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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/964324, filed on 10/12/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/18/2025 is acknowledged. The submission is in compliance with the provision of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 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 use the word “means,” are interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses the word “means” that is coupled with functional language without reciting sufficient structure to perform the recited function and the word “means” is not preceded by a structural modifier. Such claim limitation(s) is/are: “a fastening means” in claims 8 and 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.
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.
Claims 5-6 and 15 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 5 recites “the strap section at least one of runs towards the wrist-side edge in the closed state counter to a principal direction or has a V-shaped form”. It is unclear the Applicant wants to mention at least one of section of the strap section runs towards the wrist-side edge in the closed state counter to a principal direction or the at least one of section has a V-shaped form? Or the Applicant wants to mention the strap section runs towards the wrist-side edge in the closed state counter to a principal direction or the strap section has a V-shaped form? For the purpose of applying art, the limitation is interpreted that the strap section runs towards the wrist-side edge in the closed state counter to a principal direction or the strap section has a V-shaped form.
Claim 5 recites “the strap section…has a V-shaped form”. It is unclear the shape of the strap section is a V-shape or the strap section is configured to form in a V-shape. As the specification describes the path of the strap section 22 in the closed state is a V-shape or V-shaped (page 15, lines 12-13), the limitation is interpreted that the path of the strap section 22 in the closed state is a V-shape.
Claim 6 recites “without at least one of any loops for fingers or a palm section”. It is unclear the Applicant wants to mention without any loops for fingers or a palm section? Or without any loops for fingers or without any loops for a palm section? It is also unclear how can the glove does not have a loop for fingers or a palm section because as shown in figs. 3-4 and 6, the glove is formed a loop for a thumb and the glove has a palm section when being wrapped around the hand. For the purpose of applying art, the limitation is interpreted that the glove is designed without any loops for fingers or a palm section in an open state.
Claim 15 recites “the trigger is further away from the wrist-side edge in a principal direction of the glove than 75% of the holder”. It is unclear which distance the Applicant wants to compare with the distance between the trigger and the wrist-side edge. Does the Applicant want to mention the distance between the trigger and the wrist-side edge is more than 75% of the length of the holder? Or does the Applicant want to mention the distance between the trigger and the wrist-side edge is more than 75% of the distance from the holder to the wrist-side edge? For the purpose of applying art, the limitation is interpreted that the trigger is further away from the wrist-side edge in a principal direction of the glove more than the distance from the holder to the wrist-side edge.
In the art rejections below the claims have been treated as best understood by the examiner.
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.
Claims 1-2, 4, 6, 8, 10, 12-13, 15-18 and 20 are rejected to the degree of definiteness under 35 U.S.C. 102(a)(1) as being anticipated by Martin (US 1267436).
Regarding claim 1, Martin teaches a glove comprising a dorsal section (annotated fig. 3 below), a strap section (fig. 3, strap 9), a trigger (fig. 3, button 32) and a holder (fig. 3, casing 13) for an electronic module (fig. 3, lamps 16, 17) that is attached to the dorsal section,
wherein the dorsal section comprises a thumb-side edge, a wrist-side edge and a side-of-the-hand edge (annotated fig. 3 below),
wherein the dorsal section has a first opening (fig. 3, opening of the buckle 10) on the side-of-the-hand edge and the strap section extends from the thumb-side edge (annotated fig. 3 below),
wherein the strap section passes through the first opening in a closed state of the glove and a portion of the strap section that passed through the first opening fastens the dorsal section detachably (fig. 3, when the strap 9 passes through of the opening of the buckle, an opening on the strap that passes through the opening of the buckle engages the hinged pin of the buckle to be detachably fastened to the dorsal section).
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Regarding claim 2, Martin teaches the dorsal section comprises a trigger section on which the trigger is attached, wherein the trigger section is provided on the thumb-side-edge of the dorsal section, and wherein the strap section extends from the trigger section (annotated fig. 3 below).
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Regarding claim 4, Martin teaches the trigger section is provided between the strap section and a rest of at least one of the dorsal section (annotated fig. 3 below) or the strap section starts at the edge of the trigger section facing away from the rest of the dorsal section.
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Regarding claim 6, Martin teaches the glove is designed without at least one of any loops for fingers or a palm section (fig. 3).
Regarding claim 8, Martin teaches a fastening means (fig. 3, buckle 6) for detachable fastening of the portion of the strap section that passes through the first opening (the buckle 6 is configured to fasten the portion of the strap 9 that passes through the opening of the buckle 10) is located on the dorsal section (fig. 3).
Regarding claim 10, Martin teaches the fastening means comprises a second opening (fig. 3, opening of the buckle 6), through which the strap section extends in the closed state.
Regarding claim 12, Martin teaches a fastening means (fig. 3, buckle 6) is located in a principal direction closer to the wrist-side edge than at least one of the first opening, the trigger section, or a permanently connected end of the strap section (fig. 3).
Regarding claim 13, Martin teaches the first opening is located in a principal direction closer to the wrist-side edge than the trigger section (annotated fig. 3 below).
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Regarding claim 15, Martin teaches the trigger is further away from the wrist-side edge in a principal direction of the glove than 75% of the holder (fig. 3, the distance between the button 32 and the wrist-side edge is more than the distance between the holder 13 to the wrist-side edge).
Regarding claim 16, Martin teaches the glove has a base body (fig. 3, base body of the mitt) that comprises the dorsal section, the strap section and the trigger section (fig. 3).
Regarding claim 17, Martin teaches the holder (fig. 3, casing 13) has at least one electrical contact element (fig. 2, contacts 22, 23) that is electrically connected to the trigger by means of a cable (fig. 3, page 2, lines 5-10, conductors 30, 31).
Regarding claim 18, Martin teaches at least one of the trigger or the cable are covered by a protective layer (fig. 2, layer 15 covers the conductors 30, 31).
Regarding claim 20, Martin teaches a wearable sensor device (fig. 3) comprising a glove (fig. 3, mitt 1) and an electronic module (fig. 3, lamps 16, 17) that is inserted into a holder (fig. 3, casing 3),
wherein the glove comprising a dorsal section (annotated fig. 3 below), a strap section (fig. 3, strap 9), a trigger (fig. 3, button 32) and the holder (fig. 3, casing 13) for the electronic module (fig. 3, lamps 16, 17) that is attached to the dorsal section,
wherein the dorsal section comprises a thumb-side edge, a wrist-side edge and a side-of-the-hand edge (annotated fig. 3 below),
wherein the dorsal section has a first opening (fig. 3, opening of the buckle 10) on the side-of-the-hand edge and the strap section extends from the thumb-side edge (annotated fig. 3 below),
wherein the strap section passes through the first opening in a closed state of the glove and a portion of the strap section that passed through the first opening fastens the dorsal section detachably (fig. 3, when the strap 9 passes through of the opening of the buckle, an opening on the strap that passes through the opening of the buckle engages the hinged pin of the buckle to be detachably fastened to the dorsal section).
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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.
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.
Claims 3 and 7 are rejected to the degree of definiteness under 35 U.S.C. 103 as being unpatentable over Martin (US 1267436), as applied to claims 1and 2 above, and further in view of Kettner (US 2019/0364996).
Regarding claim 3, Martin does not clearly teach the trigger section comprises a tongue that extends away in a principal direction both from the strap section as well as from a rest of the dorsal section.
However, in the same field of endeavor, Kettner teaches the trigger section (fig. 1, trigger 28) comprises a tongue (fig. 1, tongue 54) that extends away in a principal direction both from the strap section (fig. 1, strap section 18) as well as from a rest of the dorsal section (fig. 1).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to modify the mitt of Martin with a tongue as taught by Kettner for the benefit of providing more base material of the mitt for attaching the trigger device and interspaces between hand and mitt, which the user could snag on objects, can thereby be avoided (Kettner, para. [0010]).
Regarding claim 7, Martin does not teach the strap section is made of at least one of a stretchable or elastic material.
However, Kettner teaches the strap section (fig. 1, strap 18) is made of at least one of a stretchable or elastic material (para. [0054], the base body is elastic).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to modify the material of the strap of Martin to be elastic as taught by Kettner for the benefit of providing comfort, flexibility to the strap and allowing the strap to fit with different size of the user’s hand.
Claims 5 and 11 are rejected to the degree of definiteness under 35 U.S.C. 103 as being unpatentable over Martin (US 1267436).
Regarding claim 5, Martin does not clearly teach the strap section runs towards the wrist-side edge in the closed state counter to a principal direction.
However, Martin teaches a buckle 6 at the wrist side edge and the side-of the hand edge.
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to use the mitt of Martin such that the strap section 19 wraps around the hand and then fastens to the buckle 6 for the benefit of providing a different way to secure the mitt on the user’s body part and depending on the user’s preference.
Regarding claim 11, Martin does not teach the second opening is located on the thumb-side edge.
However, Martin teaches the strap 5 is on the thumb-side edge (fig. 3); the strap 5 and the buckle 6 are engaged to each other in fastening the mitt around the user’s wrist.
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to interchange the position of the buckle 6 and the strap 5 on the mitt without changing the operation of the mitt in fastening the mitt around the user’s wrist. It is noted that rearrangement of parts is unpatentable. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Then the modified structure Martin teaches the second opening is located on the thumb-side edge.
Claims 9 and 19 are rejected to the degree of definiteness under 35 U.S.C. 103 as being unpatentable over Martin (US 1267436), as applied to claims 1 and 8 above, and further in view of Hashimoto (US 3790168).
Regarding claim 9, Martin does not teach the fastening means comprises a hook-and-loop-fastener strip and the strap section comprises a complementary hook-and-loop-fastener strip.
However, in the same field of endeavor, Hashimoto teaches the fastening means (fig. 1, hook fastening member 9) comprises a hook-and-loop-fastener strip and the strap section (fig, 1, strap 1) comprises a complementary hook-and-loop-fastener strip (fig. 1, strap 1 has pile fastening member 5 which is configured to engage with hook fastening member).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to modify the buckle fastening of Martin with hook-and-loop fastening as taught by Hashimoto for the benefit of providing cost-effective fasteners in manufacturing the glove and providing a tight grip around the user’s hand.
Regarding claim 19, Martin does not teach the portion of the strap section that passes through the first opening and is not fastened to the dorsal section is fastened in the closed state of the glove to another portion of the strap section.
However, Hashimoto teaches the portion of the strap section (fig. 1, pile fastening member 5) that passes through the first opening (fig. 1, opening 7) and is not fastened to the dorsal section is fastened in the closed state of the glove to another portion of the strap section (fig. 1, hook fastening member 6).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to modify the strap of Martin with hook-and-loop portions as taught by Hashimoto for the benefit of providing a tight grip around the user’s hand with the free end of the strap are secured in place to the body of the glove.
Claim 14 is rejected to the degree of definiteness under 35 U.S.C. 103 as being unpatentable over Martin (US 1267436), as applied to claim 1 above, and further in view of Thomas (US 3512776).
Regarding claim 14, Martin teaches the dorsal section has a width between the thumb-side edge and the side-of-the-hand-edge (annotated Martin fig. 3 above).
Martin does not teach the strap section has a length that is at least twice the width of the dorsal section.
However, in the same field of endeavor, Thomas teaches the strap section has a length that is at least twice the width of the dorsal section (fig. 7, column 3, lines 59-66, the strap 24 completely encircles the user’s hand and preferably overlap upon themselves; also annotated fig. 1 below).
It would have been obvious to one of the ordinary skill in the art before the effective filing of the invention to modify Martin with the strap section having a length that is at least twice the width of the dorsal section as taught by Thomas for the benefit of providing securely wrapping around the user’s hand and providing support for the user’s hand so that fatigue is reduced (Thomas, column 3, lines 64-66).
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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 1-6, 8, 10-13, 16 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 17 of U.S. Patent No. 12,383,004. Although the claims at issue are not identical, they are not patentably distinct from each other because they are not patentably distinct from each other, for instance, the difference between the patented claim 1 and the instant claim 1 are minor and obvious from each other. The instant claim 1 is a broader version of the patented claim (i.e. the instant claim 1 does not include the limitations “wherein portions of the holder and the first opening are equidistant from the wrist-side edge in a principal direction” as in the patented claim 1). Therefore, the patented claim 1 would read on the instant claim 1. Furthermore, in the instant claim 1, the claimed limitations can be found in the patented claim 1. Any infringement over the patented claim 1 would also infringe over the instant claim 1.
Hence, the instant claim does not differ from the scope of the patented claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,383,004.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,383,004.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,383,004.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,383,004.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,383,004.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,383,004.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,383,004.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,383,004.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,383,004.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,383,004.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,383,004.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,383,004.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,383,004.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form PTO-892.
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/UYEN T NGUYEN/Examiner, Art Unit 3732