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
1. The amendment filed 11/03/2025 has been entered. Currently, claims 1-16 remain pending in the application. Independent claim 1 was amended by the Applicant, with some new matter and some non-new matter, to include further narrowing limitations. Additionally, claims 1 and 12-13 were amended to correct previous claim objections and 35 USC 112(B) rejections that were set forth in the Non-Final Office Action mailed 05/05/2025. Lastly, a new claim objection and 35 USC 112(A) new matter and 35 USC 112(B) rejections are recited below.
Response to Arguments
2. Applicant’s amendment to independent claim 1 sufficient to overcome the previous 35 USC § 102 and 35 USC § 103 rejection recited in the Non-Final Office Action mailed 05/05/2025.
3. Applicant’s arguments, see Remarks on Remarks, Page 8, last paragraph and Page 9, paragraphs 1-2 filed 11/03/2025, with respect to the rejection under 35 USC § 102 and 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, the amended claims have changed the scope of the claims and upon further consideration, a new 35 USC § 103 grounds of rejection is made in view of new and current prior art of the record: Caden (U.S. Patent Pub. No. 20180295892), Li (CN 204337093 U), Wang (CN 203458503 U), and Roup (U.S. Patent Pub. No. 20160113334).
4. Applicant makes the argument that “Li fails to disclose the first side section 103 and relies on 3,1,4 of Li, which is improper because 3 of Li is just stitching. Also the fingers extend outer back 2 not a first side section” (Remarks, Page 7, last paragraphs and Page 8, paragraphs 1-2).
In response to Applicant’s argument (Remarks, Page 7, last paragraphs and Page 8, paragraph 1), even if stitching 3 is not interpreted as part of the first side section (which negative limitation isn’t explicitly recited in any of the claims), Li would still disclose/teach the first side section as 1 with the projections 4 extending therefrom, not the back section 2.
5. Applicant makes the argument that “Li doesn’t disclose the back section is rectangular” (Remarks, Page 8, last paragraph and Page 9, paragraph 1).
In response to Applicant’s argument (Remarks, Page 8, last paragraph and Page 9, paragraph 1), Li is no longer a primary reference, such that this argument is moot. Rather, new primary reference Caden (U.S. Patent Pub. No. 20180295892) embodiment of figures 19-20C, Paragraph 73 has a rectangular wrap with the abdomen, first, back, second, and finger sections. Then, Li is only applied as a secondary reference to only teach adding pockets at those abdominal and back locational sections, but not the shape of the wrap.
6. Applicant makes the argument that “the amended clam 1 recites "...wherein the first side section (103) and the second side section (104) are continuously formed on either side of the back support section (102);". In other words, they aren't attached end to end as separate pieces. Whereas Li recites "Belt body is along its length for be joined end to end successively formed by the first elastic 1, second flexible part 2, the 3rd elastic 5, the 4th flexible part 6”” (Remarks, Page 9, Paragraph 3).
In response to Applicant’s argument (Remarks, Page 9, Paragraph 3), Li is no longer a primary reference, such that this argument is moot. Nonetheless, Li is still continuous as given by stitching 3 that provide the continuity. Also, that line of Li is describing that first side section end 3,4 and abdomen end 6 are connected end to end given by the hook-loop fasteners.
7. Applicant makes the argument that “the finger of Li have gaps” (Remarks, Page 9, Paragraph 2).
In response to Applicant’s argument (Remarks, Page 9, Paragraph 2), see new 35 USC 112(a) new matter rejection below. Furthermore, Li is no longer a primary reference, such that this argument is moot. Rather, new primary reference Caden (U.S. Patent Pub. No. 20180295892) embodiment of figures 19-20C, Paragraph 73 has a rectangular wrap with the abdomen, first, back, second, and finger sections that overlap so no gap.
8. Examiner notes that Applicant may overcome the prior art combination by reciting a distinguishing positive limitation such as the size of the pocket at the abdomen 102 and back 105 encompassing an entirety of the respective section; any distinguishing negative limitation such as there being no gap at the base of the fingers due to stitching instead of because an overlapping fabric; and/or a –consisting-- transition phrase in the preamble and/or body of the claim to prevent a potential combination.
Claim Objections
Claims 1, 5, and 7-9 are objected to because of the following informalities:
In claims 1 and 7-9 rephrase “finger-like” to read --finger—to better improve clarity.
In claims 1, 10, and 13-14 rephrase “first mating means” to read –first mating means--.
In claim 5, rephrase “the periphery” to read --a periphery--.
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “mating means” in claims 1 ,6, and 8.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
This application includes one or more claim limitations that do use the word “means,” and are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) do not recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation is: “first and second mating means” in claims 9-10.
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. For examination purposes, “first and second mating means” in claims 9-10 is interpreted as adhesive or hook and loop or hook and eye system, a button system, or a snap system (Specification, Paragraph 32) or equivalent 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 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.
Claims 1-16 are 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.
Claim 1, recites the limitation “each of the plurality of finger-like projections are arranged without any gap between them”. . Firstly, applicant, in their originally filed specification do not present any evidence to show that “finger-like projections are arranged without any gap between them.” That is, based on the originally filed drawings, there appear to be gaps (between 106). The gaps may or may not be voids, but the original figures show that finger-like projections labeled 106 (the white areas) have another material between them (the gray areas). The written specification neither labels the gray areas, nor does it speak to the structure of 106 having no gap between them. So, there is no evidence in the originally filed disclosure that Applicant had knowledge of the newly amended language. Also, the heads 106a of the fingers 106 are shown to have voided gaps at the their distal end (Specification Paragraph 31 and Figure 1).
Claims 2-16 are rejected for depending on claim 1.
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 1-16 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.
Regarding claim 1, and based on the above 112(A) analysis, the amended claim language is confusing and unclear, given that when read in light of the original disclosure, the metes and bounds of the claim remain unclear bringing about a 112b indefinite rejection, because the original disclosure does not provide any information with regards how 106 are connected to each other.
Claims 2-16 are rejected for depending on indefinite claim 1.
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.
Claims 1-13 and 15, as best understood given by the 35 USC 112(A) and 112(B) above, are rejected under 35 U.S.C. 103 as being unpatentable over Caden (U.S. Patent Pub. No. 20180295892) in view of Li (CN 204337093 U).
Regarding claim 1, Caden discloses a belly wrap 2000 (embodiment of figures 19-20C and Paragraph 73, rectangular postpartum belly wrap 2000 with fingers at first end 2010 with corresponding Velcro to close wrap at other end around user) wearable by a postpartum woman, comprising: a wrap body 2000 having a first side (Paragraph 73 and Figures 19-20C, first user facing side) configured to touch an abdomen and back of the woman's body, and a second side (Paragraph 73 and Figures 19-20C, second non-user facing side) that does not touch the abdomen and back of the woman's body; wherein, the wrap body 2000 comprising a back support section (see annotated Figure 20A-20C below) wherein the back support section is rectangular (Paragraph 73 and Figures 19-20C) in shape; a first side section (see annotated Figure 20A-20C below), and a second side section (see annotated Figure 20A-20C below), wherein the first side section and the second side section are continuously formed on either side of the back support section ;an abdomen support section (see annotated Figure 20A-20C below) attached to one side of the second side section, the abdomen support section comprises a first mating means (Paragraph 73 and Figures 19-20C, corresponding velcro; this is the structure as defined by the 112f analysis above) configured on the second side of the wrap body ; and wherein, the first side section further comprising a plurality of finger projections (annotated Figure 20A-20C below) extending therefrom, each of the plurality of finger projections comprising a head incorporating a second mating means (Paragraph 73 and Figures 19-20C, corresponding Velcro; this is the structure as defined by the 35 USC 112f analysis above) , wherein, each of the plurality of finger projections are arranged without any gap between them.
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However, Caden fails to explicitly disclose the back support section comprising a first pocket disposed on the first side thereof; the abdomen support section comprising a second pocket configured on the first side thereof.
Li teaches an analogous postpartum belly wrap (Paragraphs 9, 32-34 and Figures 1-2, postpartum belly wrap with wrap body 6, 3,5,3, 2, 3,1,4 having a first user facing side and second non-skin facing side) comprising an analogous wrap body 6, 3,5,3, 2, 3,1,4 wherein the analogous back support section 2 (Paragraphs 9, 32-34 and Figures 1-2) comprising a first pocket 7 (Paragraph 36 and Figure 2) disposed on the analogous first side thereof; the analogous abdomen support section 6 (Paragraphs 9, 32-34 and Figures 1-2) comprising a second pocket 7 (Paragraph 38 and Figure 2) configured on the analogous first side thereof.
It would have been obvious for a person having ordinary level of skill in the art before the effective filing date of the claimed invention to modify the back and abdomen support sections of Caden, so that the back support section comprising a first pocket disposed on the first side thereof; the abdomen support section comprising a second pocket configured on the first side thereof, as taught by Li, in order to provide an improved belly wrap with an enhanced back and abdomen sections that have pockets to receive medical hot and cold packs for desirable therapy (Li, Paragraphs 36 and 38).
Regarding claim 2, the combination of Caden in view of Li discloses the invention as described above. Caden further discloses wherein the first side of the wrap body 2000 comprises a first fabric material (Paragraph 57 and 73, first fabric material of skin-facing side), and the second side of the wrap body 2000 comprises a second fabric material (Paragraphs 57 and 73, second fabric material of non-skin facing side).
Regarding claim 3, the combination of Caden in view of Li discloses the invention as described above. Caden further discloses wherein the first fabric material and the second fabric material are identical and selected from a group of materials consisting of cotton (Paragraph 57).
Regarding claim 4, the combination of Caden in view of Li discloses the invention as described above. Caden further discloses wherein the first fabric material and the second fabric material are nonidentical and selected from a group of materials consisting of cotton and nylon (Paragraph 57), respectively.
Regarding claim 5, the combination of Caden in view of Li discloses the invention as described above. Caden further discloses wherein a periphery of the first fabric material, and the second fabric material are stitched directly stitched by sewing (Paragraph 57, 73 and Figures 19-20C).
Regarding claim 6, the combination of Caden in view of Li discloses the invention as described above and further discloses wherein the second pocket (Li: 7) and the first mating means (Li, Paragraph 38 and Figures 1-2) are opposingly disposed of on the abdomen support section (Caden, see annotated Figures 20A-20C above; Li, Paragraph 38 and Figures 1-2, abdomen section 6) on either side of the wrap body (Caden: 2000).
Regarding claim 7, the combination of Caden in view of Li discloses the invention as described above. Caden further discloses wherein the head (see annotated Figures 20A-20C above) of each of the plurality of finger like projections is semi-circular shaped.
Regarding claim 8, the combination of Caden in view of Li discloses the invention as described above. Caden further discloses wherein the second mating means (Paragraph 73 and Figures 19-20C, semi-circular head of finger having hook and loop mating means on interior side) is attached on an interior side of each of the heads of the plurality of finger projections.
Regarding claim 9, the combination of Caden in view of Li discloses the invention as described above. Caden further discloses wherein the second mating means (Paragraph 73 and Figures 19-20C, semi-circular head of fingers having hook and loop mating means on interior side) located on the plurality of finger-like projections removably engages with the first mating means (Paragraph 57, 73 and Figures 19-20C) located on the abdomen support section to ensure the belly wrap 2000 is wrapped around abdomen and back of the woman.
Regarding claim 10, the combination of Caden in view of Li discloses the invention as described above. Caden further discloses wherein the first matting means (Paragraph 73 and Figures 19-20C, hook and loop mating means on exterior of abdomen is larger than mating members on head of fingers) is made comparatively larger in size than the second mating means to facilitate adjustability and comfort fit of the belly wrap 2000 around the abdomen and back of the woman.
Regarding claim 11, the combination of Caden in view of Li discloses the invention as described above and further discloses wherein the first pocket (Li: 7) and the second pocket (Li: 7) are configured to removably receive a hot and cold gel pack therein (Li, Paragraphs 36 and 38, first and second pockets 7 are capable of receiving hot and cold gel packs that are sized to fit in the pockets 7) to provide heat and cold therapy to the postpartum woman.
Regarding claim 12, the combination of Caden in view of Li discloses the invention as described above and further discloses wherein the first pocket (Li: 7) and the second pocket (Li: 7) conform to the back and abdomen (Li, Paragraphs 36 and 38, first and second pockets 7 aligned with back and abdomen and curve with sections 2,6 when belly wrap is tightened and curved to conform around user) of the postpartum woman respectively when the belly wrap is worn by the woman.
Regarding claim 13, the combination of Caden in view of Li discloses the invention as described above. Caden further discloses wherein the first matting means and the second mating means is a hook and loop fastener (Paragraph 73 and Figures 19-20C, hook and loop mating means on exterior of abdomen mating with hook loop on head of fingers) .
Regarding claim 15, the combination of Caden in view of Li discloses the invention as described above and further discloses wherein the first pocket (Li: 7) and the second pocket (Li: 7) are formed on the back support section, and the abdomen support section by sewing (Li, Paragraph 10, pockets 7 sewn into fabric back 2 and abdomen 6 sections ).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Caden (U.S. Patent Pub. No. 20180295892) in view of Li (CN 204337093 U), as applied to claim 1, and in further view of Wang (CN 203458503 U).
Regarding claim 14, the combination of Caden in view of Li discloses the invention as described above but fails to explicitly disclose wherein the first matting means and the second mating means is an adhesive.
Wang teaches an analogous belly wrap (Paragraph 21 and Figures 5-6, pregnant women postpartum recovery abdomen belt with adhesive first matting means 7 and adhesive second mating means 4 for wrapping and fastening belt around body) wherein the analogous first matting means 7 (Paragraph 21 and Figures 5-6) and the analogous second mating means 4 is an adhesive.
It would have been obvious for a person having ordinary level of skill in the art before the effective filing date of the claimed invention to substitute the material of the first matting means and the second mating means of Caden in view of Li, for an adhesive first matting means and second mating means, as taught by Wang, in order to provide an improved belly wrap with an enhanced first and second mating means that are formed of an adhesive for increased fastening and supporting effect of the belt body being tightly positioned against user’s body (Wang, Paragraph 21).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Caden (U.S. Patent Pub. No. 20180295892) in view of Li (CN 204337093 U), as applied to claim 1, and in further view of Roup (U.S. Patent Pub. No. 20160113334).
Regarding claim 16, the combination of Caden in view of Li discloses the invention as described above but fails to explicitly disclose wherein the first pocket and the second pocket are formed using a material selected from a group of materials consisting of cotton, nylon, polyester, elastic, netted fabric, non-netted fabric, and leather.
Roup teaches a similar belly wrap (Paragraph 40 and Figure 3B, waist band with abdominal pocket supports) wherein a similar first pocket (Paragraph 40 and Figure 3B, first pocket attached to garment waist band) and the analogous second pocket (Paragraph 40 and Figure 3B, abdominal second pocket attached to garment waist band) are formed using a material selected from a group of materials consisting of cotton.
It would have been obvious for a person having ordinary level of skill in the art before the effective filing date of the claimed invention to modify a material of the first and second pockets of Caden in view of Li, so that the first pocket and the second pocket are formed using a cotton material, as taught by Roup, in order to provide an improved belly wrap with an enhanced pocket that is made of cotton material which contacts against the user for a cool, dry, and absorbent feeling of the pockets (Roup, Paragraph 40).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Milo whose telephone number is (571)272-6476. The examiner can normally be reached on Mon-Fri 7:00-5:00.
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/MICHAEL MILO/
Art Unit 3786
/ALIREZA NIA/Supervisory Patent Examiner, Art Unit 3786