DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 11, 2026 has been entered.
Response to Arguments
Applicant’s arguments, see amendment and remarks, filed June 11, 2026, with respect to objection of the specification have been fully considered and are persuasive. The objection of the specification has been withdrawn.
Applicant's arguments filed June 11, 2026 with respect to claim objections have been fully considered, but they are not persuasive. Confusingly, Applicant references MPEP 608.01(g) in alleged support for persisting in failure to correct a minor informality in the claims regarding placement of a comma between the claim number and “wherein clause” in the dependent claims. MPEP 608.01(g) is only relevant to “detailed description of invention,” not construction of the claims. The comma should appear between the claim number and “wherein clause” of dependent claims 34, 47 and 65-63 at least because it clarifies the claim structure and prevents ambiguity. The comma in this position serves serval functions. The comma explicitly separates the claim number from the body of the claim; clarifies that the “wherein clause” is a separate, dependent limitation; and helps the reader distinguish between the claim number and the claim elements, which is important for both drafting and claim construction.
Applicant’s arguments, see amendment and remarks, filed June 11, 2026, with respect to rejection of claims 39, 43, 44, 46, 47 and 51 under 35 U.S.C. 112(a) have been fully considered and are persuasive. The rejection of claims 39, 43, 44, 46, 47 and 51 under 35 U.S.C. 112(a) has been withdrawn.
Applicant’s arguments, see amendment and remarks, filed June 11, 2026, with respect to rejection of claims 39, 43, 44, 46, 47 and 51 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection of claims 39, 43, 44, 46, 47 and 51 under 35 U.S.C. 112(b) has been withdrawn.
Applicant's arguments filed June 11, 2026 with respect to prior art rejections have been fully considered, but they are not persuasive. In Applicant’s remarks, Applicant replicates the language of the amendment to the independent claims, namely “a prosthetic axel pivots about a pivot axel having a first end that follows a first cam profile and a second end that follows a second cam profile,” and alleges that the claim scope is not disclosed or taught by the applied prior art. Examiner disagrees for the reasons detailed in the rejections under 35 U.S.C. 102(b) and 103(a) as detailed hereinbelow. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Applicant fails to particularly point out any errors with respect to the non-statutory double patenting rejection. The non-statutory double patenting rejections is maintained hereinbelow.
Claim Objections
Claims 39, 43, 46, 47 and 56-63 are objected to because of the following informalities. With regard to dependent claims 43, 47 and 56-63 a comma should be placed between “the claim number” and “wherein” in respective lines 1 for grammatical accuracy. The comma explicitly separates the claim number from the body of the claim. Similarly, there is a comma missing from between “…a flexion axis” and “comprising imparting…” in claim 39, line 2. Similarly, there is a comma missing from between “… and a second end” and “comprising the first end following…” in claim 46 line 3. There is also a comma missing from between “component” and “wherein” in claim 39, line 3. Appropriate corrections are required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 39, 46 and 56-63 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Postelmans U.S. patent no. 5,611,774.
Regarding claim 39, Postelmans discloses a method fully capable of guiding a movement of a prosthetic appendage (e.g., prosthetic foot, or the like, when device is used as a knee “replacement,” i.e., rather than or as opposed to being a “support”, as described throughout- see at least col. 1, lines 36-38) relative to a prosthetic limb about a flexion axis, the method comprising imparting in the movement a deviation component (see figures; and col. 3, lines 59-65, col. 6, lines 42-45, and col. 7, lines 16-35, etc.), wherein the prosthetic appendage (e.g., prosthetic foot or the like-col. 1, lines 36-38, etc.) pivots about a pivot axel (i.e., follower shaft of undepicted guide slot with “follower shaft” described at least at col. 8, lines 42-52, etc.) having a first end that follows a first cam profile (e.g., along 29, seq. or the like) and a second end that follows a second cam profile (e.g., along 30, seq. or the like) (also see at least all figures; and col. 7, line 54, through col. 8, line 12 and 42-52; and col. 9, etc.).
Regarding claim 46, Postelmans discloses a method capable of being used for guiding a movement of a prosthetic appendage (e.g., prosthetic foot, or the like, when device is used as a knee “replacement,” i.e., rather than or opposed to being disclosed “support”, as described throughout- see at least col. 1, lines 36-38) relative to a prosthetic limb about a pivot axel (i.e., “follower shaft” of undepicted guide slot with “follower shaft” described at least at col. 8, lines 42-52, etc.) having a first end and a second end (e.g., see at least figures 16-18 with undepicted axel as described at least at col. 8, lines 42-52, etc.), the method comprising the first end following a first cam profile (e.g., along 29, seq. or the like) and the second end following a second cam profile (30, seq. or the like) that differs from the first cam profile (figures 15-18 etc.) (e.g., also see at least all figures; col. 7, line 54, through col. 8, line 12; and col. 9, etc.).
Regarding claims 56 and 57, Postelmans discloses the method further comprising ‘driving’ the pivot axel (i.e., moving the limb through the range of movement and the axel ends through the two slots- claim scope does not require powered driving or any specific driving means only that the pivot axle is “driven” or moved through its motions).
Regarding claims 58-61, Postelmans discloses the first cam profile (29, seq. or the like) and second cam profile (30, seq. or the like) is each fixed relative to the prosthetic limb (i.e., inter alia, each profile repeatedly produces the deviated rotation of the limb based on the fixed cam profiles).
Regarding claims 62 and 63, Postelmans discloses the prosthetic appendage is angled relative to the flexion axis (e.g., see at least figures, including figures 1 and 16-18, etc.).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 43 and 47 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Postelmans U.S. patent no. 5,611,774, as applied above, in view of Martin U.S. publication no. 2004/0054423 or Latour U.S. publication no. 2007/0250179.
Regarding claims 43 and 47, as described supra, Postelmans discloses the invention substantially as claimed.
Postelmans is silent regarding the prosthetic appendage is a prosthetic hand substantially as claimed.
Martin and Latour each clearly demonstrate that it is within the level or ordinary skill in the art at the time of the invention to use and configure known features of a prosthesis for either lower extremity or upper extremity applications. For example, Martin: figures and Latour: paragraphs [0010] and [0030].
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the invention of Postelmans for use as an upper extremity or wrist prosthesis, since using the benefits of a known lower extremity prosthesis for an upper extremity prosthesis is within routine skill in the prosthetic arts, as taught by Martin and/or Latour.
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 39, 43-44, 46-55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10,292,838. The following table shows exemplary relationship between corresponding claims.
Present Application Claim #
Related Patent Claim #
Notes
39
1 and 4
“imparting in the movement” in the present application claims corresponds with “imparting fix path motion” in the patent
43
1 and 4
More specific version of same language present
46
1, 4 and 5
More specific version of similar language present
47
1 and 4
More specific version of same language present
56-61
1, 4 and 5
More specific version of same language present
62 and 63
2 and 3
More specific version of same language present
As is readily apparent based on the claim comparison laid out above, although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims are narrower than the present application claims. Species anticipates genus. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. The following prior art uses first and second different cam profiles to impart complex motion including flexion and deviation components to the motion: Aoki et al. U.S. patent no. 12,433,777; Aoki et al. U.S. patent no. 11,969,372; Okada et al. U.S. publication no. 2013/0289458; Sterling 6,969,364; Rogers U.S. patent no. 5,107,824; Townsend U.S. patent no. 4,723,539; and Grafinger U.S. patent no. 7,597,716.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 MARCIA LYNN WATKINS whose telephone number is (571)270-1456. The examiner can normally be reached Mon. & Tues. 3-8pm and Thurs. 12-6pm.
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/MARCIA L WATKINS/Primary Examiner, Art Unit 3774
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