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 .
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.
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Claims 1-3, 5-7, 10-12, 14-16 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 15 of U.S. Patent No. 12,397,190.
Claim 1 recites an exercise device (see line 1 of claim 1 of the patent), comprising: a glider (see line 2 of claim 1 of the patent); and a glove configured to cover at least a portion of the glider, the glove comprising a grip disposed on an inner surface of the glove and configured to engage with the glider (see lines 3-6 of claim 1 of the patent); wherein the glider and the glove are configured to slide along a surface responsive to a force applied to the glider (see lines 10-12 of claim 1 of the patent).
Claim 2 (see claim 2 of the patent);
Claim 3 (see claims 3-4 of the patent);
Claim 5 (see claim 2 of the patent);
Claim 6 (see claim 5 of the patent);
Claim 7 (see claim 6 of the patent).
Claim 10 recites a glove to cover a glider (see line 1 of claim 7 of the patent), the glove comprising: a grip disposed on an inner surface of the glove (see line 2 of claim 7 of the patent); wherein the grip is configured to engage with the glider (see line 7 of claim 7 of the patent); and wherein the glider and the glove are configured to slide along a surface responsive to a force applied to the glider (see lines 9-11 of claim 7 of the patent).
Claim 11 (see claim 8 of the patent);
Claim 12 (see claims 9-10 of the patent);
Claim 14 (see claim 8 of the patent);
Claim 15 (see claim 11 of the patent);
Claim 16 (see claim 12 of the patent).
Claim 18 recites a method of using an exercise device (see line 1 of claim 13 of the patent), the method comprising: providing the exercise device including a first glider, a first glove, a second glider, and a second glove (see lines 3-4 of claim 13 of the patent); wherein the first glove is configured to be fit over the first glider (see lines 5-6 of claim 13 of the patent); wherein the second glove is configured to be fit over the second glider (see lines 7-8 of claim 13 of the patent); wherein at least one of the first glider and the first glove or the second glider and the second glove are configured to be moved along a surface when a force is applied (see lines 9-12 of claim 13 of the patent); wherein the first glove includes a first grip disposed on an inner surface of the first glove to fix the first glider relative to the first glove (see lines 13-15 of claim 13 of the patent); and wherein the second glove includes a second grip disposed on an inner surface of the second glove to fix the second glider relative to the second glove (see lines 20-22 of claim 13 of the patent).
Claim 19 (see claim 15 of the patent).
Although the claims at issue are not identical, they are not patentably distinct from each other. It is clear that all the elements of claims 1-3, 5-7, 10-12, 14-16 and 19 are to be found in claims 1-13 and 15 of the patent. The difference between claims 1-3, 5-7, 10-12, 14-16 and 19 of the application and claims 1-13 and 15 of the patent is that independent claims 1, 7, and 13 of the patent includes more elements and are more specific than independent claims 1, 10, and 18 of the application. Thus the invention of claims 1-13 and 15 of the patent is in effect a “species” of the “generic” invention of claims 1-3, 5-7, 10-12, 14-16 and 19 of the application. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-3, 5-7, 10-12, 14-16 and 19 are anticipated by claims 1-13 and 15 of the patent, they are not patentably distinct.
Claim Objections
Claim 16 is objected to because of the following informalities:
In claim 16 line 3, “the opening” should be changed to --wherein the opening--.
In claim 16 line 4, “the elastic” should be changed to --wherein the elastic--.
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.
(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 1-17 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US 2017/0072259 (Trenkle).
Regarding claim 1, Trenkle discloses an exercise device 100 (abstract, FIGS. 8-10), comprising:
a glider 11,22 (combination of the hard layer frame 11 and the body contacting layer 22 can be interpreted as the glider - FIGS. 8 and 10); and
a glove 20 configured to cover at least a portion of the glider 11,22 (removable cover 20 as shown in FIGS. 8-10 can be interpreted as the glove), the glove 20 comprising a grip 21 disposed on an inner surface of the glove and configured to engage with the glider (removable cover 20 has a resilient perimeter 21, which can be interpreted as the grip since it is configured to stretch over portions of the hard layer frame 11, and then allowed to attempt to return to its un-stretched size, thereby removably coupling and maintaining the removable cover 20 on or over the hard layer frame 11 - para 0057),
wherein the glider 11,22 and the glove 20 are configured to slide along a surface responsive to a force applied to the glider (when the removable cover 20 is removably coupled to the hard layer frame 11, a removable cover surface 25 of the removable cover maybe configured to contact and move across a resistive surface 300 in response to a force applied to the device by a user - para 0056, FIGS. 8-10 and 12-14).
Regarding claim 2, Trenkle teaches the exercise device of claim 1, and further discloses wherein: the grip 21 of the glove comprises a first material (elastic or resilient material - para 0057); and the inner surface of the glove 20 comprises a second material that is different from the first material (fabric or cloth material - para 0056).
Regarding claim 3, Trenkle teaches the exercise device of claim 2, and further discloses wherein the first material comprises a silicone rubber material (silicone rubber - para 0057) and the second material comprises a fabric material (fabric or cloth material - para 0056).
Regarding claim 4, Trenkle teaches the exercise device of claim 1, and further discloses wherein: the glider includes a top surface 23 configured to at least partially receive a portion of a user (para 0054) and a bottom surface 11 configured to face the surface in which the glider and the glove are configured to slide along (FIGS. 9-12); and the grip 21 is configured to contact the bottom surface 11 of the glider (FIG. 10).
Regarding claim 5, Trenkle teaches the exercise device of claim 1, and further discloses wherein: the glider comprises a first material (hard layer frame 11 comprising a substantially rigid material - para 0052); the glove comprises a second material (fabric or cloth material - para 0056); and the second material has a lower coefficient of friction with the surface than the first material (the removable cover 20 may contact a floor surface or covering in place of the hard layer frame 11 to reduce frictional resistance between the apparatus 100 and a solid floor surface or covering such as a wood or linoleum floor - para 0056).
Regarding claim 6, Trenkle teaches the exercise device of claim 1, and further discloses wherein the surface is at least one of a hardwood floor, a vinyl floor, a tile floor, or a laminate floor (tile, wood, and other like hard floor coverings - para 0051).
Regarding claim 7, Trenkle teaches the exercise device of claim 1, and further discloses wherein: the glove 20 includes an opening having an elastic band 21 (para 0057, FIGS. 8-10); the opening is configured to receive the glider 11,22 (FIGS. 8-10); and the elastic band 21 is configured to bias the glove around the glider (para 0057).
Regarding claim 8, Trenkle teaches the exercise device of claim 7, and further discloses wherein the grip and the elastic band are disposed on opposing sides of the glove (half of the resilient perimeter 21 can be interpreted as the grip and the other half of the resilient perimeter 21 can be interpreted as the elastic band, thus they are disposed on opposing sides of the removably cover 20 - para 0057, FIGS. 8-10).
Regarding claim 9, Trenkle teaches the exercise device of claim 1, and further discloses wherein the grip is one of a plurality of grips disposed on the inner surface of the glove (the resilient perimeter 21 may be one of a plurality of “gripping” options such as different types of a fasteners, a draw string, etc. - para 0058).
Regarding claim 10, Trenkle discloses a glove 20 (removable cover 20 as shown in FIGS. 8-10 can be interpreted as the glove) to cover a glider 11,22 (combination of the hard layer frame 11 and the body contacting layer 22 can be interpreted as the glider - FIGS. 8 and 10), the glove comprising:
a grip 21 disposed on an inner surface of the glove 20 (removable cover 20 has a resilient perimeter 21, which can be interpreted as the grip since it is configured to stretch over portions of the hard layer frame 11, and then allowed to attempt to return to its un-stretched size, thereby removably coupling and maintaining the removable cover 20 on or over the hard layer frame 11 - para 0057);
wherein the grip 21 is configured to engage with the glider 11,22 (resilient perimeter 21 is configured for removably coupling and maintaining the removable cover 20 on or over the hard layer frame 11 - para 0057); and
wherein the glider 11,22 and the glove 20 are configured to slide along a surface responsive to a force applied to the glider (when the removable cover 20 is removably coupled to the hard layer frame 11, a removable cover surface 25 of the removable cover maybe configured to contact and move across a resistive surface 300 in response to a force applied to the device by a user - para 0056, FIGS. 8-10 and 12-14).
Regarding claim 11, Trenkle teaches the glove of claim 10, and further discloses wherein: the grip 21 of the glove comprises a first material (elastic or resilient material - para 0057); and the inner surface of the glove 20 comprises a second material that is different from the first material (fabric or cloth material - para 0056).
Regarding claim 12, Trenkle teaches the glove of claim 11, and further discloses wherein the first material comprises a silicone rubber material (silicone rubber - para 0057) and the second material comprises a fabric material (fabric or cloth material - para 0056).
Regarding claim 13, Trenkle teaches the glove of claim 10, and further discloses wherein: the glider includes a bottom surface 11 configured to face the surface in which the glider and the glove are configured to slide along (FIGS. 9-12); and the grip 21 is configured to contact the bottom surface 11 of the glider (FIG. 10).
Regarding claim 14, Trenkle teaches the glove of claim 10, and further discloses wherein: the glider comprises a first material (hard layer frame 11 comprising a substantially rigid material - para 0052); the glove comprises a second material (fabric or cloth material - para 0056); and the second material has a lower coefficient of friction with the surface than the first material (the removable cover 20 may contact a floor surface or covering in place of the hard layer frame 11 to reduce frictional resistance between the apparatus 100 and a solid floor surface or covering such as a wood or linoleum floor - para 0056).
Regarding claim 15, Trenkle teaches the glove of claim 10, and further discloses wherein the surface is at least one of a hardwood floor, a vinyl floor, a tile floor, or a laminate floor (tile, wood, and other like hard floor coverings - para 0051).
Regarding claim 16, Trenkle teaches the glove of claim 10, and further discloses an opening having an elastic band 21 (para 0057, FIGS. 8-10); the opening is configured to receive the glider 11,22 (FIGS. 8-10); and the elastic band 21 is configured to bias the glove around the glider (para 0057).
Regarding claim 17, Trenkle teaches the glove of claim 16, and further discloses wherein the grip and the elastic band are disposed on opposing sides of the glove (half of the resilient perimeter 21 can be interpreted as the grip and the other half of the resilient perimeter 21 can be interpreted as the elastic band, thus they are disposed on opposing sides of the removably cover 20 - para 0057, FIGS. 8-10).
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.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Trenkle.
Regarding claim 18, Trenkle discloses a method of using an exercise device (FIGS. 13-14, paras 0061-0075), the method comprising:
providing the exercise device 100 including a first glider 11,22, a first glove 20;
wherein the first glove 20 is configured to be fit over the first glider 11,22 (FIGS. 8-10);
wherein at least one of the first glider 11,22 and the first glove 20 are configured to be moved along a surface when a force is applied (FIGS. 11-15, paras 0070-0075);
wherein the first glove 20 includes a first grip 21 disposed on an inner surface of the first glove 20 to fix the first glider relative to the first glove (paras 0056-0057).
However, Trenkle does not explicitly disclose the exercise device including a second glider and a second glove and all limitations associated with the second glider and second glove. It has been held that “mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” See MPEP 2144.04 VI. In this case, duplicating the second glider and second glove would merely provide a second exercise device that performs the same functions of the first exercise device. Therefore, no new and unexpected result is produced and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Trenkle’s as such.
Regarding claim 19, modified Trenkle teaches the method of claim 18, and Trenkle further discloses wherein: the first grip 21 of the first glove comprises a first material (elastic or resilient material - para 0057); and the inner surface of the first glove 20 comprises a second material that is different from the first material (fabric or cloth material - para 0056).
Regarding claim 20, modified Trenkle teaches the method of claim 18, and Trenkle further discloses wherein: the first glider includes a top surface 23 configured to at least partially receive a portion of a user (para 0054) and a bottom surface 11 configured to face the surface in which the first glider and the first glove are configured to slide along (FIGS. 9-12); and the first grip 21 is configured to contact the bottom surface 11 of the first glider (FIG. 10).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA S LEE whose telephone number is (571)270-1661. The examiner can normally be reached Monday-Friday 11am-7pm Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LoAn Jimenez can be reached on 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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/Joshua Lee/Primary Examiner, Art Unit 3784
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