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 .
Response to Amendment
Applicant’s amendment of the specification is acknowledged and accepted by the Examiner.
Applicant’s amendment of the specification has overcome the previous specification objection. Therefore, the specification objection is withdrawn.
Applicant’s amendments of the drawings are acknowledged and accepted by the Examiner.
Applicant’s amendment of the drawings has overcome the previous drawing objection. Therefore, the drawing objection is withdrawn.
Applicant’s amendments of claims 1-2, and 4-20 are acknowledged by the Examiner. Applicant’s amendments of claims 1-3, 5-15, and 17-20 have overcome the previous claim objections. Therefore, the claim objections are withdrawn.
Applicant’s amendments of claims 1-2, 6-14, and 16-20 have overcome the previous rejections under 35 U.S.C. 112(b). Therefore, the rejections under 35 U.S.C. 112(b) are withdrawn.
Applicant’s cancelation of claim 3 is acknowledged by the Examiner.
Applicant’s addition of new claim 25 is acknowledged by the Examiner.
Claims 1-2, 4-20, and 25 are pending in the current application.
Response to Arguments
In regards to Applicant’s statement that co-pending U.S. Application 18/600,280 has been expressly abandoned, and thus, the provisional double patenting rejection should be withdrawn. Examiner respectfully agrees and withdraws the provisional double patenting rejection of claims 1-20.
Applicant's arguments filed 10/15/2025 have been fully considered but they are not persuasive.
In regards to Applicant’s arguments regarding the combination of Triance and Dallafior, Examiner notes that Applicant’s arguments are first drawn to a hypothetical situation in which the second part of Dallafior would be cut out from a semi-circular strip of material similar to that of Triance. Examiner points out this argument is purely hypothetical, and while one of ordinary skill in the art may form the second part of Dallafior in this manner, one of ordinary skill in the art would be equally able to take a length of the linear second part of Dallafior, stretch an attaching side of the length of the linear second part, and subsequently attach the linear second part of Dallafior to the semi-circular bandage of Triance.
In regards to Applicant’s arguments regarding the process of forming the device, as discussed in the non-final rejection: it is noted that the features upon which applicant relies (i.e., the process of forming the device) is 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). Nonetheless, the Examiner asserts that because Dallafior’s second part is clearly described as being elastic (See [0052] in reference to the entirety of the bandage being elastic), the arched shape of Triance when combined with the second part of Dallafior is configured with the second part of Dallafior stretched relative to the first part of Triance. This assertion is based on the fact that when the compression bandage of Triance is in use, it is intended to be stretched about the limb (see lns 40-42 and 84-87 of Triance). Thus, in response to said stretching about the limb the second part will also stretch with respect to the first part, resulting in the claimed configuration.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references of Triance and Dallafior, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Dallafior teaches the motivation to combine Triance’s compression bandage which is wrapped about a limb and Dallafior’s second part which acts as indicia for indicating a proper wrapping of an analogous bandage stating the benefit of the second part is for providing indicia which enables individuals to wrap or re-wrap a bandage that includes no gaps, wrinkles or lumps, thus minimizing skin irritability, discomfort and pain that would result from an improper wrapping, and further that provides sufficient consistent pressure along the entire body part that is wrapped (see [0048]).
In response to applicant's argument of Stern that the references fail to show certain features of the invention as recited in claim 1, it is noted that the features upon which applicant relies (i.e., an arched shape when the bandage is laid out flat) is not recited in the rejected claim(s) 1. 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). Thus, given that Stern’s bandage forms an arched shape when wrapped about a user’s limb, Stern’s bandage has an arched shape.
In regards to Applicant’s arguments that Stern does not fairly teach “compression bandage adapted to be wrapped around a body part in a helicoidal manner,... wherein the compression bandage comprises a first part and a second part attached side by side, wherein the first part and the second part extend at least over a part of the length of the compression bandage, the first part extending across a part of the width of the compression bandage and the second part extending across a part of a remaining width of the compression bandage, wherein the arched shape is created by... the second part relative to the first part, and wherein the second part is situated closer to a concave side of the compression bandage than the first part" as recited by claim 1. Examiner respectfully disagrees and the newly amended limitations will be addressed below in the rejection of claim 1.
In regards to Applicant’s arguments of Stern in view of newly amended claim 6. Stern is not relied upon as a primary reference in the rejection of claim 6. Therefore, these arguments are moot.
The independent and dependent claim rejections are updated below in view of Applicant’s amendments below.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites the limitation “the whole section”. This limitation should be amended to recite “the section” to maintain consistency in the claims.
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 2, 10-17, 19-20, and 25 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 2 recites the limitation “wherein the section extends over at least one third of the compression bandage”. This limitation is held to be unclear as it is not clarified of what dimension of the compression bandage the section extends over at least one third of. For the purpose of examination, Examiner will interpret this limitation as “at least one third of the length”.
Claim 10 recites the limitation "a first part" in line 5. This limitation is held to be unclear in view of claim 1 which recites “a first part” in line 7. Therefore, it is unclear as to if the first part of claim 10 is the first part of claim 1, or a new first part. For the purpose of examination, Examiner will interpret the limitation of claim 10 as “the first part”.
Claim 10 recites the limitation "a second part" in line 6. This limitation is held to be unclear in view of claim 1 which recites “a second part” in line 7. Therefore, it is unclear as to if the second part of claim 10 is the second part of claim 1, or a new second part. For the purpose of examination, Examiner will interpret the limitation of claim 10 as “the second part”.
Claim 10 recites the limitation “the length of the starting portion”. There is insufficient antecedent basis for this limitation in the claims. For the purpose of examination, Examiner will interpret this limitation as best understood.
Claim 25 recites the limitation "the extremity" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, Examiner will interpret this limitation as best understood.
Claims 11-17, and 19-20 are rejected under 35 U.S.C. 112(b) as being dependent on a rejected claim, and therefore, containing the same offending limitations.
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.
Claim(s) 6-7, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Triance et al. (GB 2,041,754) (hereinafter Triance).
In regards to claim 6, Triance discloses A compression bandage (10; see ln 60-65]; see figure 1) adapted to be wrapped around a body part in a helicoidal manner (10 being a length of neoprene is capable of being wrapped around a body part in a helicoidal manner),
wherein the compression bandage (10) has a length (length from 14 to 12; see figure 1) and a width (width from the inner edge to the outer edge; see figure 1), and the length is at least six times greater than the width (see ln 60-65 in reference to the belt being a semi-circle (half circle) with external radius of the bandage being 14” and the internal radius being 11”, thus the width of the bandage is 3”; using the formula ½(2πr) to calculate a circumference (i.e. a length of the belt), the external length is 14π inches or 43.98 inches, and the internal length is 11π inches or 34.55 inches, both of which are at least 6 times greater than 3 inches),
wherein on a section (section of 10 between 12 and 14; see figure 1) of the compression bandage (10), a central longitudinal line of the compression bandage has an arched shape (see figure 1 that 10 is in an arched shape and therefore the central longitudinal line which extends from 12 to 14 is arched), such that, when the compression bandage (10) is laid out flat, the central longitudinal line is not straight, but instead forms an arch (see figure 1),
wherein the arched shape is defined by a varying radius (the arched shape of 10 is defined by the internal and external radii, and thus, the arched shape is defined by a varying radius which varies from the internal to external edges of 10),
wherein the varying radius evolves linearly from a first radius (internal radius) to a second radius (external radius),
wherein the first radius (internal radius) corresponds to the radius at an extremity (internal edge of 12) of the section (section of 10 between 12 and 14) and the second radius (external radius) corresponds to another extremity (external edge of 12) of the section (section of 10 between 12 and 14).
In regards to claim 7, Triance discloses the invention as discussed above.
Triance further discloses wherein the first radius (internal radius) corresponds to the radius at the extremity (internal edge of 12) of the compression bandage (10), and
wherein the second radius (external radius) is larger than the first radius (internal radius; see [ln 60-65]).
In regards to claim 18, Triance discloses the invention as discussed above.
Triance further discloses wherein the first radius (internal radius) corresponds to the extremity (internal edge of 12) of the compression bandage (10) of a starting portion (12; see [ln 65-70]; see figure 1).
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.
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.
Claim(s) 1, 2, 4-5, and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Triance in view of Dallafior (US 2013/0131565 A1).
In regards to claim 1, Triance discloses A compression bandage (10; see ln 60-65]; see figure 1) adapted to be wrapped around a body part in a helicoidal manner (10 being a length of neoprene is capable of being wrapped around a body part in a helicoidal manner),
wherein the compression bandage (10) has a length (length from 14 to 12; see figure 1) and a width (width from the inner edge to the outer edge; see figure 1), and the length is at least six times greater than the width (see ln 60-65 in reference to the belt being a semi-circle (half circle) with external radius of the bandage being 14” and the internal radius being 11”, thus the width of the bandage is 3”; using the formula ½(2πr) to calculate a circumference (i.e. a length of the belt), the external length is 14π inches or 43.98 inches, and the internal length is 11π inches or 34.55 inches, both of which are at least 6 times greater than 3 inches),
wherein on a section of the compression bandage (10), a central longitudinal line of the compression bandage has an arched shape (see figure 1 that 10 is in an arched shape and therefore the central longitudinal line which extends from 12 to 14 is arched),
wherein the compression bandage (10) comprises a first part (10 forms a first part).
Triance does not disclose wherein the compression bandage comprises a second part attached side by side to the first part,
wherein the first part and the second part extend at least over a part of the length of the compression bandage, the first part extending across a part of the width of the compression bandage and the second part extending across a part of the remaining width of the compression bandage,
wherein the arched shape is configured with the second part stretched relative to the first part,
wherein the second part is situated closer to the concave side of the compression bandage than the first part.
However, Dallafior teaches an analogous compression bandage (10; see [0040]; see figure 1) comprising a first part (10a; see [0040]; see figure 1) and a second part (10b; see [0040]; see figure 1) attached side by side (see figure 1),
wherein the first part (10a) and the second part (10b) extend at least over a part of the length of the compression bandage (10; see [0049]), the first part (10a) extending across a part of the width of the compression bandage (10; see figure 1) and the second part (10b) extending across a part of the remaining width of the compression bandage (10; see figure 1) for the purpose of providing indicia which enables individuals to wrap or re-wrap a bandage that includes no gaps, wrinkles or lumps, thus minimizing skin irritability, discomfort and pain that would result from an improper wrapping, and further that provides sufficient consistent pressure along the entire body part that is wrapped (see [0048]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the compression bandage as disclosed by Triance by including the first part and the second part attached side by side as taught by Dallafior in order to have provided an improved compression bandage that would add the benefit of providing indicia which enables individuals to wrap or re-wrap a bandage that includes no gaps, wrinkles or lumps, thus minimizing skin irritability, discomfort and pain that would result from an improper wrapping, and further that provides sufficient consistent pressure along the entire body part that is wrapped (see [0048]).
With regards to the limitation of wherein the arched shape is configured with the second part stretched relative to the first part: when the compression bandage of Triance is in use, it is intended to be stretched about the limb (see lns 40-42 and 84-87 of Triance). Thus, in response to said stretching about the limb the second part of Dallafior will also stretch about the limb with respect to the first part of Triance, resulting in the claimed configuration of the arched shape.
With regards to the remaining limitations of wherein the second part is situated closer to a concave side of the compression bandage than the first part: it would have been obvious to one of ordinary skill in the art before the effective filing date to have positioned the second part closer to the concave side of the compression bandage than the first part as there are a finite number of places on the compression bandage of Triance to position the second part as taught by Dallafior (i.e. on the concave side or on the convex side). Furthermore, Applicant has not disclosed that the claimed positioning of the first and second parts provides an advantage, is used for a particular purpose, or solves a stated problem.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the first and second part to obtain the invention as specified in claim 3 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Triance as now modified by Dallafior.
In regards to claim 2, Triance as now modified by Dallafior discloses the invention as discussed above.
Triance further discloses wherein the section extends over at least one third of the compression bandage (10; see figure 1 that the arched section extends over the whole length of 10).
In regards to claim 4, Triance as now modified by Dallafior discloses the invention as discussed above.
Triance further discloses wherein the section starts at one extremity of the compression bandage (10; see figure 1 that the arched section begins at 12).
In regards to claim 5, Triance as now modified by Dallafior discloses the invention as discussed above.
Triance further discloses wherein the arched shape is defined by a constant radius or a varying radius,
wherein said constant radius or varying radius is less than 4.0 meters on the whole section (see figure 1 that the arched shape has a radius; see [ln 60-65] that the radius is 14 inches at an external side and 11 inches at an internal side; thus, the radius is less than 4.0 meters).
In regards to claim 8, Triance as now modified by Dallafior discloses the invention as discussed above.
Triance further discloses wherein the length of the compression bandage (10) is at least eight times greater than the width of the compression bandage (10; as discussed above the width of 10 is 3”, the external length is 43.98 inches, and the internal length is 34.55 inches, both of which are greater than eight times the width)
In regards to claim 9, Triance as now modified by Dallafior discloses the invention as discussed above.
Triance further discloses wherein the length of the compression bandage (10) is greater than 60cm (as discussed above the external length is 43.98 inches (111.7 cm), and the internal length is 34.55 inches (87.75 cm), both of which are greater than 60cm).
Claim(s) 1-2, 4-5, 8-17, 19-20, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stern (US 2,687,723) in view of Dallafior.
In regards to claim 1, Stern discloses A compression bandage (10; see [col 2 ln 30-35]; see figure 1) adapted to be wrapped around a body part in a helicoidal manner (see figure 1),
wherein the compression bandage (10) has a length and a width and the length is at least six times greater than the width (see [Col 4 ln 20-30]),
wherein on a section of the compression bandage (10), the central longitudinal line of the compression bandage (10) has an arched shape (see figure 1 that the bandage is arched when wrapped around a user’s leg therefore the central longitudinal line of the bandage is arched);
wherein the compression bandage (10) comprises a first part (see figure 2 that 10 forms a first part).
Stern does not disclose wherein the compression bandage comprises a second part attached side by side to the first part,
wherein the first part and the second part extend at least over a part of the length of the compression bandage, the first part extending across a part of the width of the compression bandage and the second part extending across a part of the remaining width of the compression bandage,
wherein the arched shape is configured with the second part stretched relative to the first part,
wherein the second part is situated closer to the concave side of the compression bandage than the first part.
However, Dallafior teaches an analogous compression bandage (10; see [0040]; see figure 1) comprising a first part (10a; see [0040]; see figure 1) and a second part (10b; see [0040]; see figure 1) attached side by side (see figure 1),
wherein the first part (10a) and the second part (10b) extend at least over a part of the length of the compression bandage (10; see [0049]), the first part (10a) extending across a part of the width of the compression bandage (10; see figure 1) and the second part (10b) extending across a part of the remaining width of the compression bandage (10; see figure 1) for the purpose of providing indicia which enables individuals to wrap or re-wrap a bandage that includes no gaps, wrinkles or lumps, thus minimizing skin irritability, discomfort and pain that would result from an improper wrapping, and further that provides sufficient consistent pressure along the entire body part that is wrapped (see [0048]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the compression bandage as disclosed by Triance by including the first part and the second part attached side by side as taught by Dallafior in order to have provided an improved compression bandage that would add the benefit of providing indicia which enables individuals to wrap or re-wrap a bandage that includes no gaps, wrinkles or lumps, thus minimizing skin irritability, discomfort and pain that would result from an improper wrapping, and further that provides sufficient consistent pressure along the entire body part that is wrapped (see [0048]).
With regards to the limitation of wherein the arched shape is configured with the second part stretched relative to the first part: when the compression bandage of Stern is in use, it is intended to be stretched about the limb (see [col 2 ln 10-20]). Thus, in response to said stretching about the limb the second part of Dallafior will also stretch about the limb with respect to the first part of Stern, resulting in the claimed configuration of the arched shape.
With regards to the remaining limitations of wherein the second part is situated closer to a concave side of the compression bandage than the first part. It can be seen in figure 1 of Stern that the concave side of the compression bandage is positioned towards a user’s leg. It can be seen in figure 6 of Dallafior that when the compression bandage is in the proper wrapping, that the second part (40b in the case of figure 6) is similarly positioned on a concave side of the compression bandage toward the user’s leg. Thus, as now combined: the second part (10b of Dallafior) is situated closer to a concave side (inner side of 10 of Stern) of the compression bandage (10 of Stern) than the first part (first part of Stern situated closer to the convex surface of the arched shape).
In regards to claim 2, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern further discloses wherein the section extends over at least one third of the compression bandage (10; see figure 1 that the entirety (and therefore at least one third) of the bandage is arched around the user’s leg).
In regards to claim 4, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern further discloses wherein the section starts at one extremity of the compression bandage (10; see figure 1 that the extremities of the bandage are wrapped and arched around the user’s leg, therefore the arch of the bandage begins at the extremity of the compression bandage).
In regards to claim 5, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern further discloses wherein the arched shape is defined by a constant radius or a varying radius (see figure 1 that 10 is wrapped from a user’s ankle to the calf below a user’s knee, as per applicant’s specification [0014] “r1 is the radius of the start of the limb, r2 is the radius of the end of the limb” and [0088] “a smaller radius r1, a bigger radius r2 and a length l. If this geometry approximates a calf, the double of the radius r1 would correspond to the diameter of the ankle and the double of the radius r2 would correspond to the diameter of the calf below the knee” therefore because Stern’s device is wrapped from a user’s ankle to their calf below their knee, Stern’s device is considered to have a varying radius of the wrapped or arched section as claimed), wherein said constant radius or varying radius is less than 4.0 meters on the whole section (a user’s leg has a radius less than 4m and therefore, the radius of the wrapped or arched section of 10 is less than 4m).
In regards to claim 8, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern further discloses wherein the length of the compression bandage is at least eight times, greater than the width of the compression bandage (see [Col 4 ln 25-30]).
In regards to claim 9, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern further discloses wherein the length of the compression bandage is greater than 60 cm (see [Col 4 ln 25-30]).
In regards to claim 10, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern as now modified by Dallafior further discloses wherein the compression bandage (10) comprises a starting portion (starting portion formed by the end of 10 as seen in figure 2) and a central portion (main body of 10 in which 11 is placed over; see figure 1), wherein the central portion (main body of 10) is adjacent to the starting portion (the end of 10 seen in figure 2 is adjacent the main body of 10 seen in figure 1),
the starting portion (end of 10) and the central portion (main body of 10) comprise a first part (first part of 10) and a second part (10b of Dallafior included into 10 of Stern), both extending at least over an entire length of the central portion (See Dallafior figure 1 that the first and second portions extend over a length of the bandage of Dallafior; thus, 10b of Dallafior included into 10 of Stern would extend similarly), wherein the first part (first part of 10) has a first thickness and a first width (see figure 2 and 4) and the second part (10b of Dallafior) has a second thickness and a second width (See Dallafior figure 1), wherein at any point along the length of the starting portion (end of 10) and the central portion (main body of 10), in the starting portion (end of 10) and in the central portion (main body of 10), the second width (width of 10b of Dallafior) is at least half the first width (width of 10; see figure 2) and the first thickness (width of 10) is bigger than the second thickness (width of 10b of Dallafior; 10 the first portion of Stern includes 11 which forms a thickness greater than 10, and 10b of Dallafior which is about the thickness of 10 of Stern alone; see Stern figure 4).
In regards to claim 11, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern as now modified by Dallafior does not explicitly disclose wherein the central portion is at least 70% of the length of the compression bandage.
However, Stern teaches the bandage material is 10’ in length (see [Col 4 ln 25-30]) and that the foam (11 which defines the central portion of 10 of Stern) terminates short of the end which defines the starting portion as seen in figure 2 (see [col 2 ln 40-50]). Thus, the length of the central portion with respect to the total length of the bandage is considered to be a result effective variable in that changing the length of the central portion affects the ability of the bandage to ensure the main body of the bandage would wrap around the limb and provide the desired compression to the limb to reduce edema of the limb (See [col 2 ln 5-25]). Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the length of the central portion as it involves only adjusting the dimension of a component disclosed to require a length.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the length of the central portion of the compression bandage of Stern as now modified by Dallafior by forming the central portion from a length of 70% of the compression bandage’s total length as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” In re Aller, 220 F.2d 454, 456, 105 USPQ 223, 235 (CCPA 1955) (see MPEP 2144.05 II A). Such a modification would add the benefit of ensure the main body of the bandage material would wrap around the limb and provide the desired compression to the limb to reduce edema of the limb (See [col 2 ln 5-25]).
Further such a modification would have been obvious to one of ordinary skill in the art since it has been 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” (see MPEP 2144.04 IV A). In the instant case, the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and the device of Stern as now modified by Dallafior would not perform differently with the claimed size. Additionally, Applicant has not placed a criticality on the claimed dimension, as Applicant’s specification does not state that the claimed length provides an advantage, is used for a particular purpose, or solves a stated problem and contrarily stating “the central portion is at least 70 %, preferably at least 80 %, preferably at least 90 %” evidencing that the claimed range is a preference of a design choice obvious to one of ordinary skill in the art.
In regards to claim 12, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern further discloses wherein the length of the central portion (main body of 10; see figure 1) is at least 50cm (see [Col 4 ln 25-30] in reference to the bandage being 10’ long (304.8cm), therefore the central portion is considered to be at least 50cm).
In regards to claim 13, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern further discloses wherein in the starting portion (end of 10) and in the central portion (main body of 10), the first part (first part of 10) comprises a cushioning material (11; see [Col 2 ln 30-35]; see figure 2).
In regards to claim 14, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern further discloses wherein in the starting portion (end of 10) and in the central portion (main body of 10), the first part (first part of 10)
-consists of a cushioning material, or
-comprises at least a layer of the cushioning material (11; see [Col 2 ln 30-35]; see figure 2 and 4) extending over a whole length of the first part (first part of 10; [Col 2 ln 40-50]).
In regards to claim 15, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern further discloses wherein the cushioning material (11) extends over the width of the first part (first part of 10; see figure 2).
In regards to claim 16, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern further discloses wherein the cushioning material is open or closed cell foam, laminated open or closed cell foam, non-woven cushioning or woven cushioning, preferably open cell foam or laminated open cell foam, preferably laminated open cell foam (11 is described as being a foam (see [Col 2 ln 30-35]), and thus meets the limitations of open or closed cell foam given the limitation “open or closed cell foam” encompasses all foams).
In regards to claim 17, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern as now modified by Dallafior does not explicitly disclose wherein the starting portion comprises an extension of the first part protruding past the end of the second part.
However, Stern teaches wherein the starting portion (end of 10) comprises an extension of the first part (extension of the first part of 10 which does not comprise 11, extending from 11 to the end of 10) protruding past the end of the cushioning material (11) for the purpose of providing a free area of the bandage which aids in providing a good overlap and enabling the bandage to lie relatively close and flat upon itself so that the bandage occupies less space than ordinary bandage material (see [col 3 ln 55-67]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the starting portion as disclosed by Stern as now modified by Dallafior to be an extension of the first part protruding past the end of the second part as taught by Stern in order to have provided an improved compression bandage which adds the benefit of providing a free area of the bandage which aids in providing a good overlap and enabling the bandage to lie relatively close and flat upon itself so that the bandage occupies less space than ordinary bandage material (see [col 3 ln 55-67]). Additionally, such a modification would position the second part of Dallafior only in the regions of Stern which are helically wrapped around the limb, reducing the amount of material used in producing the bandage in the combination of Stern and Dallafior (i.e. removing the unnecessary section of 40b seen in figure 6 of Dallafior which does not aid in the indication of proper wrapping of 40a as taught by [0048] of Dallafior).
In regards to claim 19, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern as now modified by Dallafior does not explicitly disclose wherein the extension of the first part is at least 4% of the length of the compression bandage.
However, Stern teaches the bandage material is 10’ in length (see [Col 4 ln 25-30]) and that the extension of the first part (portion of 10 of Stern between the end of 10 and 11) has a length defined between the central portion and the starting portion of the first part (see [col 2 ln 40-50]). Thus, the length of the extension of the first part with respect to the total length of the bandage is considered to be a result effective variable in that changing the length of the extension of the first part affects the ability of the bandage to provide a good overlap and enabling the bandage to lie relatively close and flat upon itself so that the bandage occupies less space than ordinary bandage material (see [col 3 ln 55-67]). Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the length of the extension of the first part as it involves only adjusting the dimension of a component disclosed to require a length.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the length of the extension of the first part of Stern as now modified by Dallafior by forming the extension of the first part from a length of at least 4% of the compression bandage’s total length as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” In re Aller, 220 F.2d 454, 456, 105 USPQ 223, 235 (CCPA 1955) (see MPEP 2144.05 II A). Such a modification would add the benefit of ensuring the presence of a free area of the bandage which aids in providing a good overlap and enabling the bandage to lie relatively close and flat upon itself so that the bandage occupies less space than ordinary bandage material (see [col 3 ln 55-67]).
Further such a modification would have been obvious to one of ordinary skill in the art since it has been 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” (see MPEP 2144.04 IV A). In the instant case, the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and the device of Stern as now modified by Dallafior would not perform differently with the claimed size.
In regards to claim 20, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern as now modified by Dallafior does not explicitly disclose wherein the extension of the first part is longer than 9cm.
However, Stern teaches the extension of the first part (portion of 10 of Stern between the end of 10 and 11) has an undisclosed length defined between the central portion and the starting portion of the first part (see [col 2 ln 40-50]). Thus, the length of the extension of the first part with respect to the total length of the bandage is considered to be a result effective variable in that changing the length of the extension of the first part affects the ability of the bandage to provide a good overlap and enabling the bandage to lie relatively close and flat upon itself so that the bandage occupies less space than ordinary bandage material (see [col 3 ln 55-67]). Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the length of the extension of the first part as it involves only adjusting the dimension of a component disclosed to require a length.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the length of the extension of the first part of Stern as now modified by Dallafior by forming the extension of the first part from a length of at least 9cm as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” In re Aller, 220 F.2d 454, 456, 105 USPQ 223, 235 (CCPA 1955) (see MPEP 2144.05 II A). Such a modification would add the benefit of ensuring the presence of a free area of the bandage which aids in providing a good overlap and enabling the bandage to lie relatively close and flat upon itself so that the bandage occupies less space than ordinary bandage material (see [col 3 ln 55-67]).
Further such a modification would have been obvious to one of ordinary skill in the art since it has been 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” (see MPEP 2144.04 IV A). In the instant case, the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and the device of Stern as now modified by Dallafior would not perform differently with the claimed size.
In regards to claim 25, Stern as now modified by Dallafior discloses the invention as discussed above.
Stern further discloses wherein a first radius (radius of the arch shape formed by wrapping 10 about the user’s limb) corresponds to the extremity of the compression bandage of the starting portion (end of 10; the radius of the arch shape formed at the end of 10 by wrapping 10 about the user’s limb corresponds to a first radius (i.e. a first wrap of the bandage around the limb).
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.
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/DANIEL A MILLER/Examiner, Art Unit 3786