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 09/26/25 have been fully considered but they are not persuasive.
On page 7 regarding claim objections to claims 6-7 Applicant argues no punctuation or words are missing.
The Examiner respectfully disagrees and maintains the objection. It appears a comma is missing after “second state” (claim 6), and a transitional word (e.g. “wherein”, “and wherein”) is missing in both claims.
On page 8 regarding objections to claim 9 Applicant states on record that the terms “prevent” and “inhibit” are not synonyms, meaning only one of the words need to be met to meet the limitations of the claim.
On page 9 regarding drawing objections, Applicant agrees that items 166 and 164 are different parts, and are thus labeled with different numbers.
The Examiner notes that two different parts with different numbers should have different names. The objection is accordingly maintained.
On page 10 regarding 112 rejections to claim 2, Applicant states the rejection is clear.
The Examiner respectfully notes this statement is unpersuasive, and so the rejection is maintained.
On page 10 regarding 112 rejections to claim 3, Applicant argues the amendments overcome the rejection of record.
The Examiner respectfully disagrees, noting the term “about” has been incorporated into claim 2, which raises the same indefiniteness issues.
On page 10 regarding 112 rejections to claims 6 and 19, Applicant argues the claim intends the transmission to have three potential states, which is not indefinite.
The Examiner respectfully disagrees, noting the claim language should be clarified.
On pages 11-12 regarding prior art rejections, Applicant argues Bhugra teaches two motors, one for each speed, rather than a single motor with a variable ratio transmission as the instant invention requires.
The Examiner respectfully disagrees, noting the language of the claim does not appear to require the prosthesis/orthosis of the claim to have “one motor”, or a “single motor” as the Applicant is arguing.
Drawings
The drawings are objected to because the specification/drawings refer to item 166 and 164 as two parts with the same name, although pointing to two different objects.
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.
Claim Objections
Claims 1 and 6-8 are objected to because of the following informalities:
Claim 1 is objected to for claiming “each of the at least one motor” when this is grammatically incorrect.
Claim 6 is unclear for claiming the transmission is “configured to be in at least a first state, a second state or a third state, the two-speed transmission…”. It appears there is punctuation and/or words missing to make this grammatically correct.
Claim 7 is objected to for claiming the transmission is “further configured for a fourth state, the two-speed transmission…” since it appears a word is missing after the comma.
Claim 8 is unclear for claiming “at least one of the motor” when this is grammatically incorrect.
The claim is also unclear for referring to “both directions” when it is unclear what directions are being referenced here, since no previous directions are mentioned in the claims.
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.
Claims 2, 4-9, 11-15, 18-19 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 2 is indefinite for claiming the transmission includes a “high-gear transmission ratio” and a “low-gear transmission ratio” when it is unclear what a high-gear transmission ratio or a low-gear transmission ratio might entail or might be.
The specification [0005] states that an example of a high-gear transmission ratio can be 200:1, and [0026] states that the transmission ratios “should be at least about an order of magnitude different in ratio”, including “at least a factor of 8 or at least a factor of 10 apart”, or by a factor of 15, or 20. While this explanation makes it clear how much less than the high-gear transmission ratio the low-gear transmission ratio should be 8+ times less than the high-gear transmission ratio, it does not adequately explain what the Applicant believes the scope of their high-gear transmission ratio should be. An example provided of 200:1 indicates one example of what could be considered to be a high-gear transmission ratio, but it does not actually indicate what number would not be considered to be a high-gear transmission ratio. For example, the Examiner is unclear whether a transmission ratio of, for example, 100:1, or 20:1 would fit the scope of a high-gear transmission ratio. Since the definition gives only one example, and only defines the low-gear transmission ratio as being relative to the high-gear transmission ratio, both terms are considered to be unclear and muddy the scope of the claims.
The claim is further indefinite for claiming the high-gear transmission ratio “provides a high-torque, low-speed, high-impedance behavior characteristic”. It is unclear what the boundaries of “high-torque”, “low-speed”, or “high-impedance” might be, since the specification does not offer any guidance, examples, ranges, or limits to these terms. They are accordingly unclear, as the boundaries of the claim (and where the limits of being considered “high-torque” (e.g. as opposed to not high-torque), low-speed (as opposed to not low-speed), or “high-impedance” (as opposed to not high-impedance) might be. The claim is further indefinite since it is unclear what a “high-torque, low-speed high-impedance behavior characteristic” is. This is not explained anywhere in the specification, and the Examiner cannot understand what a behavior characteristic is.
The claim is further indefinite for claiming the low-gear transmission ratio “provides a high-speed, low-torque, low-impedance behavior characteristic” for the same reasons as was explained, directly above with relation to the high-gear transmission ratio’s behavior characteristic.
The claim is further indefinite for claiming the high-gear transmission ratio’s behavior characteristic is “configured to the stance phase”. First, it is unclear how a ratio can have a behavior characteristic. Second, it is unclear how a ratio’s characteristic can be “configured to a stance phase”. It is unclear whether the wrong word may have been used, or whether some words are missing that would help the Examiner understand this.
Further, the claim is unclear for claiming the high-gear transmission ratio is configured to “support a weight of the prosthesis or orthosis” when it is unclear how a “ratio” can “support weight”, since a ratio is not a physical structure.
Further, the claim is unclear for claiming the low-gear transmission ratio’s behavior characteristic is “suited to the swing phase”, for the same reasons as was explained above with relation to the high-gear transmission ratio’s behavior characteristic.
The claim is further indefinite for claiming the high and low gear transmission ratios are different by at least “about” an order of magnitude when it is unclear what “about” an order of magnitude entails. The specification does not elaborate or provide any examples of what would or would not be considered to be “at least about an order of magnitude”, making the Examiner unclear what would or would not be included within the scope of this claim.
Claim 5 is indefinite for referring to “low resistance” and “high resistance” for the same reasons as was identified with regards to “high” and “low” terms in the rejection to claim 1 above. The Examiner is unclear of their boundaries and limits, which prevents the Examiner from putting a definite limit on the scope of the claim.
Claim 6 is indefinite for claiming the transmission is configured to be in “at least a first state, a second state or a third state”. It is unclear if this is stating that the transmission is configured to be in at least a first state, a second state, or a third state (and is simply missing punctuation), or whether this is stating that the transmission is configured to be in at least a first state, and either a second/third state.
The claim is further unclear for claiming the ratio would provide “little or no torque” but it is unclear what “little” torque would mean. The specification does not give any explanation as regards what Applicant understands “little” torque to mean, and the Examiner is accordingly unclear with regards to the claim’s boundaries.
Claim 19 is indefinite for claiming the transmission is configured to be in “at least a first state, a second state or a third state”. It is unclear if this is stating that the transmission is configured to be in at least a first state, a second state, or a third state (and is simply missing punctuation), or whether this is stating that the transmission is configured to be in at least a first state, and either a second/third state.
Remaining claims are rejected for depending on a rejected claim.
The Examiner respectfully notes that the claims are interpreted by the Examiner with regards to prior art in the manner they are best understood, but points out that if the claims are appropriately clarified, their rejection over prior art might be adjusted.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bhurga et al. (US 20100038983 A1) hereinafter known as Bhurga (as is best understood – see 112 rejections above).
Regarding claim 1 Bhurga discloses a knee prosthesis or orthosis ([0019] actuator is for a knee of a human or robot; [0003] robotics and active orthotics) comprising:
at least one moveable joint (Figure 1 item 110; [0019] knee joint); and
a torque modulating unit (Figure 1 item 100) configure to impose a controllable torque on the joint (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 Bhurga 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 [0019] the system 100 can move the joint through a rotational movement; [0046] the system operates in a plurality of different modes, each of which has a controllable torque), the unit including a motor (Figure 2 item 124/126) which is coupled to the joint via an electronically-controlled transmission ([0045]-[0046] the system is controllable via the controller) with two speeds ([0003], [0019] actuator which supplies larger forces (torques) at slower speeds and smaller forces (torques) at higher speeds).
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.
Claim 2 and 4-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bhurga as is applied above.
Regarding claim 2 Bhurga discloses the prosthesis/orthosis of claim 1 substantially as is claimed,
wherein Bhurga further discloses the two-speed transmission includes a high-gear transmission ratio and a low-gear transmission ratio ([0019] “high gear” and “low gear”), the transmission being configured to switch therebetween during an intra-stride period during a gait cycle which includes a stance phase and a swing phase (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 Bhurga was considered capable of performing the cited intended use. See, for example [0003] high force at low speeds for swing; large force at high speed.);
wherein the high-gear transmission ratio is configured to provide a high-torque, low-speed, high-impedance behavior characteristic configured to the stance phase (this is also stated as an “intended use” (see the explanation above). See also [0003] and [0019] “high gear” supplies larger forces (understood to be torque in the form of the rotational joint 110 of the invention, at lower speeds. Paragraph [0003] also indicates the controller works throughout the movement cycle, indicating it can give this high gear mode in stance, if desired), so this ratio is configured to support a weight of the prosthesis/orthosis when standing (the Examiner is unclear how to interpret this limitation (see 112 rejections above). As is best understood, since the stance phase of the movement gait cycle includes supporting weight of a user, and the stance phase is part of the movement cycle ([0003]), the “ratio” is understood to “support” the weight of the prosthesis/orthosis of the user during the movement cycle);
wherein the low-gear transmission ratio is configured to provide a high-speed, low-torque, low-impedance behavior characteristic suited to the swing phase (this is also stated as an “intended use” (see the explanation above). See also [0003] and [0019] “low gear” supplies smaller forces (understood to be torque in the form of the rotational joint 110 of the invention, at higher speeds. Paragraph [0003] also indicates the controller works throughout the movement cycle, including during a free swing), so this ratio is configured to enable the prosthesis/orthosis to allow a knee joint to swing freely when the prosthesis/orthosis is not supporting the weight of the user ([0003]), and
wherein the two ratios are different ([0022], [0026] the transmission ratio of both the first transmission 132 of the first motor 124 and the second transmission 138 of the second motor 126 can vary from 1:4 to 4:1.),
but is silent with regards to the ratios differing by at least about an order of magnitude.
However, regarding claim 2 Bhurga teaches the transmission ratios for each transmission can be less than 1:1, or greater than 1:1 ([0022], [0025]). Accordingly the person of ordinary skill in the art at the time the invention was filed to modify the prosthesis/orthosis of Bhurga to have the transmission ratios varying to be larger or smaller, by about an order of magnitude since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only ordinary skill in the art. See MPEP 2144.05(II)(A). Bhurga recognizes the optimizability of the ratios, meaning a person of ordinary skill would understood to optimize the ratios.
Regarding claim 4 Bhurga teaches the prosthesis/orthosis of claim 2 substantially as is claimed,
wherein Bhurga further discloses the high-gear transmission is configured to have unidirectional behavior (This is also stated as an “intended use” of the device (see the explanation above). See also [0047]),
and the transmission is configured to generate torque against knee flexion (This is also stated as an “intended use” of the device (see the explanation above). See also [0047]) but slips when resisting knee extension (This is also stated as an “intended use” of the device (see the explanation above). See also [0048]).
Regarding claim 5 Bhurga teaches the prosthesis/orthosis of claim 2 substantially as is claimed,
wherein Bhurga further discloses the low-gear transmission is configured to have asymmetric behavior (This is also stated as an “intended use” of the device (see the explanation above). See also [0049]),
and the transmission is configured to resist knee extension with a low resistance while resisting knee flexion with a high resistance (This is also stated as an “intended use” of the device (see the explanation above). See also [0049]).
Regarding claim 6 Bhurga teaches the prosthesis/orthosis of claim 2 substantially as is claimed,
wherein Bhurga further discloses the transmission is configured to be in at least a first state which provides the high-gear ratio when resisting knee flexion or providing knee extension, and providing little or no torque when resisting knee extension or providing knee flexion (These configurations are all stated as “intended uses” of the transmission (see the explanation in the rejection to claim 2 above). See also [0047]-[0048]), second state which provides the low-gear ratio which is bidirectional, or third state which provides the low-gear ratio when resisting extension or providing flexion, while also providing a high resistance when resisting flexion or providing extension.
Regarding claim 7 Bhurga teaches the prosthesis/orthosis of claim 6 substantially as is claimed,
wherein Bhurga further discloses the transmission is further configured for a fourth state which provides the high-gear ratio which is bidirectional (this is stated as an “intended use” of the transmission (see the explanation above in the rejection to claim 2). See also at least [0050] which indicates a high gear mode can occur, as well as maintain a continuously variable transmission).
Regarding claim 8 Bhurga teaches the prosthesis/orthosis of claim 2 substantially as is claimed,
wherein Bhurga further discloses the transmission is configured to be in at least a neutral state in which the transmission is disengaged from the motor (this is stated as an “intended use” of the transmission (see the explanation in the rejection to claim 2 above). See also [0051]).
Prior art rejections to claim 9:
Regarding claim 9, with Bhurga disclosing the prosthesis/orthosis of claim 2 substantially as is claimed, and further disclosing the transmission can include gears ([0022], [0024]), and the two-speed transmission includes a clutch (140),
Bhurga is nevertheless silent with regards to the transmission including a planetary gear transmission with input and output stages, sun gears and input/output carrier links.
Lee et al. (US 20180066740 A1) teaches actuators for prostheses/orthoses can have transmissions that include a planetary gear transmission including an input planetary stage (Figure 2 item 1012) and an output planetary stage (Figure 2 item 1022),
wherein the input stage includes an input sun gear (Figure 2 item 1011) and an input carrier link (Figure 2 item 1013) and the output stage includes an output carrier link (Figure 2 item 1023);
wherein the motor is coupled to the input sun gear (Figure 2) and the joint is directly/indirectly coupled to the output carrier link ([0002]-[0003]),
While the Examiner considers it obvious to modify the prosthesis/orthosis of Bhugra to include a planetary gear transmission with the elements taught by Lee et al., it is not understood to be obvious for the Combination to function as claim 9 requires, with a common ring gear, and both a ring clutch and a carrier clutch, with the ring clutch allowing the common ring gear to rotate relative to ground in the disengaged state, and prevent/inhibit the common gear from rotating relative to ground in the engaged state. This claim is accordingly not understood to be obvious over the prior art.
Remaining claims depend from claim 9, and as such, are not addressed with prior art.
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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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 10/07/25
