DETAILED ACTION
This action is in response to the Response to Election/Restriction filed 9/20/2024. Currently, claims 1, 2 and 8-17 are pending in the application. Claims 3-7 and 18-21 are cancelled by Applicant. Claims 2, 13 and 15 are withdrawn and not examined at this point.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Species 21 in the reply filed on 9/20/2024 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the gear and pawl (see claim 14) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 14 is objected to because of the following informalities: in order to maintain consistency and clarity throughout the claim(s), “the splay mechanism” in lines 1-2 of the claim should be amended to recite ---the first splay mechanism---. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “splay mechanism” in claims 1 and 14.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1, 8-12, 14, 16 and 17 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. Claim 1 limitation “first splay mechanism” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 8-12, 14, 16 and 17 depend on claim 1 and therefore, include the same error.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 11 is 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. Claim 11 recites “an annulus for receiving an index finger of a user.” It is unclear if this recites “annulus” is the same as, or distinct from, the “rigid annulus for receiving an index finger of a user” that is previously recited in claim 1 (upon which claim 11 depends).
Claim 12 is 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. Claim 12 recites “a rigid annulus for receiving a middle finger of a user.” It is unclear if this recites “annulus” is the same as, or distinct from, the “rigid annulus for receiving a middle finger of a user” that is previously recited in claim 1 (upon which claim 11 depends).
Claim 14 is 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. Claim 14 limitation “splay mechanism” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim(s) 1, 8-12 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Evans et al. (US 4,441,489).
In regards to claim 1, Evans et al. teaches in Figures 1 and 2 an index finger portion (first elongate member 11); a middle finger portion (second elongate member 11); a first pivot joint (first spiral portion 15; column 1, lines 54-58 teaches “a common spring structure is provided to afford both the resilience and hingeing capability of the interconnection between the first and second portions;” column 2, line 35 teaches “the spiral portions 15 served as springs”) coupling (as shown in Figures 1 and 2; column 1, lines 54-58 teaches “a common spring structure is provided to afford both the resilience and hingeing capability of the interconnection between the first and second portions”) the index finger portion (first elongate member 11) to the middle finger portion (second elongate member 11) to permit the middle finger portion (second elongate member 11) to rotate relative to (column 1, lines 54-58 teaches “a common spring structure is provided to afford both the resilience and hingeing capability of the interconnection between the first and second portions”) the index finger portion (first elongate member 11) about a first pivot axis (extending through the centers of the spiral portions 15); a second pivot joint (second spiral portion 15; column 1, lines 54-58 teaches “a common spring structure is provided to afford both the resilience and hingeing capability of the interconnection between the first and second portions;” column 2, line 35 teaches “the spiral portions 15 served as springs”) coupling (as shown in Figures 1 and 2; column 1, lines 54-58 teaches “a common spring structure is provided to afford both the resilience and hingeing capability of the interconnection between the first and second portions”) the index finger portion (first elongate member 11) to the middle finger portion (second elongate member 11) to permit the middle finger portion (second elongate member 11) to rotate relative to (column 1, lines 54-58 teaches “a common spring structure is provided to afford both the resilience and hingeing capability of the interconnection between the first and second portions”) the index finger portion (first elongate member 11) about the first pivot axis (extending through the centers of the spiral portions 15); and a first splay mechanism (“the inherent spring action” of first spiral portion 15, taught in column 2, lines 55-56) configured to permit rotation of (column 2, lines 53-56 teaches “the PIP joint is open to limited restrained extension movement by rotation of, and against the inherent spring action of, the spiral portions 15”) the middle finger portion (second elongate member 11) away from (by extending the second elongate member 11 away from the first elongate member 11, as taught in column 2, lines 53-56) the index finger portion (first elongate member 11) about the first pivot axis (extending through the centers of the spiral portions 15), and to resist rotation of (the abstract teaches that the spiral portion 15 “hold the PIP joint” in position; also taught in column 2, lines 47-52) the middle finger portion (second elongate member 11) towards the index finger portion (first elongate member 11) about the first pivot axis (extending through the centers of the spiral portions 15); wherein the index finger portion (first elongate member 11) comprises a rigid annulus (corresponding first curved plate and first strap 13; column 2, lines 36-37 teaches “the plates were of sheet metal to be stiff”) for receiving an index finger of a user (capable of receiving an index finger of a user therethrough); wherein the middle finger portion (second elongate member 11) comprises a rigid annulus (corresponding second curved plate and second strap 13; column 2, lines 36-37 teaches “the plates were of sheet metal to be stiff”) for receiving a middle finger of the user (capable of receiving a middle finger of a user therethrough); wherein in use the first pivot joint (first spiral portion 15) is configured to be located above a dorsal surface of a user's palm (first spiral portion 15 is capable of being located above a dorsal surface of a user's palm in use); and wherein in use the second pivot joint (second spiral portion 15) is configured to be located below a palmar surface of the user's palm (second spiral portion 15 is capable of being located below a palmar surface of the user's palm in use).
In regards to claim 8, Evans et al. teaches the apparatus of claim 1. Evans et al. teaches in Figures 1 and 2 that the index finger portion (first elongate member 11) is configured to receive (inasmuch as it is structured as) a finger-extension member (first elongate member 11).
In regards to claim 9, Evans et al. teaches the apparatus of claim 1. Evans et al. teaches in Figures 1 and 2 that the middle finger portion (second elongate member 11) is configured to receive (inasmuch as it is structured as) a finger-extension member (second elongate member 11).
In regards to claim 10, Evans et al. teaches the apparatus of claim 1. Evans et al. teaches in Figure 1 a first finger-extension (first end portion 17) member connected to, received by, or integrally formed with the index finger portion (first elongate member 11) and a second finger-extension member (second end portion 17) connected to, received by, or integrally formed with the middle finger portion (second elongate member 11).
In regards to claim 11, Evans et al. teaches the apparatus of claims 1 and 10. Evans et al. teaches in Figures 1 and 2 that the first finger-extension member (first end portion 17) comprises an annulus (plate 12 and strap 13 that are positioned on first end portion 17) for receiving an index finger of a user (capable of receiving the index finger of a user therethrough).
In regards to claim 12, Evans et al. teaches the apparatus of claims 1 and 10. Evans et al. teaches in Figures 1 and 2 that the second finger-extension member (second end portion 17) comprises a rigid annulus (plate 12 and strap 13 that are positioned on second end portion 17; column 2, lines 36-37 teaches “the plates were of sheet metal to be stiff”) for receiving a middle finger of a user (capable of receiving the middle finger of a user therethrough).
In regards to claim 16, Evans et al. teaches the apparatus of claim 1. Evans et al. teaches in Figures 1 and 2 that the tissue splayer (splint 10) is configured to be worn over a surgical glove (Figures 1 and 2 teach that splint 10 being structured such that it is capable of being worn over a surgical glove).
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(s) 14 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Evans et al. (US 4,441,489) in view of Carey et al. (US 2017/0071272).
In regards to claim 14, Evans et al. teaches the apparatus of claim 1. Evans et al. does not teach that the splay mechanism comprises a ratchet comprising a gear and a pawl.
However, Carey et al. teaches in Figures 1-6 an analogous device wherein the splay mechanism comprises a ratchet comprising a gear and a pawl ([0013] teaches “the ratchet and retract mechanism comprises a spool, ratchet gear with pawl, and a spring all contained in a housing”).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the splay mechanism of Evans et al. to comprise a ratchet comprising a gear and a pawl as taught by Carey et al. because this element is known to enable a user “to keep their hand in a specific position,” selectively, when the ratchet system is engaged, as Carey et al. teaches in the abstract.
In regards to claim 17, Evans et al. teaches the apparatus of claim 1. Evans et al. does not teach that the index finger portion and/or the middle finger portion are attached to or integrated with a glove.
However, Carey et al. teaches in Figure 2 an analogous device wherein the index finger portion and/or the middle finger portion are attached to or integrated with (as shown in Figure 2; [0034] teaches that the device 10 is “attached to a glove 16”) a glove (glove 16).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the index finger portion and/or the middle finger portion of Evans et al. to be attached to or integrated with a glove as taught by Carey et al. because this element “would allow the laborer to use the tool” while working, as Carey et al. teaches in [0118].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA H FISHER whose telephone number is (571)270-7033. The examiner can normally be reached M-TH 6:00AM-4:00PM 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, Rachael Bredefeld can be reached on (571) 270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VICTORIA HICKS FISHER/Primary Examiner, Art Unit 3786 10/3/2024
Prosecution Insights