DETAILED ACTION
This is the initial Office action for non-provisional application 19/484,983 filed November 17, 2025, which is a national stage entry of PCT/EP2024/064739 filed May 29, 2024, which claims foreign priority from DE 10 2023 205 185.0 filed in Germany on June 2, 2023. In preliminary amendments filed November 17, 2025, claims 1-10, 12, and 13 were amended and claim 11 was cancelled; claims 1-10, 12, and 13 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 . 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.
Priority
Acknowledgment is made of Applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been received as required by 37 CFR 1.55.
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 10 and 13 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 10 recites the limitation “the first material”; however, there is insufficient antecedent basis for this limitation in the claims. It is suggested that the limitation “the first material” be amended to recite “a first material” instead.
Claim 13 recites the phrase “in particular” (which is interpreted as synonymous with “for example” or “such as”) which renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP 2173.05(d).
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.
Claims 1-6, 8, 9, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Bauerfeind (DE 10 2019 212 740 B3) in view of Beiruti (US 2005/0049533).
Regarding claim 1, Bauerfeind discloses a pad (pad pressure element 100) for orthopedic aids or sports aid devices, the pad (100) comprising a pad base element (flexible base element 10) made of a first material, wherein the pad base element (10) comprises an active surface (first base surface configured to face a user) and a counter-bearing surface (second base surface configured to face away from the user), wherein at least one nub element (elevations 11, 12, 13, 14, 17) is assigned to the pad base element (10), wherein the at least one nub element (11, 12, 13, 14, 17) comprises at least two nub areas (elevations 11, 12, 13, 14, 17) which protrude from the active surface of the pad base element (10), and wherein the pad (100) is a knee pad, an ankle pad, a back pad, an elbow pad, a pad form an arm area, or a pad for an abdominal area (Fig. 2; ¶ 0015, 0067, 0070, & 0091).
However, Bauerfeind fails to teach that the at least one nub element comprises at least one counter-bearing area protruding from the counter-bearing surface of the pad base element and is connected to the at least two nub areas.
Beiruti discloses a pad (massaging and reflexology system 10) comprising a pad base element (core body 14) having an active surface (top surface 16) and a counter-bearing surface (bottom surface 18), wherein a nub element (cups 20) is assigned to the pad base element (14), wherein the nub element (20) comprising at least two nub areas (cups 20 having a perimeter that may be notched or parted and pressure nub 24 or bump 46 with wedges 48) which protrude from the active surface (16) of the pad base element (14), wherein the nub element (20) comprises a counter-bearing area (cup 20 with nub 24 or bump 46) protruding from the counter-bearing surface (18) of the pad base element (14), wherein the counter-bearing area (20 on bottom surface 18) is connected to the at least two nub areas (cups on top surface 16) (Figs. 6a & 9-10; ¶ 0046-0049, 0061, 0072, 0078-0079, & 0096).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to modify the at least one nub element of the pad taught by Bauerfeind to include at least one counter-bearing area protruding from the counter-bearing surface of the pad base element and be connected to the at least two nub areas as taught by Beiruti for the purpose of transmitting a greater amount of pressure to the at least two nub areas on the active surface of the pad base element.
Regarding claim 2, the combination of Bauerfeind and Beiruti discloses the invention substantially as claimed, as described above, and Beiruti further discloses that the at least one counter-bearing area (20+24/46) may be a bar element (Figs. 6a & 9; ¶ 0062 & 0077).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to construct the at least one counter-bearing area of the pad taught by the combination of Bauerfeind and Beiruti to be a bar element for the purpose of providing a desired degree of pressure on the user.
Regarding claim 3, the combination of Bauerfeind and Beiruti discloses the invention substantially as claimed, as described above, and Bauerfeind further discloses that the at least two nub areas (11, 12, 13, 14, 17) are cone-shaped raised portions (Fig. 2; ¶ 0035).
Regarding claim 4, the combination of Bauerfeind and Beiruti discloses the invention substantially as claimed, as described above, and Bauerfeind further discloses that the pad base element (10) comprises at least one hole (hole 31), wherein the at least one nub element (17) is positioned in the hole (31) (Fig. 2; ¶ 0091).
Regarding claim 5, the combination of Bauerfeind and Beiruti discloses the invention substantially as claimed, as described above, and Bauerfeind further discloses that the at least two nub areas (11, 12, 13, 14) are positioned at an edge of the hole (31) and the counter-bearing surface (of bridges 21, 22) are positioned in the hole (31) (Fig. 2; ¶ 0091), and Beiruti further discloses that the at least one counter-bearing area is aligned with the at least one nub area (¶ 0072) such that the at least one counter-bearing area of the pad taught by the combination of Bauerfeind and Beiruti would also be positioned in the hole in aligned with the at least one nub element (17) positioned in the hole (31).
Regarding claim 6, the combination of Bauerfeind and Beiruti discloses the invention substantially as claimed, as described above, and Bauerfeind further discloses that the at least one nub element (11, 12, 13, 14, 17) comprises three or four nub areas (elevations 11, 12, 13, 14, 17) (Fig. 2).
Regarding claim 8, the combination of Bauerfeind and Beiruti discloses the invention substantially as claimed, as described above, and Bauerfeind further discloses that the at least one nub element (11, 12, 13, 14, 17) comprises a protrusion (elevations 11, 12, 13, 14) at an edge of a hole (31) located in its area (Fig. 2; ¶ 0091).
Regarding claim 9, the combination of Bauerfeind and Beiruti discloses the invention substantially as claimed, as described above, and Bauerfeind further discloses that the pad base element (10) is at least partially embedded in a sheathing (¶ 0045).
Regarding claim 12, the combination of Bauerfeind and Beiruti discloses the invention substantially as claimed, as described above, and Bauerfeind further discloses a sports aid device, orthosis, or bandage comprising the pad (¶ 0079).
Regarding claim 13, the combination of Bauerfeind and Beiruti discloses the invention substantially as claimed, as described above, and Bauerfeind further discloses a pad carrier (knitted knee bandage 300), wherein the pad carrier (300) rests against the counter-bearing surface of the pad base element (10) of the pad (100) (pad 100 lies on the inside of knitted bandage 300 such that the knitted bandage 300 will rest against the surface of the pad 100 facing away from the user which is the counter-bearing surface) (Fig. 7; ¶ 0015, 0082, & 0098).
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of base claim 1 and any intervening claims. Claim 7 is indicated allowable because Bauerfeind discloses that the pad base element is made of a softer material than the at least one nub element (¶ 0008 & 0049) rather than the at least one nub element consisting of a softer material than the pad base element as required by the claim.
Claim 10 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of base claim 1 and intervening claim 9. Claim 10 is indicated allowable because Bauerfeind discloses that the material of the pad base element has a Shore hardness of at least 10 Shore OO and at most 50 Shore OO (¶ 0050-0051) rather than a Shore hardness of at least 10 Shore D and at most 80 Shore D as required by the claim. Bauerfeind further fails to teach the hardness of the sheathing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Keri J. Nelson whose telephone number is 571-270-3821. The examiner can normally be reached Monday - Friday, 9am - 4pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachael E. Bredefeld, can be reached at 571-270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KERI J NELSON/Primary Examiner, Art Unit 3786 9/10/2026
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