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 Amendment
This office action is in response to amendment filed on 04/16/2026. As directed by the amendment, claims 3-5 and 10 were canceled, claims 1-2, 6-9, and 11-12 were amended, and claims 13-14 were newly added. Thus, claims 1-2, 6-9, and 11-14 are presently pending in this application.
Claim Objections
Applicant is advised that should claim 13 be found allowable, claim 14 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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:
“at least one upper joint element” of claim 1 line 3
Corresponding structure on page 5 “The upper joint element is then preferably an upper body element to be mounted on the wearer's upper body”, “the upper joint element is an upper leg element to be mounted on the upper leg”
“at least one lower joint element” of claim 1 line 4
Corresponding structure on page 5 “the lower joint element is an upper leg element to be mounted on the wearer's upper leg”, “the lower joint element is a lower leg element to be mounted on the wearer's lower leg”
“at least one actuator” of claim 1 line 6
Corresponding structure on page 19 “actuator 24 in the form of a spring”
“at least one ground contact element” of claim 1 line 10
Corresponding structure on page 6 “The ground contact element is preferably made of a plastic and preferably has a contact surface that is placed against the ground”
“a mechanical energy store” of claim 11 line 2
Corresponding structure on page 11 “the mechanical energy store comprises at least one spring element or is a spring element”
“an upper body element” of claim 12 line 2
“an upper leg element” of claim 12 line 3
“a pelvic element” of claim 12 line 4
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 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 12 is 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.
Regarding claim 12 line 1, the term “The orthopedic device according to claim 10” is unclear as to how the claim 12 depends from a canceled claim 10.
Claim limitations “an upper body element” of claim 12 line 2, “an upper leg element” of claim 12 line 3, and “a pelvic element” of claim 12 line 4 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
Regarding claim 12 line 2, the term “an upper body element” is unclear because although the specification and drawings include “an upper body element 4” and page 5 says “an upper body element to be mounted on the wearer's upper body,” the disclosure is not clear as to what structure the upper body element exactly is. Is the upper body element a harness? Thus, the specification fails to disclose a corresponding structure able to perform the claimed functions of the “upper body element”.
Regarding claim 12 line 3, the term “an upper leg element” is unclear because although the specification and drawings include “an upper leg element 6” and page 5 says “an upper leg element to be mounted on the wearer's upper leg”, the disclosure is not clear as to what structure the upper leg element exactly is. Is the upper leg element a rod? Thus, the specification fails to disclose a corresponding structure able to perform the claimed functions of the “upper leg element”.
Regarding claim 12 line 4, the term “a pelvic element” is unclear because although the specification and drawings include “a pelvic element 10” and page 11 says “the pelvic element, which is preferably arranged on the wearer's pelvis”, the disclosure is not clear as to what structure the pelvic element exactly is. Is the pelvic element a belt? Thus, the specification fails to disclose a corresponding structure able to perform the claimed functions of the “pelvic element”.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-2, 6-9, 11, and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bonner (US 4,138,156).
Regarding claim 1, Bonner discloses an orthopedic device for supporting a lower limb and/or a lower back of a user (support unit 20), comprising:
at least one upper joint element (upper bar 22),
at least one lower joint element (lower bar 26), wherein the at least one upper joint element and the at least one lower joint element are pivotable relative to each other (upper bar 22 connected by hinge 24 to lower bar 26),
at least one actuator configured to apply a force to the at least one upper joint element or the at least one lower joint element for pivoting the at least one upper joint element and the at least one lower joint element relative to each other (springs 124; Col. 3 lines 59-61 rotate upper bar 22 relative to lower bar 26), and
at least one ground contact element connected to the at least one lower joint element such that when the orthopedic device is in a mounted state (foot 50 on the end of the upper and lower tube configuration 34, 36, connected to lower bar 26), the at least one ground contact element is configured to engage a ground on which the user is located (Fig. 1 foot 50 is engaged with the ground; Fig. 2 foot 50 does not engage with the ground when out of use),
wherein the at least one ground contact element is configured to engage the ground only when the at least one actuator applies the force to the at least one upper joint element or the at least one lower joint element (Col. 4 lines 42-56: Brace 100 in the body support position upper bar 22 rotates downward towards lower bar 26 via compression of springs 124 until foot 50 engages the ground, such as in Fig. 1).
Regarding claim 2, Bonner discloses the at least one ground contact element is moveable relative to or as part of the at least one lower joint element (Col. 2 lines 67-68: Lower bar 26 includes upper and lower tubes 34, 36).
Regarding claim 6, Bonner discloses a lower leg shell configured to be longitudinally slidable along the at least one lower joint element (Flexible u-shaped supports 62, 70 on the lower leg include straps 64, 74 fitted with Velcro in a slot 66, 76. Thus the straps are shiftable in a longitudinal direction within slots).
Regarding claim 7, Bonner discloses the at least one ground contact element is arranged at a distal end of the at least one lower joint element (Foot 50 is at the lower end of lower tube 36).
Regarding claim 8, Bonner discloses the at least one ground contact element protrudes frontally relative to the at least one lower joint element (Fig. 1 foot 50 comprises curved foot pad 54, where the front end of foot pad 54 protrudes frontally relative to the lower bar 26).
Regarding claim 9, Bonner discloses the lower joint element is a lower leg element and is rotatable about a longitudinal axis of the lower leg element (Lower bar 26 is on the lower leg; wherein upper and lower tubes 34, 36 of lower bar 26 are moveable. Lower bar 26 rotatable relative to upper bar 22).
Regarding claim 11, Bonner discloses the at least one actuator comprises a mechanical energy store (Actuator is springs 124).
Regarding claim 13 and 14, Bonner discloses the at least one actuator is a passive actuator (Actuator is springs 124).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 12 are rejected under 35 U.S.C. 103 as being unpatentable over Bonner as applied to claim 1 above, and further in view of Smith (US 2015/0321340).
Regarding claim 12, Bonner discloses the at least one upper joint element is an upper body element (see Bonner upper bar 22 has upper thigh support 80) and the at least one lower joint element is an upper leg element (see Bonner lower bar 26 has upper calf element 62 nearer to the knee ), but is silent as to wherein the orthopedic device further comprises a pelvic element, wherein
the upper leg element is arranged on the pelvic element such that the upper leg element is pivotable about a first pivot axis, and
the upper body element is movably arranged relative to the pelvic element so as to enable charging or discharging of a mechanical energy store.
However, Smith teaches the orthopedic device further comprises a pelvic element (see Smith base member 110 and support member 121a arranged on pelvis of exoskeleton 100), wherein
the upper leg element is arranged on the pelvic element such that the upper leg element is pivotable about a first pivot axis (see Smith support member 121a pivotable about rotational arrow 144 relative to base member 110 and support member 121c rotatable about axis 131a relative to member 121a), and
the upper body element is movably arranged relative to the pelvic element so as to enable charging or discharging of a mechanical energy store (see Smith actuator 140 [0017] “the primary drive actuator 140 can apply a force or torque to the support member 121b (i.e., in direction 144), which can serve as an input linkage, to cause the mechanism 120 to move”; members 121a and 121c pivotable about axis 131a are moved when actuator 140 engages via applying the input linkage member 121b). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the upper leg element of Bonner with the addition of a pelvic element able to pivot about the upper leg element as taught by Smith so as to provide more support around the hips to the user when wearing device 20 of Bonner, and provide the pivoting motion around the pelvis when engaging the device 20, such as in Fig. 1 of Bonner.
Response to Arguments
Applicant's arguments filed 04/16/2026 have been fully considered but they are not persuasive.
Applicant’s arguments, see pages 8-9 of the remarks, with respect to the rejection(s) of claims 1-2, 6-9, and 11-12 under Smith under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration of the now amended claims, a new ground(s) of rejection is made in view of Bonner under 35 USC 102 above, see rejections above.
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 GWYNNETH L HOWELL whose telephone number is (703)756-4742. The examiner can normally be reached 8:30-4:30 M-F.
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, Tim Stanis can be reached at (571) 272-5139. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GWYNNETH L HOWELL/Examiner, Art Unit 3785
/RACHEL T SIPPEL/Primary Examiner, Art Unit 3785
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