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 .
Election/Restrictions
Applicant’s election of Species K – Protective Pad Assembly 1100 (Figures 83A-90), is acknowledged. Election was made with traverse in the reply filed March 6, 2026. Claims 3, 12-18, and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) for being drawn to a nonelected invention.
Applicant’s traversal is on the grounds that all species could be examined without a serious burden. This is found not persuasive because the entire application contains a number of species that are patentably distinct from one another and including divergent claimed subject matter separating the species. Such recognized divergent subject matter separating the species is a burden to examination.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1, line 1 recites “a use,” which should be amended to recite “a user.”
Claim 1 is objected to because of the following informalities: Claim 1 recites the limitations “the arm or leg of the user” (line 5), “an arm or a leg of the user” (lines 10-11), and “the arm or the leg of the user” (line 15). These limitations should be amended for consistency and proper antecedent basis.
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 6-11 and 19-20 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 6 recites the limitation “the split-ring clamp” (line 2). This limitation renders the claim indefinite because it lacks proper antecedent basis and it is unclear how it relates to the previously-recited “resilient retaining split-ring clamp” (see for example claim 1, lines 9 and 13). For purposes of examination, the limitation on line 2 of claim 6 will be interpreted as reciting “the resilient retaining split-ring clamp.”
Claim 7 recites the limitation “the split-ring clamp” (line 4). This limitation renders the claim indefinite because it lacks proper antecedent basis and it is unclear how it relates to the previously-recited “resilient retaining split-ring clamp” (see for example claim 1, lines 9 and 13). For purposes of examination, the limitation on line 4 of claim 7 will be interpreted as reciting “the resilient retaining split-ring clamp.”
Claim 8 recites the limitation “the resilient split-ring clamp” (lines 3-4). This limitation renders the claim indefinite because it lacks proper antecedent basis and it is unclear how it relates to the previously-recited “resilient retaining split-ring clamp” (see for example claim 1, lines 9 and 13). For purposes of examination, the limitation on lines 3-4 of claim 8 will be interpreted as reciting “the resilient retaining split-ring clamp.”
Claim 11 recites the limitation “the split-ring clamp” (lines 2 and 3-4). This limitation renders the claim indefinite because it lacks proper antecedent basis and it is unclear how it relates to the previously-recited “resilient retaining split-ring clamp” (see for example claim 1, lines 9 and 13). For purposes of examination, the limitation on lines 2 and 3-4 of claim 11 will be interpreted as reciting “the resilient retaining split-ring clamp.”
Claim 20 recites the limitation “the resilient split-ring clamp” (lines 2-3). This limitation renders the claim indefinite because it lacks proper antecedent basis and it is unclear how it relates to the previously-recited “resilient retaining split-ring clamp” (see for example claim 1, lines 9 and 13). For purposes of examination, the limitation on lines 2-3 of claim 20 will be interpreted as reciting “the resilient retaining split-ring clamp.”
Dependent claims are rejected at least for depending from a rejected claim.
Claim Rejections - 35 USC § 102
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, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPN 7,618,386 Nordt, III et al.
To claim 1, Nordt discloses a protective pad assembly (10) removably positionable on an arm or a leg of a user (see Figures 1-5; col. 4, line 16 – col. 7, line 35), the protective pad assembly comprising:
an outer protective unit (14,50) including a protective cushion pad (50) (see Figures 1-5; col. 7, lines 15-26); and
a manually adjustable self-retaining device (12,16) mounted to the outer protective unit for retaining the outer protective unit on the arm or leg of the user (see Figures 1-5; col. 4, line 16 – col. 5, line 58), the manually adjustable self-retaining device including a circular resilient retaining split-ring clamp (12) having two opposite spaced free ends (12a,12b) defining a gap therebetween (see Figures 1-5; col. 6, line 36 – col. 7, line 14; it is respectfully asserted that resilient retaining split-ring clamp 12 of Nordt can properly be considered “circular” despite the gap between free ends 12a,12b, to the same extent that resilient split-ring clamp 1112 of Species K of the instant application is considered “circular” despite the gap between free ends 11141 and 11142 of resilient split-ring clamp 1112), and a manual override adjuster (16) mounted to the resilient retaining split-ring clamp (see Figures 1-5; col. 4, line 16 – col. 5, line 29);
the free ends of the resilient retaining split-ring clamp being circumferentially expandable or contractable relative to one another for retaining the outer protective unit on the arm or leg of the user (see Figures 1-5; col. 6, line 36 – col. 7, line 14),
the manual override adjuster configured to manually adjust a distance between the free ends of the resilient retaining split-ring clamp (see Figures 1-5; col. 4, line 16 – col. 5, line 29; col. 6, line 36 – col. 7, line 14);
the manually adjustable self-retaining device configured to removably maintain the outer protective unit on the arm or leg of the user solely by a resilient force of the resilient retaining split-ring clamp of the self-retaining device (see Figures 1-5; col. 4, line 16 – col. 5, line 29; col. 6, line 36 – col. 7, line 14);
the protective cushion pad configured to be removably positionable over one of a knee or an elbow of the user (see Figures 1-5; col. 4, line 16 – col. 5, line 29; col. 6, line 36 – col. 7, line 14; intended use).
It is respectfully noted that the limitation “the protective cushion pad configured to be removably positionable over one of a knee or an elbow of the user” is a recitation of the intended use of the claimed invention. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, since protective pad assembly 10 of Nordt meets all the limitations as structurally recited in the claim it would therefore be capable of performing the recited intended use.
To claim 2, Nordt further discloses a protective pad assembly wherein the resilient retaining split-ring clamp has a rectangular cross-section (see Figures 1-5).
To claim 4, Nordt further discloses a protective pad assembly wherein the manually adjustable self-retaining device is non-removably mounted to the outer protective unit (see Figures 1-5; col. 4, line 16 – col. 5, line 29).
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 5-11 and 19-20 are rejected, insofar as definite and as best understood by the Examiner, under 35 U.S.C. 103 as being unpatentable over Nordt (as applied to claim 1, above) in view of USPN 5,848,979 Bonutti et al.
To claim 5, Nordt discloses a protective pad assembly wherein various manual override adjusters are taught as being merely exemplary and not construed as limitations of the invention (col. 5, line 30 – col. 6, line 35).
Nordt does not explicitly teach a protective pad assembly wherein the manual override adjuster is a gear and rack assembly including a worm gear drive unit secured to one of the free ends of the resilient retaining split-ring clamp, and a toothed rack secured to another of the free ends of the resilient retaining split-ring clamp.
However, Bonutti teaches an assembly (20) removably positionable on an arm of a user (see Figures 1 and 3-10; col. 2, line 25 – col. 11, line 67) comprising a manual override adjuster wherein the manual override adjuster is a gear and rack assembly including a worm gear drive unit (see especially Figure 9; col. 8, line 29 – col. 10, line 9) secured to one of free ends of a resilient retaining split-ring clamp (see especially Figure 9; col. 8, line 29 – col. 10, line 9), and a toothed rack secured to another of the free ends of the resilient retaining split-ring clamp (see especially Figure 9; col. 8, line 29 – col. 10, line 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the protective pad assembly to include a manual override adjuster that is a gear and rack assembly including a worm gear drive unit as taught by Bonutti because Bonutti teaches that this configuration is known in the art and beneficial for adjustably clamping onto the limb of the user (see Figures 1 and 3-10; col. 10, line 58 – col. 11, line 67).
To claim 6, the modified invention of Nordt (i.e., Nordt in view of Bonutti, as detailed above) further teaches a protective pad assembly wherein the worm gear drive unit is mounted on an outer surface of the resilient retaining split-ring clamp (see especially Figure 9 and col. 8, line 29 – col. 10, line 9 of Bonutti).
To claim 7, the modified invention of Nordt (i.e., Nordt in view of Bonutti, as detailed above) further teaches a protective pad assembly wherein the toothed rack includes a plain rack portion and a rack teeth portion, and wherein the worm gear drive unit includes a base non-moveably secured to one of the free ends of the resilient retaining split-ring clamp on the outer surface of the resilient retaining split-ring clamp, a worm gear rotatably mounted to the base and meshing with the rack teeth portion of the toothed rack, and a thumb knob drivingly connected to the worm gear (see especially Figure 9 and col. 8, line 29 – col. 10, line 9 of Bonutti).
To claim 8, the modified invention of Nordt (i.e., Nordt in view of Bonutti, as detailed above) further teaches a protective pad assembly wherein the thumb knob is configured to adjust the tension of the resilient retaining split-ring clamp, and wherein turning the thumb knob manually adjusts the distance between the free ends of the resilient retaining split-ring clamp (see especially Figure 9 and col. 8, line 29 – col. 10, line 9 of Bonutti).
To claim 9, the modified invention of Nordt (i.e., Nordt in view of Bonutti, as detailed above) further teaches a protective pad assembly wherein the toothed rack has a first distal end adjacent to the plain rack portion and a second distal end adjacent to the rack teeth portion, and wherein the first distal end of the toothed rack is fixed to the resilient retaining split-ring clamp (see especially Figure 9 and col. 8, line 29 – col. 10, line 9 of Bonutti).
To claim 10, the modified invention of Nordt (i.e., Nordt in view of Bonutti, as detailed above) further teaches a protective pad assembly wherein the first distal end of the toothed rack is fixed to the resilient retaining split-ring clamp by a fastener (see especially Figure 9 and col. 8, line 29 – col. 10, line 9 of Bonutti).
To claim 11, the modified invention of Nordt (i.e., Nordt in view of Bonutti, as detailed above) further teaches a protective pad assembly wherein the first distal end and the rack teeth portion of the toothed rack are disposed on the outer surface of the resilient retaining split-ring clamp, and the plain rack portion of the toothed rack is disposed on an inner surface of the resilient retaining split-ring clamp (see especially Figure 9 and col. 8, line 29 – col. 10, line 9 of Bonutti).
To claim 19, the modified invention of Nordt (i.e., Nordt in view of Bonutti, as detailed above) further teaches a protective pad assembly wherein the manually adjustable self-retaining device is mounted entirely to an outer surface of the resilient retaining split-ring clamp (see especially Figure 9 and col. 8, line 29 – col. 10, line 9 of Bonutti).
To claim 20, the modified invention of Nordt (i.e., Nordt in view of Bonutti, as detailed above) further teaches a protective pad assembly wherein clockwise rotation of the thumb knob manually increases the distance between the free ends of the resilient retaining split-ring clamp and enables the resilient retaining split-ring clamp to reduce a tension by allowing incremental adjustments (see especially Figure 9 and col. 8, line 29 – col. 10, line 9 of Bonutti).
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 1-2, 4-11, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,369,655.
Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite protective pad assemblies comprising substantially the same elements including an outer protective unit including a protective cushion pad, a self-retaining device including a circular resilient retaining split-ring clamp having two opposite spaced free ends defining a gap therebetween, the free ends of the resilient retaining split-ring clamp being circumferentially expandable or contractable relative to one another for retaining the outer protective unit on an arm or a leg of a user, and the protective cushion pad configured to be removably positionable over one of a knee or an elbow of the user.
INSTANT APPLICATION
USPN 12,369,655
CLAIMS
1
1, 6, 15, 21
2
1
4
7, 20
5
7-9
6
7-9, 20
7
7-9
8
7-9
9
7-9
10
7-9
11
7-9
19
7-9, 20
20
7-9
Conclusion
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/F Griffin Hall/Primary Examiner, Art Unit 3732