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 .
Response to Arguments
Applicant's arguments filed 11/19/25 have been fully considered but they are not persuasive.
On pages 7-8 regarding prior art rejections over Mavroidis, Applicant summarizes embodiments which are not relied upon in the rejection of record, argues the embodiment of figure 38 is not a gear reducer and operates to “reduce motor torque at the output shaft”. Applicant argues this contrary to Mavroidis’s objective. Applicant concludes that Mavroidis Figure 38 is not suggested for use within a prosthetic arm.
The Examiner respectfully points out arguments that Mavroidis acts contrary to its own objective are unclear, since it does not appear to relate to the claims or the rejection of record. As regards the suggestion that figure 38 cannot be used in a prosthetic arm, the Examiner notes no evidence or proof of such a statement, meaning it cannot be considered persuasive.
On page 8 Applicant argues further that the Examiner over-simplifies things, and argues that even if Amundson teaches an actuator useable in both prostheses and orthoses, this “does not mean that the same motor-transmission combination is equally applicable to both”.
The Examiner again respectfully disagrees noting no support or proof of such a statement. The arguments of counsel cannot take the place of evidence in the record. See MPEP 716.01(c).
On pages 8-9 Applicant argues that the ranges of backdriveability the Applicant includes in their claims would be “problematic” for a robotic arm like Mavroidis. Applicant imagines how such an arm would function.
The Examiner respectfully notes again that Applicant has not provided any evidence of proof of attorney statements. The Examiner also points out that these arguments appear to assume Applicant knows and understands how all prosthetics ever imagined would be desired to function (and how they would not be desired to function), which cannot be accepted as absolute truth.
On page 9 Applicant argues that the motor/transmission of Amundson does not power the actuator of Amundson or make it backdriveable, since Amundson states in [0039] that “none of the power used by the displacement actuators contributes to work done by the output actuators”. Applicant concludes that “generally speaking, motors that power hydraulic pumps…are not backdriveable” and this is well-known.
The Examiner again respectfully points out no supporting evidence or proof of any of the above statements. Applicant also has not linked backdriveability to power done by the displacement actuators.
On page 11-12 Applicant argues amendments overcome the prior art rejection of record.
The Examiner respectfully agrees.
Election/Restrictions
Newly submitted claims 27-29 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the newly presented claim 27 is drawn towards a combination to the subcombination of originally presented claim 1. The Combination does not require the particulars of the subcombination such as a high output torque, and the subcombination has separate utility such as being used as an orthosis device without requiring use of a first and second body to attach to a limb.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 27-29 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the motor rotor being directly connected to an input of the transmission, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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” 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: gear-reduction transmission, input of the transmission, the motor rotor being directly connected to an input of the transmission.
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 1-4, 6, 8-11, 13-14, 17, 19-26 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 pre-AIA the applicant regards as the invention.
Claim 1 is indefinite for claiming the static backdrive torque of the device is less than “about” 20 Nm, when it is unclear what exactly constitutes “about 20Nm” (e.g. as opposed to 20 Nm or not 20 Nm. The specification has not provided any examples of what might be considered “about 20 Nm” or not about 20 Nm, meaning the Examiner does not understand the boundaries of the claim.
Remaining claims are rejected for depending on an indefinite claim.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 Jacqueline Woznicki whose telephone number is (571)270-5603. The examiner can normally be reached M-Th 10am-6pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerrah Edwards can be reached on 408-918-7557. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jacqueline Woznicki/Primary Examiner, Art Unit 3774 01/13/26