DETAILED ACTION
This action is in response to the application filed 10/25/2024. Currently, claims 1-4 are pending in the application.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities: in order to maintain consistency and clarity throughout the claim(s), “the device” in line 1 of the claim should be amended to recite ---the device for fastening the thumb---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “wherein length of the second major axis” in line 5 of the claim should be amended to recite ---wherein a length of the second major axis---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “and length of the” in line 7 of the claim should be amended to recite ---and a length of the---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “the device for fastening a thumb” in line 11 of the claim should be amended to recite ---the device for fastening the thumb---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “device for fastening a thumb” in line 13 of the claim should be amended to recite ---device for fastening the thumb---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “the device for fastening a thumb” in line 16 of the claim should be amended to recite ---the device for fastening the thumb---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “after has disposed on the thumb” in line 17 of the claim should be amended to recite ---after being disposed on the thumb---. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: in order to maintain consistency and clarity throughout the claim(s), “the device” in line 1 of the claim should be amended to recite ---the device for fastening the thumb---. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “an integral part of 3D printing” in lines 1-2 of the claim should be amended to recite ---an integral part formed by 3D printing---. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “and length of the first major axis” in line 2 of the claim should be amended to recite --- and the length of the first major axis---. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “the device for fastening a thumb” in line 3 of the claim should be amended to recite ---the device for fastening the thumb---. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “wherein length of the first major axis” in line 5 of the claim should be amended to recite ---wherein the length of the first major axis---. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “wherein length of the first minor axis” in lines 6-7 of the claim should be amended to recite ---wherein the length of the first minor axis---. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “wherein length of the second major axis” in lines 8-9 of the claim should be amended to recite ---wherein the length of the second major axis---. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “and length of the second minor axis” in lines 9-10 of the claim should be amended to recite ---and the length of the second minor axis---. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: in order to correct a typographical/grammatical error, “90-degree” in line 17 of the claim should be amended to recite ---90-degrees---. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “the device for fastening a thumb” in line 22 of the claim should be amended to recite ---the device for fastening the thumb---. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: in order to maintain consistency and clarity throughout the claim(s), “the device for fastening” in line 1 of the claim should be amended to recite ---the device for fastening the thumb---. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “an integral part of 3D printing” in lines 1-2 of the claim should be amended to recite ---an integral part formed by 3D printing---. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “and length of the first major axis” in line 2 of the claim should be amended to recite --- and the length of the first major axis---. Appropriate correction is required.
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: “joining member” in claim 1.
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.
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 element” in claims 1 and 3.
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 3 and 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. Claim 3 recites “the method being applicable to the device for fastening a thumb of claim 1.” It is unclear if the method of claim 3 is intended to include the structure of the device for fastening a thumb of claim 1. For purposes of examination, the examiner will interpret the claim to mean --- the method including providing the device for fastening a thumb of claim 1---. Claim 4 depends on claim 3 and therefore, includes the same error.
Claim Rejections – 35 USC § 102
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hegland (US 2012/0289877 A1).
In regards to claim 1, Hegland teaches in Figure 17, the abstract, [0055], [0060] and [0083] a first tubular member (loop 208a) including a first elliptical hole (Figure 17 teaches the loop 208a having a hole extending therethrough that has an elliptical shape) having a first major axis (as defined in the annotated copy of Figure 17 provided below) and a first minor axis (as defined in the annotated copy of Figure 17 provided below); a second tubular member (loop 206a) including a second elliptical hole (Figure 17 teaches the loop 206a having a hole extending therethrough that has an elliptical shape) having a second major axis (as defined in the annotated copy of Figure 17 provided below) and a second minor axis (as defined in the annotated copy of Figure 17 provided below) wherein length of the second major axis (as defined in the annotated copy of Figure 17 provided below) is greater than (as shown in Figure 17) that of the first major axis (as defined in the annotated copy of Figure 17 provided below) and the second major axis (as defined in the annotated copy of Figure 17 provided below) is perpendicular to the first major axis (as defined in the annotated copy of Figure 17 provided below) so that the second elliptical hole (Figure 17 teaches the loop 206a having a hole extending therethrough that has an elliptical shape) is perpendicular to the first elliptical hole (Figure 17 teaches the loop 208a having a hole extending therethrough that has an elliptical shape) ([0083] teaches “The loops 206a and 208a each form an angle, i.e., angles alpha (.alpha.) and beta (.beta.), with the support 210a. In some embodiments, angles alpha and beta are less than 90 degrees;” thus, it is clear that Hegland contemplated a configuration in which the loops 206a and 208a are perpendicular to each other (when the angles alpha and beta are 45 degrees, for instance)) and length of the second minor axis (as defined in the annotated copy of Figure 17 provided below) is greater than (as shown in Figure 17) that of the first minor axis (as defined in the annotated copy of Figure 17 provided below); and a joining member (elongated support 210a) interconnecting (as shown in Figure 17) the first tubular member (loop 208a) and the second tubular member (loop 206a) and including (inasmuch as it is structured as) a fastening element (elongated support 210a); wherein the device (ring splint 200a) for fastening a thumb (the abstract teaches “the elongated support contacts the ventral surface (e.g., palmar or plantar) of a phalange (e.g., finger or toe) when in position on a phalange;” [0055] teaches “the term ‘finger’ includes all digits of the hand including the thumb”) is configured to dispose on the thumb (the abstract teaches “the elongated support contacts the ventral surface (e.g., palmar or plantar) of a phalange (e.g., finger or toe) when in position on a phalange;” [0055] teaches “the term ‘finger’ includes all digits of the hand including the thumb”) having a distal phalanx, a proximal phalanx, and an interphalangeal joint (a thumb is understood to include a distal phalanx, a proximal phalanx, and an interphalangeal joint); wherein when the device (ring splint 200a) for fastening a thumb (the abstract teaches “the elongated support contacts the ventral surface (e.g., palmar or plantar) of a phalange (e.g., finger or toe) when in position on a phalange;” [0055] teaches “the term ‘finger’ includes all digits of the hand including the thumb”) is disposed on the thumb (the abstract teaches “the elongated support contacts the ventral surface (e.g., palmar or plantar) of a phalange (e.g., finger or toe) when in position on a phalange;” [0055] teaches “the term ‘finger’ includes all digits of the hand including the thumb”), the first tubular member (loop 208a) is disposed on the distal phalanx (loop 208a is capable of being positioned on the distal phalanx), the second tubular member (loop 206a) is disposed on the proximal phalanx (loop 206a is capable of being positioned on the proximal phalanx), and the fastening element (elongated support 210a) presses the interphalangeal joint to prevent the interphalangeal joint from being bent (elongated support 210a is capable of being positioned against the interphalangeal joint; [0060] teaches “the elongated support is sufficiently rigid and is associated with the loops in such a way that when the splint is in position on a finger, the support exerts a force against the palmar surface of the finger” and “the force prevents the finger from flexing (i.e., bending)”); and wherein the device (ring splint 200a) for fastening a thumb (the abstract teaches “the elongated support contacts the ventral surface (e.g., palmar or plantar) of a phalange (e.g., finger or toe) when in position on a phalange;” [0055] teaches “the term ‘finger’ includes all digits of the hand including the thumb”) is disposed on the thumb (the abstract teaches “the elongated support contacts the ventral surface (e.g., palmar or plantar) of a phalange (e.g., finger or toe) when in position on a phalange;” [0055] teaches “the term ‘finger’ includes all digits of the hand including the thumb”) is fastened by the distal phalanx after has disposed on the thumb (ring splint 200a is capable of being secured in the distal phalanx).
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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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hegland (US 2012/0289877 A1).
In regards to claim 2, Hegland teaches the apparatus of claim 1. Hegland teaches in Figure 17 and [0083] that the device (ring splint 200a) is an integral part (as shown in Figure 17; [0083] teaches “the loops 206a and 208a and the elongated support 210a of the ring splint 200 form a single unit as illustrated, for example, in FIG. 17”) and length of the first major axis (as defined in the annotated copy of Figure 17 provided above) is greater than (as shown in Figure 17) that of the first minor axis (as defined in the annotated copy of Figure 17 provided above).
Hegland does not teach that the length of the first major axis is 1.1 to 1.5 times greater than that of the first minor axis.
However, it would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to provide that the length of the first major axis is 1.1 to 1.5 times greater than that of the first minor axis, 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. One having ordinary skill in the art before the effective filing of the present invention would find it obvious that the length of the first major axis relative to that of the first minor axis could be modified as necessary to accommodate the size and/or shape of an individual user’s anatomy.
Claim 2 limitation “of 3D printing” is a product-by-process- claim limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
Allowable Subject Matter
Claim 3 would be allowable if rewritten or amended to overcome the claim objections and the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. Regarding claim 3, the prior art does not teach aligning the second major axis of the device for fastening a thumb with the phalanx major axis; disposing the device for fastening a thumb on the thumb wherein the second major axis of the second tubular member passes through the distal phalanx major axis and the phalanx major axis; rotating the device for fastening a thumb 90-degree after the second major axis of the second tubular member has passed through the phalanx major axis; disposing the first tubular member on the distal phalanx so that the second tubular member is disposed on the proximal phalanx, in combination with the other element(s) or step(s) of the claim.
Claim 4 depends on claim 3 and therefore, would also be allowed if rewritten or amended to overcome the claim objections and the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KIENZLE (US 2021/0267782 A1)
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/VICTORIA HICKS FISHER/Primary Examiner, Art Unit 3786 12/11/2025