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 .
Drawings
The drawings are objected to because, in Figures 5a-9b, they are not executed in durable, black, sufficiently dense and dark, uniformly thick and well-defined, lines and strokes without colorings, which makes the features difficult to discern. See PCT rule 11.13(a).
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.
Particularly, the term “complementary connection means” in claim 1 is being interpreted under 35 U.S.C. 112(f), as it fails to recite sufficient structure, material or acts to entirely perform the connection function in claim 1. Based on the specification (Pg 10-11), “complementary connection means” is being interpreted as being either of the following or equivalents thereof:
Complementary hook and loop fasteners
At least one strap and at least one corresponding buckle or loop, the at least one strap having hook and loop fastening portions to allow it to fasten upon itself
At least one strap and at least one complementary ladder lock buckle
At least one side-release buckle with complementary connector
At least one belt strap-style buckle
Claims 1, 3, and 7 are subject to this interpretation, the remaining claims providing structure to the complimentary connection means, and thereby not needing to be interpreted under 112(f).
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, 3, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Marshall (US 20140128788, as cited on previous 892), in view of Landi (US 20190038447, as cited on previous 892), hereinafter referred to as Marshall and Landi, respectively.
Regarding claim 1:
Marshall discloses an equine riding aid apparatus (support 49, Fig 10; Intended use in the preamble - MPEP 2111.02(II) – capable of supporting the lower limb of an equine rider, to allow stability during riding, thereby being an equine riding aid apparatus; all structural limitations met), said apparatus including:
an elongate body portion (first band 51, with elasticated portion 50, Fig 10) formed from or including an elastic material (¶0065 – “elasticated portion 50”), having first and second opposing ends (see ends coupled by fastening means 58 in Fig 10);
complementary connection means located at or associated with each of said first and second opposing ends to connect said first and second opposing ends together via the connection means, in use (releasable fastening means 58, Fig 10; ¶0066);
only two inserts (pads 56, Fig 10), located intermediate the first and second opposing ends (see Fig 10), said inserts provided as cylindrical inserts of a material that will mold to the shape of the skin surface, like medical grade silicone resin (see Fig 10 for shape; ¶0055).
Marshall fails to specifically disclose that the apparatus includes only two pockets located within the elongate body portion, intermediate the first and second opposing ends, and that the two inserts are each received respectively in each of the two pockets, said inserts provided as foam inserts.
Landi discloses a limb support brace with a limb-surrounding elongate sleeve (sleeve 10, Fig 2) and joint supporting insert (insert 12, Fig 3), and contemplates alternatively fastening the insert(s) to the sleeve with a fastening mechanism, or providing pockets or compartments in the sleeve body for holding the insert (¶0043-0044).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have provided pockets for each of the only two inserts of Marshall, rather than mounting them to the inner side of the body, as suggested by Landi, the result having a reasonable expectation of success. One would have been motivated to make this modification because, as disclosed in Landi, this allows the sleeve to move with the wearer’s body while maintaining the insert in place to provide support for the wearers joint, which is beneficial when the user is disclosed in physical activity; and having a pocket allows for the insertion of a variety of inserts, so that the device can be tailored to the need of the user (¶0043-0044). Further, providing the inserts removably in pockets would allow for easy replacement, should the inserts get damaged or deformed.
Landi further discloses that the supporting insert may be made from a material that will flex or move with the user’s movements, alternatively contemplating foam, rubber, or a polymeric material.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have formed the inserts of a foam material, as in Landi, the result having a reasonable expectation of success. One would have been motivated to make this modification as foam is readily available, cheap, and often used in brace applications, further, foam would provide a cushioning yet supportive insert that allows for flexing with the user’s movements (¶0035). Moreover, 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 design choice. In re Leshin, 125 USPQ 416.
Regarding claim 3
Marshall as modified discloses the limitations of claim 1 above and further discloses wherein two pockets extend substantially across a width of the elongate member, from a first side to a second, opposing side (Given the pads extend substantially across the width, as seen in Fig 10, it would follow that the pockets that hold the pads, added in claim 1 above, would do so as well).
Regarding claim 7:
Marshall as modified discloses the limitations of claim 1 above and further discloses wherein the apparatus is arranged to be wearable by a user around a lower thigh portion of the user, and said two inserts are arranged to locate adjacent an inner thigh of the user, in use (Intended use limitation: capable of being used as such; ¶0060; ¶0049).
Regarding claim 8:
Cantrell as modified discloses the limitations of claim 1 above and further discloses wherein said complementary connection means are provided as a set of hook and loop fasteners, located at each of said first and second opposing ends of the elongate body portion (see Fig 10; ¶0048).
Claims 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Marshall and Landi, as applied to claim 1, in view of Combs (US 20170209293, as cited on previous 892), hereinafter referred to as Combs.
Regarding claim 9:
Marshall as modified discloses the limitations of claim 1 above wherein the connection means are provided as a set of hook and loop fasteners at opposing ends of the elongate body portion (see Fig 10; ¶0048).
Marshall as modified fails to disclose wherein said complementary connection means are provided as one or more straps located at a first end of the elongate body portion, arranged to feed through one or more buckles or loops located at the second, opposing end, the one or more straps being attachable to themselves via a provision of hook and loop fastening portions located on said one or more straps.
Combs discloses a similar limb-wrapping elongated device with a complementary connection means alternatively provided as either hook and loop fasteners, or as one or more straps located at a first end of the elongate body portion, arranged to feed through one or more buckles or loops located at the second, opposing end, the one or more straps being attachable to themselves via a provision of hook and loop fastening portions located on said one or more straps (¶0040).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have exchanged the hook and loop fasteners of Marshall, for the strap/buckle fasteners of Combs, to provide a more adjustable or secure connection, the result having a reasonable expectation of success. The equivalence of hook and loop and buckle/strap fasteners in their ability to fasten two components together is known in the art, as evidenced by Combs, and the selection of any known equivalents would be within the level of ordinary skill in the art. Moreover, the simple substitution of buckle/strap fastener for a hook and loop fastener would have yielded the predictable results of continued fastening capability.
Regarding claim 12:
Marshall as modified discloses the limitations of claim 1 above wherein the connection means are provided as a set of hook and loop fasteners at opposing ends of the elongate body portion (see Fig 10; ¶0048).
Marshall as modified fails to disclose wherein said complementary connection means are provided as one or more belt strap-style buckles.
Combs discloses a similar limb-wrapping elongated device with a connection means alternatively provided as either hook and loop fasteners, or as one or more belt strap-style buckles (¶0040).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have exchanged the hook and loop fasteners of Marshall, for the belt strap style fasteners of Combs, to provide a more adjustable or secure connection, the result having a reasonable expectation of success. The equivalence of hook and loop and belt strap style fasteners in their ability to fasten two components together is known in the art, as evidenced by Combs, and the selection of any known equivalents would be within the level of ordinary skill in the art. Moreover, the simple substitution of a belt strap style fastener for a hook and loop fastener would have yielded the predictable results of continued fastening capability.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Marshall and Landi, as applied to claim 1, in view of McLain (US 20160143772, as cited on previous 892), hereinafter referred to as McLain.
Regarding claim 10:
Marshall as modified discloses the limitations of claim 1 above wherein the connection means are provided as a set of hook and loop fasteners at opposing ends of the elongate body portion (see Fig 10; ¶0048).
Marshall as modified fails to disclose wherein said complementary connection means are provided as one or more straps located at a first end of the elongate body portion, and one or more complementary ladder lock buckles located at the second, opposing end.
McLain discloses a similar piece of apparel, fastened to the body via complementary connection means which are provided as one or more straps located at a first end of the apparel, and one or more complementary ladder lock buckles located at the second, opposing end (¶0060).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have exchanged the hook and loop fasteners of Marshall, for the ladder lock/strap fasteners of McLain, the result having a reasonable expectation of success. One would have been motivated to make such a modification because, as disclosed in McLain, straps/ladder lock buckles allow for easier to operate adjustment mechanisms (¶0060). Further, the equivalence of straps/ladder lock buckles and hook and loop fasteners for their use in the fastening art is well known, and the selection of any known equivalents to fasten two components together would be within the level of ordinary skill in the art. A simple substitution of one known element for another would obtain predictable results. KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739, 1740, 82 USPQ2d 1385, 1395, 1396 (2007).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Marshall and Landi, as applied to claim 1, in view of Phillips (US 20130074269, as cited on previous 892), hereinafter referred to as Phillips.
Regarding claim 11:
Marshall as modified discloses the limitations of claim 1 above wherein the connection means are provided as a set of hook and loop fasteners on opposing ends of the elongate body portion (see Fig 10; ¶0048).
Marshall as modified fails to disclose wherein said complementary connection means are provided as one or more side-release buckles, whereby complementary connectors of said side-release buckles are located at opposing ends of the elongate body portion.
Phillips discloses a similar padded limb-wrapping elongated device with a connection means alternatively provided as either hook and loop fasteners, or as one or more complementary side-release buckles (¶0053).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have exchanged the hook and loop fasteners of Marshall, for the side release buckle fasteners of Phillips, to provide a more adjustable or secure connection, the result having a reasonable expectation of success. The equivalence of hook and loop and side release buckle fasteners in their ability to fasten two components together is known in the art, as evidenced by Phillips, and the selection of any known equivalents would be within the level of ordinary skill in the art. Moreover, the simple substitution of a side release buckle fastener for a hook and loop fastener would have yielded the predictable results of continued fastening capability.
Response to Arguments
Applicant's arguments filed 03/23/2026 have been fully considered but they are not persuasive.
On page 1 the applicant contends that the inserts of Marshall may not be considered “cylindrical”, and rather are clearly “semi-cylindrical”.
The examiner respectfully disagrees. Per MPEP 2111, the words of a claim must be given their “plain meaning” unless such meaning is inconsistent with the specification, and claims must be given their “broadest reasonable interpretation” (BRI) in light of the specification, unless the term has been given a special definition in the specification. There is no special definition present in the disclosure. This being said, the word cylindrical is defined by Merriam Webster dictionary as “relating to or having the form or properties of a cylinder”. This definition is understood as the plain meaning of the term under broadest reasonable interpretation. The cited structures fulfill this plain meaning of the term under BRI, as a segment of a cylinder/semi-cylinder shape relates to a cylinder shape in that it is a portion of a cylinder. Should the applicant wish to limit the shape of the inserts in a more specific way, they could say that each insert is a cylinder in shape.
On pages 1-2, the applicant argues that the cylindrical shape of the inserts is very important as: there are no clear edges which may press into the wearer or protrude from the band, in use, causing discomfort or otherwise placing strain on the band; because the full cylinder allows for a greater degree of pressure imparted on the user’s limb to correct posture than a semi-cylinder shape, asserting that the semi-cylinder shape would require a doubled radius to apply the same pressure which would take up more space and make it inflexible; and that the cylinder shape allows for easier insertion into the pockets in a way that orientation of the insert does not matter.
In regard to the arguments above, for the purposes of compact prosecution, the examiner notes that nearly every argument towards criticality of the cylinder shape is not found in the applicant’s specification. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). See MPEP 716.01(c)(II). In regard to the purported benefits of cylinder shape, the specification simply says “in order to best fit the pockets 9, and also to provide the greatest comfort to the wearer of the riding aid 1, the inserts are formed in a substantially cylindrical shape, this is most beneficial as it means there are no clear edges which may press or dig into the wearer, in use, causing discomfort.” Even if, arguendo, the inserts of Marshall were not ‘cylindrical’, there would appear to be no contemplated benefit provided by the shape of the applicant’s inserts over that of the prior art, given the inserts of the prior art do not have edges which would press or dig into the wearer. In Marshall, the rounded segment of the insert is what is in contact with the wearer, and the insert is made of a material which molds to the shape of the user’s skin (¶0055). Further, the examiner notes that several prior art references previously made of record teaches the obviousness of a cylinder-shaped padding or support element, and, more generally, it has been held that there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
On page 2, the applicant argues that Landi teaches an entire sleeve 10 designed to match the shape and profile of the insert 12, and that, while the term “pocket” is used, this is not a selectively placed pocket on an elastic body for receiving a smaller insert, the sleeve 10 acts more like a sheath for the insert 12, and therefore it would not be obvious to have provided the pads of Marshall in selectively placed pockets rather than integral with the elongate body portion.
The examiner respectfully disagrees. Marshall teaches a limb brace with only two cylindrical padding supports connected to an elongate body portion (meant to wrap around the limb) at specific locations intermediate the first and second opposing ends of the elongate body portion. Landi teaches a knee brace apparatus with a limb-encircling body portion (sleeve 10, Fig 2), and a padding support (insert 12, Fig 3), and contemplates various methods in which the padding support may be held in place on the body relative to the user’s anatomy. Specifically Landi contemplates alternatively fastening the insert to the sleeve with a fastening mechanism, or providing pockets or compartments in the sleeve body for holding the insert. Given the disclosure of Marshall and Landi, the examiner asserts that It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have provided the padding supports of Marshall in pockets, as contemplated by Landi, given, as in Landi, a pocket allows for the insertion of a variety of inserts, so that the device can be tailored to the need of the user (¶0043-0044), and pockets would allow for easy replacement of the supports should they get damaged or deformed. The applicant mischaracterizes Landi by implying that the sleeve is the sheath for the insert, and that the inserts are not in selectively placed pockets, meant to keep the insert in place. Further, the size and shape of the insert in Landi is inconsequential, given the examiner has not suggested replacing the inserts of Marshall with that of Landi, but rather relies on Landi for the teaching of obvious attachment means between a support for a limb and the sleeve/wrap which encircles the limb. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lychou (US 1510408 A) and Fatool (US 4870956 A) exhibit similarities to the applicant’s invention.
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.
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/B.V.S./Examiner, Art Unit 3642
/JOSHUA D HUSON/ Supervisory Patent Examiner, Art Unit 3642