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 02/02/26 have been fully considered but they are not persuasive.
On page 10 Applicant argues drawing and claim objections are overcome.
The Examiner respectfully withdraws the objections which were addressed.
On pages 10-15 Applicant summarizes the prior art.
On page 16, regarding prior art rejections, Applicant argues amendments overcome the rejection of record since Christensen ‘019 teaches in [0024], [0031], and [0035], and Figures 1-2 that the leaf springs 60 and 40 can deflect to positions seen by dotted lines 60a-b, and 40a-b.
The Examiner respectfully disagrees, pointing out that the dotted lines represented by Figures 1-2 items 60a-b indicate the position of the foot member 60 when a larger (Figure 1) and lesser (Figure 2) load is applied. The dotted line representing the secondary foot member 60 in Figure 2 is simply another shape disclosed for the unloaded shape of the foot member 60. See [0027].
Claim Objections
Claim 6 is objected to because of the following informalities:
Claim 6 is objected to for missing a word (e.g. “and”) after “spring”.
Appropriate correction is required.
Drawings
The drawings are objected to because item 930 is referred to as a “receptacle” but item 930 does not appear to be pointing to a receptacle.
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 disclosure is objected to because of the following informalities: The specification page 21 refers to “fastening element 81” but it appears this should refer to item “61”. Further, the specification page 23 refers to dotted lines in figure 10, but the only dotted lines in figure 10 are the fastener 61, and the posterior limiting element 92. There is no dotted line indicating a forward tilted position of the fastening device 20, and there likewise does not appear to be any dashed line in the figure. Further, the specification page 25 refers to screw “42” but it is believed this should refer to screw “62”.
Appropriate correction is required.
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.
Claim 1-3, 5-6, 8, 10-13, 15 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 main spring comprises “at least one proximal spring and at least one medial spring” when the specification fails to make it clear how there are multiple proximal springs and multiple medial springs. Notably, the scope of the claim would include the use of, for example, 4 proximal springs and 15 medial springs; or 100 proximal springs and 1,000,000 medial springs. The disclosure of the invention does not appear to be commensurate in scope of the language of the claims.
Claim 2 is indefinite for claiming the “main spring is designed as a combined spring” but it is unclear what a “combined spring” is. This is not a term known in the art and it is unclear to the Examiner what scope or limitations it brings to the claim. The claim is further unclear, since it indicates this “combined spring” has the proximal spring and a distal spring, when claim 1 has also already claimed that the main spring includes both the proximal spring and a medial spring. First, it is unclear if the medial spring is part of the scope of this “combined spring” or not. If not, it is unclear how the combined spring does not include the medial spring.
Further, the claim is indefinite for claiming there is “at least one distal spring” for the same reasons as claim 1, discussed above.
Claim 5 is indefinite or claiming the guide element “extends in a respectively opposite direction” when it is unclear what this means. It is unclear if this is considered to be a “respectively opposite direction” from the main spring, the anterior region, or the posterior region. It is equally unclear what “direction” is opposite from a “region” or “element”, since these do not take on directions.
Remaining claims are rejected for depending on an indefinite claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-6, 8, 10-13, 15, 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Christensen et al. (US 20110320012 A1) hereinafter known as Christensen in view of Mosler et al. (US 6099572 A ) hereinafter known as Mosler, further in view of Christensen et al. (US 20090265019 A1) hereinafter known as Christensen ‘019.
Regarding claims 1-2 Christensen discloses a prosthetic foot insert (Figure 6a (see Figure 1b on how the foot comprises an “insert”) comprising:
a proximal fastening device (Figure 6a item 18) for securing the foot to a proximal component or a patient (This is stated as an “intended use” of the claimed device. The applicant is advised that a recitation of the intended use of an invention 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. See MPEP 2111.02 (II). In this case, the patented structure of Christensen was considered capable of performing the cited intended use. See, for example [0024]),
a holder (Figure 6a item 82e) which is arranged distally with respect to the proximal fastening device (Figure 6a), and is connected to the proximal fastening device (Figure 6a), and
a main spring (Figure 1a items42e/54e) which extends into a forefoot region (Figure 6a item 50) and is coupled to the holder (Figure 6a; coupled via guide element 34e), wherein the main spring comprises a proximal spring (Figure 6a item 42e), wherein the proximal spring is coupled to the holder (Figure 6a shows proximal spring 42e coupled to the holder 82e via guide element 34e);
wherein the holder is mounted on the main spring (Figure 6a shows proximal spring 42e coupled to the holder 82e via guide element 34e) so as to be tiltable in a sagittal plane (Figures 2a-c show how the holder tilts relative to the main spring via the guide element. See also [0029]-[0031]),
and the main spring further comprises a distal spring (clm 2) (Figure 6a item 54e),
wherein a posterior limiting element is arranged between the main spring and holder (Figure 6a item 132) which limits a displacement of the holder away from the main spring (The applicant is advised that, while the features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In addition, it has been held by the courts that apparatus claims cover what a device is, not what a device does. See MPEP 2144 (I). In this case, the patented apparatus of Christensen discloses (as detailed above) all the structural limitations required to perform the recited functional language, therefore was considered to anticipate the claimed apparatus. See, for example [0042]; a cable is understood to limit displacement between the elements),
but is silent with regards to the main spring being comprised of a proximal, distal, and medial spring, the medial and proximal springs being arranged relative to one another in a biconcave shape to form an elliptical free space therebetween in an unloaded state.
However, regarding claims 1-2 Mosler teaches a prosthetic foot insert which includes a main spring (Figure 3 items 3/9/10/2’ together) comprising proximal (Figure 3 item 9), medial (Figure 3 item 10), and distal (Figure 3 item 2’). While Mosler teaches the springs follow the same shape/path (Figure 3), Christensen ‘019 teaches that proximal (Figure 2 item 60) and medial (Figure 2 item 40) leaf springs can equally be arranged relative to one another in a biconcave shape to form an elliptical space therebetween in an unloaded state (Figure 2 items 40/60 in dashed lines ([0027])). Christensen, Mosler and Christensen ‘019 are involved in the same field of endeavor, namely prosthetic feet. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the insert of Christensen to have a main spring include both a proximal/medial spring as is taught by Mosler in order to increase structural strength of the foot insert (Mosler Abstract). It would have further been obvious to have the proximal/medial springs being shaped in a biconcave shape as is taught by Christensen ‘019 since the courts have held that choosing from a finite number of identified, predictable solutions with a reasonable expectation of success results in a prima facie case of obviousness. See MPEP 2143 (I)(E). In this case, since Christensen ‘019 teaches the equivalence of the two shapes, it would have been obvious to try.
Regarding claim 3 the Christensen Mosler Christensen ‘019 Combination teaches the insert of claim 1 substantially as is claimed,
wherein Mosler (and Christensen ‘019) further teach the proximal and distal spring are secured to each other at points spaced from one another to form a free space (see Mosler Figure 3 where springs 8/9 are secured at A and A’; see Christensen ‘019 Figure 2 where springs 60/40 are secured at 68/70; each form the free space).
Regarding claim 5 the Christensen Mosler Christensen ‘019 Combination teaches the insert of claim 1 substantially as is claimed,
wherein Christensen further discloses a guide element fastened to the main spring in an anterior or posterior region (Figure 6a item 34e) which extends in a “respectively opposite direction” (as is best understood, the guide element extends in an opposite direction from either the main spring, the anterior region, or posterior region depending on perspective),
and wherein the holder is tiltable via the guide element (Figures 2a-c show how the holder tilts relative to the main spring via the guide element. See also [0029]-[0031]).
Regarding claim 6 the Christensen Mosler Christensen ‘019 Combination teaches the insert of claim 5 substantially as is claimed,
wherein Christensen further discloses an anterior limiting element is arranged between the guide element and holder/main spring (Figure 6a item 136),
and wherein the anterior limiting element is capable of limiting a displacement of an anterior end of the holder or displacement of the main spring away from the guide element in the case of a heel load (this is stated as a functional limitation of the anterior limiting element (see the explanation in the rejection to claim 1 above). See also Figure 6a; as the holder 82e displaces downwardly, the anterior limiting element 136 will inherently limit its displacement to a specific distance above the spring 42e.).
Regarding claim 8 the Christensen Mosler Christensen ‘019 Combination teaches the insert of claim 1 substantially as is claimed,
wherein Christensen further discloses the posterior limiting element is tensionably rigid and flexible ([0042] a cable is understood to be tensionally rigid, yet flexible).
Regarding claim 10 the Christensen Mosler Christensen ‘019 Combination teaches the insert of claim 1 substantially as is claimed,
wherein Christensen further discloses the holder is mounted on the main spring via a spring tongue, hinge, or spacer element (Figure 6a item 34e).
Regarding claim 11 the Christensen Mosler Christensen ‘019 Combination teaches the insert of claim 1 substantially as is claimed,
wherein Christensen further discloses the holder is capable of introducing forces into the main spring via an anterior force introduction region anterior to the proximal fastening device (see Figure 6a where the holder 82e connects to the main (proximal) spring 82e via the guide element 34e anterior to the proximal fastening device 18) and a posterior force introduction region posterior to the proximal fastening device (see Figure 6a where the holder 82e connects to the main (proximal) spring 82e via the guide element 34e posterior to the proximal fastening device 18).
Regarding claim 12 the Christensen Mosler Christensen ‘019 Combination teaches the insert of claim 1 substantially as is claimed,
wherein Christensen further discloses at least one of the force introduction regions is mounted displaceably/exchangeably on the holder/main spring (Figure 6a shows how the elements of the foot are connected via item 132. If disconnected, these elements (and any “regions” located thereon or nearby could be “exchanged” or “displaced”)).
Regarding claim 13 the Christensen Mosler Christensen ‘019 Combination teaches the insert of claim 1 substantially as is claimed,
wherein Christensen further discloses at least one damper device is arranged between the holder and main spring (100, 136).
Regarding claim 15 the Christensen Mosler Christensen ‘019 Combination teaches the insert of claim 1 substantially as is claimed,
wherein Christensen further discloses in an unloaded state, the main spring is elastically pretensioned with respect to a guide element by the posterior limiting element (Figure 6a shows the posterior limiting element 132 which tensions the guide element 34e and main spring 42e together in the center).
Regarding claim 21 the Christensen Mosler Christensen ‘019 Combination teaches the foot insert of claim 1 substantially as is claimed,
wherein the Combination further teaches a free space is defined in a posterior region of the insert between an underside of the medial spring and a top of the distal spring (Christensen shows a free space Figure 6a item 104 between the underside of the proximal spring 42e and top of distal spring 54e. This free space would be considered to be located between the underside of the medial spring as well, in the Combination which teaches the addition of a similarly-shaped medial spring by Mosler Figure 3 item 10).
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.
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/Jacqueline Woznicki/Primary Examiner, Art Unit 3774 02/12/26