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 Species D in the reply filed on 9/11/2025 is acknowledged. It is noted that Applicant lists claims 1-5, 15, 16, and 21 as reading on the elected invention. In a call with applicant’s representative on 11/17/2025 it was discussed that claims 2-5 did not read on the elected invention. The elected invention of claims 15-16 recites the shell is a glove or wrist cuff and an elastic band or spring is the compression mechanism and the actuator. Therefore, claims 2-3 reciting two rigid separable parts (Figure 1), claim 4 reciting the shell is a rigid one-piece shell and the thumb support is a hollow extension of the shell (Figure 2 or 3), and claim 5 reciting the compression mechanism is a compression pad inside the shell at each of the radius and ulna sides (Figure 1) do not read on the elected invention.
Claims 2-14, 17-20, and 22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/11/2025.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63421938, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior application does not provide support for where a spring is the compression mechanism and the actuator as recited in claim 16.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the elastic band or spring being the compression mechanism and the actuator must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. It is noted that no new matter may be added, and minimal details describing this feature are disclosed. See 112 rejections below.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 15-16, and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 15-16, 21 and the elected embodiment recite wherein the shell is a glove or wrist cuff and an elastic band or spring is the compression mechanism and the actuator. These features are not shown in the drawings and the only place an elastic wrist band or spring is disclosed is paragraph [0034]. In paragraph [0034], however, there are two compression pads and the elastic band is wrapped around the wrist to generate the compression force. Thus, the elastic band is not both the compression mechanism and the actuator and therefore does not appear to be consistent with the elected invention. Paragraph [0034] also disclose “springs can be connected to the radius and ulna shells to generate compressive force when the springs are stretched”. This does not appear to support the elected invention because the springs are not with a wrist cuff or glove. In the elected embodiment where the shell is a glove or wrist cuff and an elastic band or spring is the compression mechanism and the actuator, there is no description of where the elastic band is located, what direction or extent to which it is wrapped, the thickness, or how it is serving as both the compression mechanism and actuator as recited in claim 1. Are there certain features of the band that provide the compression and other features of the band that provide the actuator? Does it extend across the top, the bottom, or all the way around? Does the band only extend around the wrist or does it extend over part of the hand as well? None of these features were originally disclosed, discussed, or shown in the drawings. Similar questions arise with respect to the spring. Additionally, there is no description of where the springs are attached, what direction they extend, how long they are, and what feature of the spring is the compression mechanism and/or actuator? Thus, the elected invention and claims 1, 15-16, and 21 were not described in such a way to convey to one skilled in the art that the inventor had possession of the claimed invention.
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.
Claims 1, 15, 16, and 21 are 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 1 recites a wrist device comprising a compression mechanism and an actuator. It is unclear, in light of the elected embodiment of claims 15-16 how there can be both a compression mechanism and actuator when the claims recite that an elastic band or spring is the compression mechanism and the actuator. Claim 16 is unclear since claim 1 recites a compression mechanism and an actuator, but then recites in claim 16 the elastic band or spring is both the compression mechanism and the actuator.
Claim 21 recites the limitation "the step" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 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, 15, 16, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stefansson et al (US 10,245,171 B2).
Regarding claim 1, as best understood Steffansson discloses a wrist device for compressing a wrist (Figures 18-24 or 27-28), comprising: a shell (406; 500) shaped to conform to the wrist (Figures 18-24; Col, 9, lines 3-13; Figures 27-28), the shell having a radius side and an ulna side opposite the radius side (Figures 18-24, 27-28), and a thumb support (408, Figure 18; 504, Figure 27); a compression mechanism associated with the radius and ulna sides of the shell (elastic band 412, Figures 18-19; Col. 9, lines 14-18 and 29-33; 510,508, Figures 27-28); and an actuator associated with the shell, the actuator being configured to provide compression in a radioulnar direction to opposing sides of the wrist via the compression mechanism (the elastic band being having hook and loop fasteners 414,422 that can be grasped to provide compression in a radioulnar direction when it is wrapped around the wrist, Figures 18-20; Col. 8, lines 7-20; Col. 9, lines 14-18 and 29-33; 506, Col. 11, lines 13-24).
Regarding claim 15, Steffansson discloses wherein the shell is a glove or wrist cuff (Figures 18-19 or 28).
Regarding claim 16, Steffansson discloses wherein an elastic band (412; Col. 9, line 14) or spring is the compression mechanism and the actuator (the elastic band 412 being having hook and loop fasteners provides compression in a radioulnar direction when it is wrapped around the wrist, Figures 18-20; Col. 8, lines 7-20; Col. 9, lines 14-18 and 29-33).
Regarding claim 21, Steffansson discloses a method of wrist compression, comprising the step of using the wrist device of claim 1 (the elastic band 412 being having hook and loop fasteners provides compression in a radioulnar direction when it is wrapped around the wrist, Figures 18-20; Col. 8, lines 7-20; Col. 9, lines 14-18 and 29-33; Figure 28, Col. 11, lines 15-24).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kari Rodriquez whose telephone number is 571-270-1909. The examiner can normally be reached Monday-Friday 6-3 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alireza Nia can be reached at (571) 270-3076. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARI K RODRIQUEZ/Primary Patent Examiner, Art Unit 3786