DETAILED ACTION
In Applicant’s Response filed 9/15/25, Applicant has added new claims 16-17. Claims 1-9 have been cancelled. Currently, claims 10-17 are 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/15/25 has been entered.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 10-16 are rejected under 35 U.S.C. 103 as being unpatentable over Pethybridge (US 4721102) in view of Zours (US 2008/0045873).
With respect to claim 10, Pethybridge discloses a portable spinal decompression device (portable traction device - col 1 lines 4-6; provides spinal decompression – col 1 lines 27-34) comprising:
a. an inner thoracic belt (upper band 10) positioned to completely encircle a chest of a user close to the axilla (shown in fig 2), wherein the inner thoracic belt is formed of a stretchable material (one or both of the bands may be formed of elastic material – col 1 lines 41-42; elastic is inherently stretchable) and adjoined by a first fastener mechanism that permits adjustment of the inner thoracic belt for a tight fit around the chest of the user (fastening means 12 on upper band 10; may be Velcro – col 2 lines 42-46; Velcro fastening means are adjustable since there are multiple hooks/loops on each cooperating fastener to provide a variety of potential fastening arrangements and adjustment of the fit by tightening or loosening; see also col 2 lines 33-37, 39-42);
b. an inner lumbar belt (lower band 11) positioned to completely encircle a waist of the user (shown in fig 2) wherein the inner lumbar belt is formed of a stretchable material (one or both of the bands may be formed of elastic material – col 1 lines 41-42; elastic is inherently stretchable) and adjoined by a second fastener mechanism that permits adjustment of the inner lumbar belt for a tight fit around the waist of the user (fastening means 14 on lower band 11; may be Velcro – col 2 lines 42-46; Velcro fastening means are adjustable since there are multiple hooks/loops on each cooperating fastener to provide a variety of potential fastening arrangements and adjustment of the fit by tightening or loosening; see also col 2 lines 33-37, 39-42);
c. at least one telescoping rod (biasing means shown in fig 3; interpreted as being a “rod” since it is illustrated as being a thin, straight bar; as shown i.e. in fig 3, part 22 slides within the interior of part 18, thus providing a telescoping structure) adjustable forward or back along the inner thoracic belt and the inner lumbar belt (the slide member 22 is configured to move up/down relative to housing 18 to thereby provide adjustment in forward or backwards directions with the elements provided along the bands 10 and 11 as shown in fig 3); and
d. a traction assembly (housing 18 which includes spring 21; fig 2-3) configured to selectively extend the at least one rod (the spring 21 biases slide member 22 that is slidably received in the slide passage of housing 18 – col 3 lines 1-4) for decompressing a spine of the user (col 3 lines 15-25).
Pethybridge does not, however, disclose a first outer tension adjustment cinched around the inner thoracic belt and a second outer tension adjustment cinched around the inner lumbar belt.
Zours, however, teaches a spinal orthotic device (see fig 10) comprising an inner thoracic belt (upper abdominal corset 17,130) with a first outer tension adjustment cinched around the inner thoracic belt (belt 14 which wraps over the outside of corset 17 as shown in fig 10; interpreted as being a “tension adjustment” strap because pulling the strap around the user’s body inherently applies some amount of tension to the body – adjustment of the tension is interpreted as being accomplished by how tight or loose the strap is pulled around the body; the strap is interpreted as being “cinched” around the upper abdominal corset since it wraps around and is secured about the corset when worn by a user) and an inner lumbar belt (lower abdominal corset 40,120) with a second outer tension adjustment cinched around the inner lumbar belt (belt which wraps over the outside of corset 40 as shown in fig 10; figure 14 also clearly shows a belt over the outside of the lower abdominal corset 120; interpreted as being a “tension adjustment” strap because pulling the strap around the user’s body inherently applies some amount of tension to the body – adjustment of the tension is interpreted as being accomplished by how tight or loose the strap is pulled around the body; the strap is interpreted as being “cinched” around the lower abdominal corset since it wraps around and is secured about the corset when worn by a user). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to have modified the device of Pethybridge to include a first outer tension adjustment cinched around the inner thoracic belt and a second outer tension adjustment cinched around the inner lumbar belt, as taught by Zours, in order to provide more secure fastening of the belts on a patient during use to thereby maintain proper positioning of the device on the body.
With respect to claims 11-12, Pethybridge in view of Zours discloses the invention substantially as claimed (see rejection of claim 10) and Pethybridge also discloses that the first fastener comprises hooks and loops for fastening the inner thoracic belt (fastening means 12 on upper band 10; may be Velcro – col 2 lines 42-46; Velcro fastening means are adjustable since there are multiple hooks/loops on each cooperating fastener to provide a variety of potential fastening arrangements) and the second fastener comprises hooks and loops for fastening the inner lumbar belt (fastening means 14 on lower band 11; may be Velcro – col 2 lines 42-46; Velcro fastening means are adjustable since there are multiple hooks/loops on each cooperating fastener to provide a variety of potential fastening arrangements).
With respect to claims 13-15, Pethybridge in view of Zours does not explicitly disclose the method steps exactly as claimed, however, to the extent that the prior art apparatus meets the structural limitations of the apparatus, as claimed, it is obvious that during normal use of the prior art device of Pethybridge in view of Zours, that the prior art device will also perform the method steps as claimed. Furthermore, it has been held that 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); MPEP 2112.01(I). In the present case, the device recited in method claims 13-15 is identical to the device recited in claims 10-12, which is unpatentable over Pethybridge in view of Zours (see rejection of claims 10-12). Since the prior art device of Pethybridge in view of Zours is the same as the device for carrying out the claimed method, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, that the device of Pethybridge in view of Zours will perform the claimed process because the method as claimed is nothing more than the expected steps involved for normal and usual use of the device by an intended user.
With respect to claim 16, Pethybridge in view of Zours discloses the invention substantially as claimed (see rejection of claim 10) and Zours further teaches that the first outer tension adjustment (belt 14) has an end that is positioned at the chest of the user (as shown in fig 10, the free ends of belt 14 are located on the front of the device which is expected to be positioned on the chest during use; furthermore, the ends are interpreted as being attached to close the device about the user’s body and are interpreted as being connected via velcro type fasteners as described in para [0066] – thus, the ends of belt 14 are interpreted as being attached and thus held in position at a location at the front of the device which will be at the chest of a user when worn). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to have modified the device of Pethybridge in view of Zours to position the first outer tension adjustment so that an end is positioned at the chest of the user like the ends 14 in Zours in order to provide the end at a location where a user can easily access and grasp the end for application, adjustment, and/or removal of the device.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Pethybridge (US 4721102) in view of Zours (US 2008/0045873) and further in view of Shtabholz (US 4987885).
With respect to claim 17, Pethybridge in view of Zours discloses the invention substantially as claimed (see rejection of claim 10) but does not disclose that the traction assembly has at least one actuator handle that is movable for controlling extension of the at least one telescoping rod, and wherein the at least one actuator handle is positioned on a side of the traction assembly such that the at least one handle is reachable by the user.
Shtabholz, however, teaches a lumbar traction apparatus comprising traction control
assemblies on both sides 43 and 39, rods 36 and 40 extend between upper and lower supports
11 and 12 and go through housings 37 and 41 which are plate lifting mechanisms operated by
hand levers 42 and 38 which cause traction forces between the supports 11/12 when they
move up rods 40 and 36 (col 3 lines36-46) — thus, Shtabholz teaches an actuator mechanism
(housings 37/41) including actuator handles (levers 38/42) wherein the handles are movable for controlling extension of the at least one telescoping rod because the actuator moves along the rods when said actuator handles are raised and lowered (move up rods 36 and 40). Shtabholz also teaches that the at least one actuator handle is positioned on a side of the traction assembly (as shown in fig 1) such that the at least one handle is reachable by the user (the levers 38 and 42 are described as being “hand levers” and thus are interpreted as being configured to be grasped by a user. Furthermore, the position of these elements on the sides of the device in fig 1 is expected to locate the levers on the sides of the user’s torso in a position that is reachable with the hands when the user is wearing the device). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to have substituted the rods and traction assembly of Pethybridge in view of Zours an assembly that has at least one actuator handle that is movable for controlling extension of the at least one telescoping rod, and wherein the at least one actuator handle is positioned on a side of the traction assembly such that the at least one handle is reachable by the user, as taught by Shtabholz, in order to permit a user to apply differential traction if desired or necessary (Shtabholz col 3 lines 46-48).
Citation of Pertinent Prior Art
The following prior art is made of record because it is considered pertinent to applicant's disclosure although it is not relied upon in the present rejections of record: Scott (US 4715362); Reinecke et al (US 7276038): Roballey (US 2004/0073150).
Response to Amendments/Arguments
Applicant’s amendments and arguments filed 9/15/25 have been fully considered as follows:
Regarding the claim rejections under 35 USC 103, Applicant’s arguments on pages 5-11 have been fully considered but are not persuasive.
Specifically, the Office has noted Applicant’s arguments on page 6 that “the corsets 17, 40 disclosed by Zours are not “belts,”…”. The Office respectfully disagrees since the term “belt” can be broadly interpreted to mean a strip of material worn around the waist or chest and the corsets 17 and 40 of Zours have such a configuration and, thus, have been interpreted as being belts.
The Office has also noted Applicant’s arguments on pages 6-7 that “it would be apparent to a person of ordinary skill that the same motivations for using the alleged belt 14 of Zours around the corset 40 do not apply for the bands 10, 11 of Pethybridge” because in Zours “it appears to be the function of the belt 14 to press against the corset 40 for holding the otherwise unfastened corset 40 in place” whereas the bands 10 and 11 in Pethybridge include fastening means to allow adjustment of the fit of the bands and therefore would have no need for belts as taught in Zours to hold the bands in place. Applicant further argued that the combination of these references does not appear to be based on actual teachings of the references but, instead, appears to be based on impermissible hindsight. The Office respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the present case, the belt 14 in Zours is disclosed as being an inelastic belt but there does not appear to be any specific disclosure of use of the belt for holding an unfastened corset in place. The Office has interpreted that application of an inelastic belt such as belt 14 of Zours on top of an elastic band such as bands 10 and 11 of Pethybridge would be understood by one having ordinary skill in the art as providing additional support to the structure. Additionally, the inelastic belt inherently will restrict how much the underlying elastic belt can stretch to thereby provide more secure fastening of the belts on a patient during use and thereby maintain proper positioning of the device on the body. For at least these reasons, the Office maintains that the combination of Pethybridge and Zours in the claim rejections provided above would have been obvious to one having ordinary skill in the art and that such a combination takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure.
The Office has also noted Applicant’s arguments on page 8 that even if it is assumed that the corset of Zours constitutes a "belt," as alleged in the Office Action, the issue is that the component 17, 40, is not described as having any "fastener mechanism," and it is apparent that the function of the belt 14 of Zours is to secure the otherwise unfastened corset 17, 40. Applicant further argued that neither reference provides any reason or motivation for using both fastening means 12, 14 for the bands 10, 11 of Pethybridge and the outer belt 14 of Zours. The Office is not persuaded by this argument, however, because Zours explicitly teaches that “the system 17 is closed ventrally with a VELCRO-type closure, for example, via the open belt ends 20” (para [0052]; belt ends 20 are identified in fig 2). Thus, the Office maintains that the corset 17 is not “unfastened” and, therefore, that the belt 14 of Zours can be used on top of the bands 10,11 of Pethybridge in the same manner that belt 14 is applied over the “fastened” corset 17 in Zours.
The Office has also noted Applicant’s arguments on pages 7-8 that the claimed invention differs from the prior art because in the claimed invention, use of the stretchable belts in conjunction with the tension adjustments allows the user to more easily don the device without assistance while still achieving a desired position of the device for effective treatment. The Office is not persuaded by these arguments, however, because 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. In the present case, the intended use described by Applicant does not appear to result in a structural difference between the claimed invention and the device of Pethybridge in view of Zours and, thus, does not distinguish the claimed invention from the prior art.
The Office has also noted Applicant’s arguments on page 9 that the Applicant’s arguments related to use of the claimed device are not for the purpose of claiming intended use but are to explain motivations for structural differences between the prior art device and the claimed invention. Applicant further argues that these remarks about use are not separate from the structural differences highlighted by Applicant. The Office is not persuaded by these arguments, however, because for at least the reasons outlined above, the Office maintains that the prior art of record meets the limitations in the present claims and, thus, is not structurally different from the claimed invention.
For at least the reasons outlined above, the Office is not persuaded by Applicant’s arguments and maintains that the prior art of record reads on claim 10 substantially as recited in the present application.
The Office has also noted Applicant’s arguments on pages 10-11 of the Response regarding claims 11-17, but for at least the same reasons as provided above with respect to claim 10, the Office is not persuaded by these arguments and maintains that the prior art of record reads on the claims substantially as recited in the present application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN CARREIRO whose telephone number is (571)270-7234. The examiner can normally be reached M-F 7:30am-4pm.
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/CAITLIN A CARREIRO/Primary Examiner, Art Unit 3786