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 Objections
Claims 1 and 16 are objected to because of the following informalities:
Claim 1, lines 10-11 recites the phase “the flexible tether segment” which should recite the phrase “the flexible tether segments.”
Line 6 of claim 16 recite the phrase “second tether” whereas line 10 recites “second flexible tether.” Consistent use of terminology should be used.
Appropriate correction is required.
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 4-6 and 8-14 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 4-6 each recite the limitation "the resistance assembly" There is insufficient antecedent basis for this limitation in the claims. Claims 4-6 each depend directly from claim 1. No where in claim 1 is a resistance assembly recited.
Claim 8-10 and 14 each recite the limitation "the couplers" in line 1 of each claim. There is insufficient antecedent basis for this limitation in the claims. Claims 8-10 and 14 each depend directly from claim 1. No where in claim 1 are couplers recited.
Claim 14, line 3 recites “the connector axis.” There is insufficient antecedent basis for this limitation in the claim. Claim 14 depends directly from claim 1. No where in claim 1 is a connector axis recited.
Claim 15, line 1 recites “the connector axis.” There is insufficient antecedent basis for this limitation in the claim. Claim 15 depends directly from claim 1. No where in claim 1 is a connector axis recited.
Appropriate correction is required.
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.
Claims 1-3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Crandall (US Pat. No. 9,545,534, Jan. 17, 2017) in view of Pasterino et al. (US Pat. No. 11400336, Aug. 2, 2022) (herein “Pasterino”).
Regarding claim 1, Crandall teaches an exercise device used by a person to perform abdominal muscle exercises, the exercise device comprising: a handheld, weighted ball 100 (i.e., medicine ball of vary sizes to the user’s hands, see col. 2, lines 4-8) ; a tether assembly (i.e., sling 110, see Figs. 1 and 4 below) affixed to the ball 100, the tether assembly 110 having: both a first flexible tether segment (i.e., bands 114) affixed to an outer surface of the ball by a top connector assembly 116 and a bottom connector assembly 117 and a second tether segment (i.e., a second band 114 opposite the first band 114) affixed to the outer surface of the ball by the top connector assembly 116 and the bottom connector assembly 117, and wherein (i) the top and bottom connector assemblies 116,117 are arranged 180 degrees apart from each other (see Fig. 1 and 4 below)
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Crandal is silent that (ii) each of the first and second flexible tether segments 114 define a gap between said outer surface and the flexible tether segment, the gap being dimensioned to receive a hand of the person while performing the abdominal muscle exercises.
Pasterino, however, in an analogous art teaches a gap between an outer surface of a ball 102 and a flexible tether segment 106, the gap being dimensioned to receive a hand of the person while performing the abduction exercises (see Pasterino, Fig. 2 below and col. 6, lines 36-54).
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It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Crandal such that first and second flexible tether segments 114 define a gap between said outer surface and the flexible tether segment 114, the gap being dimensioned to receive a hand of the person as taught by Pasterino in order to allow a user to grip the exercise device with straps against the hands of the user.
Regarding claim 2, the device of Crandal is fully capable of being held by a user such that in the use position, the person's forearms extend at a substantially 90 degree angle from the person's torso.
It is an axiom of US patent law that, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 or 103 may be appropriate. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Best, 562 F.2d 1252, 1254 (CCPA 1977). See MPEP § 2114.
Regarding claim 3, the device of Crandal is fully capable of being held by a user such that in the use position, the person's forearms are oriented substantially perpendicular to the person's spinal column.
Regarding claim 7, the device of Crandal is fully capable of being held by a user such that when the weighted ball is being held by the person, the person's right hand resides within the gap and is oriented closest to a resistance assembly when performing the abdominal muscle exercises to the person's left side.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15,19, and 21-22 of U.S. Patent No. 12,357,871. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Independent claim 1 of the instant application is broader in scope and reads on claim 1 of the ‘871 patent in that it does not require the limitation of “a coupler extending from each of the flexible tether segments for operable connection to a resistance assembly” as recited in claim 1 of the ‘871 patent.
Claim 2 of the instant application reads on claim 12 of the ‘871 patent.
Claim 3 of the instant application reads on claim 13 of the ‘871 patent.
Claim 4 of the instant application reads on claim 14 of the ‘871 patent.
Claim 5 of the instant application reads on claim 2 of the ‘871 patent.
Claim 6 of the instant application reads on claim 3 of the ‘871 patent.
Claim 7 of the instant application reads on claim 4 of the ‘871 patent.
Claim 8 of the instant application reads on claim 5 of the ‘871 patent.
Claim 9 of the instant application reads on claim 6 of the ‘871 patent.
Claim 10 of the instant application reads on claim 7 of the ‘871 patent.
Claim 11 of the instant application reads on claim 8 of the ‘871 patent.
Claim 12 of the instant application reads on claim 9 of the ‘871 patent.
Claim 13 of the instant application reads on claim 10 of the ‘871 patent.
Claim 14 of the instant application reads on claim 16 of the ‘871 patent.
Claim 15 of the instant application reads on claim 17 of the ‘871 patent.
Independent claim 16 of the present invention despite minor wording differences reads on the same subject matter as in claim 15 of the ‘871 patent.
Claim 17 of the instant application is identical to claim 19 of the ‘871 patent.
Claim 18 of the instant application is identical to claim 21 of the ‘871 patent.
Claim 19 of the instant application is identical to claim 22 of the ‘871 patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S LO whose telephone number is (571)270-1702. The examiner can normally be reached Mon. - Fri. (9:30 am - 5:30 pm EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LoAn Jimenez can be reached at (571) 272-4966. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW S LO/Primary Examiner, Art Unit 3784
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