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 as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 1000a in figure 3, and 1000b and 3000b in figure 4.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Specification
The use of the term “Velcro”(see para. [0035] and para. [0036]), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
In the instant case, Applicant has not provided the proper symbol indicating use in commerce, such as, TM, SM or ® following the term.
Claim Objections
Claims 2 and 4 are objected to because of the following informalities: in line 11 of claim 2, “smaller” should read --a smaller-- and in line 11 of claim 2, “the length” should read --a length--; and in line 30 of claim 4, “than the” should read --than a--. 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.
Claim 1-4 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.
Regarding claim 1, the recitation of “the other end” is indefinite in that the claim has not established that the injury cover portion has two ends, thus “the other end” lacks proper antecedent basis. Applicant is advised to amend the claim to recite --an end opposite the one end -- or similar language.
Regarding claim 3, “the other end” lacks proper antecedent basis.
Regarding claim 4, “the other end” in line 22 lacks proper antecedent basis.
Claim 2 and which depends from claim 1 is necessarily rejected by virtue of its dependence on claim 1.
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: “a connecting member” in claims 1 and 4.
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,251,296 (“the ‘296 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because they are broader is in scope.
Regarding claim 1, claim 1 of the ‘296 patent claims an injury contact prevention band comprising (see 1, line 1): an injury cover portion configured to cover a part of a body including an injury (see line 2-3); and a fastening portion configured to fasten the injury cover portion to the body, wherein the fastening portion includes (see lines 4-6): a first flexible fastening member extending from one end of the injury cover portion (se lines 7-8), a second flexible fastening member extending from the other end of the injury cover portion (see lines 9-10), and a connecting member detachably connecting an end of the first flexible fastening member and an end of the second flexible fastening member to each other (see lines 11-13), wherein a plurality of injury opening holes cutting through a thickness of the injury cover portion to expose the injury, the plurality of injury opening holes being arranged along at least one direction (see lines 14-17), and wherein a plurality of hole cover portions located in the plurality of injury opening holes respectively is connected to the injury cover portion so as to be separable from the plurality of injury opening holes respectively, and outer perimeter surfaces thereof fittingly engage with inner perimeter surfaces of the plurality of injury opening holes respectively (see lines 18-24).
Regarding claim 2, claim 1 of the ‘296 patent claims the injury contact prevention band of claim 1, wherein gap areas are located between the hole cover portions and the injury opening holes respectively (see lines 25-26), wherein each of the gap areas includes (see line 27): a plurality of separation areas where the plurality of hole cover portions and the injury cover portion are separated from each other, and (lines 28-30) a plurality of connection areas where the plurality of hole cover portions and the injury cover portion are connected to each other (see lines 31-33), wherein the plurality of the separation areas and the plurality of connection areas are arranged alternately along a circumferential direction of the gap areas respectively, and (see lines 34-37) wherein the plurality of connection areas has smaller length than the length of the plurality of separation areas (see lines 38-40).
Regarding claim 4, claim 1 of the ‘296 patent claims an injury contact prevention band comprising: (see line 1) an injury cover portion to cover a part of a body including an injury; and (see lines 2-3) a fastening portion to fasten the injury cover portion to the body (see lines 4-5), wherein the fastening portion includes: (see line 6) a first flexible fastening member extending from one end of the injury cover portion (see lines 7-8), a second flexible fastening member extending from another end of the injury cover portion, and (see lines 9-10) a connecting member detachably connecting an end of the first flexible fastening member and an end of the second flexible fastening member to each other (see lines 11-13), wherein a plurality of injury opening holes cutting through a thickness of the injury cover portion to expose the injury, the plurality of injury opening holes being arranged along at least one direction (see lines 14-17), wherein a plurality of hole cover portions located in the plurality of injury opening holes respectively is connected to the injury cover portion so as to be separable from the plurality of injury opening holes respectively, and outer perimeter surfaces thereof fittingly engage with inner perimeter surfaces of the plurality of injury opening holes respectively (see lines 18-24), wherein gap areas are located between the hole cover portions and the injury opening holes respectively (see lines 25-26), wherein each of the gap areas includes (see line 27) a plurality of separation areas where the plurality of hole cover portions and the injury cover portion are separated from each other, and (see lines 28-30) a plurality of connection areas where the plurality of hole cover portions and the injury cover portion are connected to each other (see lines 31-33), wherein the plurality of the separation areas and the plurality of connection areas are arranged alternately along a circumferential direction of the gap areas respectively, and (see lines 34-37) wherein the plurality of connection areas has a smaller length than the length of the plurality of separation areas (see lines 38-40), wherein the injury cover portion has a cut portion indented from an outer perimeter toward a central area in an end area between one end and the other end of an edge area thereof (see lines 41-44).
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 3 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-3 of prior U.S. Patent No. 12,251,296 (“the ‘296 patent”). This is a statutory double patenting rejection.
Claim 3 which depends on claims 1 and 2 of the instant application, claims the same invention as that recited in claim 1 of the ‘296 patent. More specifically, regarding instant claim 3, claim 1 of the ‘296 patent claims an injury contact prevention band of claim 2 (see claim 1, lines 1-40), wherein the injury cover portion has a cut portion indented from an outer perimeter toward a central area in an end area between one end and the other end of an edge area thereof (see claim 1, lines 41-44).
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.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 3,561,442 (“Goswitz”) in view of U.S. Patent No. 6,983,489 (“Caprio”)
Regarding claim 1, Goswitz discloses a mastectomy bandage that substantially discloses Applicant’s presently claimed invention. More specifically, Goswitz discloses an injury contact prevention band (constituted by body strip 1, see Figs. 1 and 2 and col. 1, lines 46-47) comprising: an injury cover portion configured to cover a part of a body including an injury (note the portion identified in annotated Fig. 1 below); and a fastening portion configured to fasten the injury cover portion to the body, wherein the fastening portion includes: a first flexible fastening member extending from one end of the injury cover portion (see annotated Fig. 1 below), a second flexible fastening member extending from the other end of the injury cover portion (see annotated Fig. 1 below), and a connecting member (5,7 shown in annotated Fig. 1 below, see also col. 1, lines 63-69) detachably connecting an end of the first flexible fastening member and an end of the second flexible fastening member to each other (see col. 1, lines 55-62, which disclose Velcro hook and pile type connections connect the free ends, see also annotated Fig. 1 below and Fig. 2), wherein an injury opening hole cutting through a thickness of the injury cover portion to expose the injury (note col. 1, lines 1-5 which discloses the bandage is for use over the area of a mastectomy, col. 3, lines 1-5 which discloses opening, and Fig. 2), and wherein a hole cover portion (cup 9, see Figs. 1 and 2 and col. 2, lines 5-10) located in the injury opening hole is connected to the injury cover portion so as to be separable from the injury opening hole (cup 9, see Fig. 2 and col. 2, lines 55-57, which discloses a substantial portion of the periphery of the cup is free of attachment; thus it is partially separable), and an outer perimeter surface thereof fittingly engages with an inner perimeter surface of the injury opening hole (when strips 11 and 12 are engaged, see Figs 1 and 2).
Goswitz fails to teach a plurality of injury opening holes cutting through a thickness of the injury cover portion to expose the injury, the plurality of injury opening holes being arranged along at least one direction, wherein a plurality of hole cover portions located in the plurality of injury opening holes respectively is connected to the injury cover portion so as to be separable from the plurality of injury opening holes respectively.
However, Caprio in its analogous disclosure of bra teaches it is known to provide with a bra with two horizontally aligned holes (openings 22, see Fig. 2 and col. 5, line 55-59) for the purpose of receiving and covering both breasts of a user.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the presently claimed invention to have duplicated the opening and cup of Goswitz, wherein the holes are arranged in a line in order to receive and cover both breast of a user. Such modification results in a plurality of injury opening holes cutting through a thickness of the injury cover portion to expose the injury, the plurality of injury opening holes being arranged along at least one direction, wherein a plurality of hole cover portions located in the plurality of injury opening holes respectively is connected to the injury cover portion so as to be separable from the plurality of injury opening holes respectively.
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in that they disclose bands having an opening for protecting an injury. See U.S. Patent 5264218, 61007536, 8237008 and 8591447.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM M LEWIS whose telephone number is (571)272-4796. The examiner can normally be reached Monday -Friday 5:30 am -11:30 am.
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, Alireza Nia can be reached at (571)270-3076. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIM M LEWIS/Primary Examiner, Art Unit 3786