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 of Group II, claims 10-19, is acknowledged. Election was made without traverse in the reply filed December 16, 2025. Claims 20-26 are newly filed and claims 1-9 and 12 are canceled by Applicant.
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 “flexible body” as recited in claims 1 and 26 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “first fastening element” and “second fastening element” in claim 17.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 10 is objected to because of the following informalities: Lines 18-19 recite the limitation “wherein said first fastener of said brace is removably engaged with said fastener of said wrist strap.” However, for further clarity, it is respectfully suggested that this limitation be amended to recite, for example, “wherein said first fastener of said brace is configured to be removably engaged with said fastener of said wrist strap” or “wherein said first fastener of said brace is removably engageable with said fastener of said wrist strap.”
Claim 14 is objected to because of the following informalities: Lines 1-2 recite the limitation “wherein said stabilizing insert comprises an adhesive for adhere to said first side of said brace.” However, for grammatical and clarity purposes this limitation should be amended to recite, for example, “wherein said stabilizing insert comprises an adhesive for adhering said stabilizing insert to said first side of said brace” or “wherein said stabilizing insert comprises an adhesive to adhere said stabilizing insert to said first side of said brace.”
Claim 20 is objected to because of the following informalities: Line 3 recites the limitation “said sheaths.” However, for purposes of proper antecedent basis, this limitation should be amended to recite “said plurality of sheaths.”
Claim 22 is objected to because of the following informalities: Lines 2-3 recite the limitation “wherein said fastener of said wrist strap is removably engaged to said fastener of said wrist flap.” However, for further clarity, it is respectfully suggested that this limitation be amended to recite, for example, “wherein said fastener of said wrist strap is configured to be removably engaged to said fastener of said wrist flap” or “wherein said fastener of said wrist strap is removably engageable to said fastener of said wrist flap.”
Claim 23 is objected to because of the following informalities: Lines 1-2 recite the limitation “wherein said second fastener of said brace is removably engaged with said fastener of said wrist flap.” However, for further clarity, it is respectfully suggested that this limitation be amended to recite, for example, “wherein said second fastener of said brace is configured to be removably engaged with said fastener of said wrist flap” or “wherein said second fastener of said brace is removably engageable with said fastener of said wrist flap.”
Claim 26 is objected to because of the following informalities: Lines 16-17 recite the limitation “a stabilizing insert engaged with said brace comprising an adhesive for adhering to said first side of said brace.” However, for further clarity, it is respectfully suggested that this limitation be amended to recite, for example, “a stabilizing insert engaged with said brace comprising an adhesive for adhering said stabilizing insert to said first side of said brace.”
Claim 26 is objected to because of the following informalities: Lines 20-21 recite the limitation “wherein said first fastener of said brace is removably engaged with said fastener of said wrist strap.” However, for further clarity, it is respectfully suggested that this limitation be amended to recite, for example, “wherein said first fastener of said brace is configured to be removably engaged with said fastener of said wrist strap” or “wherein said first fastener of said brace is removably engageable with said fastener of said wrist strap.”
Claim 26 is objected to because of the following informalities: Lines 22-23 recite the limitation “wherein said second fastener of said brace is removably engaged with said fastener of said wrist flap.” However, for further clarity, it is respectfully suggested that this limitation be amended to recite, for example, “wherein said second fastener of said brace is configured to be removably engaged with said fastener of said wrist flap” or “wherein said second fastener of said brace is removably engageable with said fastener of said wrist flap.”
Claim 26 is objected to because of the following informalities: Line 25 recites the limitation “said sheaths.” However, for purposes of proper antecedent basis, this limitation should be amended to recite “said plurality of sheaths.”
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 10-11, 13-15, and 19-26 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 10 recites the limitation “a flexible body extending from said first end to said second end” (line 13). This limitation renders the claim indefinite at least because it is unclear whether the phrase “flexible body” is, for example, describing an overall structural configuration of the brace or reciting an additional element attached to the brace. It is respectfully noted that this element is not designated in the drawings nor is it described in the specification beyond a mere recital of this same general statement (see paragraph 0015 of the specification).
Claim 19 recites the limitation “comprising the step of engaging a stabilizing insert with said brace on a first side thereof” (lines 1-2). This limitation renders the claim indefinite because it is unclear whether the phrase “a first side thereof” refers to a first side of the brace, a first side of the stabilizing insert, or some other first side.
Claim 26 recites the limitation “a flexible body extending from said first end to said second end” (line 13). This limitation renders the claim indefinite at least because it is unclear whether the phrase “flexible body” is, for example, describing an overall structural configuration of the brace or reciting an additional element attached to the brace. It is respectfully noted that this element is not designated in the drawings nor is it described in the specification beyond a mere recital of this same general statement (see paragraph 0015 of the specification).
Dependent claims are rejected at least for depending from a rejected claim.
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.
Claims 10-11 and 20-25 are rejected, insofar as definite and as best understood by the Examiner, under 35 U.S.C. 103 as being unpatentable over USPN 5,685,787 Kogut in view of USPN 5,845,374 Briggs.
To claim 10, Kogut discloses a system for stabilizing a digit of a hand (see Figures 1-3; col. 2, lines 2-37), comprising:
an athletic glove (col. 2, lines 30-37);
a brace (see Figures 1-3; col. 2, lines 2-29) comprising:
a first side and a second side (see Figures 1-3; col. 2, lines 2-29);
a first end and a second end (see Figures 1-3; col. 2, lines 2-29);
a sleeve (3) disposed at said first end and comprising an opening therein, said opening on said first side (see Figures 1-3; col. 2, lines 2-29);
a flexible body extending from said first end to said second end (see Figures 1-3; col. 2, lines 2-29); and
a first fastener on said first side of said brace and a second fastener on said second side of said brace (see Figures 1-3; col. 2, lines 2-29; VELCRO and material of strap 2);
wherein said first fastener of said brace is removably engageable with said glove (col. 2, lines 30-37; it is respectfully noted that the terms “engaged” and “engageable” are very broad).
Kogut discloses the brace being removably engageable with an athletic glove (col. 2, lines 30-37).
Kogut is silent as to any particular structural configuration of the athletic glove to which the brace is engageable.
However, Briggs teaches a system for stabilizing a digit of a hand (see Figures 1-9; col. 3, line 9 – col. 4, line 7) comprising an athletic glove (20) comprising a wrist strap comprising a fastener (28) (see especially Figures 2-4) and a brace (10), wherein a first fastener (14) of the brace is removably engageable with said fastener of said wrist strap (see Figures 1-9; col. 3, line 9 – col. 4, line 7; it is respectfully noted that the terms “engaged” and “engageable” are very broad).
Kogut and Briggs teach analogous inventions in the field of finger stabilizing systems. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the glove of the finger stabilizing system of Kogut to include a wrist strap and fastener as taught by Briggs because Briggs teaches that this configuration is known in the art and beneficial for tightening the athletic glove around the hand of a wearer and engaging the brace (col. 3, lines 35-54).
To claim 11, the modified invention of Kogut (i.e., Kogut in view of Briggs, as detailed above) further teaches a system wherein said glove comprises a golfers glove (col. 2, lines 30-37 of Kogut; col.3, lines 34-36 of Briggs; to the limitation that the glove is a “golfers glove,” it is respectfully noted that this limitation is merely being treated as a statement of the intended use of the glove and/or very broad as opposed to be indefinite under 35 USC 112(b)).
To claim 20, the modified invention of Kogut (i.e., Kogut in view of Briggs, as detailed above) further teaches a system wherein said athletic glove further comprises a plurality of sheaths (see Figures 2-9 of Briggs) and wherein said sleeve of said brace is configured to be received within a first one of said plurality of sheaths (see Figures 1-3 and col. 2, lines 2-37 of Kogut; see Figures 1-9 and col. 3, line 9 – col. 4, line 7 of Briggs).
To claim 21, the modified invention of Kogut (i.e., Kogut in view of Briggs, as detailed above) further teaches a system wherein said sleeve of said brace and said first sheath of said athletic glove are each configured to receive a thumb (see Figures 1-3 and col. 2, lines 2-37 of Kogut; see Figures 1-9 and col. 3, line 9 – col. 4, line 7 of Briggs).
To claim 22, the modified invention of Kogut (i.e., Kogut in view of Briggs, as detailed above) further teaches a system wherein said athletic glove further comprises a wrist flap comprising a fastener (22 of Briggs), wherein said fastener of said wrist strap is removably engageable to said fastener of said wrist flap (see especially Figures 2-4 and col. 3, lines 34-45 of Briggs).
To claim 23, the modified invention of Kogut (i.e., Kogut in view of Briggs, as detailed above) further teaches a system wherein said second fastener of said brace is removably engageable with said fastener of said wrist flap (see Figures 1-3 and col. 2, lines 2-37 of Kogut; see Figures 1-9 and col. 3, line 9 – col. 4, line 7 of Briggs).
To claim 24, the modified invention of Kogut (i.e., Kogut in view of Briggs, as detailed above) further teaches a system wherein said athletic glove further comprises an opening between said wrist strap and said wrist flap (see especially Figures 3-4 and col. 3, lines 34-45 of Briggs).
To claim 25, the modified invention of Kogut (i.e., Kogut in view of Briggs, as detailed above) further teaches a system wherein said second end of said brace is configured to be received through said opening of said athletic glove (see Figures 1-3 and col. 2, lines 2-37 of Kogut; see Figures 1-9 and col. 3, line 9 – col. 4, line 7 of Briggs).
Claim 13-26 are rejected, insofar as definite and as best understood by the Examiner, under 35 U.S.C. 103 as being unpatentable over Kogut in view of Briggs and in further view of US Pub No. 2013/0253400 Massa.
To claims 13-15, the modified invention of Kogut (i.e., Kogut in view of Briggs, as detailed above) teaches a system as recited in claim 10, above.
The modified invention of Kogut does not expressly teach a system further comprising a stabilizing insert engaged with said brace, wherein said stabilizing insert comprises an adhesive for adhering said stabilizing insert to said first side of said brace, and wherein said stabilizing insert comprises neoprene.
However, Massa teaches a system for stabilizing a digit of a hand (see Figures 1-3D; paras. 0017-0026) comprising an athletic glove (para. 0025) and a brace (see Figures 1-3D; paras. 0017-0026), the brace comprising a stabilizing insert (26) engaged with said brace (see Figures 1-3D; para. 0019), wherein said stabilizing insert comprises an adhesive for adhering said stabilizing insert to said first side of said brace (see Figures 1-3D; para. 0019), and wherein said stabilizing insert comprises neoprene (see Figures 1-3D; para. 0019).
The modified system of Kogut and Massa teach analogous inventions in the field of finger stabilizing systems. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the brace of the modified invention of Kogut to include a stabilizing insert as taught by Massa because Massa teaches that this configuration is known in the art and provides comfort for the wearer (para. 0019).
To claim 26, Kogut discloses a system for stabilizing a digit of a hand (see Figures 1-3; col. 2, lines 2-37), comprising:
a) an athletic glove (col. 2, lines 30-37);
b) a brace (see Figures 1-3; col. 2, lines 2-29) comprising:
i) a first side and a second side (see Figures 1-3; col. 2, lines 2-29);
ii) a first end and a second end (see Figures 1-3; col. 2, lines 2-29);
iii) a sleeve (3) disposed at said first end and comprising an opening therein, said opening on said first side (see Figures 1-3; col. 2, lines 2-29);
iv) a flexible body extending from said first end to said second end (see Figures 1-3; col. 2, lines 2-29); and
v) a first fastener on said first side of said brace and a second fastener on said second side of said brace (see Figures 1-3; col. 2, lines 2-29; VELCRO and material of strap 2).
Kogut discloses the brace being removably engageable with an athletic glove (col. 2, lines 30-37).
Kogut is silent as to any particular structural configuration of the athletic glove to which the brace is engageable.
However, Briggs teaches a system for stabilizing a digit of a hand (see Figures 1-9; col. 3, line 9 – col. 4, line 7) comprising an athletic glove (20) comprising i) a plurality of sheaths (see Figures 2-9); ii) a wrist strap comprising a fastener (28) (see especially Figures 2-4; col. 3, lines 34-45); iii) a wrist flap comprising a fastener (22) (see especially Figures 2-4; col. 3, lines 34-45), wherein said fastener of said wrist strap is removably engaged to said fastener of said wrist flap (see especially Figures 2-4; col. 3, lines 34-45); and iv) an opening between said wrist strap and said wrist flap (see especially Figures 3-4; col. 3, lines 34-45).
Kogut and Briggs teach analogous inventions in the field of finger stabilizing systems. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the glove of the finger stabilizing system of Kogut to include the various claimed structural elements as taught by Briggs because Briggs teaches that this configuration is known in the art and beneficial for, inter alia, tightening the athletic glove around the hand of a wearer and engaging the brace (col. 3, lines 35-54).
As such, the modified invention of Kogut (i.e., Kogut in view of Briggs, as detailed above) further teaches a system wherein said second end of said brace is configured to be received through said opening of said athletic glove (see Figures 1-3 and col. 2, lines 2-37 of Kogut; see Figures 1-9 and col. 3, line 9 – col. 4, line 7 of Briggs), wherein said first fastener of said brace is removably engaged with said fastener of said wrist strap (see Figures 1-3 and col. 2, lines 2-37 of Kogut; see Figures 1-9 and col. 3, line 9 – col. 4, line 7 of Briggs), wherein said second fastener of said brace is removably engaged with said fastener of said wrist flap (see Figures 1-3 and col. 2, lines 2-37 of Kogut; see Figures 1-9 and col. 3, line 9 – col. 4, line 7 of Briggs), wherein said sleeve of said brace is configured to be received within a first one of said sheaths (see Figures 1-3 and col. 2, lines 2-37 of Kogut; see Figures 1-9 and col. 3, line 9 – col. 4, line 7 of Briggs), wherein said sleeve of said brace and said first sheath of said athletic glove are each configured to receive a thumb (see Figures 1-3 and col. 2, lines 2-37 of Kogut; see Figures 1-9 and col. 3, line 9 – col. 4, line 7 of Briggs), and wherein said second end of said brace is configured to be received through said opening of said athletic glove (see Figures 1-3 and col. 2, lines 2-37 of Kogut; see Figures 1-9 and col. 3, line 9 – col. 4, line 7 of Briggs).
The modified invention of Kogut does not expressly teach a system further comprising a stabilizing insert engaged with said brace, wherein said stabilizing insert comprises an adhesive for adhering said stabilizing insert to said first side of said brace.
However, Massa teaches a system for stabilizing a digit of a hand (see Figures 1-3D; paras. 0017-0026) comprising an athletic glove (para. 0025) and a brace (see Figures 1-3D; paras. 0017-0026), the brace comprising a stabilizing insert (26) engaged with said brace (see Figures 1-3D; para. 0019), wherein said stabilizing insert comprises an adhesive for adhering said stabilizing insert to said first side of said brace (see Figures 1-3D; para. 0019).
The modified system of Kogut and Massa teach analogous inventions in the field of finger stabilizing systems. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the brace of the modified invention of Kogut to include a stabilizing insert as taught by Massa because Massa teaches that this configuration is known in the art and provides comfort for the wearer (para. 0019).
To claims 16-19, the combination of Kogut, Briggs, and Massa has previously been discussed (see above). Under the principles of combination/anticipation, if a prior art device in its normal and usual operation would obviously perform the method claimed, then the method is considered to be obvious/inherent over the prior art device. When the prior art device is the same as a device described in the specification for carrying out the method, it can be assumed that the device will perform the claimed process (see MPEP 2112.02).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Additional gloves, braces, and/or systems analogous to the instant invention (see form PTO-892 “Notice of References Cited”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRIFFIN HALL whose telephone number is (571)270-0546. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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, Alissa Tompkins can be reached at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/F Griffin Hall/Primary Examiner, Art Unit 3732