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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
Response to Arguments
Applicant's arguments filed 10 September 2025 have been fully considered but they are not persuasive.
In response to applicant's argument that while Gallegos’ device can contain liquid and ice, these features alone do not make the device capable of the claimed dual palm-cooling function, as the specific shape and configuration of Gallegos’ device is designed for different purposes, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant argues that the Examiner has not provided sufficient evidence that Gallegos’ specific structural configurations would be reasonable capable of the dual-palm holding and cooling function required by claim 1. This is not found to be persuasive. This device of Gallegos’ as shown in figure one and annotated below is capable of being held the palms of the user. The fact that Gallegos’ calls out that Figs. 1 and 2 is a teether for babies and/or children does not negate the structural components that make it capable of being held in the palms of a user as set forth below. Additionally it is noted that palm size is not a standard size, and different people of different ages, sizes and shapes will have a different palm size.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “A fillable palm cooling device: a fillable” and should recite --A fillable palm cooling device, comprising: a fillable--. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3 and 8-12 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 2022/0079846 A1 to Gallegos (Gallegos).
Regarding claim 1, Gallegos teaches a fillable palm cooling device (cold and/or hot therapy device 100) comprising a fillable tube (interior reservoir 120) configured to be filled with a cool substance (liquid 126); and at least a first endcap (first lid 108a) configured to be removed to enable the fillable tube to be filled with the cool substance ([0019]), wherein the fillable tube is configured to be held in palms of both hands of a person to cool the palms of both hands of the person when the fillable tube is filled with the cool substance (A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.).
Regarding claim 3, Gallegos teaches the fillable palm cooling device of claim 1 as well as wherein the fillable tube is angled (Fig. 1) and includes a first portion configured to be held in a first palm of a first hand of the person and a second portion configured to be held in a second palm of a second hand of the person (see annotated Fig. 1 below).
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Regarding claim 8, Gallegos teaches the fillable palm cooling device of claim 1 as well as wherein the fillable palm cooling device further comprising a second endcap (second lid 108b) configured to be removed to enable the fillable tube to be filled with the cool substance ([0019]).
Regarding claim 9, Gallegos teaches the fillable palm cooling device of claim 8 as well as wherein the first endcap and the second endcap can be filled with a cool substance and frozen ([0020] which states in part “the lid 108 includes a lid reservoir 118…the liquid 126 from the interior reservoir 120 can flow from the interior reservoir 120 via the opening 114 into the lid reservoir 118 when in the sealed position.”).
Regarding claim 10, Gallegos teaches the fillable palm cooling device of claim 1 as well as wherein the cool substance is cool water ([0018] which states in part “the liquid 126 is water….ice may be added via the opening 114 with or without the liquid 126 to the internal reservoir 120.”).
Regarding claim 11, Gallegos teaches the fillable palm cooling device of claim 10 as well as wherein the fillable palm cooling device can be re-cooled by emptying the cool water from the fillable palm cooling device, and re-filling the fillable palm cooling device with new cool water (A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.).
Regarding claim 12, Gallegos teaches the fillable palm cooling device of claim 1 as well as wherein the fillable palm cooling device can be re-cooled by placing the fillable palm cooling device in a refrigerator (A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.).
Claim(s) 1 and 21 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 2018/0103766 A1 to (Ou).
Regarding claim 1, Ou teaches a fillable palm cooling device (Figs. 8-11) comprising a fillable tube (33 and [0026] which states in part “Bottle 33 comprises a generally long, vertical, cylindrical shape…) configured to be filled with a cool substance, and at least a first endcap (31) configured to be removed to enable the fillable tube to be filled with the cool substance ([0025-0026]), wherein the fillable tube is configured to be held in palms of both hands of a person to cool the palms of both hands of the person when the fillable tube is filled with the cool substance ([0026] which states “Bottle 33 comprises a generally long vertical, cylindrical shape….in the form factor of, say, the classic Coke bottle in a one or two liter size.” Additionally, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.).
Regarding claim 21, Ou teaches the fillable palm cooling device of claim 1 as well as wherein the fillable tube has a length of at least 12 inches to enable the fillable tube to be held in the palms of both hand simultaneously ([0026] which states “Bottle 33 comprises a generally long vertical, cylindrical shape….in the form factor of, say, the classic Coke bottle in a one or two liter size.” And the size of a 2 liter Coke bottle is around 12 to 12.4 inches.)
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gallegos.
Regarding claim 2, Gallegos teaches the fillable palm cooling device of claim 1 as well as wherein the exterior body (102), the internal reservoir (120), and the chamber (122) are made of metal ([0016]). However, Gallegos does not specifically teach wherein the fillable tube is made from aluminum. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used aluminum, since it has been held to be within the general skill of a worker in the art to select a known material based on its suitability for the intended use as a matter of obvious design choice.
Claim(s) 4-7, 13, 14 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gallegos in view of US 2014/0039365 A1 to Maher et al. (Maher).
Regarding claim 4, Gallegos teaches the fillable palm cooling device of claim 1, but not wherein the fillable palm cooling device further includes an indicator mechanism to indicate that a temperature of the fillable tube is within a cooling temperature range that is suitable for cooling the palms of both hands of the person. Maher teaches an analogous device to that of Gallegos including cooling packs (200, 900) and including an indicator (538) that indicates an approximate temperature of the cooling fluid in the cooling pack (200, 900). Maher teaches that the indicator 538 may be a first color when the temperature of the cooling fluid is at a temperature that provides adequate cooling to the patient, turns a second color as the cooling fluid begins to warm, and turns a third color to indicate that the cooling fluid is no longer providing adequate cooling to the patient ([0054]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Gallegos with the indicator of Maher to allow for a quick visual means to determine if the cooling is still adequate as taught by Maher ([0054]).
Regarding claim 5, Gallegos teaches the fillable palm cooling device of claim 1, but not wherein the fillable pam cooling device further includes an indicator mechanism to indicate that a temperature of the fillable tube is outside of a cooling temperature range that is suitable for cooling the palms of both hand of the person. Maher teaches an analogous device to that of Gallegos including cooling packs (200, 900) and including an indicator (538) that indicates an approximate temperature of the cooling fluid in the cooling pack (200, 900). Maher teaches that the indicator 538 may be a first color when the temperature of the cooling fluid is at a temperature that provides adequate cooling to the patient, turns a second color as the cooling fluid begins to warm, and turns a third color to indicate that the cooling fluid is no longer providing adequate cooling to the patient ([0054]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Gallegos with the indicator of Maher to allow for a quick visual means to determine if the cooling is still adequate as taught by Maher ([0054]).
Regarding claim 6, the combination teaches the fillable palm cooling device of claim 5 as well as Maher teaching wherein the indicator mechanism is positioned on the retaining device (300) or on the bladder (506). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Gallegos with the positioning of Maher to provide quick visual means to determine if the cooling is still adequate as taught by Maher ([0054]).
Regarding claim 7, the combination teaches the fillable palm cooling device of claim 5, but not wherein the indicator mechanism is positioned on the first endcap of the fillable palm cooling portion. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have located the indicator as claimed, since it has been held that rearranging parts of an invention involves only routine skill in the art.
Regarding claim 13, Gallegos teaches a fillable palm cooling device (cold and/or hot therapy device 100) comprising a fillable tube (interior reservoir 120) configured to be filled with a cool substance (liquid 126), wherein the fillable tube is configured to be held in palms of both hands of a person to cool the palms of both hands of the person when the fillable tube is filled with the cool substance (A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.). However, Gallegos is silent with respect to a temperature indicator configured to indicate a temperature of the substance inside the fillable tube. Maher teaches an analogous device to that of Gallegos including cooling packs (200, 900) and including an indicator (538) that indicates an approximate temperature of the cooling fluid in the cooling pack (200, 900). Maher teaches that the indicator 538 may be a first color when the temperature of the cooling fluid is at a temperature that provides adequate cooling to the patient, turns a second color as the cooling fluid begins to warm, and turns a third color to indicate that the cooling fluid is no longer providing adequate cooling to the patient ([0054]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Gallegos with the indicator of Maher to allow for a quick visual means to determine if the cooling is still adequate as taught by Maher ([0054]).
Regarding claim 14, the combination teaches the fillable palm cooling device of claim 13, as well as Maher teaching wherein the temperature indicator indicates whether the temperature of the substance is within a cooling temperature range ([0054]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Gallegos with the indicator of Maher to allow for a quick visual means to determine if the cooling is still adequate as taught by Maher ([0054]).
Regarding claim 17, the combination teaches the fillable palm cooling device of claim 13 as well as Maher teaches wherein the indicator mechanism is positioned on the retaining device (300) or on the bladder (506). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Gallegos with the positioning of Maher to provide quick visual means to determine if the cooling is still adequate as taught by Maher ([0054]).
Regarding claim 18, the combination teaches the fillable palm cooling device of claim 13, but not wherein the temperature indicator is positioned on an endcap of the fillable palm cooling device. . It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have located the indicator as claimed, since it has been held that rearranging parts of an invention involves only routine skill in the art.
Regarding claim 19, the combination teaches the fillable palm cooling device of claim 13, as well as Gallegos teaching wherein the substance is cool water ([0018] which states in part “the liquid 126 is water….ice may be added via the opening 114 with or without the liquid 126 to the internal reservoir 120.”).
Regarding claim 20, the combination teaches the fillable palm cooling device of claim 13, as well as Gallegos teaching wherein the substance comprises water ([0018] which states in part “the liquid 126 is water”), and wherein the fillable cooling device can be refrigerated to cool the water within the fillable tube (A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.).
Claim(s) 13, 18 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ou in view of US 2007/0277675 A1 to Hickey (Hickey).
Regarding claims 13, 18 and 22, Ou teaches a fillable tube (33 and [0026] which states in part “Bottle 33 comprises a generally long vertical, cylindrical shape…”) configured to be filled with a substance, wherein the fillable tube is configured to be held in palms of both hands of a person to cool the palms of both hands of the person when the fillable tube is filled with the cool substance ([0026] which states “Bottle 33 comprises a generally long vertical, cylindrical shape….in the form factor of, say, the classic Coke bottle in a one or two liter size.” Additionally, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.). However, Ou does not teach a temperature indicator configured to indicate a temperature of the substance inside the fillable tube, the temperature indicator positioned on an endcap of the fillable palm cooling device or wherein the endcap includes a temperature probe that is useable to measure the temperature of the substance. Hickey teaches an analogous device to that of Ou as well as monitoring a temperature of the item within the device (10) using a thermal probe (36) engagable with a cap (37) that is secured to the device ([0021]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the endcap of Ou to include a temperature probe as taught by Hickey to allow for temperature monitoring of the temperature modified item within the device as taught by Hickey ([0021]).
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 KAITLYN E SMITH whose telephone number is (571)270-5845. The examiner can normally be reached Monday-Friday 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linda Dvorak can be reached on (571)272-4764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KAITLYN E SMITH/Primary Examiner, Art Unit 3794