion comprises a longitudinal pad extending from the bottom edge to the upper edge and wherein the longitudinal pad comprises a longitudinal flexing zone extending from the bottom edge to the upper edge.
However, in the same field of endeavor, Mechling teaches the medial side portion comprises a longitudinal pad extending from the bottom edge to the upper edge (fig. 6, para. [0041], foam materials 40 of the medial side portion) and wherein the longitudinal pad comprises a longitudinal flexing zone extending from the bottom edge to the upper edge (as foam materials comprise a longitudinal flexing zone).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to combine the modified structure Ouellet-Litz with a longitudinal pad as taught by Mechling for the benefit of providing shock-absorbing features to disperse force applied to the shin area of the user (Mechling, para. [0031]).
Response to Arguments
Applicant’s arguments, dated 10/16/2025, with respect to the rejection of claims under 35 U.S.C 112 have been fully considered and are persuasive. The rejection to the claims has been withdrawn due to the applicant amendments.
Applicant’s arguments, dated 10/16/2025, with respect to the rejections of claims under 35 U.S.C 103 have been fully considered but they are not persuasive.
The Applicant argues that Litz fails to teach at least: a cuff member extending from the inner side of the shin plate; and an attachment member extending from the cuff member and adapted to secure the cuff member to the leg (Remarks, page 12, para. 6).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In this case, Ouellet teaches a cuff member extending from the inner side of the shin plate; and an attachment member extending from the cuff member and adapted to secure the cuff member to the leg (see rejection above). Ouellet teaches the cuff member has one attachment member. Ouellet does not teach the cuff member has two attachment members, i.e. an upper attachment member and a lower attachment member. However, Litz teaches the shin guard comprises an upper attachment member and a lower attachment member. It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to add one more strap to the inner flap of Ouellet as suggested by Litz for the benefit of securing the device to the user’s leg in a simple and reliable way (Litz, column 1, lines 54-66). Such modification is mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See MPEP 2144.04, section VI, sub section B.
The Applicant argues about the limitation “wherein the upper attachment member and the lower attachment member do not contact directly the leg” (Remarks, page 12, para. 9).
In response, this argument is not commensurate with the rejected claims, as the limitations have not been previously presented. Thus, the amended limitations have been addressed as analyzed above.
The Applicant argues that one skilled in the art starting from Ouellet and reading it in combination with Litz as a whole, would have no reason to add one or more straps to the inner flap of Ouellet, instead, they would add one or more straps to the outer flap (Remarks, page 12, para. 10).
In response, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Ouellet teaches the cuff member has one attachment member. Ouellet does not teach the cuff member has two attachment members, i.e. an upper attachment member and a lower attachment member. However, Litz teaches the shin guard comprises an upper attachment member and a lower attachment member. It is obvious to one of the ordinary skill in the art before the effective filing date of the invention to duplicate the attachment member in the inner flap of Ouellet as suggested by Litz for the benefit of further securing the device to the user’s leg in a simple and reliable way (Litz, column 1, lines 54-66). Such modification is mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See MPEP 2144.04, section VI, sub section B.
The Applicant argues that there would be a technical incompatibility to arrange even a single one ring therebetween that would be able to cooperate with an attachment member. Such modification would change the principle of operation of the prior art invention being modified (Remarks, page 13, para. 1-3).
In response, in rejections of the claims, the Examiner does not modify Ouellet by adding rings to the inner flap. The Examiner modify Ouellet by duplicating the attachment members as suggested by Litz. Such modification is mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See MPEP 2144.04, section VI, sub section B. Therefore, such modification would not change the principle of operation of the prior art being modified.
The Applicant argues that the purpose of Litz is opposite as the shin guard of Litz is directed to baseball, wherein, contrary to hockey. (Remarks, page 14, para. 1-3).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UYEN THI THAO NGUYEN whose telephone number is (571)272-8370. The examiner can normally be reached Monday-Friday 7:30 AM-4:30 PM EST.
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/UYEN T NGUYEN/ Examiner, Art Unit 3732