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 .
Claim Objections
Claim 1 is objected to because of the following informalities: “wherein enswell” should be “wherein the enswell”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: “comprise an one or more cylindrical holder” should be “comprise one or more cylindrical holders”. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: “comprise of one” should be “comprise”. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: “comprise” should be “comprises”, and the items following “one or more” should all be plural (e.g. “one or more enswell holder” should be “one or more enswell holders”). Appropriate correction is required.
Claim 8 is objected to because of the following informalities: “comprise” should be “comprises”. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: “one or more cotton swab holder” should be “one or more cotton swab holders”. Appropriate correction is required.
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 5-6 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.
With Respect to Claims 5-6
Claim 1 from which these claims depend already requires that the plurality of holders comprise at least one enswell holder, and so it is unclear what purpose this limitation serves in these claims. It is noted that the phrase “wherein the plurality of holders comprise” indicates that it does not require an additional enswell holder, and so this limitation does not appear to add any function or structure that is not already required. It is noted that the remainder of the claim adds additional limitations which further limit the parent claim, and so a 112 4th paragraph rejection for failure to further limit the parent claim is not appropriate at this time.
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 (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 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 1-2, 4-6, 8-9, 11-13, 16-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication #2009/0205996 to Celis (Celis) in view of U.S. Patent #9,307,982 to Gorek (Gorek), of A How-to Guide for Being a Cutman in an MMA Athletes Corner (Brown), and U.S. Patent Publication #2004/0065703 to Bellucci (Bellucci).
With Respect to Claim 1
Celis discloses a device comprising of elongated fabric (110 or only the central portion thereof, [0026]), wherein the fabric comprises of an external side (FIG. 1), an internal side (side facing user when worn, not visible in drawings, see FIG. 2), one or more fastening attachment mechanisms (140 in combination with the mating hook and loop fastener on the other side, alone or in combination with the adjacent left and right side portions of the fabric panel 110), and a plurality of holders (120, 130, 150, 160, 170, and/or 180); wherein the size and orientation of the fabric enables the internal side of the fabric to wrap around the arm of a user (capable of this use which is also the intended use, see e.g. FIG. 2 and description), and wherein the size and orientation of the fabric enables the user to place their thumb (i.e. the user can place their thumb in front of the fabric, see e.g. FIG. 2); wherein the plurality of holders comprises of at least one enswell holder (inasmuch as the compartments are capable of this use with an appropriate enswell, for example the magnetic compartment 270 can hold an appropriate magnetic enswell or compartment 240 could hold an enswell with an appropriately sized portion to extend into the sleeve), and that the particular compartments disclosed are non-limiting and other compartments for storing different items could also be used ([0033]); but does not disclose a hole or wherein the enswell holder further comprises of a cooling material..
However, Gorek discloses forming a similar arm mounted sleeve for holding medical items which can be a similar sleeve like that of Gorek or in other embodiments can include a thumb hole in order to improve securement and prevent rotation.
Celis discloses that it is used to hold various first aid items for use in boxing, and Brown discloses that an enswell is a common first aid tool used in boxing, and also that enswells are normally kept cool/cold to be ready for use.
Bellucci discloses the use of a gel filled ice pack as part of a user mounted holder in order to cool the contents of the holder.
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Gorek, to modify the fabric panel/sleeve of Celis to add a thumb hole, in order to improve securement and prevent rotation and/or as a mere substitution of one art known sleeve mount structure for another.
It would also have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosures of Cellis, Brown, and Belluci to form the holder of Celis/the combination with a holder designed to hold an Enswell (e.g. a pocket or sleeve sized and shaped to do so, or a clip or other suitable fastener/holding structure) and keep it cool (per Brown) using a gel filled ice pack as taught by Belluci, in order to hold an enswell to keep it ready for use, and/or as a mere selection of an art appropriate holder to use on the device or a mere substitution of one holder for another.
It is noted that the combination also clearly meets the limitations wherein the size and orientation of the fabric enables the user to place their thumb as the thumb hole allows for this, and those related to the enswell holder as the added holder is clearly an enswell holder as it is specifically designed for this purpose.
With Respect to Claim 2
The device of claim 1, wherein the plurality of holders is disposed onto the external side of the fabric and the fastening mechanism.
With Respect to Claim 4
The device of claim 1, wherein the plurality of holders comprise an one or more cylindrical holder (180, 270, and/or 120, FIGS. 1-2, [0027,0032]).
With Respect to Claim 5
The device of claim 1, wherein the plurality of holders comprise one or more enswell holder (120 or 170 or alternately per Brown) and an one or more cylindrical holder (180 and/or 270 and/or 120).
With Respect to Claim 6
The device of claim 1, wherein the plurality of holders comprise one or more enswell holder (per Brown), one or more gauze holder (160, [0027]), one or more cotton swab holder (130, noting 131, [0027]), one or more cylindrical holder (180 or 270), and one or more cotton tip applicator holder (a different 130, noting 131, [0027]).
Alternately, although Examiner maintains that a q-tip is a cotton swab and also a cotton tip applicator, to the degree that q-tip is a brand name often used on cotton swabs/cotton tip applicators rather than a generic term for such, it would have been obvious to one of ordinary skill in the art before the filing date of this application to hold q-tip brand cotton swabs and q-tip brand cotton tip applicators as a mere selection of an art appropriate q-tip product to hold.
With Respect to Claim 8
The device of claim 1, wherein the fastening mechanism comprise a hook-and-loop fastener.
With Respect to Claim 9
The device of claim 8, wherein the hook-and-loop fastener is positioned on the external side of the fabric.
With Respect to Claim 11
The device of claim 10, wherein the cooling material is lined within the external surface of the fabric (Bellucci FIG. 3 and description discloses this location).
With Respect to Claim 12
The device of claim 1, wherein the fabric is made of neoprene ([0011]).
With Respect to Claim 13
The device of claim 1, wherein the fabric is partially made of neoprene ([0011] indicates making it from more than one of neoprene and other materials and therefore making it partially out of neoprene).
With Respect to Claim 16
The device of claim 4, wherein the one or more cylindrical holders (180 or 270) is configured to hold a tin (capable of this use with an appropriately sized tin).
With Respect to Claim 17
The device of claim 4, wherein the at least one cylindrical holder (180 or 270) is configured to hold a tin of grease (capable of this use with an appropriately sized tin of grease).
With Respect to Claim 18
The device of claim 6, wherein the one or more cotton swab holder is positioned and oriented so that a cotton swab within the one or more cotton swab holder is held in a position parallel with the longest length of the fabric.
With Respect to Claim 19
The device of claim 1, wherein the hole is positioned to fit around a user's thumb when the internal side of the fabric is wrapped around the arm of the user.
Response to Arguments
Applicant's arguments filed 10/21/25 have been fully considered but they are largely not persuasive and/or are moot in view of the new ground(s) of rejection.
In response to Applicant’s arguments regarding the previous drawing objections, claim objections, and 112 rejections being obviated by the amendment (e.g. the cancelling of claims 14-15), those arguments are largely persuasive and will not be further addressed as they are no longer present.
In response to Applicant’s argument that Gorek does not disclose a thumb hole as required by claim 1, see Gorek FIG. 238 and Col. 64 lines 26-35 showing an embodiment with a thumb hole and the benefits thereof. Examiner maintains that this provides evidence that a forearm mounted holding structure with a thumb hole is an art known substitute for one without one (i.e. the disclosure of two embodiments one with and one without a thumb hole indicates they are art known substitutes) and/or provides sufficient motivation to add a thumb hole for the disclosed benefits thereof. Although Applicant argues that almost all embodiments do not show a thumb hole, it is not material how many embodiments without them are shown, as it is sufficient that there is one embodiment including one and a disclosed benefit thereof.
In response to Applicant’s arguments that the thumb hole is not ornamental or incidental and has a specific functional purpose, the disclosure of Gorek also indicates a specific functional purpose, and there is no contention in the office action that the inventive thumb hole is ornamental or incidental.
In response to applicant's arguments against the references individually (e.g. that none of the references explicitly disclose an enswell holder), 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).
In response to applicant's argument that none of the references disclose an enswell holder, 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. Examiner maintains that some of the holders of Celis are capable of holding an appropriate enswell. It is noted, however, that as part of the current combination of references including Brown, the combination includes a holder specifically designed to hold an enswell.
In response to Applicant’s arguments that none of the cited references discloses an enswell holder or are directed to an industry in which an inswell would be used or such a holder would be functionally relevant, Examiner respectfully disagrees. Celis is the primary reference and explicitly discloses use to hold first aid tools for boxing, and Brown discloses that an enswell is a commonly used first aid tool in boxing. Examiner maintains the position that a person of ordinary skill in the art would be motivated to add an enswell holder to the Celis structure (particularly in view of Celis’s disclosure that other compartments for holding different items could be used) in order to hold an enswell for use.
In response to applicant's argument that Belluci is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Belluci is reasonably pertinent to the particular problem with which the inventor was concerned which includes user attached pockets for holding items and/or cooling items held in a user attached pocket. It is noted that Belluci’s disclosed prior art includes an arm mounted cooling structure in [0007], which provides additional evidence that a person of ordinary skill in the art would consider Belluci to also be relevant to arm mounted structures and not limited solely to waist belts.
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). Examiner maintains the position that the rejection 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.
In response to Applicant’s argument that a person of ordinary skill in the art would not be motivated by the disclosure of Brown that an enswell “should be cool” to form an enswell holder so as to cool the enswell, Examiner respectfully disagrees. Examiner maintains that it is known in the art to provide cooling and/or heating structures to pockets in order to maintain the contents at an appropriate temperature (see, e.g. Belluci, as well as the also cited U.S. Patent #5671481 and U.S. Patent Publication #2006/0006097), and that the desirability of the item held being cool is sufficient motivation for forming a holder/pocket so as to keep the contents cool. There is no inventive step in the mere addition of a holder for a particular item suited to the purpose of the holder/kit to the holder/kit, or forming the holder with art known structure to keep the item in appropriate condition for use (e.g. making the pocket moisture resistant to keep the contents dry, adding heating or cooling elements to keep the contents warm/cold, or the like).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ADAM J WAGGENSPACK whose telephone number is (571)270-7418. The examiner can normally be reached M-F 8:30-4:30.
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, Nathan Newhouse can be reached at (571)272-4544. 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.
/ADAM J WAGGENSPACK/Primary Examiner, Art Unit 3734