DETAILED ACTION
This office action is in response to the amendment filed June 23, 2026 in which claims 1-2, 4-11, and 19-20 are presented for examination and claims 3, 12-18, and 21 are withdrawn.
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 Arguments
Applicant’s First Argument: Rejection of claim 1 under 35 USC 102 over USPN 7,618,386 Nordt, III et al. should be withdrawn at least for cited reasons.
Examiner’s Response: Although Examiner does not necessarily agree with various arguments advanced by Applicant as to Nordt, in the interest of promoting compact prosecution, the search has been updated, and new prior art has been identified and applied. As such, arguments related to Nordt are moot in view of the current bases of rejection of claim 1 under 35 USC 102 and/or 103 (see below).
Applicant’s Second Argument: Rejection of claims 1-2, 4-11, and 19-20 for nonstatutory double patenting should be withdrawn at least in view of the Terminal Disclaimer filed over USPN 12,369,655.
Examiner’s Response: Agreed. The rejection is withdrawn.
Claim Objections
Claim 1 is objected to because of the following informalities: Line 16 recites the limitation “the self-retaining device,” which should be amended to recite “the manually adjustable self-retaining device” for purposes of proper antecedent basis.
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.
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 1, 2, and 4 are rejected under 35 U.S.C. 102(a)(1) as anticipated by USPN 3,465,365 Jones et al. or, in the alternative, under 35 U.S.C. 103 as obvious over Jones in view of USPN 8,277,404 Einarssson.
To claim 1, Jones discloses a protective pad assembly (10) (see Figures 1-4, reproduced below for convenience; col. 2, line 8 – col. 3, line 34) removably positionable on an arm or a leg of a user (intended use), the protective pad assembly comprising:
an outer protective unit (24,34,38,40) including a protective cushion pad (24) (see especially Figures 3-4; col. 2, lines 8-58); and
a manually adjustable self-retaining device (12,14,16,20) mounted to the outer protective unit for retaining the outer protective unit on the arm or the leg of the user (see Figures 1-4; col. 2, lines 8-46; intended use), the manually adjustable self-retaining device including a circular resilient self-retaining split-ring clamp (16) having two opposite spaced free ends defining a gap therebetween (see especially Figure 4; col. 2, lines 25-46), and a manual override adjuster (12,14) mounted to the resilient self-retaining split-ring clamp (see especially Figures 3-4; col. 2, lines 8-58; inasmuch as currently claimed, plates 12 and associated cushions 14 can properly be considered a “manual override adjuster” at least because they are mounted to resilient self-retaining split-ring clamp 16 and are configured to manually adjust a distance between the free ends of resilient self-retaining split-ring clamp 16 on the arm or the leg of the user by increasing the distance between the free ends due to the extra thickness they add between resilient self-retaining split-ring clamp 16 and the arm or the leg of the user);
the free ends of the resilient self-retaining split-ring clamp being circumferentially expandable or contractable relative to one another for retaining the outer protective unit on the arm or the leg of the user (see Figures 1-4; col. 2, lines 8-46; functional),
the manual override adjuster configured to manually adjust a distance between the free ends of the resilient self-retaining split-ring clamp (see especially Figures 3-4; col. 2, lines 8-58; functional; manual override adjuster 12,14 is configured to manually adjust a distance between the free ends of resilient self-retaining split-ring clamp 16 by increasing the distance between the free ends due to the extra thickness manual override adjuster 12,14 adds between resilient self-retaining split-ring clamp 16 and the arm or the leg of the user);
the manually adjustable self-retaining device configured to removably maintain the outer protective unit on the arm or the leg of the user solely by a resilient force of the resilient self-retaining split-ring clamp of the manually adjustable self-retaining device (see Figures 1-4; col. 2, lines 8-46; functional);
the protective cushion pad configured to be removably positionable over one of a knee (18) or an elbow of the user (see Figures 1-4; col. 2, line 59 – col. 3, line 26; intended use).
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The limitations “removably positionable on an arm or a leg of a user,” “for retaining the outer protective unit on the arm or the leg of the user,” and “configured to be removably positionable over one of a knee or an elbow of the user” are merely recitations of the intended use of the claimed invention. It is respectfully noted that 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, Jones discloses a protective pad assembly including all the elements as structurally recited in claim 1 and since protective pad assembly (10) of Jones meets all these structural limitations as claimed, it would be capable of performing the recited functions.
It is further respectfully noted that the limitations “for retaining the outer protective unit on the arm or the leg of the user,” “configured to manually adjust a distance between the free ends of the resilient self-retaining split-ring clamp,” and “configured to removably maintain the outer protective unit on the arm or the leg of the user solely by a resilient force of the resilient self-retaining split-ring clamp of the manually adjustable self-retaining device” are functional and do not positively recite a structural limitation but instead require an ability to so perform and/or function. As Jones discloses the structural elements of the protective pad assembly as recited in claim 1, there would be a reasonable expectation for protective pad assembly (10) of Jones to perform such functions.
As detailed above, it is respectfully maintained that Jones properly anticipates each and every limitation as recited by currently amended claim 1 including “a manual override adjuster mounted to the resilient self-retaining split-ring clamp … the manual override adjuster configured to manually adjust a distance between the free ends of the resilient self-retaining split-ring clamp.”
However, to the extent that Jones does not disclose a manual override adjuster as recited by currently amended claim 1, to which Examiner does not concede, it is further respectfully noted that Einarsson teaches a protective pad assembly (50) (see Figures 5-7, reproduced below for convenience; col. 7, line 63 – col. 9, line 14) removably positionable on an arm or a leg of a user, the protective pad assembly comprising a manual override adjuster (62) mounted to a split-ring clamp (58), the manual override adjuster configured to manually adjust a distance between free ends (63) of the split-ring clamp (see Figures 5-7; col. 7, line 63 – col. 9, line 14).
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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 protective pad assembly (10) of Jones to include the manual override adjuster configuration of Einarsson because Einarsson teaches that this configuration is known in the art and is configured to increase or decrease the curvature of a split-ring clamp in order to accommodate a user’s particular anatomy. It would further have been obvious to one of ordinary skill that manual override adjuster (62) of Einarsson would allow for fine-tuning the fit of resilient self-retaining split-ring clamp (16) of Jones around the arm or the leg of a user.
The limitations “removably positionable on an arm or a leg of a user,” “for retaining the outer protective unit on the arm or the leg of the user,” and “configured to be removably positionable over one of a knee or an elbow of the user” are merely recitations of the intended use of the claimed invention. It is respectfully noted that 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, the modified invention of Jones (i.e., Jones in view of Einarsson, as detailed above) teaches a protective pad assembly including all the elements as structurally recited in claim 1 and since the protective pad assembly of the modified invention of Jones meets all these structural limitations as claimed, it would be capable of performing the recited functions.
It is further respectfully noted that the limitations “for retaining the outer protective unit on the arm or the leg of the user,” “configured to manually adjust a distance between the free ends of the resilient self-retaining split-ring clamp,” and “configured to removably maintain the outer protective unit on the arm or the leg of the user solely by a resilient force of the resilient self-retaining split-ring clamp of the manually adjustable self-retaining device” are functional and do not positively recite a structural limitation but instead require an ability to so perform and/or function. As the modified invention of Jones (i.e., Jones in view of Einarsson, as detailed above) teaches the structural elements of the protective pad assembly as recited in claim 1, there would be a reasonable expectation for the protective pad assembly of the modified invention of Jones to perform such functions.
To claim 2, the modified invention of Jones (i.e., Jones in view of Einarsson, as detailed above) further teaches a protective pad assembly wherein the self-retaining retaining split-ring clamp has a rectangular cross-section (see Figure 4 of Jones; see Figures 5-7 of Einarsson). It is respectfully asserted that it would have been an obvious matter of designed choice to one skill in the art before the effective filing date of the claimed invention to configure the self-retaining retaining split-ring clamp with a rectangular cross-section since the specification of the instant application does not disclose that such a configuration solves any stated problem or is anything more than one of numerous shapes or configurations a person of ordinary skill in the art would find obvious for the purposes of providing a self-retaining retaining split-ring clamp (see MPEP 2144.04). It is further respectfully noted that the specification of the instant application does not disclose any criticality for the claimed rectangular cross-section.
To claim 4, the modified invention of Jones (i.e., Jones in view of Einarsson, as detailed above) further teaches a protective pad assembly wherein the manually adjustable self-retaining device is non-removably mounted to the outer protective unit (see Figures 1-4 and col. 2, line 8 – col. 3, line 34 of Jones).
Claims 5-11 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of Einarsson (as applied to claim 1, above) in view of USPN 11,719,311 Fiegener.
To claim 5, the modified invention of Jones (i.e., Jones in view of Einarsson, as detailed above) teaches a protective pad assembly comprising a manual override adjuster (either 12,14 of Jones or 62 of Einarsson) secured to a resilient self-retaining split-ring clamp (16 of Jones) having free ends (see Figures 1-4 and col. 2, lines 8-46 of Jones).
The modified invention of Jones does not expressly teach a protective pad assembly wherein the manual override adjuster is a gear and rack assembly including a worm gear drive unit and a toothed rack.
However, Fiegener teaches a manual override adjuster (see especially Figures 5-14; col. 3, line 53 – col. 7, line 15) configured for use with a knee protective device (col. 1, lines 11-15), wherein the manual override adjuster is a gear and rack assembly including a worm gear drive unit (102) and a toothed rack (104) (see especially Figures 6-8; col. 4, line 55 – col. 5, line 2).
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 of the modified invention of Jones such that the manual override adjuster is a gear and rack assembly including a worm gear drive unit and a toothed rack as taught by Fiegener because Fiegener teaches that this configuration is known in the art and allows for an even, consistent tightening and loosening mechanism that ensures a set tension is maintained (col. 1, lines 29-32). It would further have been obvious as a simple substitution of one manual override adjuster with another to yield the predictable result of manually adjusting a distance between the free ends of the resilient self-retaining split-ring clamp.
To the limitations that a worm gear drive unit is “secured to one of the free ends of the resilient self-retaining split-ring clamp” and that a toothed rack is “secured to another of the free ends of the resilient self-retaining split-ring clamp,” it is respectfully noted that in a fully-assembled configuration of the protective pad assembly, all elements of the protective pad assembly are considered to be “secured” to one another regardless of whether they are configured to be in direct physical contact.
To claim 6, the modified invention of Jones (i.e., Jones in view of Einarsson and Fiegener, as detailed above) further teaches a protective pad assembly wherein the worm gear drive unit is mounted on an outer surface of the resilient self-retaining split- ring clamp (see Figures 1-4 and col. 2, lines 8-46 of Jones; see Figures 5-7 and col. 7, line 63 – col. 9, line 14 of Einarsson; see Figures 5-14 and col. 3, line 53 – col. 7, line 15 of Fiegener).
To claim 7, the modified invention of Jones (i.e., Jones in view of Einarsson and Fiegener, 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 self-retaining split-ring clamp on the outer surface of the resilient self-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 Figures 1-4 and col. 2, lines 8-46 of Jones; see Figures 5-7 and col. 7, line 63 – col. 9, line 14 of Einarsson; see Figures 5-14 and col. 3, line 53 – col. 7, line 15 of Fiegener).
To claim 8, the modified invention of Jones (i.e., Jones in view of Einarsson and Fiegener, as detailed above) further teaches a protective pad assembly wherein the thumb knob is configured to adjust the tension of the resilient self-retaining split-ring clamp, and wherein turning the thumb knob manually adjusts the distance between the free ends of the resilient self-retaining split-ring clamp (see Figures 1-4 and col. 2, lines 8-46 of Jones; see Figures 5-7 and col. 7, line 63 – col. 9, line 14 of Einarsson; see Figures 5-14 and col. 3, line 53 – col. 7, line 15 of Fiegener).
To claim 9, the modified invention of Jones (i.e., Jones in view of Einarsson and Fiegener, 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 self-retaining split-ring clamp (see Figures 1-4 and col. 2, lines 8-46 of Jones; see Figures 5-7 and col. 7, line 63 – col. 9, line 14 of Einarsson; see Figures 5-14 and col. 3, line 53 – col. 7, line 15 of Fiegener).
To claim 10, the modified invention of Jones (i.e., Jones in view of Einarsson and Fiegener, as detailed above) further teaches a protective pad assembly wherein the first distal end of the toothed rack is fixed to the resilient self-retaining split-ring clamp by a fastener (see Figures 1-4 and col. 2, lines 8-46 of Jones; see Figures 5-7 and col. 7, line 63 – col. 9, line 14 of Einarsson; see Figures 5-14 and col. 3, line 53 – col. 7, line 15 of Fiegener).
To claim 11, the modified invention of Jones (i.e., Jones in view of Einarsson and Fiegener, 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 self-retaining split-ring clamp, and the plain rack portion of the toothed rack is disposed on an inner surface of the resilient self-retaining split-ring clamp (see Figures 1-4 and col. 2, lines 8-46 of Jones; see Figures 5-7 and col. 7, line 63 – col. 9, line 14 of Einarsson; see Figures 5-14 and col. 3, line 53 – col. 7, line 15 of Fiegener).
To claim 19, the modified invention of Jones (i.e., Jones in view of Einarsson and Fiegener, 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 self-retaining split-ring clamp (see Figures 1-4 and col. 2, lines 8-46 of Jones; see Figures 5-7 and col. 7, line 63 – col. 9, line 14 of Einarsson; see Figures 5-14 and col. 3, line 53 – col. 7, line 15 of Fiegener).
To claim 20, the modified invention of Jones (i.e., Jones in view of Einarsson and Fiegener, 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 self-retaining split-ring clamp and enables the resilient self-retaining split-ring clamp to reduce a tension by allowing incremental adjustments (see Figures 1-4 and col. 2, lines 8-46 of Jones; see Figures 5-7 and col. 7, line 63 – col. 9, line 14 of Einarsson; see Figures 5-14 and col. 3, line 53 – col. 7, line 15 of Fiegener).
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 GRIFFIN HALL whose telephone number is (571)270-0546. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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/F Griffin Hall/ Primary Examiner, Art Unit 3732
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