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 09/15/2025 have been fully considered but they are not persuasive.
Regarding applicant’s arguments stating Haight does not read on the present invention because it does provide disclosure towards a smart ring, Examiner respectfully disagrees.
As noted in the prior Office Action mailed on 6/17/2025, the limitation of the cover being configured to cover a smart ring does not further limit the structure of the inventions and is being interpreted as intended use language and therefore the prior art only needs to be capable of performing the functional recitations in order to be applicable. Ex parte Masham, 2 USPQ2d 1647 (1987). Haight is not structurally different from the instant invention despite not specifically disclosing a smart ring.
Regarding applicant’s arguments stating Haight discloses wherein the circumferential edge extends more radially inward than the ring, Examiner respectfully disagrees. Haight teaches the ring is nests inside the cover. This does not necessarily require the edges to extend past the ring and could mean the ring and ring cover are flush while the ring is nested into the cover. Further, Haight discloses the cover may frictionally engage human skin and prevent sliding of the ring on a person’s finger. Again, this does not require the ring cover to extend farther than the ring. In fact, when the ring cover is flush with the ring, the ring cover would in fact engage with the skin of the wear as the ring would engage with the skin of the wear.
Examiner holds rejection over the prior art.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 10-12, 21-22 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haight US 9232838.
Regarding claim 1, Haight discloses a protective cover for a smart ring having an interior surface with at least one sensor, the protective cover comprising
an annular member (10) formed from flexible material (flexible or elastic material, para 8) configured to stretch over the smart ring (30), the protective cover having a circular shape comprising an inner surface (inside, 12), an outer surface (outer, 12) and side walls (14, 16) joining adjacent ends of the inner and outer surfaces,
wherein in use and when fitted to the smart ring (30) the side walls are configured to extend radially inwards along an annular surface (Fig 6) of the smart ring and the inner surface receives an exterior surfaces of the smart ring (Fig 6), wherein the diameter of the inner surface is configured and dimensioned to be smaller than the outer diameter of the smart ring (Column 4 lines 3-6, “the protective band (12) may be stretched over a ring (30) having an outer diameter greater than the inner diameter of the protective band (12)”) and the side walls are configured and dimensioned to be the same size of smaller than the annular surface of the smart ring and therefore do not extend radially inwards beyond the interior surfaces of the smart ring such that the side walls (14, 16) are configured to allow contact between the at least one sensor on the interior surface of the smart ring and the skin of the smart ring wearer's finger (Fig 4, 5, 6).
The language in italics is being interpreted as intended use language. 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. Ex parte Masham, 2 USPQ2d 1647 (1987).
The protective cover of Haight is capable of maintaining the contact between smart ring sensors on the interior surfaces of a smart ring and the finger of a user.
Examiner notes “smart ring wearer’s finger” is a part of intended use language, however a positive recitation of ring wearer’s finger would raise 35 U.S.C. 101 issues.
Haight teaches wherein the ring cover (10) may frictionally engage human skin and prevent sliding of the ring (30) on a person's finger (Col 3 lines 36-39). Examiner notes that when the ring cover’s side walls are the same size of the annular surface of the ring, the ring cover would in fact frictionally engage with the finger of the user alongside the ring frictionally engaging with the finger of the user. Examiner finds this reads on the claim limitation as presented.
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Regarding claim 2, Haight discloses wherein the cover is configured to stretch to cover at a plurality of standard ring sizes (Column 2, lines 26-27).
Regarding claim 3, Haight discloses wherein the cover has been adapted such that it fits smart ring sizes 3-5, 6-9 or 10-13 or above (Table 1).
Regarding claim 4, Haight discloses wherein the cover has a thickness of about 0.6mm - 1.5mm (Column 3, lines 23-24, “the protective band may have a thickness of 0.1 cm-0.3cm” equivalent to 1-3mm).
Regarding claim 5, Haight discloses wherein the cover is adapted such that it stretches over any features on the outer surface of the smart ring (Fig 6).
Although, Haight does not specifically teach the ring cover stretching over features of a smart ring, the cover of Haight stretches over a center stone and therefore is capable of stretching over any features on the outer surface of a smart ring.
Regarding claim 10, Haight discloses wherein when in use and fitted to a smart ring the protective cover is configured such that it limits movement between the smart ring and the cover so that twisting motions or friction between the covered smart ring and another hard object does not alter the placement of the cover (Column 2 lines 2-5, “to allow for secure coupling of the ring cover to the ring”).
Regarding claim 11, Haight discloses wherein the cover is made from a resilient plastic material (Column 3 lines 45-50, silicone).
Regarding claim 12, Haight discloses wherein the cover is made from thermoplastic material or a silicone material (Column 3 lines 45-50, silicone).
Regarding claim 21, Haight discloses wherein when fitted to a smart ring, the flexible material is configured to have sufficient stretch to ensure a tight fit over the smart ring to support the cover being retained on the smart ring (Haight, Column 4 lines 3-6, “the protective band (12) may be stretched over a ring (30) having an outer diameter greater than the inner diameter of the protective band (12)”) and reducing water ingress between the ring and cover in use (Haight, Column2 lines 11-13).
Regarding claim 22, Haight discloses wherein when fitted to a smart ring, the cover is configured to substantially prevent movement between the smart ring and the cover (Column 2 lines 2-5, “to allow for secure coupling of the ring cover to the ring”).
Regarding claim 24, Haight discloses wherein the outer surface is continuous around an entire circumference of the cover, with no openings or discontinuities (Fig 4), such that, in use, the cover covers the exterior surface of the smart ring along an entire circumference of the smart ring.
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 9 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Haight US 9232838.
Regarding claim 9, Haight discloses the claimed invention except for the side walls are between about 0.6mm to 1.2mm thick.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have had the side walls be between about 0.6mm to 1.2mm thick, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, page 8, line 5-10, applicant has not disclosed any criticality for the claimed limitations.
Regarding claim 23, Haight discloses the claimed invention except wherein material has a Shore Hardness 00 in the range of 40 to 70.
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 material of Haight to have a Shore 00 hardness of 40-70 to yield a softer material for comfort or for ease of manufacturing, 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.
Claims 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Haight US 9232838 in view of Maloney et al. US 20120118016.
Regarding claim 12, in the alternative, Haight discloses the invention except wherein the cover is made from thermoplastic material (Maloney, thermoplastic elastomers).
Maloney et al discloses wherein the ring cover is made from thermoplastic material (Maloney, para 38-39).
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 ring cover of Haight to be made from thermoplastic material for durability and ease of manufacturing, 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 13, Haight in view of Maloney discloses wherein the cover is made from a thermoplastic polyurethane, polypropylene or polyethylene or combinations thereof (Maloney, para 38-39, thermoplastic elastomer).
Regarding claim 14, Haight in view of Maloney discloses wherein the cover is made from a thermoplastic polyurethane material and the thermoplastic polyurethane has a durometer of 20-70 on the Shore A scale (Maloney, para 36).
The combination does not disclose wherein the thermoplastic polyurethane has a Shore Hardness 00 of 50-60.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the material of Haight in view of Maloney to be of a lower durometer to yield a softer material or for ease of manufacturing, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, page 9, line 4-17, applicant has not disclosed any criticality for the claimed limitations.
Regarding claim 15, Haight in view of Maloney discloses wherein the cover is made from a thermoplastic polyurethane material and the thermoplastic polyurethane has a durometer of 20-70 on the Shore A scale (Maloney, para 36).
The combination does not disclose wherein the thermoplastic polyurethane has a Shore Hardness 00 of 55.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the material of Haight in view of Maloney to be of a lower durometer to yield a softer material or for ease of manufacturing, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, page 9, line 4-17, applicant has not disclosed any criticality for the claimed limitations.
Regarding claim 16, Haight in view of Maloney discloses the invention except wherein the cover is made from a thermoplastic polyurethane and a 2-10% polypropylene additive.
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 ring cover of Haight to be made from thermoplastic polyurethane and a 2-10% polypropylene additive for durability, 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 17, Haight in view of Maloney discloses wherein the cover is made from a thermoplastic polyurethane material and the thermoplastic polyurethan is a high-clarity, medical-grade thermoplastic polyurethane.
Maloney teaches wherein the ring cover may be made from medical grade silicone (para 8).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have Maloney’s thermoplastic ring cover to be medical grade for performance of the material to be hypo-allergenic and resistant to bacteria, 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 25 is rejected under 35 U.S.C. 103 as being unpatentable over Haight US 9232838 in view of Manuel et al US 20160350581.
Regarding claim 25, Haight discloses the protective cover further including the smart ring.
Haight does not specifically disclose the ring being a smart ring.
Manuel discloses a smart ring (100)
It would have been obvious to one skilled in the art before the effective filing date of the invention to modify the ring as disclosed by Haight to be a smart ring as taught by Manuel to protect any ring that the user needs.
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.
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, 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