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 .
Specification
The disclosure is objected to because of the following informalities: On page 4, line 11, “s” appears to be a typographical error. Appropriate correction is required.
Claim Objections
Claim 26 is objected to because of the following informalities: In claim 26, there is a typographical error on the third to last line. Appropriate correction is required.
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 21-27 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. Reference is also made to 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. In claim 21, line 3, it is recommended that --configured to be-- or --adapted to be-- or similar language be inserted after “that is” in order to avoid positive recitation of “wearer” as an element of the “joint device” as claimed and that similar revisions be made to claims 22-24.
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.
Claim 1-2 and 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, and 10-11 of copending Application No. 18/280,085 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of instant claims 1-2 are clearly set forth in claim 1 of said copending application, and the joint device being in the form of a knee joint for a leg prosthesis would have been obvious to the ordinary practitioner at the effective filing date of the present invention from copending claims 3-4 and 10-11, which make reference to “a traveling direction of a wearing subject” (copending claim 3, at lines 6-7, and claim 11), “the wearing subject [moving] upward in a vertical direction” (copending claim 4, last two lines), and attachment to a wearing subject (copending claims 5 and 10), in order to incorporate the advantageous control of gear ratios into a limb prosthetic control system (copending claim 1 and others). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 and 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, and 16-20 of copending Application No. 17/639,176 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the elements of instant claims 1-2 are plainly found in copending claims 1, 4-5, and 17-20, and the further limitations of claim 21-23 would have been obvious from copending claim 16 and the “electric prosthetic leg” (line 2), since prosthetic legs often include a socket for receiving a residual thigh, a component (i.e., a “second member”) for affixing a prosthetic knee joint (i.e., a “connecting unit”), and a lower leg and foot (i.e., a “first member”). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 21-23 are rejected under 35 U.S.C. 102(a)(2) as being clearly anticipated by Shimada, US 2022/0323242 A1. The applied reference has a common inventor with the instant application. Even though Kei Shimada is a joint inventor of the present application, “names another inventor”, as stated in 35 U.S.C. 102(a)(2), is interpreted to mean that there is a difference in inventive entity (MPEP § 2154.01(c)). Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Shimada ‘242 discloses a prosthetic knee joint device having a unit 10 and 20 connecting a first member 11 and a second member 21 (and which may also include a socket: paragraph 0032) such that an angle formed by the first and second members is changeable by an expansion and contraction device having a power source and power transmission unit (abstract; Figures 1-3, 6-7; paragraphs 0031-0032, 0036, 0041-0042), the power transmission unit including first and second transmission paths with different gear ratios (Figures 3-5C, 8-9; paragraphs 0043+, 0157). Regarding claim 2, the first and second transmission paths may be switched between drive power connection and disconnection (Figures 5A-5C, 8-9; paragraphs 0022-0024, 0047+, 0070+). The further limitations of instant claims 21-23 are readily apparent (MPEP § 707) from the discussion above in light of the cited drawings and passages; the prosthetic socket (paragraph 0032) typically receives a residual thigh and is hence attached to a wearer.
Claims 1-2 and 21-23 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Lee et al., US 2018/0066740 A1. Figure 9 illustrates a joint device having a unit 15 rotatably connecting a first member 14 and a second member 13 and an expansion and contraction device with a power source and a power transmission unit including first and second transmission paths characterized by dissimilar gear ratios (Figures 1-2, 4-6; paragraphs 0053-0054, 0063, 0065, 0079-0081, 0098-0102). Regarding claim 2, switching between the two transmission paths is accomplished via manual or automatic control of stoppers (Figures 1-2, 5, 7-8, 12-16; abstract; paragraphs 0012-0020, 0025-0026, 0031, 0082+, 0116+). Regarding claims 21-23, the motion assistance apparatus 1 (Figure 9) is deemed to be prosthetic in the sense of augmenting functions of an impaired natural leg in response to sensed conditions by effecting appropriate torque (paragraphs 0025-0026, 0031, 0056, 0101, 0117, 0122-0125), and the motion assistance may be applied to a knee rather than to a hip (paragraph 0098).
Allowable Subject Matter
Claims 3-20 and 24-27 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and including corrections as necessitated by the objection and by the rejections under 35 U.S.C. 101, as explained above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David H. Willse, whose telephone number is 571-272-4762. The examiner can normally be reached on Monday through Thursday. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Thomas Barrett can be reached at telephone number 571-272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID H WILLSE/ Primary Examiner, Art Unit 3774