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 .
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:
“fastening portion”/ “a first fastening member”/ “a second fastening member” (Being interpreted as bands or straps based on the provided figures for the shape and structure of the fastening portion and its first and second members, and [0030-0033] wherein the fastening portion and its members are described to be flexible or elastic, and formed of common strap materials, thus the fastening portions are being interpreted to be bands/straps and any equivalents thereof),
“a connecting member” (Interpreted as zipper, hook and loop, detachable equivalents based on [0034] in the instant specification), in claims 1 and 2.
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 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 1-3 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.
Claims 1 and 2 are indefinite as they each recite the following: “an injury opening hole cuts to expose the injury” in lines 3-4 and lines 7-8; “the injury opening hole” in lines 15-16; “a plurality of injury opening holes is arranged along at least one direction” in line 17; “a plurality of injury opening hole openings corresponds to the plurality of injury opening holes respectively” in lines 18-19; wherein Examiner finds it unclear if these are all referring to a same singular opening hole (and their plurality) or if these are different structures.
Claim 3 rejected as being dependent on a rejected claim 2.
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) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horrigan (US 10159549 B1) in view of Bedford (US 20180021177 A1) and French (US 0260561 A).
Regarding claim 1, Horrigan discloses an injury contact prevention band (Figures 1-8, see Abstract, this is a bandage for preventing pet injury contact) comprising:
an injury cover portion 12/18 (Figure 3) configured to cover a part of a body including an injury, to have a thickness through which an injury opening hole 14 cuts to expose the injury (Figures 1-6, injury cover portion 12/18 covers a body part injury);
a fastening portion 22 (straps 22) configured to fasten the injury cover portion 12/18 to the body (Figures 5-6); and
a hard cover portion 20 (Figure 3) configured to cover an outer surface of the injury cover portion 12/18 (Figure 3, 20 is covering 12/18), to have hardness (Col. 3 lines 20-32, wherein 20 may be a rough facing hook and loop layer material wherein hook material has an inherent hardness and a surface that is rough is implicitly must have a hardness, Col. 4 lies 9-17, the exterior surface 20 may even be sandpaper wherein sandpaper is a hard material) and a thickness through which an injury opening hole opening 14 cuts (Figure 3, hole 14 cuts through 20),
wherein the fastening portion 22 includes:
a first fastening member 22-1 extending from an end of the injury cover portion 12/18 and having flexibility (See Annotated Figure 1, there are two ends to each of two straps 22 provided at opposite ends of 12/18, built for wrapping as seen in Figure 6 thus flexible, wherein one extending end portion may be termed a first fastening member 22),
a second fastening member 22-2 extending from another end of the injury cover portion 12/18 and having flexibility (See Annotated Figure 1, there are two ends to each of two straps 22 provided at opposite ends of 12/18, built for wrapping as seen in Figure 6 thus flexible, wherein the oppositely extending ends of each 22 each extend to opposite sides/ends therein),
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a connecting member detachably connecting an end of the first fastening member and an end of the second fastening member to each other (Col. 3 lines 32-37, the ends of straps 22 may either be tied thus their ends being a connecting member for detachably connecting the ends of the first and second fastening members, or the connecting member may be an adhesive for detachably attaching the ends of the straps 22), and
a hole cover portion 26 (Figures 1-6) configured to cover the injury opening hole 14, and to be separatable from the injury opening hole 14 (Col. 3 lines 37-52),
wherein a plurality of injury opening holes 14 is arranged along at least one direction (Figure 1),
wherein a plurality of injury opening hole openings 14 corresponds to the plurality of injury opening holes 14 respectively (Figure 3, the openings 14 in 20 correspond with the openings 14 in 12/18),
wherein the injury cover portion has a cut portion indented (the hole in the underside of the device is the cut portion indented) from an outer perimeter toward a central area thereof in an end area between an end and another end of an edge area thereof (See Annotated Figure 2 of Horrigan, wherein there is a cut portion indented into the structure herein, indicated outer perimeter is on the outside portion of the device).
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Horrigan does not disclose the injury cover portion having flexibility and elasticity.
However, Bedford teaches an analogous injury covering band (Figures 1-7) with an injury cover portion 14 (Figure 3) that is made of a flexible closed-cell foam material (flexible closed-cell foam is flexible and thus also has an elasticity [0014]) that may be further doped with anti-infectant and antibiotic cream (see [0023])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the injury cover portion 12/18 of Horrigan to be made of flexible closed-cell foam as taught by Bedford thus providing flexibility and elasticity in order to provide a material that may be impregnated with antibiotic and sufficiently protect the wound (Bedford [0014, 0019, 0023])
Horrigan does not disclose the fastening members having elasticity.
However, French teaches an analogous injury covering band (Figures 1-4) with analogous fastening members b/c (Figure 2) and an analogous connecting member d (buckle) for fastening ends of the members b/c together (lines 23-24), wherein the fastening members a/b are elastic straps (lines 22-23)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided the fastening members 22 of Horrigan with elasticity as taught by French in order to enable the device to be fitted and used on varying sizes of limb.
Regarding claim 2, Horrigan discloses an injury contact prevention band (Figures 1-8, see Abstract, this is a bandage for preventing pet injury contact) comprising:
an injury cover portion 12/18 (Figure 3) configured to cover a part of a body including an injury, to have a thickness through which an injury opening hole 14 cuts to expose the injury (Figures 1-6, injury cover portion 12/18 covers a body part injury);
a fastening portion 22 (straps 22) configured to fasten the injury cover portion 12/18 to the body (Figures 5-6); and
a hard cover portion 20 (Figure 3) configured to cover an outer surface of the injury cover portion 12/18 (Figure 3, 20 is covering 12/18), to have hardness (Col. 3 lines 20-32, wherein 20 may be a rough facing hook and loop layer material wherein hook material has an inherent hardness and a surface that is rough is implicitly must have a hardness, Col. 4 lies 9-17, the exterior surface 20 may even be sandpaper wherein sandpaper is a hard material) and a thickness through which an injury opening hole opening 14 cuts (Figure 3, hole 14 cuts through 20),
wherein the fastening portion 22 includes:
a first fastening member 22-1 extending from an end of the injury cover portion 12/18 and having flexibility (See Annotated Figure 1, there are two ends to each of two straps 22 provided at opposite ends of 12/18, built for wrapping as seen in Figure 6 thus flexible, wherein one extending end portion may be termed a first fastening member 22),
a second fastening member 22-2 extending from another end of the injury cover portion 12/18 and having flexibility (See Annotated Figure 1, there are two ends to each of two straps 22 provided at opposite ends of 12/18, built for wrapping as seen in Figure 6 thus flexible, wherein the oppositely extending ends of each 22 each extend to opposite sides/ends therein),
a connecting member detachably connecting an end of the first fastening member and an end of the second fastening member to each other (Col. 3 lines 32-37, the ends of straps 22 may either be tied thus their ends being a connecting member for detachably connecting the ends of the first and second fastening members, or the connecting member may be an adhesive for detachably attaching the ends of the straps 22), and
a hole cover portion 26 (Figures 1-6) configured to cover the injury opening hole 14, and to be separatable from the injury opening hole 14 (Col. 3 lines 37-52),
wherein a plurality of injury opening holes 14 is arranged along at least one direction (Figure 1),
wherein the injury cover portion has a cut portion indented (the hole in the underside of the device is the cut portion indented) from an outer perimeter toward a central area thereof in an end area between an end and another end of an edge area thereof (See Annotated Figure 2 of Horrigan, wherein there is a cut portion indented into the structure herein, indicated outer perimeter is on the outside portion of the device).
Horrigan does not disclose the injury cover portion having flexibility and elasticity.
However, Bedford teaches an analogous injury covering band (Figures 1-7) with an injury cover portion 14 (Figure 3) that is made of a flexible closed-cell foam material (flexible closed-cell foam is flexible and thus also has an elasticity [0014]) that may be further doped with anti-infectant and antibiotic cream (see [0023])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the injury cover portion 12/18 of Horrigan to be made of flexible closed-cell foam as taught by Bedford thus providing flexibility and elasticity in order to provide a material that may be impregnated with antibiotic and sufficiently protect the wound (Bedford [0014, 0019, 0023])
Horrigan does not disclose the fastening members having elasticity.
However, French teaches an analogous injury covering band (Figures 1-4) with analogous fastening members b/c (Figure 2) and an analogous connecting member d (buckle) for fastening ends of the members b/c together (lines 23-24), wherein the fastening members a/b are elastic straps (lines 22-23)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided the fastening members 22 of Horrigan with elasticity as taught by French in order to enable the device to be fitted and used on varying sizes of limb.
Regarding claim 3, Horrigan in view of Bedford and French disclose the invention of claim 2 above.
Horrigan further discloses wherein a plurality of injury opening hole openings 14 corresponds to the plurality of injury opening holes 14 respectively (Figure 3, the openings 14 in 20 correspond with the openings 14 in 12/18).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 4667666 A
US 4846807 A
US 6274787 B1
US 5755746 A
US 3561442 A
US 4870977 A
US 4470410 A
US 20180289556 A1
US 0697637 A
US 2785677 A
US 2367690 A
US 3234941 A (cut portion indent)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN S ALBERS whose telephone number is (571)272-0139. The examiner can normally be reached Monday-Friday 7:30 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachael Bredefeld can be reached at (571) 270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN S ALBERS/Patent Examiner, Art Unit 3786
/RACHAEL E BREDEFELD/Supervisory Patent Examiner, Art Unit 3786