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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/28/26 has been entered.
Notice of Amendment
In response to the amendment(s) filed on 1/28/26, amended claim(s) 1, and new claim(s) 7-9 is/are acknowledged. The following new and/or reiterated ground(s) of rejection is/are set forth:
Election/Restrictions
Newly submitted claim(s) 8-9 is/are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The invention of claims 1-7 and the invention of claim 8 are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed can be used to practice another and materially different process such as, for example, generating a recommendation for adjusting a walking aid worn by the patient using only one gait analysis and one three-dimensional digital representation of the patient.
The invention of claims 1-7 and the invention of claim 9 are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed can be used to practice another and materially different process such as, for example, generating a recommendation for adjusting a walking aid worn by the patient using only one gait analysis and one three-dimensional digital representation of the patient.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim(s) 8-9 is/are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “fastening devices,” in claim 1, which corresponds to “Velcro” or “magnetic fasteners” (see para [26] of Applicant’s specification as originally filed); and “a receiving device,” in claim 1, which corresponds to a “smartphone” (see para [66] of Applicant’s specification as originally filed).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
For claim 1, the claim language “generate a recommendation for adjusting a walking aid worn by the patient” and “display … the recommendation for adjusting the walking aid” appears to be new matter. The response filed 1/28/26 identifies para [0077]-[0088] as providing support for the newly amended claim language. Although the written description teaches “the system according to the invention already suggests the most suitable aid itself (based on the measurements and the reference motion data),” that is not the adjustment of an aid, it’s more a suggestion and/or selection of an aid (and one that is optimal at that). Further, that same paragraph of the specification discloses “This eliminates the need for time-consuming trials to adapt aids with repeated gait analyses.” So if aids do not need to be “adapt(ed),” then in a similar vein they probably also don’t need to be adjusted. As a result, Applicant’s specification appears to support the opposite of what is being claimed. The examiner respectfully requests assistance in determining where support may be found or have the subject matter deleted from the claim(s).
Dependent claim(s) 2-7 fail to cure the deficiencies of independent claim 1, thus claim(s) 1-7 is/are rejected under 35 U.S.C. 112(a).
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.
Claim(s) 4 is/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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
For claim 4, the claim term “the measurement data” (line 2) lacks antecedent basis. The claim is examined as finding antecedence in “measured data” recited in claim 1.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2013/0110011 to McGregor in view of U.S. Patent Application Publication No. 2020/0215324 to Mantovani et al. (hereinafter “Mantovani”).
For claim 1, McGregor discloses a walking and adjustment system (Abstract) (para [0015]), comprising
one or more inertial measurement units (14, 16, 18) (Fig. 1) (para [0023]-[0024]),
a number of fastening devices corresponding to a number of IMUs to fix the inertial measurement units to different parts of a patient's body (as can be seen in Figs. 1-2) (para [0023]-[0024]),
a measuring station with a first computer having a receiving device for receiving measured data from the IMUs (“user communication device such as a personal computer, digital assistant, or mobile phone,” para [0030]),
a second computer (“remote server,” para [0030]) for receiving and analyzing the measured data from the first computer (para [0030]) and for optional comparison of the measured data to data from other measurements (Examiner’s Note: this claim language being optional) (para [0030]),
a software residing on the second computer (“virtual coach application,” para [0030]) for calculating motion data from the measured data (para [0033]) (also see para [0035]-[0039]) and for extracting therefrom a plurality of gait parameters of the patient’s body (para [0045]) to generate a recommendation for adjusting a walking aid worn by the patient (para [0030], [0032], and [0042]-[0043]) (Examiner’s Note: both para [0032] and [0042] use the word “modification,” which reads on the claimed “adjusting”), and
a display in communication with the first computer (“user communication device such as a personal computer, digital assistant, or mobile phone,” para [0030]) to display for visualization the recommendation for adjusting the walking aid (para [0030], [0032], and [0042]-[0043]) (Examiner’s Note: both para [0032] and [0042] use the word “modification,” which reads on the claimed “adjusting”).
McGregor does not expressly disclose that the fastening devices are Velcro or magnetic fasteners (according to the 112(f) invocation).
However, Mantovani teaches fastening devices that are Velcro or magnetic fasteners (para [0039]).
It would have been obvious to a skilled artisan to modify McGregor such that the fastening devices are Velcro or magnetic, in view of the teachings of Mantovani, because Velcro or magnetic fasteners would be a simple substitution of whatever fastening structure is being used in McGregor that would lead to the predictable result of keeping McGregor’s accelerometers attached to a human body.
McGregor does not expressly disclose the software further generating, from the extracted parameters, a three-dimensional digital representation of a complete gait pattern of the patient over one or more gait cycles, and communicating the three-dimensional digital representation of the complete gait pattern to the first computer; and that the display for visualization is for three-dimensional digital representation of the complete gait pattern.
However, Mantovani teaches generating, from extracted parameters, a three-dimensional digital representation of the complete gait pattern of the patient over one or more gait cycles (see Fig. 4) (para [0011], [0020], and [0083]-[0084]) (also see para [0094]-[0095]), and communicating the three-dimensional digital representation of the complete gait pattern to a first computer (as can be seen in Fig. 3); and that the display for visualization is for three-dimensional digital representation of the complete gait pattern (para [0083]).
It would have been obvious to a skilled artisan to modify McGregor to include the software further generating, from the extracted parameters, a three-dimensional digital representation of the complete gait pattern of the patient over one or more gait cycles, and communicating the three-dimensional digital representation of the complete gait pattern to the first computer; and that the display for visualization is for three-dimensional digital representation of the complete gait pattern, in view of the teachings of Mantovani, for the obvious advantage of clearly visualizing the user the user’s gait cycle so that any abnormalities can be readily seen by the user for aid in diagnosis and/or rehabilitation.
For claim 2, McGregor further discloses characterized by use of 1 to 8 inertial measurement units (para [0023]-[0024]).
For claim 3, McGregor, as modified, further discloses characterized by use of Velcro and/or magnetic fasteners (see para [0039] of Mantovani) for separate fixation of the inertial measurement units on different body regions (as can be seen in Figs. 1-2 of McGregor).
For claim 4, McGregor further discloses characterized by that each inertial measurement unit transmits the measurement data wirelessly to the first computer (para [0024]).
For claim 5, McGregor further discloses characterized by that at least one inertial measurement unit contains sensors for collection of further vital data of the test persons (para [0016]).
For claim 6, McGregor further discloses use of 4 to 6 inertial measurement units (14, 16, 18, 24, and 28) (para [0023]-[0024] and [0045]).
For claim 7, McGregor further discloses wherein the walking aid is an orthesis or prosthesis (para [0040] and [0042]).
Response to Arguments
Applicant’s arguments filed 1/28/26 have been fully considered.
With respect to the 112(b) rejections, Applicant’s amendments and arguments are persuasive with respect to one of the rejections and therefore that rejection is withdrawn. The other rejection is maintained since claim 4 was not amended.
With respect to the 103 rejections, Applicant’s arguments will be treated in the order they were presented. With respect to the first argument that McGregor does not disclose or suggest “applying this system to the adjustment of medical devices like walking aids for patients with movement disorders” (see page 5 of the response), this argument appears to not be commensurate in scope with the claim language. New dependent claim 7 clarifies that “the walking aid is an orthesis or prosthesis” (see claim 7). McGregor teaches an orthesis or prosthesis (para [0042]-[0043]). McGregor teaches an adjustment of tat orthesis or prosthesis, but just uses the term “modification” instead of the claimed term “adjusting.” With respect to the second argument, this argument overly narrows the fields of art of both McGregor and Mantovani. Both McGregor and Mantovani are directed to the fields of orthotic/prosthetic and the modulation, enhancement, and/or adaptation of the human body with that orthotic/prosthetic. Just look at the “Technical Field” of both references (i.e., para [0002] of each reference). With respect to the third argument, Mantovani is not relied upon for generating “an offline, consultative recommendation for adjusting a separate, mechanical device” (see page 5 of the response), and therefore this argument is a red herring. Mantovani is relied upon for the three-dimensional digital representation of the complete gait pattern and the motivational statement addresses why that particular modification would be advantageous.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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, Jennifer Robertson can be reached at (571) 272-5001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL L CERIONI/Primary Examiner, Art Unit 3791
Prosecution Insights