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 .
Response to Amendment
As of the reply filed 6/30/2026, claims 1-7, 9-11 and 14-17 are pending. Claims 15-17 are withdrawn. Claims 1-7, 9-11, and 14 have been amended.
Response to Arguments
Applicant’s cancellation of claim 8 has overcome the previously filed claim objection, therefore this objection is withdrawn.
Applicant's arguments filed 6/30/2026 have been fully considered but they are not persuasive.
Applicant’s arguments rely on language solely recited in preamble recitations in claims 1-7, 9-11, and 14. When reading the preamble in the context of the entire claim, the recitation of “an/the automatic tourniquet” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claims is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
In response to applicant's argument that Beers et al. and Stillman et al. are both “concerned with tightening footwear around a foot- not with a tourniquet or a loop configured to be wrapped around a limb to apply pressure directly to that limb” (see Remarks page 6), 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. Additionally, Beer et al. explicitly shows the lacing apparatus (see Fig. 1) with laces (152) entering channel openings (156) to pass around a limb of a wearer (these laces wrap around the foot and ankle to apply direct pressure), and the Examiner argues that this directly reads on the functional limitations as amended.
Applicant further argues that Stillman et al. fails to disclose the strip to be “anchored to the planetary element in at least two places” (see Remarks pages 6-7) since Stillman et al. discloses a spool (260) connected to the rotating ring gear (230), resulting in “the strip being wound on a spool connected to a ring gear, not anchored directly to a planetary element as required by claim 1”, and the Examiner respectfully disagrees. The present claim language does not require direct attachment between the strip and the planetary element in at least two places, but instead recites “wherein the strip is anchored to the planetary element in at least two places”, which is a broader claim limitation that does not require direct attachment. Stillman et al. discloses the strip being anchored in place relative to the planetary element in at least two areas via its attachment to the spool (PP [0035]: “The rotating ring gear 230 can be a single gear coaxial with the central axis A and configured to engage each of the planet gears 255A-255C”) and therefore reads on the claim language.
Regarding claims 6-7, which require anchoring/connection in the planetary element, the Examiner argues that recitation of “the planetary element” is broad, since the claims do not define the structural or functional bounds of the “element”. The Applicant argues that characterization the spool to be part of the planetary element “conflates distinct components of the gear assembly”, but the claims do not specifically or distinctly characterize these components of the gear assembly. The Examiner’s present interpretation is in line with Fig. 1B of the present application, which shows a rotatable planetary element (26) connected to a worm gear (25) which drives its rotation. The strip (24) connects into a spool portion of the planetary element (26, see also Fig. 1C). The Examiner argues that the characterization of Beer et al. and Stillman et al. set forth in the present rejections is reasonable in light of the present specification.
In view of applicant’s amendments, additional claim objections apply.
Claim Objections
Claim 2 is objected to because of the following informalities:
Claim 2 recites “the automatic tourniquet of claim 1, wherein the pressure drop is a blood pressure drop and the device is an automatic tourniquet” which is redundant in view of Applicant’s amendments to the preambles of each claim, which already functionally define the device as an automatic tourniquet. It is recommended that the limitation “and the device is an automatic tourniquet” be removed from this claim.
Claims 2, 3, and 14 each recite “the device” which no longer has antecedent basis in view of Applicant’s amendments to the claims. It is recommended that each instance of “the device” be amended to recite “the automatic tourniquet” instead.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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 1-7, 9-11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Beers et al. (US PGPub 2014/0068838 A1) in view of Stillman et al. (US PGPub 2018/0343978 A1).
With respect to claim 1, Beers et al. discloses an automatic tourniquet (see Fig. 39, Fig. 1 shows the device wrapped around an ankle portion of footwear configured to apply pressure like a tourniquet), comprising:
at least one strip (720 in Figs. 20-21) wherein the at least one strip is selected from; a wire, a band, and a combination thereof (PP [0132]: “a schematic lace 720 is shown with spool 240”); and
an actuator (220 in Fig. 8),
wherein the actuator (220) comprises:
an electric motor (PP [0096]: “motor 220 may be an electric motor”); and
a gear assembly (160) comprising a planetary element (PP [0099]: “Other examples of gears that may be used include, but are not limited to: helical gears, external gears, internal gears, bevel gears, crown gears, worm gears, non-circular gears, rack and pinion gears, epicyclic gears, planetary gears, harmonic drive gears, cage gears, magnetic gears as well as any other kinds of gears and/or any combinations of various kinds of gears”), wherein the gear assembly (200) is configured to tighten a loop of the strip (720 in Figs. 20-21, see loop in Fig. 21) when actuated in a first direction, and to untighten the loop when actuated in a second direction (PP [0127]: “spool 240 may rotate in a first rotational direction or a second rotational direction. As previously described, spool 240 may be biased to rotate in a first rotational direction (i.e., lace winding direction) by secondary winding assembly 260 (not shown), which applies a biasing torque to spool at second receiving portion 244. However, this biasing force may be just large enough to pull in slack and can be overcome relatively easily by a wearer pulling on the laces to unwind them from spool 240. Thus, spool 240 may rotate relatively freely in this configuration, though spool 240 will be biased to wind in slack in the absence of tension applied by the lace to spool 240”), wherein the loop is configured to be wrapped around a limb (see Fig. 1 where lacing 152 enters channel 156 to wrap around an ankle), and wherein the gear assembly is configured to cause the at least one strip to form a tightening pressure on the limb (see PP [0127] as cited above, see Fig. 1 where lacing 152 enters channel 156 to tighten around an ankle when actuated).
However, Beer et al. fails to explicitly disclose wherein the strip is anchored to the planetary element in at least two places, to create a loop.
In the related field of automated lacing devices (abstract), which is relevant to the present application because lacing devices concern themselves with rotationally tightening a lace, band, or strap around a portion of a user’s body, similar to a tourniquet, Stillman et al. teaches an automatic lacing gear assembly (200 in Figs. 3A-D) comprising a planetary element (220, 230, and 260 in Figs. 3A-B, PP [0042]: “The sun gear 220, being engaged with each of planet gears 255A-255C via inner teeth 222, can transfer rotation to each of planet gears 255A-255C to cause each of planet gears 255A-255C to rotate about a central portion or hub of the sun gear 220. The planet gears 255A-255C can transfer the rotation further to the rotating ring gear 230 and the spool 260 to drive winding of a lace during the lacing event”), wherein a strip is anchored to the planetary element (220, 230, and 260, PP [0035]: “The spool 260 can be a bobbin, reel, or cylinder configured to wind and retain a portion of a lace of a footwear article”) in at least two places, since the spool (260) is part of the planetary element (220, 230, and 260).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date to have modified the Beer et al. device to include the specific planetary gear arrangement as taught by Stillman et al. such that the spool (240 in Fig. 16) of Beer et al. replaces the spool (260 in Fig. 3A) of the Stillman et al. device. One of ordinary skill in the art would have been motivated to perform this modification because it is a simple substitution of gear assemblies that would have yielded predictable results, as the Stillman et al. assembly is also configured to take up and release lacing for automated tightening of a shoelace. Swapping the gear assemblies would not have altered the main operating principle of the Beer et al. device, particularly since Beer et al. contemplates a variety of gear arrangements, including a planetary gear arrangement as taught by Stillman et al. (Beer et al. PP [0099]: “Other examples of gears that may be used include, but are not limited to: helical gears, external gears, internal gears, bevel gears, crown gears, worm gears, non-circular gears, rack and pinion gears, epicyclic gears, planetary gears, harmonic drive gears, cage gears, magnetic gears as well as any other kinds of gears and/or any combinations of various kinds of gears”). Modifying the Beer et al. device in this way would yield wherein the strip is anchored to the planetary element in at least two places, since Figs. 20-21 of Beer et al. show that the strip (720) interfaces with a channel (247 in Fig. 9) and grooves (246 and 248). Since the combination as proposed places the spool (260) including receiving portions 246 and 248 onto the gear assembly in Figs. 3A-D of Stillman et al., it yields the strip anchored to the planetary element in at least two places.
Regarding claim 2, Beers et al. as modified by Stillman et al. further discloses wherein the pressure drop is a blood pressure drop and the device (see Fig. 8 of Beers et al. and Figs. 3A-D of Stillman et al.) is an automatic tourniquet (the combination as proposed is configured to tighten around a limb of a patient, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established”, In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), see MPEP 2112.01).
Regarding claim 3, Beers et al. as modified by Stillman et al. further discloses wherein the pressure drop is an air pressure leak from a spacesuit and the device (see Fig. 8 of Beers et al. and Figs. 3A-D of Stillman et al.) is a safety device (the combination as proposed is configured to tighten around a limb of a patient, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established”, In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), see MPEP 2112.01).
Regarding claim 4, Beers et al. as modified by Stillman et al. further discloses wherein the electric motor (220 in Fig. 8 of Beers et al., PP [0096]: “motor 220 may be an electric motor”) is a DC electric motor (PP [0146]: “both a battery and a control unit could be disposed within housing unit 212 (see FIG. 1) of motorized tensioning device 160”, a battery is a DC source).
Regarding claim 5, Beers et al. as modified by Stillman et al. further discloses wherein the planetary element (220, 230, and 260 in Figs. 3A-B of Stillman et al., PP [0042]: “The sun gear 220, being engaged with each of planet gears 255A-255C via inner teeth 222, can transfer rotation to each of planet gears 255A-255C to cause each of planet gears 255A-255C to rotate about a central portion or hub of the sun gear 220. The planet gears 255A-255C can transfer the rotation further to the rotating ring gear 230 and the spool 260 to drive winding of a lace during the lacing event”) is connected to a worm gear (215 in Figs. 3A-B).
Regarding claim 6, Beers et al. as modified by Stillman et al. further discloses wherein the strip (720 in Figs. 20-21 of Beers et al.) is anchored to the planetary element (220, 230, and 260 in Figs. 3A-B of Stillman et al., PP [0042]: “The sun gear 220, being engaged with each of planet gears 255A-255C via inner teeth 222, can transfer rotation to each of planet gears 255A-255C to cause each of planet gears 255A-255C to rotate about a central portion or hub of the sun gear 220. The planet gears 255A-255C can transfer the rotation further to the rotating ring gear 230 and the spool 260 to drive winding of a lace during the lacing event”) by being threaded in at least two grooves (246, 247, and 248 in Fig. 8 of Beers et al. on spool 260) in the planetary element (220, 230, and 260 in Figs. 3A-B of Stillman et al., the combination as proposed would place the spool arrangement of Beers et al. onto the gear assembly of Stillman et al. in place of spool 260 such that the spool of Beers et al. is part of the planetary element of Stillman et al.).
Regarding claim 7, Beers et al. as modified by Stillman et al. further discloses wherein the strip (720 in Figs. 20-21 of Beers et al.) is connected to the planetary element (220, 230, and 260 in Figs. 3A-B of Stillman et al., PP [0042]: “The sun gear 220, being engaged with each of planet gears 255A-255C via inner teeth 222, can transfer rotation to each of planet gears 255A-255C to cause each of planet gears 255A-255C to rotate about a central portion or hub of the sun gear 220. The planet gears 255A-255C can transfer the rotation further to the rotating ring gear 230 and the spool 260 to drive winding of a lace during the lacing event”) in at least two locations (the combination as proposed would place the spool arrangement of Beers et al. onto the gear assembly of Stillman et al. in place of spool 260 such that the spool of Beers et al. is part of the planetary element of Stillman et al., the strip 720 in Figs 20-21 of Beers et al. would be connected at 246, 247, and 248 as seen in Fig. 8 of Beers et al.).
Regarding claim 9, Beers et al. as modified by Stillman et al. further discloses wherein the gear assembly (200 in Fig. 8 of Beers et al.) is designed to cause the at least one strip to form a target pressure on a limb (PP [0007]: “a motorized tensioning device for adjusting a tensioning member in an article includes a motor and a gear reduction system, where the motor is configured to drive the gear reduction system. The device also includes a spool configured to wind a tensioning member, where the spool can rotate in a first rotational direction for tightening the tensioning member”).
Regarding claim 10, Beers et al. as modified by Stillman et al. further discloses one or more sensors (Beers et al. PP [0094]: “motorized tensioning device operates to let out enough of lace 152 so that substantially all tension is removed from lace 152. In some cases, this may be achieved by continuously monitoring tension in lace 152 (for example, using sensors) and letting out lace 152 until the level of tension is below a threshold tension”, PP [0163]: “Embodiments can incorporate a variety of sensors for providing tension specific information to a control unit of a motorized tensioning system”), and wherein the electric motor (220 in Fig. 8) is controlled to provide rotary torque to the gear assembly (200) based on a signal received from the one or more sensors (see PP [0094], [0163], cited previously, see also PP [0174] and Fig. 39).
Regarding claim 11, Beers et al. as modified by Stillman et al. further discloses wherein the electric motor (220 in Fig. 8 of Beers et al.) is controlled to provide rotary torque to the gear assembly (200), in a predetermined sequence (the gears of gear assembly 200 are sequentially ordered such that torque is transferred to each gear in an ordered sequence).
Regarding claim 14, Beers et al. as modified by Stillman et al. further discloses wherein the device (see Fig. 8 of Beers et al. and Figs. 3A-D of Stillman et al.) is integrated into a garment (Beers et al. PP [0010]: “an article of apparel includes a tensioning member integrated into the article of apparel and a motorized tightening device including a spool”, see shoe in Fig. 1 of Stillman et al.).
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 Bridget E. Rabaglia whose telephone number is (571)272-2908. The examiner can normally be reached Monday - Thursday, 7am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIDGET E. RABAGLIA/Examiner, Art Unit 3771 /TAN-UYEN T HO/Supervisory Patent Examiner, Art Unit 3771
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