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 Arguments
Applicant's arguments filed 3/16/2026 have been fully considered but they are not persuasive.
In regards to applicant’s arguments stating Elkins does not disclose an expandable loop, Examiner respectfully disagrees. Applicant asserts that Elkins clearly teaches a “rigid” ring. However, the disclosure of Elkins only refers to the ring as “durable plastic.” Examiner notes the original limitation of an “expandable” loop is broad. Plastic materials can undergo expansion due to thermal expansion or mechanical expansion. Applicant also asserts that Elkins does not disclose wherein the loop is elastic. However, the original claim limitation of “expandable” does not require elasticity.
Regarding Applicant’s arguments stating that Elkins does not disclose wherein the loop is “a flexible loop, constructed of expandable and contractible material like a rubber band” is persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration of the amendments, a new ground(s) of rejection is made in view of Elkins US5957141 in view of Jackson et al US 11700918.
Claim Objections
Claims 23 and 36 are objected to because of the following informalities: Claim 23 and Claim 36 recite “wherein at least the tape banner between the second connector strip and the outer end of the tape banner have a consistent planar surface so that can be rolled up flat without folds in the tape banner”. Examiner suggests amending “have” in line 20 of Claim 23 and line 20 of Claim 36 to be “has”. Examiner suggests line 20 of Claim 23 and line 20 of Claim 36 should read “..so that the tape banner can be rolled up flat…” 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 23-44 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 23 and Claim 36 recite “…so that can be rolled up flat without folds in the tape banner.” It is unclear what the claims are requiring to be rolled up flat. Examiner assumes this to mean the tape banner can be rolled up flat.
Claims dependent on a rejected claim are rejected.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 23, 25-27, 29, 34, 36-41, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Elkins US5957141 in view of Jackson et al US 11700918.
Regarding Claim 23, as best understood, Elkins discloses a wrist tape banner for use at sporting events, comprising:
a tape banner (12) having an inner end, an outer end, a first side, and a second side (annotated Fig 1);
a first connector strip on the tape banner proximate the inner end of the tape banner;
a second connector strip on the tape banner proximate to the first connector strip so as to provide an open space (14) on the first side of the tape banner between the first connector strip and the second connector strip;
a loop (16, plastic ring) located and sized to go around the tape banner within the open space, wherein the first connector strip and the second connector strip are to be connected together so as to enclose the loop within the open space;
a third releasable connector strip (15) (22) on the first side of the tape banner proximate the outer end of the tape banner;
a fourth releasable connector strip (14) (20) on the second side of the tape banner proximate a middle location of the tape banner between the inner end and the outer end of the tape banner, wherein the fourth releasable connector strip is configured to connect to the third releasable connector strip when the tape banner is rolled up; and
wherein at least the tape banner between the second connector strip and the outer end of the tape banner have a consistent planar surface so that can be rolled up flat without folds in the tape banner (Fig 1-3).
Claim language noted in italics set forth above and below in this office action are considered by the examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of a tape banner, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the examiner maintains that the adjustable tie disclose by Elkins is indeed capable of the intended use statements. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Elkins does not disclose wherein the first and second connector strips are on the first side of the tape banner.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the first and second connectors on the first side instead of the second side, since it has been held that rearranging parts of an invention involves only routine skill in the art. MPEP 2144.04 (VI) (C).
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Elkins as modified above does not explicitly disclose wherein the loop is a flexible loop constructed of expandable and contractable material like a rubber band.
Jackson et al. discloses a flexible loop (Jackson et al., 102) constructed of expandable and contractable material like a rubber band (Jackson et al., Col 3 line 62-Col 4 line 8, “The buckle-frame portion 102 includes a pliable or malleable outer shell 106 (e.g., nylon beaded hollow webbing) encapsulating a flexible inner support 108 (e.g., a hollow elastomeric tube, a rubber rod, or a coil)”)
It would have been obvious to one skilled in the art before the effective filing date of the invention to modify the loop of Elkins to be made of material like a rubber band as taught by Jackson et al to create a more comfortable fit against the skin of a user.
Regarding Claim 25, Elkins in view of Jackson et al. discloses wherein the first connector strip and the second connector strip are connected together, and the flexible loop (Jackson et al., 102) is enclosed within and around the open space of the tape banner (Elkins, Fig 2).
Regarding Claim 26, Elkins in view of Jackson et al. discloses wherein the third connector strip is connected to the fourth connector strip when the tape banner is rolled up (Elkins, Fig 3).
Regarding Claim 27, Elkins in view of Jackson et al. discloses wherein the tape banner is constructed of flexible material that expands and contracts (Elkins, elastomeric band).
Regarding Claim 29, Elkins in view of Jackson et al. discloses wherein the outer end of the tape banner has passed through the flexible loop (Jackson et al., 102) so as to form a loop including the inner end and the open space of the tape banner (Elkins, Fig 3).
Regarding Claim 34, Elkins in view of Jackson et al. discloses wherein the tape banner is constructed of cloth.
Examiner is interpreting “elastomeric band” of Elkins to be a type of cloth and therefore reads on the claim as presented.
Regarding Claim 36, as best understood, Elkins discloses a wrist tape banner for use at sporting events, comprising:
a tape banner (12) having an inner end, an outer end, a first side, and a second side;
a first connector on the tape banner proximate the inner end of the tape banner;
a second connector on the tape banner proximate to the first connector so as to provide an open space (14) on the first side of the tape banner between the first connector and the second connector;
a loop (16) located and sized to go around the tape banner within the open space, wherein the first connector and the second connector are to be connected together so as to enclose the loop within the open space;
a third releasable connector (22) on the first side of the tape banner proximate the outer end of the tape banner; and
a fourth releasable connector (20) on the second side of the tape banner proximate a middle location of the tape banner between the inner end and the outer end of the tape banner, wherein the fourth releasable connector is configured to connect to the third releasable connector when the tape banner is rolled up; and
wherein at least the tape banner between the second connector and the outer end of the tape banner have a consistent planar surface so that can be rolled up flat without folds in the tape banner (Fig 1-3).
Claim language noted in italics set forth above and below in this office action are considered by the examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of a tape banner, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the examiner maintains that the adjustable tie disclose by Elkins is indeed capable of the intended use statements. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Elkins does not disclose wherein the first and second connector strips are on the first side of the tape banner.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the first and second connectors on the first side instead of the second side, since it has been held that rearranging parts of an invention involves only routine skill in the art. MPEP 2144.04 (VI) (C).
Elkins as modified above does not explicitly disclose wherein the loop is a flexible loop constructed of expandable and contractable material like a rubber band.
Jackson et al. discloses a flexible loop (Jackson et al., 102) constructed of expandable and contractable material like a rubber band (Jackson et al., Col 3 line 62-Col 4 line 8, “The buckle-frame portion 102 includes a pliable or malleable outer shell 106 (e.g., nylon beaded hollow webbing) encapsulating a flexible inner support 108 (e.g., a hollow elastomeric tube, a rubber rod, or a coil)”)
It would have been obvious to one skilled in the art before the effective filing date of the invention to modify the loop of Elkins to be made of material like a rubber band as taught by Jackson et al to create a more comfortable fit against the skin of a user.
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Regarding Claim 38, Elkins in view of Jackson et al.discloses wherein the third and fourth releasable connectors are comprised of hook and loop connector strips (Elkins, Col 2 lines 41-43 and 49-51).
Regarding Claim 39, Elkins in view of Jackson et al. discloses wherein the first connector and the second connector are connected together, and the flexible loop (Jackson et al., 102) is enclosed within and around the open space of the tape banner (Elkins,Fig 1).
Regarding Claim 40, Elkins in view of Jackson et al. discloses wherein the third releasable connector is connected to the fourth releasable connector when the tape banner is rolled up (Elkins, Fig 3).
Regarding Claim 43, Elkins in view of Jackson et al. discloses wherein the tape banner is constructed of cloth (Elkins, elastomeric band).
Examiner is interpreting “elastomeric band” of Elkins to be a type of cloth and therefore reads on the claim as presented.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Elkins US5957141 in view of Jackson et al US 11700918 as applied to claim 23 above, and further in view of Mathias et al. DE 202005001864.
Regarding Claim 24, Elkins in view of Jackson et al. discloses the claimed invention except further comprising large promotion text on the first side and the second side of the tape banner.
Mathias et al. teaches a bracelet with promotional text (Figure 1).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to add promotion text as taught by Mathias onto the banner of the combination to create a small portable sign for sporting or similar events.
Claims 28, 32-32, 35, 37, 41-42, and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Elkins US5957141 in view of Jackson et al US 11700918 as applied to claims 23 and 36 above, and further in view of Robinson US 20110226829.
Regarding Claim 28, Elkins in view of Jackson et al. discloses the claimed invention except wherein the first, second, third and fourth connector strips include hook and loop fasteners.
Robinson discloses wherein the first and second connectors are sewn together (Robinson, para 18, “One end of a flexible elongated member 102 can be attached back on itself to secure a loop structure 104 and held by stitching, adhesive, hook-and-loop closure, snaps, buttons, clips, or any other known and/or convenient device or method”)
It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the adhesive connection of Elkins to be a hook and loop connection as taught by Robinson as they are well-known alternate connection types in the art,
Regarding Claim 32, Elkins in view of Jackson et al. discloses the claimed invention except discloses wherein the first connector strip and the second connector strip are sewn together.
Robinson discloses wherein the first and second connectors are sewn together (Robinson, para 18, “One end of a flexible elongated member 102 can be attached back on itself to secure a loop structure 104 and held by stitching, adhesive, hook-and-loop closure, snaps, buttons, clips, or any other known and/or convenient device or method”)
It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the adhesive connection of Elkins to be a sewn connection as taught by Robinson as they are well-known alternate connection types in the art.
Regarding Claim 33, Elkins in view of Jackson et al. discloses the claimed invention except discloses wherein the first connector strip and the second connector strip are thread stitching that are to be sewn together.
Robinson discloses wherein the first and second connectors are sewn together (Robinson, para 18, “One end of a flexible elongated member 102 can be attached back on itself to secure a loop structure 104 and held by stitching, adhesive, hook-and-loop closure, snaps, buttons, clips, or any other known and/or convenient device or method”)
It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the adhesive connection of Elkins to be a sewn connection as taught by Robinson as they are well-known alternate connection types in the art.
Regarding Claim 35, Elkins in view of Jackson et al. discloses the claimed invention except wherein the tape banner is constructed of polyester.
Robinson discloses wherein the tape banner is constructed of polyester (Robinson, para 14)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the tape banner of Elkins to be made of polyester as taught by Robinson, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering design choice. It is also a common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, and potential aesthetics, etc., for the application, intended use, and design considerations for that material. MPEP 2144.07.
Regarding Claim 37, Elkins in view of Jackson et al. discloses the claimed invention except wherein the first and second connectors are sewn together.
Robinson discloses wherein the first and second connectors are sewn together (Robinson, para 18, “One end of a flexible elongated member 102 can be attached back on itself to secure a loop structure 104 and held by stitching, adhesive, hook-and-loop closure, snaps, buttons, clips, or any other known and/or convenient device or method”)
It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the adhesive connection of Elkins in view of Jackson et al. to be a sewn connection as taught by Robinson as they are well-known alternate connection types in the art.
Regarding Claim 41, Elkins in view of Jackson et al. and further in view of Robinson discloses wherein the third hook and loop connector is connected to the fourth hook and loop connector when the tape banner is rolled up (Elkins, Fig 3).
Regarding Claim 42, Elkins in view of Jackson et al. discloses the claimed invention except wherein the first and second connectors are sewn together.
Robinson discloses wherein the first and second connectors are sewn together (Robinson, para 18, “One end of a flexible elongated member 102 can be attached back on itself to secure a loop structure 104 and held by stitching, adhesive, hook-and-loop closure, snaps, buttons, clips, or any other known and/or convenient device or method”)
It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the adhesive connection of Elkins to be a sewn connection as taught by Robinson as they are well-known alternate connection types in the art.
Regarding Claim 44, Elkins in view of Jackson et al. discloses the claimed invention except wherein the tape banner is constructed of polyester.
Robinson discloses wherein the tape banner is constructed of polyester (Robinson, para 14)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the tape banner of Elkins to be made of polyester as taught by Robinson, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering design choice. It is also a common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, and potential aesthetics, etc., for the application, intended use, and design considerations for that material. MPEP 2144.07.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Elkins US5957141 in view of Jackson et al US 11700918 as applied to claim 23 above, and further in view of Anderson US 3762360.
Regarding Claim 30, Elkins in view of Jackson et al. discloses the claimed invention except wherein the tape banner includes a high visibility color.
Anderson teaches a wrist tape banner, wherein the tape banner includes a high visibility color (Anderson, Claim 3, light reflective material on at least one face).
It would have been obvious to one having ordinary skill in the art at the effective filing date of
the invention to modify the banner of the combination to include the high visibility color as taught by Anderson to create a band that is easy to see.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Elkins US5957141 in view of Jackson et al US 11700918 as applied to claim 23 above, and further in view of Cao CN 21241127.
Regarding Claim 31, Elkins in view of Jackson et al. discloses the claimed invention except wherein the tape banner is coated with polyeurothane for waterproof protection.
Cao teaches as wrist tape banner, wherein the tape banner is coated with polyeurothane for waterproof protection (Cao, polyurethane rubber layer).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to modify the banner of the combination to be coated in polyeurothane as taught in Cao to protect the banner from water damage.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA SALEM RASHID whose telephone number is (703)756-1113. The examiner can normally be reached M-F 10:00 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA S RASHID/Examiner, Art Unit 3677
/JASON W SAN/SPE, Art Unit 3677