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 .
Information Disclosure Statement
The information disclosure statement filed September 11, 2023 has been received and made of record. Note the acknowledged PTO-1449 enclosed herewith.
Preliminary Amendment
The Preliminary Amendment filed May 11, 2023 has been received and made of record. Note the acknowledged PTO-1449 form enclosed herewith. The specification and claims 4 and 12 have been amended, and claims 13-15 have been cancelled.
Claim Objections
Claim 5 is objected to because of the following informalities: claim 5, line 4, “of the notch” should read --of each notch--. Appropriate correction is required
Claim Rejections - 35 USC § 101
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 1-12 and 16-20 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). Regarding claims 1 and 16, the recitation “wrapping a front surface and side surfaces of the joint” claims a portion of the human body along with the invention. Applicant is reminded that a human body and/or parts thereof may not be claimed along with or as components of the invention.
Claims 2-12 and 17-20 are necessarily rejected by virtue of their dependence on a rejected base claim.
Claim Objections
Claim 9 is objected to because of the following informalities: claim 9, line 4, “X2” should be deleted, specifically because there is no X1, an r Appropriate correction is required.
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 1-12 and 16-20 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 claims 1 and 16, the recitation “the front supporting portion and the side supporting portions respectively wrapping a front surface and side surfaces of the joint” is indefinite in that it is unclear if Applicant intends to claim a portion of the human body along with the invention. Applicant is advised to amend the recitation to recite --
Regarding claim 5, the recitation, “the joint pieces” in line 4 lacks proper antecedent basis. The phrase should read --at least one joint piece--.
Regarding claim 7, the recitation of “the joint protection device is higher than an ankle of the wearer” in line 2 is indefinite because the limitation of the claim is defined by reference to an object and the relationship between the limitation and the object is not sufficiently defined. See, e.g., Ex parte16 Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989). Also, the recitation of “a fixing portion below the ankle” in line 5 is indefinite in that it is unclear to the examiner if Applicant is attempting to claim ankle as a component of the invention. Applicant is advised to amend claim 7 to recite --a fixing portion configured to be positioned below the ankle--. Further, the recitation of “an upper supporting portion above the ankle”, in lines 5-6 is indefinite in that it is unclear to the examiner if Applicant is attempting to claim the ankle as a component of the invention. Applicant is advised to amend the claim to recite, --an upper supporting portion configured to be positioned above the ankle--. Further, the recitation “a cushion structure is provided between the joint protection body and the foot” in lines 7-8 is indefinite in that it is unclear to the examiner if Applicant is attempting to claim the foot as a component of the invention. Applicant is advised to amend the claim to recite --a cushion structure is configured to be positioned between the joint protection body and the foot--. And, the recitation “the inner and outer ankle parts” in line 11 lacks proper antecedent basis.
Regarding claim 9, the recitation of “the upper supporting portion” in line 2 lacks proper antecedent basis.
Regarding claim 10, each recitation of “the upper notch” in line 3 lacks proper antecedent basis.
Regarding claim 18, the recitation of “the joint protection device is higher than an ankle of the wearer” in line 2 is indefinite because the limitation of the claim is defined by reference to an object and the relationship between the limitation and the object is not sufficiently defined. See, e.g., Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989). Also, the recitation of “a fixing portion below the ankle” is indefinite in that it is unclear to the examiner if Applicant is attempting to claim ankle as a component of the invention. Applicant is advised to amend claim 18 to recite --a fixing portion configured to be positioned below the ankle--. Further, the recitation “a cushion structure is provided between the joint protection body and the foot” in lines 7-8 it is unclear if Applicant is attempting to claim the foot as a component of the invention. Applicant is advised to amend the claim to recite --a cushion structure is configured to be positioned between the joint protection body and the foot--. And, the recitation “the inner and outer ankle parts” in line 11 lack proper antecedent basis.
Regarding claim 20, the recitation of “the upper supporting portion” in line 2 lacks proper antecedent basis.
Claims 2-12 and 17-20 are necessarily rejected by virtue of their dependence on a rejected base claim.
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: “means of the buckle” in claim 2.
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 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: “a clearance structure” in claim 16.
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.
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,268,949 (“the ‘949 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the structural and functional features of the presently claimed invention were recited the ‘949 patent or inherently present in the ‘949 patent.
With respect to instant claim 1, claim 1 of the ‘949 patent discloses a joint protection device, comprising a joint protection body whose horizontal shape substantially matches a shape of a joint (lines 1-3), wherein the joint protection body is a hollow housing having an opened bottom and comprises a front supporting portion and side supporting portions distributed on two sides of the front supporting portion (lines 3-7), the front supporting portion and the side supporting portions respectively wrapping a front surface and side surfaces of the joint to provide front and side supports for the joint (it is inherent that during use the front supporting portion will be placed on the front portion of a joint and two side supporting portions will be placed on the sides of the joints; thus wrapping the portions upon which they are placed); at least one notch is provided in a portion of the joint protection body, which is close to a joint movement area (lines 7-8); the at least one notch divides the joint protection body into a plurality of joint pieces (lines 8-10); adjacent joint pieces are connected by two local junctions respectively provided at appropriate positions on two sides of the joint protection body, and the adjacent joint pieces are capable of rotating with the local junctions as rotation fulcrums (lines 10-14).
Regarding claim 2, the ‘949 patent discloses the joint protection device according to claim 1, wherein the joint protection device comprises a strip-shaped fixing belt, one end of the fixing belt is integrally formed on one side of the joint protection body while the other end of the fixing belt is provided with at least one buckle; the joint protection body is provided with through holes matched with the at least one buckle, and after wrapping around the joint, the fixing belt is fastened to the through holes by means of the buckle; wherein the other end of the fixing belt is further provided with at least one saw-toothed barb, and the joint protection body is further provided with corresponding through holes or semi-through holes matched with the at least one saw-toothed barb (see claim 4).
Regarding claim 3, the ‘949 patent discloses the joint protection device according to claim 1, wherein the joint protection device comprises at least one of an opened fixing ring and a closed fixing ring which are fixed to the joint protection body (see claim 5)
Regarding claim 4, the ‘949 patent discloses the joint protection device according to claim 1, wherein an elastomer with a good an elasticity is injected between the joint pieces through overmolding, to support a part of a body weight by an elastic tension of the elastomer when the joint projection body is bent (see claim 6).
Regarding claim 5, claim 7 of the ‘949 patent substantially disclsoes joint protection device according to claim 1, wherein at least one joint piece is further provided with hook-shaped structures that are mutually cooperated, and when the joint is bent inwardly until the hook-shaped structures contact with each other, the joint stops bending; wherein the joint protection body is further provided with a notch, a middle part of the notch is provided with a middle junction, and the joint pieces on two sides of the middle junction rotate in any direction with the middle junction as a rotation fulcrum.
Claim 7 of the ‘949 patent fails to recite notches. However, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Therefore, it would have been obvious to one having ordinary skill in the art to have provided the joint protection device with additional notches in order to further divide the joint protection body into additional joint pieces.
Regarding claim 6, the ‘949 patent discloses joint protection device according to claim 1, wherein one end of the joint protection body extends to form a thin wall having an L-shape in a cross section (see claims 1-3).
Claim Rejections - 35 USC § 102
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.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2005/0251078 (“Fleischman”).
Regarding claim 1, Fleischman discloses a finger protector that anticipates Applicant’s presently claimed invention. More specifically, Fleischmann discloses a joint protection device (constituted by 1” shown in Fig. 6), comprising a joint protection body (2”, 3”) whose horizontal shape substantially matches a shape of a joint (contoured to match the shape of a finger since it is curved and for use on the finger see the Abstract), wherein the joint protection body is a hollow housing bottom (see Fig. 1 and para. [0038] and opened bottom adjacent 3”) and comprises a front supporting portion (top portion) and side supporting portions (side portions) distributed on two sides of the front supporting portion, the front supporting portion and the side supporting portions respectively wrapping a front surface and side surfaces of the joint to provide front and side supports for the joint; at least one notch is provided (recess 25” in a portion of the joint protection body, which is close to a joint movement area; the at least one notch divides the joint protection body into a plurality of joint pieces (as can be seen from Figs. 5a and Fb, multiple notches form multiple portions; adjacent joint pieces are connected by two local junctions respectively provided at appropriate positions on two sides of the joint protection body (see Figs. 5a and Fb, and the adjacent joint pieces are capable of rotating with the local junctions as rotation fulcrums (in that that the pieces are able to bend with respect to one another) .
Claim(s) 16 and 17 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 2,450,862 (“Wilkinson”).
Regarding claim 16, Wilkinson discloses a joint protection device (constituted by the ankle support shown in Figs. 1-3), comprising a joint protection body (member 12, col. 1, lines 33-40), see whose horizontal shape matches a shape of a joint (see Fig. 1 and col. 1, lines 35-36 which discloses the member is constructed from resilient material that is inherently capable of matching a shape of a joint), the joint protection body being a hollow housing (the foot, ankle and a portion of the leg fit within the ankle support, see Fig. 1) having an opened bottom (bottom of the support is open, see Figs. 1 and 2) and comprising a front supporting portion and side supporting portions distributed on two sides of the front supporting portion (see annotated Fig. 1 below), the front supporting portion and the side supporting portions respectively wrapping a front surface and side surfaces of the joint to provide front and side supports for the joint (see annotated Fig. 1); and an upper end of the joint protection body provides a clearance structure that allows joint movement (see annotated Fig. 2).
Regarding claim 17, Wilkinson discloses the joint protection device according to claim 16, wherein the clearance structure is a notch (see annotated Fig. 2 below) formed by a middle position of the upper end being depressed downward (see annotated Fig. 2 below), or is a moving space formed by the upper end being inclined rearward.
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent No. 5,152,082 to Culpepper discloses a shoe and ankle support therefor, wherein the support is positioned between inner and outer layer on an upper (8) of the footwear, e.g., shoe (2, see Fig. 1).
U.S. Patent No. 1,192,433 to Krieger discloses an ankle brace that can be inserted into a shoe (see Figs. 1 and 2) to sustain an ankle (page 1, lines 9-11).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM M LEWIS whose telephone number is (571)272-4796. The examiner can normally be reached Monday -Friday 5:30 am -11:30 am.
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, Alireza Nia can be reached at (571)270-3076. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIM M LEWIS/Primary Examiner, Art Unit 3786