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 made to claims 15-18, the cancellation of claims 1-14 and 20, and the addition of new claims 25 and 26 in the response filed 7/16/26 are acknowledged.
Claims 15-19 and 21-26 are now pending in the application and are examined below.
Response to Arguments
Applicant's arguments filed 7/16/26 have been fully considered but they are not persuasive. New reference Barnes has been provided to provide an updated interpretation of the claims.
Claim Objections
Claim 25 is objected to because of the following informalities: “a fingernail” in line 2 should be amended to recite --the fingernail--. Appropriate correction is required.
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) 15, 16, 19, 21, 24, and 25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barnes US 2013/0261524 A1.
Regarding claim 15, Barnes discloses a finger splint arrangement 210 (fig. 9 and [0084], finger splint 210), comprising:
a ring element 260 (fig. 9 and [0085], threaded male section 260);
a base member 262 attached to the ring element 260 (fig. 9 and [0085], threaded female section 262); and
an extended tip section 213/216 (fig. 9 and [0085], extension member 213 and attachment element 216);
wherein the extended tip section 213/216 comprises a pair of leg members 213a/b and a tip member 216 (fig. 9 and [0084], first and second sides 213a/b on each side of slit 218 forming a pair of leg members; [0085], attachment element 216 engages with aperture 219 of extension member 213);
wherein the pair of leg members 213a/b extend from the base member 262 (fig. 9, the leg members 213a/b are part of the extension member 213 which extends from the threaded female section 262);
wherein an open area is disposed between the ring element 260, leg members 213a/b and the tip member 216 (please see annotated fig. A below, where the double-headed arrow shows the open area extending between the male threaded section 260, leg members 213a/b, and attachment element 216); and
wherein the tip member 216 is configured to attach directly to a fingernail with adhesive ([0085], attachment element 216 remains adhered to the fingernail; [0077], attachment element 16 may be coupled to the fingernail by an adhesive; even though paragraph [0077] is referring to a different embodiment, it is understood from the reference numbers/names that the attachment elements 16 and 216 are adhered to the fingernail via adhesive).
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Regarding claim 16, Barnes discloses the extended tip section 213/216 being integrally formed with the base element 262 and the ring element 260 (fig. 9, when the attachment element 216 is attached to the extension member 213 via aperture 219, the extension member 213, attachment element 216, and rings 260/262 are integral; please note Merriam-Webster defines integral as “formed as a unit with another part”; in this case, the combination of all the elements when attached form a single, attached unit).
Regarding claim 19, Barnes discloses the leg members 213a/b arcing toward the tip member 216 (fig. 9 show leg members 213a/b sloping downwards in the direction of the attachment element 216, which is underneath them).
Regarding claim 21, Barnes discloses the tip member 216 extending outwardly from an inside surface of the leg members 213a/b (fig. 10, the attachment element 216 is slotted into aperture 219 such that it underlies the undersurface of leg members 213a/b; thus, the attachment element 216 can be considered extending outwardly in the downward direction from the inside/undersurface of leg members 213a/b).
Regarding claim 24, Barnes discloses the finger splint arrangement 210 being configured to be worn either with the extended tip section 213/216 extending over a top of a finger to which the finger splint arrangement 210 is attached (fig. 2 illustrates how the finger splints of the disclosure are to be worn on the finger), or with the extended tip section extending away from the finger to which the finger splint arrangement is attached, toward a hand and under an area of a palm of the hand.
Regarding claim 25, Barnes discloses the tip member 216 being defined by a length and a width configured to overlay a fingernail (fig. 2 illustrates how the attachment elements of the disclosure overlie the fingernail; further, whether the attachment element 216 is sized to overlay a fingernail depends on the dimensions of the specific user’s fingernail).
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) 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barnes US 2013/0261524 A1 in view of Baumgartner et al. US 2008/0249446 A1.
Regarding claims 17 and 18, Barnes discloses the claimed invention as discussed above.
Barnes is silent on the ring element, the base element, and extended tip section being constructed of a self-molding thermoplastic material that can be molded by application of a small amount of heat, wherein the application of the small amount of heat can include immersing the finger splint arrangement including the ring element and extended tip section in hot water.
However, Baumgartner teaches an analogous finger splint 12 (fig. 1 and [0037], thumb stay splint with thermoplastic layer 12) being constructed of a self-molding thermoplastic material that can be molded by application of a small amount of heat, wherein the application of the small amount of heat can include immersing the finger splint arrangement 12 in hot water ([0010], the low temperature thermoplastic is rigid when cool, malleable when heated, and can be immersed in water; therefore, the splint 12 is capable of being immersed in hot water to be warmed up for moldability).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the finger splint arrangement comprising the ring element, the base element, and extended tip section of Barnes such that the ring element and extended tip section are constructed of a self-molding thermoplastic material that can be molded by application of a small amount of heat, wherein the application of the small amount of heat can include immersing the finger splint arrangement including the ring element and extended tip section in hot water, as taught by Baumgartner, to provide a simple way to customize a splint to a patient’s specific anatomy.
Claim(s) 22 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barnes US 2013/0261524 A1 in view of Mayer et al. US 2019/0117438 A1.
Regarding claims 22 and 23, Barnes discloses the claimed invention as discussed above.
Barnes is silent on the ring element including a groove formed in a bottom surface, wherein the ring element includes an area of reduced thickness along an inside surface of the ring element in a same area of the ring element where the groove is formed.
However, Mayer teaches an analogous finger splint 100 (fig. 1 and [0043], multi-digit brace 100) comprising a ring element 110 (fig. 1 and [0044], first arcuate member 110) including a groove formed in a bottom surface (please see annotated fig. B below, which shows the indent/groove formed in the underside of the ring 110), wherein the ring element 110 includes an area of reduced thickness along an inside surface of the ring element 110 in a same area of the ring element 110 where the groove is formed (annotated fig. B, due to the groove, the ring 100 has an area of reduced thickness along the inner/concave surface of the ring 110 compared to the area denoted as “greater thickness”, for example).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have provided the ring element of Barnes with a groove formed in a bottom surface, wherein the ring element includes an area of reduced thickness along an inside surface of the ring element in a same area of the ring element where the groove is formed, as taught by Mayer, to provide gaps that are easy to manipulate due to the reduced thickness, allowing for an additional method of insertion or removal of the finger.
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Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barnes US 2013/0261524 A1 in view of Barnes US 2013/0261524 A1 (alternative embodiment).
Regarding claim 26, Barnes discloses the claimed invention as discussed above.
Barnes is silent on the base member including an indicium indicative of a ring finger size of the finger splint arrangement.
However, Barnes (alternative embodiment) teaches an analogous base member 262 (figs. 5 and 6) including an indicium indicative of a ring finger size of the finger splint arrangement 210 (figs. 5 and 6 and [0082], rings 260/262 may include indicia that corresponds with each other to show the distance the male ring 260 has been screwed into the female ring 262 (and this distance correlates to and would be indicative of the ring finger size)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have provided the base member of Barnes with an indicium indicative of a ring finger size of the finger splint arrangement, as taught by Barnes (alternative embodiment), to make it easy for users to repeatedly achieve their preferred size.
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 MICHELLE J LEE whose telephone number is (571)270-7303. The examiner can normally be reached 9 AM - 5 PM.
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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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/MICHELLE J LEE/ Primary Examiner, Art Unit 3786
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