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 .
Response to Amendment
The amendments filed with the written response received on July 25, 2025 have been considered and an action on the merits follows. As directed by the amendment, claims 1 has been amended. and claims 4-8, 10-11 and 14 have been canceled. Accordingly, claims 1-3, 9, 12-13 and 15-31are pending in this application, with an action on the merits to follow regarding claims 1-3, 9, 12-13 and 15-16.
Because of the Applicant’s amendment, the following in the office action mailed February 25, 2025, the 35 U.S.C. 112(a) is hereby maintained:
Previous rejections under 35 U.S.C. 112(a). Examiner notes 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.
35 U.S.C. 112(b) is hereby maintained.
Although the Applicant has provided an illustrated response including Figure 1 of the drawings filed March 28, 2022, Applicant has failed to provide the 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.
Specifically the Examiner advises the Applicant to either indicates or amend the application such that the indefinite terms identified in the previous rejections are expressly written such that one of ordinary skill in the art would readily ascertain a clear understanding of the unclear terms. Therefore Examiner’s rejection to 35 U.S.C. 112(a) is being maintained as the office has not received a response to the rejection that particularly points 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. Applicant should specifically point out the support for any amendments made to the specification and provide explanation of Applicant’s position. See MPEP 2163.06.
Response to Arguments
Response to Declaration under 37 CFR 1.132 by Frank Verducci
The Declaration of Frank Verducci under 37 CFR 1.132 filed July 25, 2025 is insufficient to overcome the rejection of claims 1 based upon based upon the 35 USC 103 rejection over United States Patent No. US 4,987,611 to Franklin H. Maye, (herein after "Maye"), in view of United States Patent Application Publication No. US 2013/0254964 A1 to Dennie Robinson, (herein after "Robinson"), and further in view of United States Patent No. 6,101,628 to Tamela J. Earl,(herein after "Earl) as set forth in the last Office action because: the rejection that has not been overcome, including the statutory grounds, i.e.: insufficiency of disclosure under 35 U.S.C. 112(a) and; United States Patent No. US 4,987,611 to Franklin H. Maye, (herein after "Maye"), in view of United States Patent Application Publication No. US 2013/0254964 A1 to Dennie Robinson, (herein after "Robinson"), and further in view of United States Patent No. 6,101,628 to Tamela J. Earl,(herein after "Earl applied under 35 U.S.C. 103; etc. See MPEP § 716.
It states that the claimed subject matter solved a problem that was long standing in the art. However, there is no showing that others of ordinary skill in the art were working on the problem and if so, for how long. In addition, there is no evidence that if persons skilled in the art who were presumably working on the problem knew of the teachings of the above cited references, they would still be unable to solve the problem. See MPEP § 716.04.
Applicant Argues in the declaration filed February 25, 2025 “The Cited Art, either individually or in any combination, does not provide a basis for modification and/or does not teach, disclose or even remotely suggest or provide a motivation to a POSITA to arrive at the claimed hand pad as recited in amended independent claim 1. The primary reference Maye is simply directed to a protective pad formed of front and back panels of pliable material, with at least the front panel being padded.”
Examiner respectfully disagrees that “The Cited Art, either individually or in any combination, does not provide a basis for modification and/or does not teach, disclose or even remotely suggest or provide a motivation to a POSITA to arrive at the claimed hand pad as recited in amended independent claim 1. The primary reference Maye is simply directed to a protective pad formed of front and back panels of pliable material, with at least the front panel being padded.” Examiner notes that Applicant’s disclosure does not require a unitary structure and the Examiner issued a new matter rejection with a 35 USC 112 (a) which the Applicant has not addressed and 35 USC 112 (b) mailed February 25, 2025.
Therefore, Applicant’s further argument that “Specifically, Maye has a completely different structural configuration for its protective pad and does not teach, disclose or even remotely suggest or provide a motivation to a POSITA to arrive at the claimed hand pad as recited in amended independent claim 1.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, 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, Robinson teaches an article (support 10; Robinson) to protect thumbs and disclosed being of unitary construction (Paragraph 0004; Robinson), having thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb (Figures 1-4, and Paragraph 0029; Robinson, teaching the main body (support 10; Robinson) having a thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb).
Therefore, based on Robinson’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mayes’s main body to include being of unitary construction, having thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb, as doing so would provide protection for the thumb while not interfering with the motion of the thumb for the wearer.
Earl teaches thumb protection devices and discloses a main body (70; Earl) having a certain pre-determined thickness (Col. 5 and Lines 19-40; Earl teaching wherein the main body has a certain predetermined thickness 0.1 inch.), at least one layer of protective gel (viscoelastic material 102; Earl) covering at least part of the metacarpophalangeal joint between the thumb and the palm of the user and overlapping parts of the carpal bones adjacent the metacarpophalangeal joint of the thumb during gripping and other movements thereof by the user (Figure 8 and Col. 5 and Lines 24-46; Earl regarding a protective gel covering at least part of the metacarpophalangeal joint, as doing so would provide the necessary protection without compromising dexterity and sensitivity for the wearer).
Therefore, based on Earl’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Maye/Robinson’s hand pad flexible material to include having a certain pre-determined , at least one laver of protective gel covering at least part of the metacarpophalangeal joint between the thumb and the palm of the user and overlapping parts of the carpal bones adjacent the metacarpophalangeal joint of the thumb during gripping and other movements thereof by the user, as doing so would provide the necessary protection without compromising dexterity and sensitivity for the wearer.
Applicant argument that “Maye specifically fails to disclose the following limitations required in the claims of the present application: wherein the main body being of unitary construction and made of a flexible material having a certain pre-determined thickness such that the rnain body can be turned inside out to fit either the left--hand thumb or the right--hand thumb; at least one layer of protective gel coveting at !east part of the metacarpophalangeal joint between the thumb and the palm of the user and overlapping parts of the carpal bones adjacent the metarca1po!phaiangeaf joint of the thumb during gripping and other movements thereof by the user; wherein the hand pad is further configured to be: (a) slipped over the lower portion of the user's thumb to provide protection and reduce injuries when the user is playing sports or (b) slipped on under a regular sports glove.
Examiner respectfully disagrees “Maye specifically fails to disclose the following limitations required in the claims of the present application: wherein the main body being of unitary construction and made of a flexible material having a certain pre-determined thickness such that the rnain body can be turned inside out to fit either the left--hand thumb or the right--hand thumb; at least one layer of protective gel coveting at !east part of the metacarpophalangeal joint between the thumb and the palm of the user and overlapping parts of the carpal bones adjacent the metarca1po!phaiangeaf joint of the thumb during gripping and other movements thereof by the user; wherein the hand pad is further configured to be: (a) slipped over the lower portion of the user's thumb to provide protection and reduce injuries when the user is playing sports or (b) slipped on under a regular sports glove.”
Applicant's arguments filed February 25, 2025 have been fully considered but they are not persuasive. Applicant argues “The Cited Art, either individually or in any combination, does not provide a basis for modification and/or does not teach, disclose or even remotely suggest or provide a motivation to a POSITA to arrive at the claimed hand pad as recited in amended independent claim 1.”
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, 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, Maye discloses a hand pad (protective device 10; Maye) comprising: a main body (protective device 10; Maye) comprising .
Although Maye fails to disclose the main body being of unitary construction, having a certain pre-determined thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb, at least one laver of protective gel covering at least part of the metacarpophalangeal joint between the thumb and the palm of the user and overlapping parts of the carpal bones adjacent the metacarpophalangeal joint of the thumb during gripping and other movements thereof by the user. Maye discloses that it will be appreciated that while a particular embodiment of the invention has been shown and described, modifications may be made. It is intended in the claims to cover all modifications which come within the true spirit and scope of the invention (Col. 2 and Lines 23-28; Maye).
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Next, Applicant argues that “Robinson does not teach, disclose or provide a motivation to a POS!TA for (1) a main body having
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Examiner respectfully disagrees, Applicant’s argument above regarding Robinson, as Robinson is only relied upon to teach being of unitary construction (Paragraph 0004; Robinson), having thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb (Figures 1-4, and Paragraph 0029; Robinson, teaching the main body (support 10; Robinson) having a thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb).
Therefore, based on Robinson’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mayes’s main body to include being of unitary construction, having thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb, as doing so would provide protection for the thumb while not interfering with the motion of the thumb for the wearer.
Applicant further argues “Secondary reference Earl also has a completely different structural configuration for its protective pad and does not teach, disclose or even remotely suggest or provide a motivation to a POSITA to arrive at the claimed hand pad as recited in amended independent claim 1 (as shown below):” “As illustrated above, in secondary reference Earl the wrap ends of the strips wrap around a portion of the hand so as to secure the hand wrap to the hand with the aid of a releasable fastener located on one of the strips.”, “Secondary reference Earl is very different from the claimed hand pad. Earl does not have (1) a main body being of unitary construction and made of a flexible material having a certain pre-determined thickness such that the main body can be turned inside out to fit either the left-hand thumb or the right-hand thumb; and (2) at least one layer of protective gel covering at least part of the metarcmpolphalangeal joint between the thumb and the palm of the user and overlapping parts of the carpal bones adjacent the metarcarpolphalangeal joint of the thumb during gripping and other movements thereof by the user. Earl is also not configured to be: (a) slipped over the lower portion of the user's thumb to provide protection and reduce injuries when the user is playing sports or (b) slipped on under a regular sports glove, as recited in amended independent claim 1.
Examiner respectfully disagrees as Earl is only relied upon to teach thumb protection devices and discloses a main body (70; Earl) having a certain pre-determined thickness (Col. 5 and Lines 19-40; Earl teaching wherein the main body has a certain predetermined thickness 0.1 inch.), at least one layer of protective gel (viscoelastic material 102; Earl) covering at least part of the metacarpophalangeal joint between the thumb and the palm of the user and overlapping parts of the carpal bones adjacent the metacarpophalangeal joint of the thumb during gripping and other movements thereof by the user (Figure 8 and Col. 5 and Lines 24-46; Earl regarding a protective gel covering at least part of the metacarpophalangeal joint, as doing so would provide the necessary protection without compromising dexterity and sensitivity for the wearer).
Therefore, based on Earl’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Maye/Robinson’s hand pad flexible material to include having a certain pre-determined , at least one laver of protective gel covering at least part of the metacarpophalangeal joint between the thumb and the palm of the user and overlapping parts of the carpal bones adjacent the metacarpophalangeal joint of the thumb during gripping and other movements thereof by the user, as doing so would provide the necessary protection without compromising dexterity and sensitivity for the wearer.
Applicant argues “Modha is directed to silicone gloves that can be made of different colors. Modha doesn't teach or disclose, or provide motivation to a POS!TA, to arrive at the claimed hand pad comprising a main body having (1)
Examiner respectfully disagrees that “Modha doesn't teach or disclose, or provide motivation to a POS!TA, to arrive at the claimed hand pad comprising a main body having (1) a short and narrow elongated shape with a first edge surrounding a first opening sized to fit about an upper portion of the thumb of a user, the first opening adapted to fit about a portion of the thumb of the user above the center axis of rotation of the metarcarpolphalangeal joint between the thumb and the palm of the hand and (2) a longer and wider elongated shape with a second edge distal from the first edge and surrounding a second opening sized and adapted to fit below the center axis of rotation of the metarcmpolphalangeal joint between the thumb and the palm of the hand and extend over to circumferentially cover the muscular base of the thumb, as recited in amended independent claim 1.”
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, 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, Modha teaches gloves and discloses wherein the silicone (0072; Modha ~ silicone) can be made of various colors such as red, black or other types of colors based on usage (para. 0066; Modha teaching the pigment being various colors including red and black, as doing so would provide a desired level of color, contrast, brightness, saturation, value, and/or opaqueness).
Therefore, based on Modha’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Maye/Robinson/Earl’s material wherein the silicone (0072; Modha ~ silicone) can be made of various colors such as red, black or other types of colors based on usage, as doing so would provide a desired level of color, contrast, brightness, saturation, value, and/or opaqueness.
Examiner notes that Applicant’s arguments in the declaration are not commensurate with the amended claims filed July 25, 2025. Arguments numbered 17, 18, 22 and 27 all include language that has been amended and cancelled from claim 1 which includes canceled claim language “ a short and narrow elongate shape”, “the center axis of rotation”. “a longer and wider elongated shape” and “overlapping parts of the carpal bones”.
Response to Arguments
Applicant's arguments filed July 25, 2025 have been fully considered but
they are not persuasive.
Applicants argument on Page 10 of the Remarks filed July 25, 2025, “the primary reference Maye fails to disclose, teach or suggest to a POSITA to arrive at the claimed hand pad as recited in amended independent claim 1. Maye is simply directed to a protective pad formed of front and back panels of pliable material, with at least the front panel being padded. (See, e.g., Maye Abstract; 1:24-26.”)
Examiner respectfully disagrees that the primary reference Maye fails to disclose, teach or suggest to a POSITA to arrive at the claimed hand pad as recited in amended independent claim 1. Maye is simply directed to a protective pad formed of front and back panels of pliable material, with at least the front panel being padded. (See, e.g., Maye Abstract; 1:24-26.
Examiner respectfully disagrees that Mayes is simply directed to a protective pad formed of front and back panels of pliable material with at least the front panel being padded. Maye teaches “A protective pad for use by a baseball player and to be worn under a catcher's mitt or first baseman's glove, for example, and which is conveniently supported on the thumb of the user and extends across the palm to protect the palm from injury.”, as noted in the Abstract.
Applicant Argues on page 14 that “secondary reference Robinson fails to cure the deficiencies of Maye. Specifically, Robinson has a structurally different configuration for its article used to protect the thumb (as shown below):” and “As illustrated above, Applicant's claimed hand pad is clearly unlike (both structurally and functionally) the article of Robinson.”
Examiner respectfully disagrees with Applicants argument that “secondary reference Robinson fails to cure the deficiencies of Maye. Specifically, Robinson has a structurally different configuration for its article used to protect the thumb (as shown below):” and “As illustrated above, Applicant's claimed hand pad is clearly unlike (both structurally and functionally) the article of Robinson.”
Robinson is only relied upon to teach being of unitary construction (Paragraph 0004; Robinson), having thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb (Figures 1-4, and Paragraph 0029; Robinson, teaching the main body (support 10; Robinson) having a thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb).
Therefore, based on Robinson’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mayes’s main body to include being of unitary construction, having thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb, as doing so would provide protection for the thumb while not interfering with the motion of the thumb for the wearer.
Applicant further argues “Modha doesn't remotely teach or disclose, let alone provide motivation to a POSITA, a hand pad as claimed in amended independent claim 1.
Examiner respectfully disagrees that “Modha doesn't teach or disclose, or provide motivation to a POS!TA, to arrive at the claimed hand pad in amended independent claim 1.”
The remainder of Applicant’s arguments are not commensurate with the rejected claims and a new rejection is set forth below to address the newly added claim limitations.
Lastly Applicant argues “Not only does the cited reference fail to teach, disclose or suggest the device claimed herein, the assertions in the Office Action appear to be based on hindsight reconstruction of the cited reference based on the present disclosure. Using the present disclosure as a blueprint to reconstruct the claimed invention from the cited reference contravenes the statutory mandate of Section 103, which requires judging obviousness at the point in time when the invention was made or filed.” In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant’s arguments regarding the declaration of inventor Frank Veducci have been addressed above in the Response to Arguments Response to Declaration under 37 CFR 1.132 by Frank Verducci.
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.
Claim 1 is 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.
The new matter “a main body comprising a short and narrow elongated shape with a first edge surrounding a first opening sized to fit about an upper portion of the thumb of a user, the first opening adapted to fit about a portion of the thumb of the user above the center axis of rotation of the metacarpal phalangeal joint between the thumb and the palm of the hand: and a longer and wider elongated shape with a second edge distal from the first edge and surrounding a second opening sized and adapted to fit below the center axis of rotation of the metacarpal phalangeal joint between the thumb and the palm of the hand and extend over to circumferentially cover the muscular base of the thumb; wherein the main body being of unitary construction and made of a flexible material having a certain pre-determined thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb: at least one laver of protective gel covering at least part of the metacarpophalangeal joint between the thumb and the palm of the user and overlapping parts of the carpal bones adjacent the metacarpophalangeal joint of the thumb during gripping and other movements thereof by the user“ is not supported in the specification March 28, 2022 as originally filed. It is unclear where Applicant provides support for the terms “a short and narrow elongated shape”, “first edge”, “ first opening”, “the center axis of rotation of the metacarpal phalangeal joint ”,“ a longer and wider elongated shape”, “a second edge”, “a second opening”, “the main body being of unitary construction”, and “the carpal bones”, Applicant should specifically point out the support for any amendments made to the specification and provide explanation of Applicant’s position. See MPEP 2163.06.
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 and the claims that depend therefrom (Claims 3 – 4, 12 - 13, 15 - 16 due to dependency) 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 and the claims that depend therefrom 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. It is unclear what “a main body comprising a short and narrow elongated shape with a first edge surrounding a first opening sized to fit about an upper portion of the thumb of a user, the first opening adapted to fit about a portion of the thumb of the user above the center axis of rotation of the metacarpal phalangeal joint between the thumb and the palm of the hand: and a longer and wider elongated shape with a second edge distal from the first edge and surrounding a second opening sized and adapted to fit below the center axis of rotation of the metacarpal phalangeal joint between the thumb and the palm of the hand and extend over to circumferentially cover the muscular base of the thumb” is referring to. The term “a short and narrow elongated shape” and “the first opening adapted to fit about a portion of the thumb of the user above the center axis of rotation of the metacarpal phalangeal joint between the thumb and the palm of the hand” and “a longer and wider elongated shape with a second edge distal from the first edge and surrounding a second opening sized and adapted to fit below the center axis of rotation of the metacarpal phalangeal joint between the thumb and the palm of the hand and extend over to circumferentially cover the muscular base of the thumb” is neither defined in the specification, nor is a standard provided for ascertaining the requisite degree, and one of ordinary skill in the art cannot reasonably be apprised of the metes and bounds of the claim term based upon the state of the art. In addition, Examiner is unclear as to what parameters constitute a skill position player, or a power model pad or what the Applicant defines as the first and second or third side and what constitutes the x and y plane. Applicant has neither defined in the specification, nor is a standard provided for ascertaining the requisite degree.
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 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 – 3, 9, 13, 15 - 16 are rejected under 35 U.S.C. § 103 as being unpatentable over United States Patent No. US 4,987,611 to Franklin H. Maye, (herein after "Maye"), in view of United States Patent Application Publication No. US 2013/0254964 A1 to Dennie Robinson, (herein after "Robinson"), and further in view of United States Patent No. 6,101,628 to Tamela J. Earl,(herein after "Earl").
As to Claim 1,
Maye discloses a hand pad (protective device 10; Maye) comprising: a main body (protective device 10; Maye) comprising a first edge surrounding a first opening sized to fit about an upper portion of the thumb of a user (Figs. 1 & 2; Maye regarding a first edge surrounding a first opening sized to fit about an upper portion of the thumb of a user), the first opening adapted to fit about a portion of the thumb of the user above of the metacarpal phalangeal joint between the thumb and the palm of the hand (Figs. 1 & 2; Maye): and (Figs. 1 & 2; Maye); wherein the main body (protective device 10; Maye) being of unitary construction (Examiner notes that this limitation is being treated as a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (see MPEP § 2113). Product by process is used with the product being the main body and the process of making being of unitary construction.) and made of a flexible material (Figs. 1 & 2, and Col.1, and lines 22-26; Maye regarding flexible (pliable) having a thickness (Figures 1 & 2; Robinson, teaching the main body having a thickness).
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Maye fails to disclose the main body being of unitary construction, having a certain pre-determined thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb, at least one laver of protective gel covering at least part of the metacarpophalangeal joint between the thumb and the palm of the user and overlapping parts of the carpal bones adjacent the metacarpophalangeal joint of the thumb during gripping and other movements thereof by the user.
Robinson teaches an article (support 10; Robinson) to protect thumbs and disclosed being of unitary construction (Paragraph 0004; Robinson), having thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb (Figures 1-4, and Paragraph 0029; Robinson, teaching the main body (support 10; Robinson) having a thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb).
Therefore, based on Robinson’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mayes’s main body to include being of unitary construction, having thickness such that the main body can be turned inside out to fit either the left hand thumb or the right hand thumb, as doing so would provide protection for the thumb while not interfering with the motion of the thumb for the wearer.
Earl teaches thumb protection devices and discloses a main body (70; Earl) having a certain pre-determined thickness (Col. 5 and Lines 19-40; Earl teaching wherein the main body has a certain predetermined thickness 0.1 inch.), at least one layer of protective gel (viscoelastic material 102; Earl) covering at least part of the metacarpophalangeal joint between the thumb and the palm of the user and overlapping parts of the carpal bones adjacent the metacarpophalangeal joint of the thumb during gripping and other movements thereof by the user (Figure 8 and Col. 5 and Lines 24-46; Earl regarding a protective gel covering at least part of the metacarpophalangeal joint, as doing so would provide the necessary protection without compromising dexterity and sensitivity for the wearer).
Therefore, based on Earl’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Maye/Robinson’s hand pad flexible material to include having a certain pre-determined , at least one laver of protective gel covering at least part of the metacarpophalangeal joint between the thumb and the palm of the user and overlapping parts of the carpal bones adjacent the metacarpophalangeal joint of the thumb during gripping and other movements thereof by the user, as doing so would provide the necessary protection without compromising dexterity and sensitivity for the wearer.)
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As to Claim 2,
Maye/Robinson/Earl disclose the hand pad of claim 1, wherein the flexible material provide protection when wearing the hand pad (Col.1, and lines 55-60; Earl), teaches wherein the flexible material provide protection when wearing the hand pad).
As to Claim 3,
Maye/Robinson/Earl disclose the hand pad of claim 1, further configured to be slipped over the lower portion of the user's thumb to provide protection and reduce injuries when the user is playing sports Figs. 1 & 2, and Col.1, and lines 1-37; Maye) or (b) slipped on under a regular sports glove (Figure 1; Robinson).
As to Claim 9,
Maye/Robinson/Earl disclose the hand pad of claim 1, wherein the user is a lineman or a baseball catcher when wearing the hand pad (Figs. 1 & 2 and Col. 1 and Lines 1-27; Maye, teaching wherein the user is capable of being a lineman or a baseball catcher when wearing the hand pad).
As to Claim 13,
Maye/Robinson/Earl disclose the hand pad of claim 1, wherein the flexible material is a spongy gel to provide protection for any shock to the palm of the user's hand (Examiner notes that the Oxford Languages Online Dictionary Defines spongy as like a sponge, especially in being porous, compressible, elastic or absorbent. Earl teaches the silicone material being a viscoelastic material See Cols. 1 & 5 and Lines 55- 60 and Lines 24-40 respectively; Earl which is capable of providing protection for any shock to the palm of the user’s hand.)
As to Claim 15,
Maye/Robinson/Earl disclose the hand pad of claim 1, further configured to protect(Fig. 1 and Col. 1, Lines 23-33; Maye, teaching wherein the hand pad would be capable of protecting the user’s thumb from work related injuries).
As to Claim 16,
Maye/Robinson/Earl disclose the hand pad of claim 1, further adapted to allow manipulation of the user's thumb in order to receive an object during usage (See Figure 1; Maye teaching further adapted to allow manipulation of the user's thumb in order to receive an object during usage.).
Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over United States Patent No. US 4,987,611 to Franklin H. Maye, (herein after "Maye"), in view of United States Patent Application Publication No. US 2013/0254964 A1 to Dennie Robinson, (herein after "Robinson"), and further in view of United States Patent No. 6,101,628 to Tamela J. Earl, (herein after "Earl"), as to claim 2 above, and further in view of United States Patent Application Publication No. US 2022/0135776 Al to Shantilal H. Modha,(herein after "Modha").
As to Claim 12,
Maye/Robinson/Earl disclose hand pad of claim 2.
Maye/Robinson/Earl fail to further disclose wherein the silicone can be made of various colors such as red, black or other types of colors based on usage.
Modha teaches gloves and discloses wherein the silicone (0072; Modha ~ silicone) can be made of various colors such as red, black or other types of colors based on usage (para. 0066; Modha teaching the pigment being various colors including red and black, as doing so would provide a desired level of color, contrast, brightness, saturation, value, and/or opaqueness).
Therefore, based on Modha’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Maye/Robinson/Earl’s material wherein the silicone (0072; Modha ~ silicone) can be made of various colors such as red, black or other types of colors based on usage, as doing so would provide a desired level of color, contrast, brightness, saturation, value, and/or opaqueness.
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.
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/AKWOKWO OLABISI REDHEAD/Examiner, Art Unit 3732
/ALISSA L HOEY/Primary Examiner, Art Unit 3732