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 12/23/2025 have been fully considered. The claim amendments overcame the rejection of claims 1, 2 and 6 under 35 U.S.C. 112(b).
The amendment of the specification overcame the drawing objection.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki et al (8,747,486) in view of Gill (8,828,096).
Applicant appears to be arguing that Gill fails to teach that the shell extends from a distal end to a proximal end of a proximal phalanx and does not comprise a filler, however, applicant fails to give specific citations in either reference. The examiner notes 3:23-30 teaching disposing a second layer over at least part of the first layer; this is interpreted as disposing a second layer over all of the first layer.
Further, note 4:27-36 which suggests not covering the first layer in the distal phalange and intermediate phalange, this does not include the proximal phalange.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki et al (8,747,486) in view of Gill (8,828,096).
Kawasaki et al teaches a finger element or thumb element comprising a shell (gel-like artificial skin; see at least 4:26-31) that extends from a distal end to a proximal end of a proximal phalanx 12 of the finger or thumb element and defines a volume; and at least one motor 16 is arranged within the volume.
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However, Kawasaki et al fails to teach wherein said volume is at least partially filled with a filler material.
Gill also teaches a finger element or thumb element comprising a shell (second layer 14; see at least the abstract) which defines a volume, wherein the volume is at least partially filled with a filler material (first layer 12, silicone rubber; also see 3:1-5 teaching a filler).
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It would have been a simple substitution to one having ordinary skill in the art to have substituted the shell of Gill which defines a volume which is at least partially filled with a filler material (first layer 12, silicone rubber; see 3:1-5 teaching a filler) for the shell of Kawasaki et al to obtain predictable results. Additionally, the substitution provides an advantage of a polyurethane shell which is more abrasion resistant.
Claim 2, incorporated figure 4 above, shows at least the motor is surrounded by the filler material.
Claim 3, according to claim 2, wherein the filler material is 12 is silicone rubber which is a gel in at least its unhardened form.
Claim 4, inherently, silicone rubber is not soluble in water.
Claim 5, “wherein after it has been introduced, the filler material becomes viscous or hard”, has been interpreted as product-by-process step would does not differentiate the final product. See MPEP 2113. Also, see at least 3:31-33 of Gill.
Claim 6, a hand prosthesis comprising a finger element or thumb element according claim 1. See at least figure 1B of Kawasaki et al and the abstract.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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.
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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