DETAILED ACTION
This action is in response to the Request for Continued Examination (RCE) filed 7/23/2026. Currently, claims 1, 6-21 and 23-33 are pending in the application. Claims 2-5 and 22 are cancelled by Applicant. Claims 6-21 and 23-32 are withdrawn and not examined at this point.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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/6/2026 has been entered.
Response to Arguments
Applicant’s amendment to the specification is sufficient to overcome the previous objection to claim 1.
Applicant’s arguments with respect to the prior art rejection(s) of claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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: “venting device” in claim 1.
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. Applicant’s disclosure teaches the following corresponding structure(s) as performing the claimed function: ventilation duct.
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 § 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.
Claims 1 and 33 are rejected under 35 U.S.C. 101 because 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 and 33 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 hand that is or is to be supported on the support device,” which is a claim limitation indicating that Applicant is attempting to claim a hand (which is non-statutory subject matter). Applicant should utilize “adapted to” or “capable of” language to avoid this error. Claim 33 depends on claim 1 and therefore, includes the same error.
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) 1 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over SCHATZ et al. (US 2022/0134174 A1) in view of Cronin (US 4,706,658 A).
In regards to claim 1, SCHATZ et al. teaches in Figure 1, [0016], [0019], [0021], [0025] and [0043] a support body (gripping part 2) which comprises ([0016] teaches “the gripping part 2 is an at least approximately flat body, the surface of which can be subdivided roughly into two surface regions, namely what is known as an “underside” 5 (FIG. 3) and what is known as a “hand side” 6, which enclose the volume of the gripping part 2 between one another”) at least one support region (hand side 6) for supporting the hand of the user at least in portions ([0019] teaches “the palm region of a human hand can extend through between the strap 3 and hand side 6 and this rests with the palm on the hand side 6”), wherein the at least the support region (hand side 6) has, at least in portions, a geometric-structural design or shape (as shown in Figure 1); the at least one support region (hand side 6) comprises ([0021] teaches “the hand side 6 has four channel-like recesses 7”):
a first region (four channel-like recesses 7) comprising multiple finger support portions (four channel-like recesses 7), wherein the number of the finger support portions (four channel-like recesses 7) corresponds to the number and arrangement of the fingers of a respective hand of a user which is to be supported on the support device (holding device 1) ([0021] teaches “four channel-like recesses 7 which, when the device is used as intended, extend parallel to the index finger, middle finger, ring finger and little finger of the hand resting on the gripping part 2 and are dimensioned and spaced apart from one another such that a respective one of these fingers fits in a respective one of these channel-like recesses 7”), wherein each of the multiple finger support portions (four channel-like recesses 7) comprises a recess ([0021] teaches “four channel-like recesses 7”) extending in a distal spatial direction relative to the hand which the support device is adapted to support (as shown in Figure 1; [0021] teaches “four channel-like recesses 7 which, when the device is used as intended, extend parallel to the index finger, middle finger, ring finger and little finger of the hand resting on the gripping part 2 and are dimensioned and spaced apart from one another such that a respective one of these fingers fits in a respective one of these channel-like recesses 7”); and
wherein:
the support device (holding device 1) comprises a venting device (hole-like recesses 9; [0043] teaches “the hole-like recesses 9 are open toward the underside 5;” thus, air is capable of flowing through each of the hole-like recesses 9 in order to provide ventilation) integrated in (as shown in Figure 1; [0025] teaches “the channel-like recesses 7 each end, at their end located, as intended, away from the palm, in a hole-like recess 9”) the at least one support region (hand side 6) and/or the support body (gripping part 2), the venting device (hole-like recesses 9) ventilating the at least one support region (hand side 6) and/or the support body (gripping part 2) and/or the hand that is or is to be supported on the support device (holding device 1) at least in portions ([0043] teaches “the hole-like recesses 9 are open toward the underside 5;” thus, air is capable of flowing through each of the hole-like recesses 9 in order to ventilate the hand side 6, the gripping part 2 and the user’s hand positioned thereon); and
the venting device (hole-like recesses 9) comprises a plurality of venting ducts (inasmuch as Figure 1 teaches each of the hole-like recesses 9 being structured as a tubular passageway, or duct; [0043] teaches “the hole-like recesses 9 are open toward the underside 5;” thus, air is capable of flowing through each of the hole-like recesses 9 in order to provide ventilation) arranged in the first region (four channel-like recesses 7), and wherein in the first region (four channel-like recesses 7), each recess ([0021] teaches “four channel-like recesses 7”) of the multiple finger portions (four channel-like recesses 7) comprises (as shown in Figure 1, each channel-like recess 7 includes a hole-like recess 9) a venting duct (inasmuch as Figure 1 teaches each of the hole-like recesses 9 being structured as a tubular passageway, or duct; [0043] teaches “the hole-like recesses 9 are open toward the underside 5;” thus, air is capable of flowing through each of the hole-like recesses 9 in order to provide ventilation).
Claim 1 limitation “which is designed to be configured in a predefined way which is designed or generated on the basis of data described by a piece of support device dimension information, wherein: the piece of support device dimension information being the basis of the data used for designing or generating the support device is selected from a plurality of pieces of predefined support device dimension information; the selecting of support device dimension information out of the plurality of support device dimension information takes place on the basis of a piece of hand dimension information, which describes the dimensions of the hand that is to be supported on the support device at least in portions” is a product-by process claim limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
SCHATZ et al. does not teach a second region comprising at least one further support portion adapted to receive an end portion of a metacarpal region of the hand the support device is adapted to support; and that the venting device comprises a plurality of venting ducts arranged in the second region, each recess of the first region comprising multiple said venting ducts distributed between a distal portion and a proximal portion within the corresponding recess.
However, Cronin teaches in Figure 1, the abstract, column 4, lines 42-44 and column 5, lines 22-23 and 27-29 an analogous device with a second region (palm portion 28 of splint 30 and ventilator 50; column 5, lines 22-23 teaches “a ventilator 50 may be disposed in the palm portion of glove 10”) comprising at least one further support portion (palm portion 28 of splint 30 and ventilator 50) adapted to receive an end portion of a metacarpal region of the hand (palm portion 28 of splint 30/ventilator 50 is taught in Figure 1 to be configured/positioned to support an end portion of a metacarpal region of the hand thereon) the support device (“gloved splint,” taught in the abstract) is adapted to support (column 4, lines 42-44 teaches “each of the finger and thumb splints provides support for the respective finger and thumb”); and that the venting device (ventilator 50) comprises a plurality of venting ducts (inasmuch as Figure 1 teaches the ventilator 50 including tubular openings/passageways, or ducts; column 5, lines 27-29 teaches “it is to be understood that splint 30 also incorporates apertures juxtaposed with any ventilators of the glove;” thus, air is capable of flowing through corresponding openings in ventilator 50 and glove in order to provide ventilation) arranged in (as shown in Figure 1) the second region (palm portion 28 of splint 30 and ventilator 50).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present application to modify the device of SCHATZ et al. to include a second region comprising at least one further support portion adapted to receive an end portion of a metacarpal region of the hand the support device is adapted to support; and that the venting device comprises a plurality of venting ducts arranged in the second region as taught by Cronin because this element is known to “preclude heat build-up,” as Cronin teaches in column 5, lines 20-23.
SCHATZ et al. and the originally relied upon embodiment of Cronin do not teach each recess of the first region comprising multiple said venting ducts distributed between a distal portion and a proximal portion within the corresponding recess.
However, Cronin teaches in Figure 4 and column 5, lines 26-27 an alternate embodiment wherein each recess (Figure 4 teaches each of the finger and thumb portions being tubular such that each includes a curved/recessed portion) of the first region (“finger and thumb portions,” taught in column 5, lines 26-27) comprising (as shown in Figure 4; column 5, lines 26-27 teaches “ventilators 58 may be formed in the finger and thumb portions of the glove”) multiple said venting ducts (ventilators 58) distributed between a distal portion and a proximal portion within the corresponding recess (as shown in Figure 4).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present application to modify each recess of the first region of SCHATZ et al. as modified by the originally relied upon embodiment of Cronin to comprise multiple said venting ducts distributed between a distal portion and a proximal portion within the corresponding recess as taught by the alternate embodiment of Cronin because this element is known to provide each recess of the first region with additional ventilation and air flow for increased patient comfort, as Cronin teaches in column 3, lines 8-11 and column 5, lines 26-33.
In regards to claim 33, SCHATZ et al. and Cronin teach the apparatus of claim 1. SCHATZ et al. teaches in Figure 1 and claim 1 that the support body (gripping part 2) comprises a curved portion for supporting a metacarpal region of the hand of the user (claim 1 teaches “the hand side is the intended supporting surface for a hand of the person using the holding device, and is convexly curved”).
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.
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/VICTORIA HICKS FISHER/Primary Examiner, Art Unit 3786 7/23/2026
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