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 .
Response to Amendment
The amendments filed with the written response received on March 01, 202 have been considered and an action on the merits follows. As directed by the amendment, claims 1-3 and 5 have been amended, claim 4 has been canceled and claims 8-15 are withdrawn. Accordingly, claims 1-3 and 5-15 are pending in this application, with an action on the merits of claims 1-3 and 5-7 to follow.
Because of the applicant’s amendment, the following in the office action mailed November 28, 2025 are hereby withdrawn:
Previous objection to the specification.
Examiner rejection to the 35 USC 112 (b) is being maintained.
Response to Arguments
Applicant's arguments filed March 01, 202 have been fully considered but
they are not persuasive.
Examiner notes that Applicant argues that “the sleeve 2 in Knutson is thin and flexible and would not be stiff enough to allow fretting of the strings. The sleeve 2 would compress and in fact the user's fingertip would be required to exert a concentrated contact pressure on the string to fret the string. For a classical guitar, the normal tension on strings is between 12 and 15 pounds. Strings resist being depressed. Strings are narrow (between 25 and 40 thousandths of an inch). Fretting strings with no effective finger protection.
Examiner respectfully disagrees that the prior art of record would not be stiff enough to allow fretting of the strings, as the Applicant has used a relative term “stiff enough”. Examiner notes there is no way for the examiner to determine the meets an bounds of the required stiffness. Examiner is unclear as to how stiff is stiff enough and how one of ordinary skill in the art would ascertain the stiffness that is required.
Applicant’s arguments, are drawn to the amended claim language that recites, wherein the shell is sufficiently stiff to allow fretting of a guitar string by contact from the shell on the string, the shell being shaped and configured to fret a guitar string by pressing the string down to a fingerboard of a guitar to spread fretting pressure over a distal end of the finger. These arguments are not commensurate with the rejected claims and a new rejection is set forth below to address the newly added claim limitations.
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, and 5 (and the claims that depend therefrom) 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 1 recites the term “a partially closed distal end” in claim 1 is a relative term which renders the claim indefinite. The term “partially closed” 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. It is unclear what is meant by “partially closed” versus being closed. Therefore, the metes and bounds of what is considered “substantially closed” in claim 1 is unclear.
Claim 1 recites the term “wherein the shell is sufficiently stiff to allow fretting of a guitar string by contact from the shell on the string, in claim 2 is a relative term which renders the claim indefinite. The term “sufficiently stiff” 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. It is unclear what is meant by “sufficiently stiff” versus being closed. Therefore, the metes and bounds of what is considered “sufficiently stiff” in claim 2 is unclear.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent No. US 5,323,677 John A. Knutson, (herein after " Knutson").
As to Claim 1, Knutson discloses a finger-protector device for guitar playing (picking element 1; Knutson), comprising: a shell (securement element 2; Knutson) formed as a tube with an open base end and a partially closed distal end (Figures 1-6; Knutson), and sized and shaped to fit tightly over a distal portion of a finger (Col. 5 and Lines 20-52; Knutson ~ regarding being sized and shaped to fit tightly over a distal portion of a finger (snug fit)), the shell (securement element 2; Knutson) having a touch-hole (opening 6; Knutson) on the distal end that is shaped to allow a guitar player to touch a selected guitar string with the finger (Col. 4 and Lines 64-68; Knutson); wherein the shell (securement element 2; Knutson) is sufficiently stiff to allow fretting of a guitar string by contact from the shell on the string (Col. 5 , Lines 1-7 and 20-25; Knutson teaches a shell being a thin, strong, plastic material that is sufficiently stiff to allow fretting of a guitar string by contact from the shell (securement element 2; Knutson) of the string) (Page 5 of the Applicants disclosure defines substantially stiff being stiff enough to fret guitar strings. See Knutson’s abstract and Col. 5 Lines 1-10 and 20-23and 53-60; Knutson teaching a finger protector device that is substantially stiff as it is capable of being worn over the finger to fret guitar strings. Examiner notes that the Applicant has not disclosed what parameters constitute being stiff and how stiff is stiff enough to satisfy the claim. Therefore it is unclear as to what the metes and bounds are for the shell being substantially stiff.), the shell (securement element 2; Knutson) being shaped (Figures 1-5; Knutson) and configured to fret a guitar string by pressing the string down to a fingerboard of a guitar to spread fretting pressure over a distal end of the finger (Figures 1-; Knutson teaches the shell being capable of fretting a guitar string by pressing the string down to a fingerboard of a guitar to spread fretting pressure over a distal end of the finger).
As to Claim 2, Knutson discloses the finger-protector device according to claim 1, wherein the shell (securement element 2; Knutson) includes a circumferential edge around the touch-hole(opening 6; Knutson) Figure 5; Knutson teaching a circumferential edge around the touch-hole.
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As to Claim 6, Knutson discloses the finger-protector according to claim 1,
wherein the maximum cross-section occupies a central portion of length (Figure 1;Knutson ~ teaching wherein the maximum cross-section occupies a central portion of length).
As to Claim 7, Knutson discloses the finger-protector according to claim 1, wherein the base end has reduced cross-section compared to a central portion (Figure 1; Knutson ~ regarding the base end having a reduced cross section compared to a central portion).
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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 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 3 is rejected under 35 U.S.C. § 103 as being unpatentable over United States Patent No. US 5,323,677 John A. Knutson, (herein after " Knutson") as to claim 1 above, in view of United States Patent No. US 11,723,422 B2 to Nicholas Waterloo, (herein after "Waterloo”).
As to Claim 3, Knutson discloses the finger-protector device according to claim 2, wherein the shell (securement element 2; Knutson) but fails to disclose being composed of PETG plastic.
Waterloo teaches 3D printed impact resistant glove and discloses being composed of Polyethylene Terephthalate Glycol (PETG) plastic (Col. 5 and Lines 22-30; Waterloo ~ regarding Polyethylene Terephthalate Glycol (PETG).
Therefore, based on Waterloo’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Knutson’s finger-protector material to include being composed of Polyethylene Terephthalate Glycol (PETG) plastic, as doing so would provide comfort to a user. This would simply be the substitution of materials of prior art elements according to known methods yielding predictable results. See: MPEP 2143.
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over United States Patent No. US 5,323,677 John A. Knutson, (herein after " Knutson") as to claim 1 above, in view of United States Patent Application Publication No. US 20150065928 A1 to Christoforou; Dimitrios, (herein after "Christoforou”).
As to Claim 5, Knutson discloses the finger-protector according to claim 1, wherein the open base end (Figure 1; Knutson) but fails to disclose comprises a circular perimeter with an open area in the form of a cut-out extending from the circular perimeter toward the distal end of the shell.
Christoforou teaches a finger sleeve and discloses comprising a circular perimeter (Figure 1; Christoforou) with an open area (Figure 1; Christoforou) in the form of a cut-out (first opening 192; Christoforou) extending from the circular perimeter toward the distal end of the shell (Figure 1; Christoforou).
Therefore, based on Christoforou’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Knutson’s shell to include comprising a circular perimeter with an open area in the form of a cut-out extending from the circular perimeter toward the distal end of the shell, as doing so would provide enhanced flexibility of the joint for the wearer and as well as additional comfort and design options for the wearer.
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 AKWOKWO REDHEAD whose telephone number is (571)272-7581. The examiner can normally be reached Monday - Friday7:00 AM to 4:00pm EST.
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/AKWOKWO OLABISI REDHEAD/ Examiner, Art Unit 3732
/ALISSA L HOEY/ Primary Examiner, Art Unit 3732