DETAILED ACTION
This is a Non-Final Rejection for Application 19/371,541 filed October 28, 2025. This application is a continuation of Application 18/014,428 filed January 03, 2023. Claims 1-20 are currently pending.
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
Claim 18 is objected to because of the following informalities: the recitation “one or more elastic bands making of the lower support” is not grammatically correct. The examiner will interpret the recitation as “one or more elastic bands making up the lower support”. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 8, 11 and 15-17 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 8 recites the limitation "the limb at an ankle of the user" in line 2. There is insufficient antecedent basis for this limitation in the claim. A limb and a user are not previously recited in claims 1 or 8. This rejection may be overcome by amending claim 8 to depend from claim 7 where a limb and a user are claimed.
Claim 11 recites the limitation "the set of support bases" in line 2. There is insufficient antecedent basis for this limitation in the claim. A set of support bases is not previously recited in claims 1 or 11. This rejection may be overcome by amending claim 11 to depend from claim 2 where a set of support bases is claimed.
Claim 15 recites the limitation "a wound of the user" in line 3. There is insufficient antecedent basis for this limitation in the claim. A user is not previously recited in claims 1, 12 or 15. This rejection may be overcome with language such as "a wound of a user".
Claim 16 recites the limitation "the ankle of the user" in line 3. There is insufficient antecedent basis for this limitation in the claim. An ankle and a user are not previously recited in claims 1 or 16. This rejection may be overcome with language such as "an ankle of a user".
Claim 17 is rejected for depending from claim 16 and not curing the deficiency thereof.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 1 of the present application and limitations beyond what is claimed in claim 1 of the present application.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 2 of the present application.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 3 of the present application.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 4 of the present application.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 5 of the present application.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 6 of the present application.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 7 of the present application.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 8 of the present application.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 9 of the present application.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 10 of the present application.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 11 of the present application.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 12 of the present application.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 13 of the present application.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 14 of the present application.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 and 7 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 15 of the present application.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 16 of the present application.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8 and 9 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 17 of the present application.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 18 of the present application.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 19 of the present application.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of U.S. Patent No. 12,478,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 12,478,491 includes all of the limitations of claim 20 of the present application.
The examiner notes that there are no prior art rejections for claims 1-20 and the application would be in condition for allowance if the claim objections, 35 USC § 112(b) claim rejections, and the non-statutory double patenting rejections indicated above were overcome.
Conclusion
The following prior art made of record and not relied upon are considered pertinent to
applicant's disclosure.
US 2005/0065458 (Kim)
US 2009/0099495 (Campos et al.)
US 2010/0010408 (Linares)
US 2002/0026135 (Lowe)
US 2020/0038216 (Hanna)
US 2010/0063433 (Linares)
US 5,072,738 (Wonder et al.)
US 3,976,066 (McCartney)
GB 2,318,059 (Butler)
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/SETH R. BROWN/Examiner, Art Unit 3786
/KERI J NELSON/Primary Examiner, Art Unit 3786
