DETAILED ACTION
This is the initial Office action for non-provisional application 19/553,974 filed February 9, 2026, which claims priority from non-provisional application 18/806,988 (now US Patent 12,605,225) filed August 16, 2024, which claims foreign priority from GB2409502.8 filed July 1, 2024. Claims 20-37, as presented in the preliminary amendments filed February 9, 2026, 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) and receipt is acknowledged of the certified copies of papers as required by 37 CFR 1.55.
Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g).
Figure 2 is objected to as failing to comply with 37 CFR 1.84(p)(5) because it includes reference character “29” that is not mentioned in the description.
Figure 8 is objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “43” has been used to designate both “fingers” and an “incision”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), and/or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b), are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 20-24, 26-32, and 34-36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Darnell (US 4,434,791).
Regarding claim 20, Darnell discloses a frame (retractor 10) capable of supporting a hand during surgery, the frame (10) comprising a plate (horseshoe frame 11 / round arch type ring 21) having two wings (halves of frame 11/21) which define a plane and a space therebetween, a support portion (lancet arch frame 13) positioned between the two wings of the plate (11/21) (end tabs 16 of frame 13 extend between end portions 15 of frame 11 or tab end portions 22 of ring 21) which comprises a supporting surface capable of supporting a digit which is elevated relative to the plane defined by the wings of the plate (11/21), and which is connected to the wings of the plate (11/21) by sidewalls (end tabs 16), wherein each wing of the plate (11/21) is provided with an engaging feature (notches 36) for removably engaging a retaining tie (stays) such that a user’s finger is capable of being supported on the supporting surface of the support portion (13) and other digits of a hand may be held under the plate (11/21) (Figs. 1 & 3; column 1, lines 5-11; column 2, lines 36-64 & 67-68; column 3, lines 1-2 & 19-30; column 4, lines 67-68; column 5, lines 1-6 & 23-28).
The limitations “for supporting a hand during surgery”, “for a digit which is elevated relative to the plane defined by the wings”, and “such that when a user’s finger is supported on the supporting surface, other digits of a hand may be held under the plate” are recitations of the intended use of the claimed invention which must result in a structural difference between the claimed invention and the prior art in order 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.
Regarding claim 21, Darnell discloses that the supporting surface of the support portion (13) is rotatable with respect to the plate (11/21) such that the plate (11/21) and the support portion (13) can be tightened in any desired position relative to each other (column 2, lines 53-64; column 4, line 67 – column 5, line 6), wherein the supporting surface of the support portion (13) would define a ramp which is inclined with respect to the plane defined by the wings of the plate (11/21).
Regarding claim 22, Darnell discloses that the sidewalls (16) are provided with an engaging feature (threaded holes 14) (Fig. 1; column 2, lines 41-46).
Regarding claim 23, Darnell discloses that the sidewalls (16) have edges (surfaces 16a) which run into outer edges (surfaces 15a) of the wings of the plate (11/21) (Fig. 1; column 2, lines 64-66).
Regarding claim 24, Darnell discloses that the supporting surface of the support portion (13) is rotatable with respect to the plate (11/21) such that the plate (11/21) and the support portion (13) can be tightened in any desired position relative to each other (column 2, lines 53-64; column 4, line 67 – column 5, line 6), wherein the supporting surface of the support portion (13) would define a ramp which is inclined with respect to the plane defined by the wings of the plate (11/21), wherein the plate (11/21) has an inner edge which defines the space between the two wings of the plate (11/21), and wherein the ramp of the support portion (13) extends to the inner edge of the plate (11/21) (Fig. 1).
Regarding claim 26, Darnell discloses that the supporting surface of the support portion (13) is provided with a recess, concave shape, or raised portions for accommodating a digit securely (surface 35 is raised above lower edge 33a) (Fig. 9).
Regarding claim 27, Darnell discloses that the plate (11/21) has a horseshoe shape, an arrow shape, or a triangular shape (Figs. 1 & 3).
Regarding claim 28, Darnell discloses that the plate (11/21) has an inner edge which defines the space between the two wings and outer edges which define outer portions of the two wings (Figs. 1 & 3).
Regarding claim 29, Darnell discloses that the space between the wings of the plate (11/21) is generally U-shaped, V-shaped, or has a semi-circular shape (Figs. 1 & 3).
Regarding claim 30, Darnell discloses that the engaging features (36) are provided on outer edges of the two wings of the plate (11/21 (Figs. 1 & 3).
Regarding claims 31 and 32, Darnell discloses that the frame (10) comprises a retainer rib (lower edge 33a) which protrudes from the plate (11/21) on the opposite side of the plate (11/21) to the support portion (13) or two retainer ribs (lower edge 33a is located on both wings of the frame 11 / ring 21) which protrude from the plate (11/21) on the opposite side of the plate (11/21) to the support portion (13), wherein the retainer ribs (33a) are positioned on opposite sides of the support portion (13) (Figs. 1, 3, & 9).
Regarding claims 34 and 35, Darnell discloses that the frame (10) has a symmetry plane which is perpendicular to the plane define by the two wings of the plate (11/21), wherein the symmetry plane passes through the support surface of the support portion (13) (Fig. 1).
Regarding claim 36, Darnell discloses a method of preparing a hand for surgery, the method comprising the steps of providing the frame (10) according to claim 20, and engaging the hand with the frame (10) (column 5, lines 23-28).
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.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Darnell as applied to claim 20 above.
Darnell discloses the invention substantially as claimed, as described above, and further discloses that the supporting surface of the support portion (13) is rotatable with respect to the plate (11/21) such that the plate (11/21) and the support portion (13) can be tightened in any desired position relative to each other (column 2, lines 53-64; column 4, line 67 – column 5, line 6), wherein the supporting surface of the support portion (13) would define a ramp which is inclined with respect to the plane defined by the plate (11/21).
Although Darnell fails to expressly teach that the incline defined by the ramp is between 5 and 40 degrees, it would have been obvious to one having ordinary skill in the art to position the support portion at an incline between 5 and 40 degrees relative to the plate since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Darnell as applied to claim 20 above, in view of Rioux et al. (US 2007/0293730).
Darnell discloses the invention substantially as claimed, as described above, but fails to teach that the frame is formed from a single piece of material.
Rioux discloses an analogous frame (retractor device 10) comprising a plate (sub-frame 14a) and a support portion (sub-frame 14b), wherein the frame (10) is formed from a single piece of material (Figs. 1 & 4B; ¶ 0027 & 0044).
Therefore, it would have been obvious to one having ordinary skill int eh art, before the effective filing date of the invention, to modify the frame taught by Darnell to formed from a single piece of material as taught by Rioux for the purpose of simplifying the manufacturing process.
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 20-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of US Patent 12,605,255 (reference patent ‘225) in view of Darnell (US 4,434,791).
Regarding claims 20, 22, and 23, the limitations therein are substantially recited in claim 1 of reference patent ‘225 including a frame for supporting a hand during surgery, the frame comprising a plate having two wings which define a plane and a space therebetween, a support portion positioned between the two wings which comprises a supporting surface for a digit which is elevated relative to the plane defined by the wings, wherein each wing is provided with an engaging feature for removably engaging a retaining tie such that a user’s finger is supported on the supporting surface and other digits of a hand may be held under the plate.
Although the claims of reference patent ‘225 fails to recite that the support portion is connected to the wings by sidewalls, wherein the sidewalls are provided with an engaging feature and the sidewalls have edges which run into outer edges of the wings, Darnell discloses these features as described above with respect to the rejections of claims 20, 22, and 23 under 35 U.S.C. 102.
Therefore, it would have been obvious to one having ordinary skill in the art, to modify the claims of reference patent ‘225 such that the support portion is connected to the wings by sidewalls, wherein the sidewalls are provided with an engaging feature and the sidewalls have edges which run into outer edges of the wings as taught by Darnell for the purpose of supporting the supporting portion with respect to the plate.
Regarding claim 21, the limitations therein are substantially recited in claim 2 of reference patent ‘225.
Regarding claim 24, the limitations therein are substantially recited in claim 3 of reference patent ‘225.
Regarding claim 25, the limitations therein are substantially recited in claim 4 of reference patent ‘225.
Regarding claim 26, the limitations therein are substantially recited in claim 5 of reference patent ‘225.
Regarding claim 27, the limitations therein are substantially recited in claim 6 of reference patent ‘225.
Regarding claim 28, the limitations therein are substantially recited in claim 7 of reference patent ‘225.
Regarding claim 29, the limitations therein are substantially recited in claim 8 of reference patent ‘225.
Regarding claim 30, the limitations therein are substantially recited in claim 9 of reference patent ‘225.
Regarding claim 31, the limitations therein are substantially recited in claim 10 of reference patent ‘225.
Regarding claim 32, the limitations therein are substantially recited in claim 11 of reference patent ‘225.
Regarding claim 33, the limitations therein are substantially recited in claim 12 of reference patent ‘225.
Regarding claim 34, the limitations therein are substantially recited in claim 13 of reference patent ‘225.
Regarding claim 35, the limitations therein are substantially recited in claim 14 of reference patent ‘225.
Regarding claim 36, the limitations therein are substantially recited in claim 1 of reference patent ‘225.
Regarding claim 37, the limitations therein are substantially recited in claim 1 of reference patent ‘225.
Claims 20-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 9-12, and 18 of copending Application 18/968,514 (reference application ‘514) in view of Darnell (US 4,434,791). This is a provisional nonstatutory double patenting rejection because the copending application has not yet been patented; however, upon issuance of a patent based on the Notice of Allowance mailed June 24, 2026 for that application, the provisional rejection will be updated to be a rejection over the issued patent.
Regarding claim 20, 22, and 23, the limitations therein are substantially recited in claim 18 of reference application ‘514 including a frame for supporting a hand during surgery, the frame comprising a plate having two wings which define a plane and a space therebetween, a support portion positioned between the two wings which comprises a supporting surface for a digit which is elevated relative to the plane defined by the wings, wherein each wing is provided with an engaging feature for removably engaging a retaining tie such that a user’s finger is supported on the supporting surface and other digits of a hand may be held under the plate.
Although the claims of reference application ‘514 fails to recite that the support portion is connected to the wings by sidewalls, wherein the sidewalls are provided with an engaging feature and the sidewalls have edges which run into outer edges of the wings, Darnell discloses these features as described above with respect to the rejections of claims 20, 22, and 23 under 35 U.S.C. 102.
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 claims of reference application ‘514 such that the support portion is connected to the wings by sidewalls, wherein the sidewalls are provided with an engaging feature and the sidewalls have edges which run into outer edges of the wings as taught by Darnell for the purpose of supporting the supporting portion with respect to the plate.
Regarding claim 21, the limitations therein are substantially recited in claim 9 of reference application ‘514.
Regarding claim 26, the limitations therein are substantially recited in claim 2 of reference application ‘514.
Regarding claim 29, the limitations therein are substantially recited in claim 10 of reference application ‘514.
Regarding claims 31 and 32, the limitations therein are substantially recited in claim 11 of reference application ‘514.
Regarding claim 33, the limitations therein are substantially recited in claim 12 of reference application ‘514.
Regarding claims 36 and 37, the limitations therein are substantially recited in claim 18 of reference application ‘514.
Regarding claim 24, 25, 27, 28, 30, 34, and 35, the limitations therein are substantially taught by Darnell as discussed above with respect to the corresponding rejections of those claims under 35 U.S.C. 102 and 103. 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 claims of reference application ‘514 to have the recited features in claims 24, 25, 27, 28, 30, 34, and 35 as taught by Darnell for the purpose of forming a retractor frame suitable for surgical operations.
Allowable Subject Matter
Claim 37 would be allowable if rewritten to include all of the limitations of base claim 20 and intervening claim 36 and upon filing a terminal disclaimer to overcome the above nonstatutory double patenting rejections.
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 7/10/2026
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