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 .
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. Below is the anatomical drawing showing the location of the thumb MCP joint.
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However, it is difficult to visualize how “(ii) the second end of the extension member is adapted to be located underneath a metacarpal joint of a thumb of a user” and a thumb member coupled to the second end. Therefore, applicant must provide a drawing(s) showing the extension member with thumb member fitted on a hand or the feature(s) canceled from the claim(s).
Claim 13, the thumb member includes a thumb prosthetic and the second end of the extension member is located approximate the thenar eminence is not shown.
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.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 12-14 and 20 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). The underlined portion positively claim the user.
12. The digit prosthesis assembly of claim 11, wherein pressure applied to the thumb member can be transferred to a section of the extension member in contact with the user.
13. The digit prosthesis assembly of claim 11, wherein the thumb member includes a thumb prosthetic and the second end of the extension member is located approximate the thenar eminence. The underlined language is no longer functional language “adapted to be located” of claim 11.
14. The digit prosthesis assembly of claim 11, wherein the thumb member includes a thumb cover and the second end of the extension member is located approximate the metacarpal joint. The underlined language is no longer functional language “adapted to be located” of claim 11.
20. The digit prosthesis assembly of claim 17, wherein the palm engagement assembly includes: an extension member, a first end of the extension member being coupled to the attachment assembly and extending from the attachment assembly around an ulnar edge to a palmer side of a hand of a user; and an engagement member coupled to a second end of the extension member and being located proximate a palmer side of the hand of the user.
Claim Rejections - 35 USC § 103
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.
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.
Claims 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (2023/0026300) in view of Popovic et al (2022/0296391).
Zhang et al teaches a digit prosthesis assembly comprising:
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an attachment assembly 12; and
a thumb assembly (generally 11 as shown) including:
an extension member (including all components between the depicted first end and second end) having at least one bend (at least 1121 and 1121 have bends);
and a thumb member 1112 coupled to a second end of the extension member; wherein (i) a first end of the extension member (labelled) is rotatably coupled to the attachment assembly; and (ii) the second end of the extension member is adapted to be located underneath and approximate a thenar eminence or a metacarpal joint of a thumb of a user (par. 0003 teaching the hand can simulate a human hand, therefore, it is fully capable of the second end of the extension member of being adapted to be located underneath and approximate a thenar eminence or a metacarpal joint).
However, Zhang et al fails to teach said attachment assembly is adapted to be removably coupled to a wrist of a user.
Popovic et al teaches a similar hand device comprising an attachment assembly (140, 142) which too is attached the dorsal side of the hand like that of applicants.
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It would have been obvious to one having ordinary skill in the art to have used a wrist harness as taught by Popovic et al and modified the attachment assembly 12 of Zhang et al to include said wrist harness for increased anchorage to the user’s hand fulfilling the language. The combination prosthesis is fully capable of the “attachment assembly is adapted to be removably coupled to a wrist of a user”.
Claim 12, wherein pressure applied to the thumb member 1112 can be transferred to a section (such as 1111) of the extension member in contact with the user.
Claim 13, the thumb member includes/is a thumb prosthetic 1122. The second end of the extension member is located approximate the thenar eminence is address in the main rejection above.
Claim 14, the thumb member completely surrounds the user’s thumb, therefore, includes a thumb cover. The second end of the extension member is located approximate the metacarpal joint is addressed above.
Claim 15, wherein a curvature of the at least one bend of the extension member 1122 allows the second end of the extension member to rotate in a substantially circular motion (about the pivot to the thumb member; see applicant’s par. 0044 of the specification).
Allowable Subject Matter
Claims 1-16 and 17-19 are allowed.
The following is an examiner’s statement of reasons for allowance:
Claim 1: Zhang et al (2023/0026300) is considered the closes prior art of record. However, Zhang et al fails to teach a digit prosthesis comprising the combination of all limitations including an attachment assembly adapted to be removable coupled to a wrist of a user; and an extension member (including 1121, 1122) has a substantially “U” shape.
Claim 17: The prior art of record fails to teach a digit prosthesis assembly comprising an attachment assembly adapted to be removably coupled to a wrist of a user; a thumb assembly including: an extension member having at least one bend; and a thumb member coupled to a second end of the extension member; wherein (i) a first end of the extension member is (a) adapted to be located on a dorsal side of a hand of the user, and (b) rotatably coupled to the attachment assembly; and (ii) the second end of the extension member is adapted to be located underneath a metacarpal joint of a thumb of a user;
a palm engagement assembly coupled to the attachment assembly (interpret as being separate from the attachment assembly) and being adapted to interface with a palm of the user; a first finger assembly including: a first finger attachment assembly adapted to couple to the palm engagement assembly; a hinge member having a first end rotatably coupled to the attachment assembly; and a first finger cover coupled to a second end of the hinge member.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCE EDWARD SNOW whose telephone number is (571)272-4759. The examiner can normally be reached 7:30 am - 5:00 pm Monday through Thursday.
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, Melanie Tyson can be reached at 5712729062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRUCE E SNOW/Primary Examiner, Art Unit 3774