DETAILED ACTION
This Office action is based on the amendments filed August 29, 2025 for application 18/401,370. Claims 1, 3, and 5-12 have been amended and claims 2 and 13 have been cancelled; 1 and 3-12 are currently pending.
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 August 29, 2025 have been fully considered but they are not persuasive.
In response to Applicant’s argument that the product taught by Ingram is not shaped like a sleeve in the initial state but is flat and must first be wound into a sleeve, it is noted that the claims do not preclude the sleeve shape of the base body being formed upon engagement of mating hook and loop material on flaps (70, 72, 74, 76). When the flaps (70, 72) are engaged with the flaps (74, 76), the material forms a sleeve-shaped base body (12) and meets the limitations as claimed.
In response to Applicant’s argument that the openings in the straps (14, 16) taught by Ingram leave the kneecap free in the applied state, it is noted that the features upon which Applicant relies (i.e., configured to extend/press over the kneecap, configured to support specific high loads, etc.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s arguments with respect to Price have been considered but are moot because Price was only relied upon in the rejection of claims 2 and 13 which have been cancelled.
In response to Applicant’s argument that Peters is fundamentally different from the design of the claimed invention, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Peters was only relied upon in the rejection of claim 4 to teach a first opening having a larger diameter than a second opening for better accommodating a larger circumference of a thigh region.
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.
Claim 9 is 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.
Claim 9 contains the trademark/trade name Velcro®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a hook and loop material or fastener and, accordingly, the identification/description is indefinite. For examination purposes, the trademark “Velcro” as recited in claim 9, has been interpreted as “hook and loop material”.
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, 3, 5, 6, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ingram (US 5,086,761).
Regarding claim 1, Ingram discloses a joint support (knee brace 10) for a joint region of a body part, wherein the joint region is a knee joint or an elbow joint, the joint support (10) having a sleeve-shaped base body (sleeve 12) which can be stretched in multiple axes, characterized in that the joint support (10) has at least one tension strap (pair of straps 14, 16) configured to run over the joint and generate a tensile force in a flexed state of the body part which promotes a return movement of the body part into a non-flexed position (Fig. 1; column 2, lines 52-66; column 3, lines 27-68; column 4, lines 19-32).
Regarding claim 3, Ingram discloses that the at least one tension strap (14, 16) includes at least two stretchable tension straps (14, 16) crossing the joint region (Fig. 1).
Regarding claim 5, Ingram discloses that ends (34, 36) of the tension straps (14, 16) are adjustably attached to the base body (12) (via Velcro® material) depending on the desired tension level (column 4, lines 19-32) such that the spacing between the tension straps (14, 16) at a first end of the base body (12) may be greater than the spacing between the tension straps (14, 16) at a second end of the base body (12) depending on the desired tension level in the tension straps (14, 16) as determined by the user.
Regarding claim 6, Ingram discloses that the tension straps (14, 16) at the first and second ends of the base body (12) are firmly connected thereto (via Velcro® material) (column 3, lines 39-44).
Regarding claim 12, Ingram discloses that the tension straps (14, 16) are connected to one another at least in certain regions in their crossing region (column 3, lines 33-37).
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ingram as applied to claim 1 above, in view of Peters (US 5,139,477).
Ingram discloses the invention substantially as claimed, as described above, and further discloses that the base body (12) is tubular in shape (when wrapped around a knee joint) and has a first opening (entrance) at a first end and a second opening (exit) and a second end, wherein the first opening is configured to accommodate a thigh region and the second the opening is configured to accommodate a calf region (Figs. 4-6; column 2, lines 60-66).
However, Ingram fails to expressly teach that the first opening has a larger diameter than the second opening.
Peters discloses a joint support (knee sleeve support 100) for a joint region of a body part, wherein the joint region is a knee joint or an elbow joint, the joint support (100) having a sleeve-shaped base body (pattern 300), wherein the base body (300) is tubular in shape (when wrapped around a knee joint) and has a larger diameter at a first end (top edge 2) than at a second end (bottom edge 3) (Figs. 1-3; column 2, lines 45-52; column 5, lines 1-6 & 19-29).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to modify the joint support taught by Ingram such that the first opening has a larger diameter than the second opening as taught by Peters for the purpose of better accommodating the larger circumference of the thigh region.
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ingram as applied to claim 1 above, in view of DeMarco (US 4,353,362).
Regarding claim 7-9, Ingram discloses the invention substantially as claimed, as described above, but fails to disclose a wrap-around strap.
DeMarco discloses a joint support (knee brace 10) for a joint region of a body part, wherein the joint region is a knee joint or an elbow joint, the joint support (10) having a sleeve-shaped base body (pad 12) and a wrap-around strap (tape 18) fastened to the base body (12), wherein the wrap-around strap (18) is fastened below a first end of the base body (12) and has a hook and loop material surface (hook fastener part 50) at its free end and can be wrapped once or several times around the joint support (10) and/or around the body part in an applied state and can be fixed in the applied state by means of the hook and loop material surface (50) (Figs. 1-5; column 2, lines 55-59; column 3, lines 59-68; column 4, lines 9-28).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to modify the joint support taught by Ingram to include a wrap-around strap fastened to the base body below a first end of the base body and having a hook and loop material surface at its free end such that the wrap-around strap can be wrapped once or several times around the joint support as taught by DeMarco for the purpose of holding the joint support secure and uniform fit with the user’s knee joint.
Although the combination of Ingram and DeMarco fails to expressly teach that the wrap-around strap is fastened between the first end of the base body and an outer edge of the at least one tension strap, it would have been an obvious matter of design choice to one having ordinary skill in the art to construct the joint support taught by the combination of Ingram and DeMarco such that the wrap-around strap is fastened between the first end of the base body and an outer edge of the at least one tension strap since it has been held that rearranging parts of an invention that would not have modified the operation of the device involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Regarding claim 10, the combination of Ingram and DeMarco discloses the invention substantially as claimed, as described above, and Ingram further discloses that the at least one tension strap (14, 16) is sewn (stitched) to the base body (12) (column 3, lines 33-37) and DeMarco further discloses that the wrap-around strap (18) is suitably secured to the base body (12) (column 3, lines 59-60).
Although the combination of Ingram and DeMarco fails to expressly teach that the wrap-around strap is also sewn to the base body, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to secure the wrap-around strap to the base body by stitches as taught by Ingram with respect to the securement of the at least one tension strap for the purpose using in the same manner of attachment with both the wrap-around strap and the at least one tension strap.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ingram as applied to claims 1 and 3 above, in view of Dominique (FR 2 759 285).
Ingram discloses the invention substantially as claimed, as described above, but fails to disclose that the tension straps are not connected to the base body at least over the joint region.
Dominique discloses a joint support (knee support) for a joint region of a body part, wherein the joint region is a knee joint or an elbow joint, the joint support having a sleeve-shaped base body (sheet 2), characterized in that the joint support has at least two stretchable tension straps (derotation straps 4) crossing in the joint region, wherein the tension straps (4) are not connected the base body (2) at least over the joint region (straps 4 are only connected to the base body 2 at the ends thereof via tabs 24 and at the side via pads 5) (Fig. 2; page 4, lines 170-175; page 5, lines 200-204 of English translation).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to modify the joint support taught by Ingram such that the tension straps are not connected to the base body at least over the joint region as taught by Dominique for the purpose of enabling selective adjustment of the tension straps as desired by the user.
Conclusion
THIS ACTION IS MADE FINAL. 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 Keri J. Nelson whose telephone number is 571-270-3821. The examiner can normally be reached Monday - Friday, 9am - 4pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachael E. Bredefeld, can be reached at 571-270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KERI J NELSON/Primary Examiner, Art Unit 3786 12/3/2025