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 Statements filed on September 28, 2023 and July 10, 2025 have been considered. Initialed copies of the Form 1449 are enclosed herewith.
Election/Restrictions
Applicant’s election without traverse of Group I: Claims 1-7 in the reply filed on September 16, 2026 is acknowledged.
Status of Claims
This office action is in response to an election of claims entered on September 16, 2026 for the patent application 18/284,717 originally filed on September 28, 2023. Claims 1-7 are elected. Claims 8-15 are withdrawn. Claims 1-15 are pending.
Drawings
Regarding FIGS. 1-16, 37 CFR 1.84(a)(1), stated in part, normally requires black and white drawings. India ink, or its equivalent that secures solid black lines, must be used for drawings. In the present case, FIGS. 1-16 have very faint text and lines. Therefore, the failure to use solid black text and lines renders FIGS. 1-16 from complying with 37 CFR 1.84(a)(1).
Regarding FIGS. 1-7 and 9-16, 37 CFR 1.84(b)(1), stated in part, indicates that black and white photographs, including photocopies of photographs and clip art, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. In the present case, FIGS. 1-7 and 9-16 contain screenshots/clip art that are not of sufficient quality so that all details in the screenshots are reproducible in the printed patent. Therefore, the use of screen shots/clip art lacking sufficient reproducible quality prevents FIGS. 1-7 and 9-16 from complying with 37 CFR 1.84(b)(1).
Regarding FIGS. 1-7 and 9-16, 37 CFR 1.84(m), stated in part, prefers the use of shading when parts are shown in perspective. In the present case, FIGS. 1-7 and 9-16 uses various forms of shading making the figure unclear Therefore, the use of shading in an otherwise non-perspective view prevents FIGS. 1-7 and 9-16 from complying with 37 CFR 1.84(m).
Claim Rejections - 35 USC § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-7 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter.
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 1-7 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).
Specifically, claim 1 recites “a step of contracting a lateral abdominal muscle including a transverse abdominal muscle to pull in an abdominal periphery voluntarily by a trainee;
a step of covering the abdominal periphery pulled in voluntarily by the trainee from an upper portion of a pelvis to a bottom of a tenth rib by tightly wrapping while stretching a training tool in a longitudinal shape having stretchability and flexibility; and
a step of carrying out training while maintaining a state where the abdominal periphery is pulled in by shrinking force of the training tool.”
Under the broadest reasonable interpretation of the claim, the claim is interpreted as having a human being claimed and performing the tasks of claim 1, and substantially similar human involvement in claims 2-7. As such, the claims includes non-statutory embodiments. Therefore, claims 1-7 are rejected under 35 U.S.C. § 101 as being non-statutory subject matter. Claims 2-7 are also rejected under 35 U.S.C. § 101 as being non-statutory subject matter, based on their respective dependency to claim 1.
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)(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.
Claims 1 and 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by James (US 2017/0225031).
Regarding claim 1, and substantially similar limitations in claims 4-7, James discloses a step of contracting a lateral abdominal muscle including a transverse abdominal muscle to pull in an abdominal periphery voluntarily by a trainee (see para. [0096] In one example, the device 100 may provide the discrete tactile feedback at multiple predetermined levels of expansion. For example, the attachment member 120 and the feedback member 110 may cooperate to mechanically provide discrete tactile feedback to the subject when the abdomen reaches multiple predetermined levels of expansion. This could include, for example, tactile feedback being provided during inhalation when the abdomen reaches a predetermined level of expansion, and again during exhalation when the abdomen reaches a predetermined level of contraction. In this regard, the term “predetermined level of contraction” could also be used to refer to a defined degree of expansion, typically less than the predetermined level of expansion, such that discrete tactile feedback is provided to the subject S when the abdomen reaches a predetermined level of contraction);
a step of covering the abdominal periphery pulled in voluntarily by the trainee from an upper portion of a pelvis to a bottom of a tenth rib by tightly wrapping while stretching a training tool in a longitudinal shape having stretchability and flexibility (see para. [0013] a) at least one feedback member positioned in contact with the subject's abdomen near the subject's diaphragm; and, [0014] b) an attachment member at least partially extending around the subject, wherein the attachment member and the feedback member cooperate to mechanically provide discrete tactile feedback to the subject when the abdomen reaches a predetermined level of expansion.
See para. [0092] In one example, the attachment member 120 and/or the feedback member 110 may be composed of a unique stretch fabric in order to deliver desired loading profiles, for example, in order to set a desired predetermined level of expansion.
See para. [0093] In some examples, the device 100 remains in a desired positioned on the subject S due to the material composition of the attachment member 120 and/or feedback member 110, as described above. Additionally and/or alternatively, the fit of the attachment member 120 about the subject's abdomen at least partially allows the device 100 to remain in the desired position, for example, the attachment member 120 may extend about the subject's abdomen using a moderately tight or firm fit); and
a step of carrying out training while maintaining a state where the abdominal periphery is pulled in by shrinking force of the training tool (see para. [0048] Typically the method is performed during at least one of: [0049] a) swimming;
See para. [0089] In one example, a material composition of the feedback member 110 may at least partially determine the predetermined level. For example, a higher rigidity and/or grade and/or lower flexibility of the material composition of the feedback member 110 may raise the predetermined level of expansion of the abdomen at which the transition occurs. Similarly a lower rigidity and/or grade and/or higher flexibility of material composition may lower the predetermined level. In this regard, the subject S may stage their breathing training by progressing from weaker grades of, for example, plastic feedback members which provide little resistance, to higher grades of plastic which provide resistance training).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over James (US 2017/0225031).
Regarding claim 2, James discloses wherein the training tool has contractile force for tightening (See para. [0092] In one example, the attachment member 120 and/or the feedback member 110 may be composed of a unique stretch fabric in order to deliver desired loading profiles, for example, in order to set a desired predetermined level of expansion).
James fails to explicitly disclose such that a length of the abdominal periphery on a navel of the trainee becomes 3% to 20% shorter than a length of the abdominal periphery in a resting state. However, the Applicant’s use of a length of the abdominal periphery on a navel of the trainee becomes 3% to 20% shorter than a length of the abdominal periphery in a resting state is an obvious design choice. Applicant has not disclosed that the use of a length of the abdominal periphery on a navel of the trainee becomes 3% to 20% shorter than a length of the abdominal periphery in a resting state solves any stated problem or is for any particular purpose. Moreover, it appears that any length using the device of James or the Applicant would perform equally well. Therefore, it would have been prima facie obvious to modify James to obtain the device as specified in claim 2, because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of James.
Regarding claim 3, James fails to discloses wherein the training tool is formed to have buoyant force on an abdomen side front surface part larger than buoyant force on a back side front surface part. However, the Applicant’s use of a buoyant force on an abdomen side front surface part larger than buoyant force on a back side front surface part is an obvious design choice. Applicant has not disclosed that the use of a buoyancy force on an abdomen side front surface part larger than buoyant force on a back side front surface part solves any stated problem or is for any particular purpose. Moreover, it appears that any buoyancy force using the device of James or the Applicant would perform equally well. Therefore, it would have been prima facie obvious to modify James to obtain the device as specified in claim 3, because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of James.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT P. BULLINGTON whose telephone number is (313) 446-4841. The examiner can normally be reached on Monday through Friday from 8 A.M. to 4 P.M. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Peter Vasat, can be reached on (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/Robert P Bullington, Esq./ Primary Examiner, Art Unit 3715
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