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 addresses applicant's amendments and arguments filed 7/06/2026. The amendment to claim 28 overcame the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Regarding claims 1 and 26:
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Applicant argues:
There is no disclosure in Rubie '715 that the split 1802 is a hinge. The only disclosure of the split 1802 in Rubie '715 is in paragraph [0063] which recites, "[t]he addition of forefoot splits 1804 and heel splits 1802 enables easier donning and doffing of the foot cover with respect to a prosthetic foot." The heel split 1082 may allow independent movement of the portions of the foot cover on the two sides of the heel split, but does not necessarily by using a hinge. There is no disclosure in Rubie '715 that any part of the foot cover is rotatably coupled to another part of the foot cover.
The examiner agrees with applicant’s position, “[T]the heel split 1082 may allow independent movement of the portions of the foot cover on the two sides of the heel split”. This is due to the heel split allowing the two adjacent sides to pivot away from each other via a living hinge in a bottom portion below the split. The advantage includes the heel portion of the prosthetic foot can be moved away or towards the foot cover easier or the splits would not be there. Regarding, “but does not necessarily by using a hinge”, this is not correct. The split is fully capable of allowing the bottom portion to act as hinge in rotation.
Regarding the new limitation “at the bottom of the foot cover” (claim 26), “bottom” appears to be a range limitation not defined in the specification.
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Applicant’s figure 3B, above, shows heel slits very similar to Rubie et al wherein both include a stress relief hole at the bottom of the slits which are well known to prevent tearing upon rotation. It is the examiner’s position that the heel section is rotatably coupled to the front section within the range of “at a bottom of the foot cover”. Regarding a thicker portion above the groove, there are more variables than thickness. The examiner notes other variables such as the splits extend reward leaving less material to flex.
Claim 11, applicant argues that the Office action fails to specifically cite any specific portion of Rubie et al regarding the sole portion comprises a solid outer surface. This is a very broad limitation, “at a minimum, a solid material” is self-explanatory.
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This is not the broadest reasonable interpretation. The examiner notes applicant’s specification does not support “solid”. The examiner suggests more specially claiming applicant’s cover configuration.
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)(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 26-27 and 29 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Rubie et al (2021/0186715).
Rubie et al teaches a unitary single-material foot cover (at least par. 0052, single piece foot cover) for a prosthetic foot, the unitary single-material foot cover comprising:
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a front section; and
a heel section rotatably (at the living hinge) coupled to the front section at a bottom of the foot cover to form the foot cover that includes an inner cavity (self-evident) configured to receive the prosthetic foot, and an opening leading to the inner cavity,
wherein the foot cover is configured to fit in a shoe (fully capable).
Claim 27, wherein an inner surface of the foot cover comprises at least one groove configured to guide water or debris out of the foot cover and/or allow airflow to dry off water in the foot cover; see par. 0064-0065.
Claim 29, see at least figure 14 having grip features on the bottom surface of the foot cover.
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 26, 28-31 are rejected under 35 U.S.C. 103 as being unpatentable over Nordam, Jr. et al in view of Drake (12,042,015). Claim 30 is Evidenced by Rubie et al (2019/0060090).
Nordam, Jr. et al teaches a unitary single-material foot cover (shell, see abstract; unitary as shown) for a prosthetic foot 404, the unitary single-material foot cover comprising:
a first section and second section (self-evident) rotatably coupled at a bottom of the foot cover as shown below.
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The foot cover includes an inner cavity 400 configured to receive the prosthetic foot, and an opening leading to the inner cavity, wherein the foot cover is configured to fit in a shoe (see par. 0068). However, Nordam, Jr. et al fails to teach the first section and second sections are front and heel sections.
Drake teaches a foot cover which also provides easy donning and doffing through a heel region 400; see the abstract.
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As shown a front section 206 is rotatably coupled to a heel section 400 via hinge 408 at the bottom of the foot cover.
It would have been an obvious to one having ordinary skill in the art to have substituted the configuration wherein the heel section is rotatably coupled to the front section at a bottom of the heel section as taught by Drake for the rotatably coupled first and second section configuration of Nordman, Jr. et al to obtain predictable results. Additionally, as shown in figure 6 of Drake, this configuration allows for increased opening leading into the inner cavity.
Claims 31 and 28, both Nordam, Jr. et al and Drake teach fasteners interpreted as quick release fastener. See at least par. 0069 of Nordman, Jr. et al and 500 of Drake which can be incorporated into the foot cover.
Claim 29, see figure 4 of Nordman, Jr. et al having varying curvature interpreted as wherein a bottom surface of the foot cover comprises grip features.
Claim 30, the combination fails to teach the single- material of the foot cover comprises ethylene-vinyl acetate. Rubie et al ‘090 also teaches a single-material for a foot cover comprising ethylene-vinyl acetate; see claim 6. It would have been obvious to one skilled in the art to have used ethylene-vinyl acetate for the unitary single-material foot cover to obtain predictable results.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Rubie et al (2021/0186715). Evidenced by Rubie et al (2019/0060090).
Rubie et al ‘715 teaches a unitary single-material foot cover (at least par. 0052, single piece foot cover) for a prosthetic foot, however, fails to teach wherein the single- material of the foot cover comprises ethylene-vinyl acetate.
Rubie et al ‘090 also teaches a single-material for a foot cover comprising ethylene-vinyl acetate; see claim 6. It would have been obvious to one skilled in the art, Rubie et al, to have used ethylene-vinyl acetate for the unitary single-material foot cover of the cover of ‘715 for a known foot cover material to obtain predictable results.
Claims 1-3, 6-12, 14-15, 19-20, 26-29 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Rubie et al (2021/0186715). Evidenced by Drake (12,042,015), Nordman, Jr. et al (2013/0218297), Rubie et al (2019/0060090), Clausen et al (2022/0079781), Albertsson et al (2024/0041621), Clausen et al (2012/0165958) for grip pads.
Rubie et al ‘715 teaches a foot cover for a prosthetic foot comprising:
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a first section (note that the first section and the second section can be reversed); and
a second section rotatably (at the living hinge) coupled to the first section to form the foot cover that includes an upper edge defining an inner cavity (self-evident) configured to receive the prosthetic foot, and an opening leading to the inner cavity.
wherein the foot cover is configured to fit in a shoe (fully capable),
wherein a sole portion comprises a solid outer surface (at a minimum, a solid material) and a groove on an inner of the sole portion, said groove configured to guide water or debris out of the cosmesis and/or allow airflow to dry off water in the cosmesis; see par. 0064-65.
However, Rubie et al ‘715 fails to teach:
(1) wherein the first and second sections form a releasable connection (fastener) at a location near the upper edge of the top portion; and/or fails to teach:
(2) wherein the sole portion comprises a recess on an inner surface of the sole portion, wherein the recess is configured receive a bolt of the prosthetic foot when the prosthetic foot is inserted into the inner cavity.
The examiner provides Drake teaching (a shoe) of a similar design having at least one fastener 500 configured to couple a first section to a second section at a second location away from the hinge at a similar location.
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The examiner further provides Nordman, Jr. et al as evidences teaching using a butterfly type latch or clip 602 to attach a first and a second sections of a foot cover away from the hinge at a second location.
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It would have been obvious to one having skill in the art to have used a releasable connection (fastener), as evidenced by Drake or Nordman, Jr. et al on the foot cover of Rubie et al ‘715 to form a releasable connection at a location near the upper edge of the top portion (at a second location away from the hinge) to strengthen closure between the section and to allow for a deeper division between the section in a direction towards the sole to ease insertion of a prosthetic foot.
Regarding (2) wherein the sole portion comprises a recess on an inner surface of the sole portion, wherein the recess is configured receive a bolt of the prosthetic foot when the prosthetic foot is inserted into the inner cavity, this is well known in the art as evidenced by Clausen et al or Albertsson et al as shown below. It would have been obvious to one having ordinary skill in the art to have included a recess configured to receive a bolt on the combination foot cover such that the bolt would not rip into the cover.
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Claims 2-3, the foot cover is made of polyurethane or rubber like applicant’s cover and is a waterproof material.
Claims 6 and 31, at least one fastener, is addressed above.
Claim 7, both fastener types are interpreted as being on an outer surface of the foot cover.
Claim 8, both fastener types are interpreted as being on an outer surface of the foot cover. Further, it would have been obvious to one having ordinary skill in the art to have attached a strap (Velcro) through the foot cover via sewing or a rivet to the inner surface for anchoring said fastener.
Claims 9, 14 and 28, Nordman, Jr. et al teaches a hook-and-loop fastener. Further, it would have been obvious to one having ordinary skill in the art to have used hook-and-loop fastener of other configurations as a closure fastening means.
Claim 10, see at least figures 13 and 15 of Rubie et al ‘715 having sole features interpreted as a grip pad. The examiner further provides Clausen et al (2012/0165958) teach grip pads are very well know in the art. See at least figure 13A, 1530.
Claim 11 is addressed in the main rejection above.
Claim 12, see at least Rubie et al ‘715 wherein the living hinge is depicted above.
Claim 15 is at least heel groove 1704 defining a raised portion above of Rubie et al ‘715. Also see figure 14.
Claim 19 is addressed in the main rejection above.
Claim 20:
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Claims 26, 27, 29 are described in the rejections above and are included herein for the rejection of claim 28.
Claim 28, the fasteners of both Drake or Nordman, Jr. et al, are described above, are interpreted as “quick release”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rubie et al (2019/0060090) -
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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.
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.
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.
/BRUCE E SNOW/Primary Examiner, Art Unit 3774
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