DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-7 and 9-10 are pending and represent all claims currently under consideration.
Response to Amendment
The amendment filed 12/13/2025 has been entered.
Claims 8 and 11-16 were canceled, and claims 1-7 and 9-10 were amended. No new material was added.
The objection and rejections of claim 8 are moot, because the claim was canceled.
Applicant’s amendments have overcome the previous objections to claims 1-10 and the rejections of claims 2-3.
The rejections of claims 1 and 7 under 35 U.S.C. 112(b) have been modified to address the amendments and maintained.
The rejections of claims 1-7 and 9-10 under 35 U.S.C. 103 have been modified to address the amendments and maintained.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/262,699, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Regarding claims 2-3, the prior-filed application does not teach weight percents.
Regarding claim 6, the prior-filed application does not teach the absorbent fabric is selected from the group consisting of a cotton, a silk, a synthetic material, or any combination.
Regarding claim 9, the prior-filed application does not teach the kinesiology tape is configured as a roll.
Regarding claim 10, the prior-filed application does not teach the kinesiology tape has a pre-determined shape.
Claims 2-3, 6, and 9-10 are considered to have an effective filing date of 10/06/2022.
Claims 1, 4-5, and 7 are considered to have an effective filing date of 10/19/2021.
Response to Arguments
Applicant's arguments filed 12/13/2025 have been fully considered but they are not persuasive.
Applicant argues that the claimed phrase “effective relative amounts” provides “enough certainty to one of skill in the art when read in the context of the invention” as described in the specification. This argument is not persuasive, because the claim is missing is a clear statement that the amount of magnesium salt is effective relative to the amount of menthol and that the amount of menthol is effective relative to the amount of magnesium salt. As currently claimed, there is no clear indication that the effective relative amounts of each component are connected to each other.
Applicant argues that Hope does not teach or render obvious an adhesive tape in which both menthol and magnesium salt are present in combination in an adhesive to adhere the substrate to a person’s skin and cites that Hope teaches separate compound and adhesive layers (Remarks, page 6). This argument is not persuasive, because Hope teaches all the elements of the amended claim as described below.
Applicant argues that Hope teaches a magnesium salt as only part of a particulate exothermic composition, and describes methanol as an optional component, not recognizing the claimed benefits of combining menthol and magnesium to promote pain relief (Remarks, page 7). This argument is not persuasive, because Hope teaches both components as described below, and further teaches the purpose of the exothermic layer is for maintaining a sustained temperature to relieve pain (i.e., promotes pain relief; Hope, page 12, paragraph 0176). Further, the teaching of methanol as an optional component does not teach away from the composition as claimed. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123(II).
Modified/Maintained 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 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.
Regarding claim 1, the phrase “effective relative” renders the claim indefinite. While terms of degree are not necessarily indefinite, in the instant case, the presence of “effective” with “relative” renders claim indefinite, because the skilled artisan would not be able to ascertain the requisite degree required by “effective relative”. See MPEP § 2173.05(b).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 states the adhesive is “infused into or onto the absorbent fabric” which is the substrate according to claim 5, while the independent claim 1 states the adhesive is “adhered to a surface of the substrate”. Therefore, it is not clear how the adhesive of claim 7 could be “infused into” the substrate if it is “adhered to a surface of” the substrate based on the limitations of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Modified/Maintained 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.
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, 3-7, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hope (US 20200138625 A1). The reference was cited previously by the Examiner.
Regarding claim 1, Hope teaches a kinesiology tape which adheres to the skin and comprises an adhesive on tape (i.e., a substrate; Hope, page 18, paragraph 0231). Hope teaches maintaining a sustained temperature relieves pain (Hope, page 12, paragraph 0176) and teaches an exothermic composition can comprise menthol (Hope, page 14, paragraph 0190) and metal salts which can be magnesium sulfate or chloride (i.e., a magnesium salts; Hope, page 16, paragraph 0218). Hope teaches the exothermically heated elastic adhesive tape comprises the exothermic heating material between two sealing layers (i.e., the components are within the adhesive; Hope, page 2, paragraph 0021). Hope teaches the composition comprises premixed amount of the components to heat an application area (i.e., effective amounts of components; Hope, page 14, paragraph 0192) and teaches the exothermic sealing layer is adhered to the fabric layer by an adhesive layer (Hope, page 6, paragraph 0085).
Hope is considered to be analogous to the claimed invention, because both Hope and the instant invention are in the same field of adhesive compositions for pain relief. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Hope under the meaning of 35 USC 103.
Regarding claim 3, Hope teaches all the elements of the current invention as applied to claim 1. Hope teaches the composition comprises metal salts in 0.5-10% by weight (Hope, page 16, paragraph 0216) and teaches the metal salt can be magnesium sulfate or chloride (i.e., a magnesium salts; Hope, page 16, paragraph 0218).
Regarding claim 4, Hope teaches all the elements of the current invention as applied to claim 1. Hope teaches the adhesive tape can be produced in any size, shape, or pattern (Hope, page 3, paragraph 0029) and exemplifies a tape with a football pattern (i.e., a pre-selected pattern) and a black or white color (i.e., a pre-selected color; Hope, page 7, paragraph 0098).
Regarding claim 5, Hope teaches all the elements of the current invention as applied to claim 1. Hope teaches the fabric layer is heat absorbing (Hope, page 6, paragraph 0095).
Regarding claim 6, Hope teaches all the elements of the current invention as applied to claim 5. Hope teaches the fabric can be cotton or silk (i.e., absorbent fabrics from the claimed list; Hope, page 10, paragraph 0143).
Regarding claim 7, Hope teaches all the elements of the current invention as applied to claim 5. Hope teaches the adhesive is disposed over all surface areas of the fabric (i.e., infused onto the fabric; Hope, page 6, paragraph 0095).
Regarding claim 9, Hope teaches all the elements of the current invention as applied to claim 5. Hope teaches the tape can be in roll form (Hope, page 3, paragraph 0029).
Regarding claim 10, Hope teaches all the elements of the current invention as applied to claim 5. Hope teaches the tape can be precut into strips in a roll form (i.e., a predetermined shape; Hope, page 3, paragraph 0029).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hope (US 20200138625 A1) as applied to claims 1, 3-7, and 9-10, further in view of Saber (US 11389561 B2). The references were cited previously by the Examiner.
Regarding claim 2, Hope teaches all the elements of the current invention as applied to claim 1. Hope teaches the composition comprises an exothermic active compound which can be menthol (Hope, page 14, paragraph 0190), but does not specify an amount of menthol. Saber teaches pre-formed adhesive strips (Saber, column 26, lines 16-24) for pain relief (Saber, column 23, line 67) comprising menthol in 0.1-50% by weight (Saber, column 25, lines 17-24).
Hope and Saber are considered to be analogous to the claimed invention, because all are in the same field of adhesive compositions for pain relief. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Hope to include the specific amount of menthol taught by Saber, because Hope does not teach a specific amount, while Saber teaches the amount as claimed to be a suitable amount to act as an antihistamine (Saber, column 25, lines 16-24).
Conclusion
THIS ACTION IS MADE FINAL. 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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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613