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 .
Election/Restrictions
Applicant’s election without traverse of Group I: claims 1-4, 7-8 and 10-12 in the reply filed on 12/12/2025 is acknowledged.
Claims 32-38 and 41-44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/12/2025.
Drawings
The drawings are objected to because figures 23, 33, 36 and 39-41 includes description should have been replaced with numerical characters and the description included in the specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
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 coupling mechanism coupled to the first end of the strut, wherein the coupling mechanism is configured to couple the device to the lattice structure as set forth in claims 1, 8, 10-12.
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.
As per the specification, Applicant discloses a plurality of the coupling mechanism; the embodiment claimed is drawn to a rigid open ring structure with a fixed opening.
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.
Claim 3 is 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.
The term “rigid” in claim 3 is a relative term which renders the claim indefinite. The term “rigid” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
Claim(s) 1-4, 8, 10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee U.S. Patent No. (4,854,310).
With respect to claim 1, Lee discloses a device (collar, 17, stem 19 and ring, 110, fig.5) configured to be coupled to a lattice structure or splint (50), wherein the lattice structure or splint (50) is configured to support a first joint of a body (wrist, as shown in fig.12), and wherein the lattice structure or splint (50) defines a plurality of apertures (as shown in fig.5) configured to allow for a flow of air and water to the first joint ([Col.2], lines 42-44),
the device comprising:
a strut (19) having a first end and a second end opposite the first end (as shown in the reproduced image of fig.5 below);
a coupling mechanism or collar (17) coupled to the first end of the strut (19), wherein the coupling mechanism is configured to couple the device to the lattice structure via (52, 53, as shown in fig.5); and
an immobilization component (110) coupled to the strut, wherein the immobilization component is configured to support a second joint of the body to thereby at least partially immobilize the second joint ([Col.3], lines 45-51, ring 110 is bent into almost a full circle to fit around the thumb. The combination of stem 19 and ring 110 prevents lateral motion of the thumb 14 relative to the collar 17].
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With respect to claim 2, Lee discloses the immobilization component (110) is coupled to the second end of the strut (as shown in the reproduced image of fig.5 above).
With respect to claim 3, Lee discloses the strut is rigid ([Col.4], lines 9-11, the sheet 15, collar 17, stem 19 and ring 110 and all sufficiently rigid to provide the desired immobilization].
With respect to claim 4, Lee discloses a length of the strut is adjustable ([Col.6], lines 1-3, a splint according to the present invention is also adjustable by bending the sheet 15, the collar 17, the stem 19 and/or the ring 110)] and ([Col.6], lines 17-18, it is desirable for the splint to be reshapable by bending so it can be adjusted by bending to fit the limb] which implies that by bending the device to fit the limb the length of the device can be adjusted.
With respect to claim 8, Lee discloses the coupling mechanism or collar (17) is configured to be removable coupled via (52, 53 as shown in fig,5) to the lattice structure or splint (50).
With respect to claim 10, Lee discloses the coupling mechanism or collar (17) is configured to be fixed via (52, 53, as shown in fig,5) to the lattice structure or splint (50).
With respect to claim 12, Lee discloses the coupling mechanism or collar (17) comprises: a first coupling mechanism (52) configured to be coupled to a first aperture of the plurality of apertures (54-56, fig.5) of the lattice structure or splint (50); and a second coupling mechanism (53) configured to be coupled to a second aperture of the plurality of apertures (57-59, fig.5) of the lattice structure or splint (50).
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.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claim 1 above, and further in view of Kumar U.S. Publication No. (2021/0145620 A1).
With respect to claim 7, Lee substantially discloses the invention as claimed except the immobilization component includes a closed-cell foam or a silicone material configured to contact the second joint of the body.
Kumar however, teaches splints for use in treatment of bone fractures (abstract) comprising restraint portions (104 and 106) may each have a liner indicated as (112 and 114) [0145]-[0147], wherein the liners may be formed from a polyurethane foam. For instance, the foam may be an open-celled foam and have a pore size which creates or otherwise promotes a capillary action to achieve the desired wicking effect [0148].
In view of the teachings of Kumar, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the immobilization component of Lee by incorporating a closed-cell foam material configured to contact the second joint of the body which promotes a capillary action to achieve the desired wicking effect [0148] of Kumar.
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Reasons for Allowance
The following is an examiner’s statement of reasons for allowance:
The closest prior art drawn to Lee fails to show or make obvious the claimed combinations of elements particularly the limitations as set forth in dependent claim 11 which recite features not taught or suggested by the prior art drawn to Lee, in combination with the other elements (or steps) of the apparatus and method recited in the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OPHELIA ALTHEA HAWTHORNE whose telephone number is (571)270-3860. The examiner can normally be reached M-F 8:00 AM-5:00 PM, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alireza Nia can be reached at 5712703076. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OPHELIA A HAWTHORNE/Primary Examiner, Art Unit 3786