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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-11 in the reply filed on 11/10/2025 is acknowledged.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/10/2025.
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.
Claims 1 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Ashby et al. (US 2004/0171464 A1) in view of Roberts (US 2009/0233710 A1).
Claim 1: Ashby et al. discloses a method of making a fitness machine, the method including providing a base device (8 of Figure 1; paragraph [0029]) with which an operator may exercise; providing handles (202,204 of Figure 2; paragraph [0033]) each having a non-conductive portion (remainder of the handle that does not include the conductive portions) and a conductive portion (206,208,209,214a-b of Figure 2; paragraph [0034]-[0035]); coupling the handles to the base device so as to be gripped by the operator while exercising (paragraph [0030]); and electrically coupling (paragraph [0029]) the conductive portion of each of the handles to a control system (200 of Figure 2) configured to determine cardiac information for the operator, wherein the conductive portion of each of the handles receives electrical activity from the operator when gripped, and wherein the conductive portion is electrically coupled such that the electrical activity is provided to the control system for determining the cardiac information for the operator based thereon (paragraphs [0033]-[0035]).
While Ashby et al. discloses a portion of the limitations recited in claim 1, Ashby et al. fails to disclose that the conductive portion are electroplated.
However, Roberts teaches that it is known in the art to electroplate conductive portions of a handle that is to be used to monitor biometrics of the user grasping the handle (paragraph [0010]).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of Roberts with that of Ashby et al. in order to provide electroplated conductive portions on the handles of Ashby et al. This modification would have been obvious to and well within the ability of one of ordinary skill in the art to make because it is prima facie obvious to combine prior art elements by known methods in order to achieve predictable results (MPEP 2143(A)). In the instant case the predictable results would be that the conductive portions of Ashby et al. would be electroplated.
Claim 11: Neither Ashby et al. nor Roberts explicitly discloses that for each of the handles, forming the conductive portion to be less than 0.10mm thick.
However, the conductive portions of Ashby et al. are of an intended thickness for their designed purpose and function.
Therefore, it would have been obvious to one of ordinary skill in the art to modify the thickness of the conduction portions such that it was 0.10mm or less since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Further, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Ashby et al. (US 2004/0171464 A1) in view of Roberts (US 2009/0233710 A1) and Yan et al. (US 8,080,995 B2).
Claim 2: Ashby et al. fails to disclose forming each of the handles via two-shot injection molding, wherein a first shot in the two-shot injection molding comprises a first material that forms the non-conductive portion, and wherein a second shot in the two-shot injection molding comprises a second material that defines a shape of the conductive portion, whereby the conductive portion is electroplated upon the second material.
However, Yan et al. teaches that it is known in the art to form a workpiece via two-shot injection molding (Col. 1, Lines 47-51), wherein a first shot in the two-shot injection molding comprises a first material that forms a non-conductive portion (Col. 1, Lines 52-59), and wherein a second shot in the two-shot injection molding comprises a second material that defines a shape of a conductive portion (Col. 1, Line 60 to Col. 2, Line 16), whereby the conductive portion is electroplated upon the second material (Col. 2, Lines 7-16).
Therefore, it would have been obvious to one of ordinary skill in the art to substitute the two-shot injection molding and electroplating of Yan et al. for the method by which the handles of Ashby et al. are made because it is prima facie obvious to substitute one known prior art element for another in order to achieve a predictable result (MPEP 2143(B)). In the instant case the predictable result would be that the handles of Ashby et al. would be formed by the method taught by Yan et al. Further this modification would have been advantageous as Ashby et al. does not provide a teaching of how the handles were made, and Yan et al. teaches a method capable of forming the handles from a two-shot process that allows for additional electroplating.
Claim 3: Yan et al. further teaches that the first material is incompatible with an electroplating process (Col. 1, Lines 52-59) and the second material is compatible with the electroplating process (Col. 1, Line 60 to Col. 2, Line 16), further comprising performing the electroplating process on each handle to form the conductive portion upon the second material thereof (as modified above the process of Yan et al. would be performed to produce the conductive portions of Ashby et al.).
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ashby et al. (US 2004/0171464 A1) in view of Roberts (US 2009/0233710 A1) and Twery (US 8,652,051 B2).
Claim 6: Ashby et al. further discloses that the conductive portion comprises a first conductive portion (206,210 of Figure 2) and a second conductive portion (214a of Figure 2) formed in two non-contiguous areas (either side of the handle 202 separated by the non-conductive portion), wherein for each of the handles each of the two non-contiguous areas extends between an exterior side configured to be contacted by the operator in use and an interior side positioned inside one of the handles (paragraph [0030] describes that the electrodes for the conductive portions are connected to the console 200 and located in the handle), but fails to explicitly disclose that each of the handles are electrically coupled the control system via conductors to the interior sides of the two non-contiguous areas such that the conductors are protected within the handles.
However, Twery teaches an exercise system that includes handles that electrically coupled to a control system via conductors to the interior sides of handles such that the conductors are protected within the handles (Col. 2, Line 35 to Col. 3, Line 3).
Therefore, it would have been obvious to one of ordinary skill in the art to route conductors connecting the conductive portions to the control system of Ashby et al. through the handles of Ashby et al. because this would protect the conductors within the handles.
Claim 7: Neither Ashby et al. nor Twery explicitly disclose that the conductors comprise connectors for connecting wires, further comprising electrically coupling the control system to the two non- contiguous areas by drawing the connectors into contact with the interior sides of the two non- contiguous areas via fasteners.
However, the examiner takes OFFICIAL NOTICE that connectors used for connecting conductors are old and well known in the art.
Therefore, it would have been obvious to one of ordinary skill in the art to provide the conductors of Twery with connectors and to use these connectors to connect the conductive portions to the control system because connectors would provide reliable connections that could be connected and disconnected as necessary without requiring additional work such as wire cutting and soldering.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ashby et al. (US 2004/0171464 A1) in view of Roberts (US 2009/0233710 A1), Yan et al. (US 8,080,995 B2), and Daniels (US 5,409,435).
Claim 8: As addressed above Ashby et al. as modified by Yan et al. renders obvious a method of forming each of the handles of a first material via injection molding, wherein the first material is compatible with an electroplating process, and performing the electroplating process on each of the handles to form the conductive portion upon a remaining portion of the first material.
Neither Ashby et al. nor Yan et al. discloses or renders obvious the injection molding process includes masking the first material such that a masked portion of the first material is covered for each of the handles, and wherein the masked portion forms the non-conductive portion of the handle.
However, Daniels teaches that it is known in the art to form conductors of exercise systems using a method that includes masking a portion of the exercise system that is intended to be non-conductive, electroplating the portion, and the masking resulting in the conductive and non-conductive portions (Col. 30, Lines 15-48).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of Daniels with that of Ashby et al./Yan et al. in order to provide a method that included masking the non-conductive portion, because it is prima facie obvious to combine prior art elements by known methods in order to achieve predictable results (MPEP 2143(A)). In the instant case the predictable result would be that the non-conductive portions of Ashby et al. would be masked during the electroplating process.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ashby et al. (US 2004/0171464 A1) in view of Roberts (US 2009/0233710 A1) and Jones.
Claim 9: Ashby et al. fails to disclose the handles are coupled so as to be at least partially recessed within the base device.
However, Jones teaches that it is known in the art to couple handles (95 of Figure 2) to a base device (91 of Figure 2) such that the handles are partially recessed within the base device (as depicted in Figure 2).
Therefore, it would have been obvious to one of ordinary skill in the art to couple the handles of Ashby et al. such that they were at least partially recessed within the base device of Ashby et al. in order to more securely join the handles to the base device.
Claim 10: Ashby et al. further discloses that the each of the handles comprises an exterior surface configured to be contacted by the operator in use (paragraph [0030]), further comprising coupling each of the handles to the base device such that the exterior surface is flush with the base device (as depicted in Figure 2).
Allowable Subject Matter
Claims 4-5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON L VAUGHAN whose telephone number is (571)270-5704. The examiner can normally be reached Mon-Friday 8:30 - 5:00.
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/JASON L VAUGHAN/Primary Examiner, Art Unit 3726