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 .
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.
DETAILED ACTION
This is in response to the claims filed September 15, 2025, in which claims 1-20 were presented for examination, of which claims 13-20 were withdrawn due to not being included in the elected embodiment, of which claims 2-12 were amended, are being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed September 15, 2025 have been fully considered but they are not persuasive.
Applicants 1st Argument: In contrast, Jih disclosed that "The present invention is a knee pad bracket, which comprises: a first frame, having a first arc portion and two first support rods; a second frame, having a second arc portion and two second support rods, the first arc portion defines a first accommodation room; a third frame, having a third arc portion and two third support rods; a fourth frame, having a fourth arc portion and two fourth support rods to define a second accommodation room; two pivot axes, pivotally disposed at two corresponding sides of the first, second, third, and fourth frame and pivotally connected with the first, second, third, and fourth support rod; a first elastic element, which two ends being disposed on a same side of the first and second frame; and a second elastic element, which two ends being disposed on a same side of the third and fourth frame (Abstract of Jih)". But, Jih does not disclose the technical feature of fish scales.
Besides, even as noted by Examiner, although FIG. 1A and FIG. 2 of Neal disclose a protective armor with disks (100, alleged as scales by Examiner) structure. Whereas, the relative arrangement of the disks, the configuration of protective armor and the resulting effects are clearly different from the present application, and there is no motivation to combine Neal and Jih.
Examiners Response: Examiner respectfully disagrees. Although Jih does not disclose fish scales, Neal, which teaches another type of protector, does disclose the structure as element 100. The motivation, which was presented in the Non-Final Rejection dated June 17, 2025, which was in order to enhance user protection of the protector disclosed by Jih.
Applicants 2nd Argument: The reasons are that, Neal disclosed an impact and sharp implement resistant protective armor. In the impact layer, the imbricated layer of disks 100 is sandwiched between first layer 103 of aramid fabric and layer 104 of aramid fabric by the adhesive second layer 102a and fourth layer 102b (1st to 4th lines from the last of the third complete paragraph in column 5 of the specification). Wherein, the addition of fifth layer 104 can provide structure 200 with added protection from penetration for pointed objects and cutting (2ndto4th lines of the third complete paragraph in column 5 of the specification). In other words, the disks (100) disclosed in Neal are arranged in a sandwich structure and sandwiched between a first and a second layer of penetration resistant fabric (103, 104), to enhance the impact resistance of the impact layer.
Even if, as illustrated by Examiner, the accommodating spaces is the area around disks (100) (as shown and marked in FIG. 2 of Neal), these spaces are not configured to placing a part of the human body.
Examiners Response: Examiner respectfully disagrees. The space to house the fish scales of Neal was disclosed by the primary reference, Jih, as accommodating space, 7, shown in Fig. 1A, and as explained in the Non-Final Rejection dated June 17, 2025.
Applicants 3rd Argument: Furthermore, Neal also disclosed "Seventh layer 106 may be made of an energy absorbing material. (2ndto3rd lines of complete paragraph 5 in column 5 of the specification, and FIG. 2)". It is understood that after the impact layer receives an external force, the disks (100) embedded in a sandwich structure between the penetration resistant fabric (103, 104), help transferring the impact, wherein the impact is then transferred to the seventh layer (106) for impact absorption, thereby preventing the user wearing the protective armor from injury.
Therefore, if Jih and Neal is combined as asserted by the Examiner, based on teachings of Neal, the disks arrangement in a sandwich structure aims to enhance the impact resistance of the protective armor, and, additionally, a seventh layer (106) comprising of an energy absorbing material is also provided between the disks and the user's body. Such disposition of the seventh layer (106) would neither allow the scales to selectively contact with the part of the human body, nor achieve at transferring energy technical effects of relieving stress on muscles, joints, or bones, reducing physical burden during movement, or provide massage and relieve stress while maintaining comfort during physical activity.
Examiners Response: Examiner respectfully disagrees. With the combination explained below, the scales of Neal are incorporated in the space of Jih, which space is already in contact with the wears body. Since the device of the prior art discloses substantially all of the claimed structural elements it is therefore fully capable to perform the claimed function of transferring energy.
Applicants 4th Argument: In addition, even on the basis of Jih, in view of the temperature controller taught by
Neal and Randall, the timer taught by Lai, and the body temperature sensor taught by Willis, it still cannot compensate for the scales technical features not disclosed in Jih, let alone achieving the technical effect of the present application. Thus, the claimed invention of the present invention is non-obvious to one of ordinary skill in the art before effective filing date.
Examiners Response: Examiner respectfully disagrees, as explained in previous arguments where the scales of Neal are incorporated into the protector of Jih.
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 1-5 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Jih (US PG Pub. 2023/0372135) in view of Neal (US Patent 8,490,213).
Examiner notes US PG Pub. 2023/0372135 is claiming a filing date of May 20, 2022, due to Foreign Application TW 111118871, as set forth by 37 CFR 1.78(a)(1)(i)(ii) and 35 U.S.C. 119(e)(1).
Regarding claim 1, Jih discloses a protector (invention as shown in Fig. 1A) comprises:
a sheet body (combination of 1 and 4, Fig. 1A);
a fixing element (17 and 18), wherein one end of the fixing element is configured on the sheet body and the other of the fixing element is selectively connected to the sheet body to create an accommodating space (7) between the fixing element (17 and 18) and the sheet body (combination of 1 and 4) for accommodating a part of a human body (Par. 0025, lines: 1-9, “for accommodating…body” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function).
Jih does not disclose fish scales.
However, Neal teaches yet another protector, wherein Neal teaches a protector (invention shown in Fig. 1A) having fish scale structures (100) for protecting a human body from vibrations (“for protecting…vibrations” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function) and
a plurality of scales (100, Fig. 1A-2), wherein the scales are arranged on one side of the sheet body (as shown in Fig. 1A and 2), which is in contact with the accommodating space (see annotated Fig. 2 below, examiner notes the space is the area around scales, 100), in sequence from one end of the sheet body to the other end of the sheet body and spaced apart from each other (see annotated Fig. 1 below), one end of the scale is positioned on the sheet body and is selectively bent relative to the sheet body to overlap with a portion of the adjacent scale (see annotated Fig. 2 below).
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Fig. 1A-Examiner Annotated
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Fig. 2-Examiner Annotated
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the interior of the sheet body as disclosed by Jih, by incorporating fish scales as taught by Neal, wherein with this combination the limitation “allowing the scales to selectively contact with the part of the human body” is taught since the interior of the sheet body of Jih is modified to include the scales of Neal, in order to enhance user protection.
Regarding claim 2, Jih in view of Neal disclose the fixing element (17 and 18 of Jih) passes around the part of the human body (examiner notes the element passes around the knee as explained in Par. 0022) and connects to a middle part of the sheet body (see annotated Fig. 1A below).
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Fig. 1A-Examiner Annotated
Regarding claim 3, Jih in view of Neal disclose the general conditions of the claimed invention except for the express disclosure of a thickness of the scale ranges from 1 to 5 mm.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the thickness of the scale ranges from 1 to 5 mm, since the claimed value is merely an optimum or workable range, in order to achieve an optimal configuration. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art. In re Aller, 105 USPQ 233. It is noted the applicant did not disclose criticality to the claimed limitation.
Regarding claim 4, Jih in view of Neal disclose a V-shaped space is configured between each of the scales (100 of Neal) and the sheet body (104, examiner notes the “V-shaped space” is the space between elements 100), and an opening direction of each V-shaped space is the same (as shown in Fig. 2), when the two adjacent scales are parallel to each other, the V-shaped spaces intersect with each other (as shown in Fig. 2), and an intersecting volume (examiner notes the “intersecting volume” is the intersected space between elements 100).
Jih in view of Neal disclose the general conditions of the claimed invention except for the express disclosure of the intersecting volume accounts for at least 15% of a total volume of the V-shaped space.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the intersecting volume accounts for at least 15% of a total volume of the V-shaped space, since the claimed value is merely an optimum or workable range, in order to achieve an optimal configuration. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art. In re Aller, 105 USPQ 233. It is noted the applicant did not disclose criticality to the claimed limitation.
Regarding claim 5, Jih in view of Neal disclose the part of the human body comprises: a knee (Par. 0004 of Jih).
Regarding claim 9, Jih in view of Neal disclose the sheet body includes, sequentially and along an extending direction, a front portion, a middle portion and a rear portion (see annotated Fig. 1A above of Jih), the front portion and the rear portion connect to the fixing element (17 and 18, as shown in annotated Fig. 1A above), and the scales (100 of Neal) are arranged, along the extending direction and spaced apart from each other, on the front portion, the middle portion and the rear portion of the sheet body (examiner notes due to combination presented in claim 1, scales 100 of Neal are applied to interior surface of sheet body that encompasses the different portions of Jih).
Regarding claim 10, Jih in view of Neal disclose when the scales (100 of Neal) bend relative to the sheet body (as shown in Fig. 2), the scales arranged on the middle portion of the sheet body contact with the scales arranged on the rear portion of the sheet body (examiner notes due to combination presented in claim 1, scales 100 of Neal are applied to interior surface of sheet body that encompasses the different portions of Jih, which would be in contact with each other as shown in Fig. 2 of Neal).
Regarding claim 11, Jih in view of Neal disclose an area of the front portion covering by the scales is equal to an area of the rear portion covering by the scales, and the area of the front portion covering by the scales is great than the area of the middle portion covering by the scales (examiner notes the areas of the front and rear portion of Jih in annotated Fig. 1A above are shown equal, while the middle portion is shown with less area than the other two portions. Due to combination presented in claim 1, scales 100 of Neal are applied to interior surface of sheet body that encompasses the different portions of Jih. One of ordinary skill in the art would recognize when the scales are applied to the portions, the scales on the annotated front and rear portion would be of equal amount, while the scales on the middle portion would be less than the scales on the front and rear portion).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Jih in view of Randall, further in view of Randall (US Patent 7,230,206), hereinafter Randall.
Regarding claim 6, Jih in view of Neal disclose a vibrator (16 of Jih), detachably configured on the sheet body to selectively vibrate the scales (Par. 0024, “configured on…scales” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function, examiner notes the vibrator, 16, is “detachable” through at least one mechanical means such as cutting);
a protecting layer (103 of Neal), positioned on the side of the sheet body (104, as shown in Fig. 2) in contact with the accommodating space (see annotated Fig. 2 above), wherein an inner space is configured between the protecting layer and the sheet body to accommodate the scale (examiner notes the “inner space” is the space between element 103 and 100 in Fig. 2); and
a penetrating hole (hole around 15 in Fig. 1A of Jih), penetrating through the sheet body (as shown in Fig. 1A) and the scales respectively to connect two corresponding sides of the sheet body and the scales (examiner notes due to combination presented in claim 1, scales 100 of Neal are applied to interior surface of sheet body of Jih and applied to area around penetrating hole), allowing the part of the human body to selectively penetrate to the other side of the sheet body from the accommodating space (“allowing the…space” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function).
They do not disclose a temperature controller, configured in an inside of the sheet body to selectively increase or decrease a temperature of the part of the human body.
However, Randall teaches yet another protector, wherein Randall teaches a temperature controller (30, Fig. 6), configured in an inside of the sheet body to selectively increase or decrease a temperature of the part of the human body (Col. 3, lines: 19-24, “configured in…body” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the protector as disclosed by Jih in view of Neal, by incorporating a temperature controller as taught by Randall, in order to enhance user comfort during inclement weather.
Regarding claim 7, Jih in view of Neal, further in view of Randall disclose the scales (100, Fig. 2 of Neal) are separated from the protecting layer (103 as shown in Fig. 2), and the scales bend along with the protecting layer (103) when the sheet body (104) is bending (examiner notes as shown in Fig. 2).
Regarding claim 8, Jih in view of Neal, further in view of Randall disclose position of the penetrating hole (hole around element 15 of Jih) matches with a center of gravity of the protector (as shown in Fig. 1A).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Jih in view of Randall, further in view of Lai et al. “Lai” (US PG Pub. 20080195010) and Willis (US PG Pub. 20060235328), hereinafter Willis.
Regarding claim 12, Jih in view of Randall disclose
a vibrator (16 of Jih), configured on the sheet body to selectively vibrate the scales with a vibration intensity (Par. 0030, lines: 1-4);
a processor (combination of 19, 26, 24), configured on the sheet body, spaced apart from and connecting to the vibrator (Par. 0030), wherein the processor comprises:
a bending sensor (19), wherein the bending sensor is configured to detect a bending amplitude of the scale (Par. 0030, lines: 7-11), when the bending amplitude exceeds a predetermined curvature, the bending sensor sends the starting signal to the vibrator to activate the vibrator to vibrate the scales, the greater the difference between the bending amplitude and the predetermined curvature, the stronger the vibration intensity (examiner notes element 19 controls the amplitude of the vibration by changing the vibration frequency as disclosed in Par. 0030, lines: 7-11, “configured to…intensity” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function);
an obstacle detector (26), wherein the obstacle detector is configured to measure a relative distance between a user and obstacles (Par. 0032, lines: 1-8), when the relative distance is less than a predetermined length, the obstacle detector sends the starting signal to the vibrator to activate the vibrator to vibrate the scales, the greater a difference between the relative distance and the predetermined length, the stronger the vibration intensity (Par. 0032, lines: 9-14, “configured to…intensity” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function);
a tilt sensor (24), wherein the tilt sensor is configured to detect a position of a center of gravity of the user (Par. 0031, lines: 1-9), when the position is lower than a predetermined height, the tilt sensor sends the starting signal to the vibrator to activate the vibrator to vibrate the scales, the greater a difference between the position and the predetermined height, the stronger the vibration intensity (“configured to…intensity” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function).
They do not disclose a timer.
However, Lai teaches yet another protector, wherein Lai teaches a timer, configured to preset a time period and to send a starting signal to the vibrator after the time period ends to activate the vibrator to vibrate the scales (Par. 0061).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the protector as disclosed by Jih in view of Neal, by incorporating a timer as taught by Lai, in order to enhance user control of the vibrator.
They do not disclose a body temperature sensor.
However, Willis teaches yet another protector, wherein Willis teaches
a body temperature sensor (combination of 6 and 12, Par. 0046, lines: 1-10), wherein the body temperature sensor is configured to measure a body temperature of the user, when the body temperature is lower than a predetermined temperature, the body temperature sensor sends the starting signal to the vibrator to activate the vibrator to vibrate the scales, the greater a difference between the body temperature and the predetermined temperature, the stronger the vibration intensity (“configured to…intensity” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the protector as disclosed by Jih in view of Neal and Lai, by incorporating a body temperature sensor as taught by Willis, in order to enhance user comfort.
Conclusion
THIS ACTION IS MADE FINAL. 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.
The prior art made of record and not relied upon is considered pertinent (See PTO-892) to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAKOTA MARIN whose telephone number is (571)272-3529. The examiner can normally be reached Mon.-Fri., 9:00AM-6:00PM.
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/DAKOTA MARIN/Examiner, Art Unit 3732
/KHALED ANNIS/Primary Examiner, Art Unit 3732