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 .
Claim Objections
Claim 30 is objected to because of the following informalities: there is no antecedent basis for the first and second contact surface “element”. Applicant should either remove “element” from lines 1 and 2 of claim 30, or include it in claim 26.
Appropriate correction is required.
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 18 is 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.
Claim 18 now recites “wherein the exoskeleton is configured for the lifeline to remain taut”, which does appear to be supported, depicted, or explained in any way, in the original disclosure.
Appropriate correction is required. No new matter should be added.
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 18 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.
Claim 18 now recites “wherein the exoskeleton is configured for the lifeline to remain taut”, rendering the claim indefinite as it is not clear how the exoskeleton would have any effect on the slack or tautness of the lifeline, as that would be a function of the fall arrest device, not the exoskeleton. It is not clear if applicant means to claim that the fall arrest device is configured for the lifeline to remain taut; or that the exoskeleton does not interfere with the extension and retraction of the lifeline (which could interfere with the lifeline slack or tautness). Appropriate correction and clarification are required.
No new matter should be added.
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.
Claim(s) 1-10, 15-21, 24 and 26-32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 2000-0018193 (KR ‘193).
KR ‘193 discloses:
An exoskeleton (40) for a retractable fall arrester, the exoskeleton comprising:
a first contact surface ring defining a first aperture and having a first diameter (see below); and
a second contact surface ring defining a second aperture and having a second diameter different from the first diameter (see below);
wherein the first contact surface ring and second contact surface ring each comprise a closed curve (both the rings are circles, which are closed curves)
wherein the exoskeleton (40) is configured to roll around an arcuate path of a specific radius about a rolling axis extending through the first aperture and the second aperture (capable of; axis following the same path as cable 70);
wherein the exoskeleton is configured for both the first contact surface ring and the second contact surface ring to be in contact with a surface when the retractable fall arrestor is in us (capable of; when the body is positioned angled on its side [additional figure inserted below] such that the two contact rings are contacting a surface; note how the first contact ring protrudes outward from the body, which would elevate the conical portion up from the surface, allowing for the two contact rings to roll on a surface; note -“a surface” could also just be the conical surface that extends between the two rings; see further remarks in Response to Arguments).
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2. The exoskeleton of claim 1, wherein the exoskeleton is configured to hold the retractable fall arrester (see below) when the retractable fall arrester is installed such that the retractable fall arrester rotates about the rolling axis (capable of; axis following the same path as cable 70).
3. An exoskeleton for a retractable fall arrester (see above), the exoskeleton comprising:
a body (40) comprising a first half (cylindrical portion of body) connected to a second half (conical portion of body), a first contact surface ring (see above) connected to the body having a first diameter (see above);
a second contact surface ring (see above) connected to the body having a second diameter (see above), wherein the second diameter is different from the first diameter (see above);
a first end defining a first aperture (opening at either end of the body) and
a second end defining a second aperture (opening at opposing end of the body);
wherein the exoskeleton is configured for both the first contact surface ring and the second contact surface ring to be in contact with a surface when the retractable fall arrestor is in use (capable of; when the body is positioned angled on its side [additional figure inserted above] such that the two contact rings are contacting a surface; note how the first contact ring protrudes outward from the body, which would elevate the conical portion up from the surface, allowing for the two contact rings to roll on a surface; note -“a surface” could also just be the conical surface that extends between the two rings; see further remarks in Response to Arguments).
4. The exoskeleton of claim 3, wherein the exoskeleton is configured to hold the retractable fall arrester (see above).
5. The exoskeleton of claim 4, further comprising
a connector mechanism (cable);
wherein the first aperture (@conical end) is configured for passage of the connector mechanism (cable) for connecting the retractable fall arrester to a structural anchor (20 @ end of cable 70 can connect to a structural anchor).
6. The exoskeleton of claim 5, wherein the exoskeleton is configured to rotate around the structural anchor while resting on the first contact surface ring and the second contact surface ring (capable of; axis following the same path as cable 70).
7. The exoskeleton of claim 4, wherein the second aperture is configured for passage of a lifeline (70) extending from the retractable fall arrester (see above; note that claim 7 depends from 4 separately from claims 5 and 6, so the aperture at the second ring can be both the first aperture in claim 5 and the second aperture in claim 7).
8. The exoskeleton of claim 3, wherein the first contact surface ring comprises a first contact surface and the second contact surface ring comprises a second contact surface (see above).
9. The exoskeleton of claim 8, wherein the exoskeleton is configured to roll on the first and second contact surfaces (capable of; axis following the same path as cable 70).
10. The exoskeleton of claim 8, wherein the exoskeleton is configured to roll on a supporting structure only on the first and second contact surfaces without other exoskeleton structures touching the supporting structure (capable of; when the body is positioned angled on its side such that the two contact rings are contacting the surface neither the cylindrical body portion or the angled conical portion would touch the surface; note how the first contact ring protrudes outward from the body, which would elevate the conical portion up from the surface).
15. A system for preventing injuries from a fall, comprising:
a fall arrest device (see below) comprising a connector (60) for connection to a structure (via connecting components) and a lifeline (70) configured to support a user in case of a fall;
an exoskeleton (40) comprising:
a first contact surface ring having a first diameter (see below);
a second contact surface ring having a second diameter (see below), wherein the second diameter is different from the first diameter (see below), wherein the first contact surface ring and second contact surface ring each comprise a closed curve (both the rings are circles, which are closed curves), and wherein the first contact surface ring and the second contact surface ring are configured to roll on a surface (capable of; when the body is positioned angled on its side such that the two contact rings are contacting the surface; note how the first contact ring protrudes outward from the body, which would elevate the conical portion up from the surface, allowing for the two contact rings to roll on a surface),
a body (40) comprising a first half (cylindrical portion of 40) connected to a second half (conical portion of 40),
a first end defining a first aperture (opening at one end of the body); and
a second end defining a second aperture (opening at opposing end of body),
wherein the second aperture is configured for passage of the lifeline (70; see below);
wherein the first contact surface ring and the second contact surface ring are connected to or integral with the body (see below),
wherein the exoskeleton is configured to hold the fall arrest device (see below).
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16. The exoskeleton of claim 15, wherein the first aperture (opening of cylindrical body that receives fall arrest device) is configured for passage of the connector (60), wherein the connector connects the fall arrest device to a structural anchor on the structure (via 20 and 70).
17. The exoskeleton of claim 16, wherein the exoskeleton is configured to rotate around the structural anchor while resting on the first contact surface ring and the second contact surface ring (capable of; axis following the same path as cable 70).
18. The exoskeleton of claim 15, wherein the exoskeleton is configured for the lifeline to remain taut ( as best understood in light of the 112(b) rejections: the fall arrest device is configured for the lifeline to remain taut (via motor control and guide 110); or that the exoskeleton does not interfere with the extension and retraction of the lifeline (via opening at end that allow 70 to enter and exit in use)).
19. The exoskeleton of claim 15, wherein the first contact surface ring comprises a first contact surface and the second contact surface ring comprises a second contact surface (see above).
20. The exoskeleton of claim 19, wherein the exoskeleton is configured to roll on the first and second contact surfaces (capable of; axis following the same path as cable 70).
21. The exoskeleton of claim 19, wherein the exoskeleton is configured to roll on a supporting structure only on the first and second contact surfaces without other exoskeleton structures touching the supporting structure (capable of; when the body is positioned angled on its side such that the two contact rings are contacting the surface neither the cylindrical body portion or the angled conical portion would touch the surface; note how the first contact ring protrudes outward from the body, which would elevate the conical portion up from the surface).
24. The exoskeleton of claim 15, wherein the exoskeleton is configured to substantially surround the fall arrest device (see above).
26. A cradle for a fall arrest device, the cradle comprising:
a cradle body (40);
a first contact surface (see below) having a first diameter (see below), the first contact surface being connected to or integral with the cradle body (40);
a second contact surface having a second diameter different from the first diameter (see below), the second contact surface being connected to or integral with the cradle body (40);
wherein the first contact surface and second contact surface each comprise a closed curve (both the first contact surface and second contact surface are rings, which are circles, which are closed curves),
wherein the cradle is configured to roll around an arcuate path about a rolling axis (capable of; axis following the same path as cable 70).
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27. The exoskeleton of claim 1, wherein the first contact surface ring and the second contact surface ring are geometric sections of the exoskeleton (see above).
28. The exoskeleton of claim 3, wherein the first contact surface ring and the second contact surface ring are geometric sections of the body (see above).
29. The system of claim 15, wherein the first contact surface ring and the second contact surface ring are geometric sections of the exoskeleton (see above).
30.The cradle of claim 26, wherein the first contact surface element and the second contact surface element are geometric sections of the cradle body (see above).
31. The exoskeleton of claim 1, wherein the surface is a substantially planar surface (see annotated image above with surface included).
32. The system of claim 15, wherein the surface is a substantially planar surface (see annotated image above with surface included).
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) 12 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR ‘193, alone. While KR ‘193 does not disclose how the first and second halves of the body are assembled, the examiner notes that claims 12 and 23 are product by process claims and have been treated accordingly. Examiner refers to MPEP 2113 Product-by-Process Claims, wherein it is explained that determination of patentability is based on the product itself, and does not depend on its method of production.
Whether the body of KR’193 is assembled by mating molds, riveting, adhesive, or other method, the end product is still capable of receiving a fall arrester and the function is not disturbed. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to assemble the first and second halves of the body with whichever assembly method is available and opted for at the time of production.
2113 Product-by-Process Claims [R-01.2024]
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I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
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"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020) ("Biogen is certainly correct that the scope of composition and method of treatment claims is generally subject to distinctly different analyses. But where, as here, the novelty of the method of administration rests wholly on the novelty of the composition administered, which in turn rests on the novelty of the source limitation, the Amgen analysis will necessarily result in the same conclusion on anticipation for both forms of claims."); United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ("a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim").
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding "interbonded by interfusion" to limit structure of the claimed composite and noting that terms such as "welded," "intermixed," "ground in place," "press fitted," and "etched" are capable of construction as structural limitations). See also In re Nordt Dev. Co., 881 F.3d 1371,1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir. 2018)(holding "the specification demonstrates that ‘injected molded’ connotes an integral structure," and discussing several cases since Garnero that held "limitations to convey structure even when they also describe a process of manufacture").
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR ‘193 in view of Auston et al. (US 2019/0076679).
KR ‘193 discloses:
14. An exoskeleton for a retractable fall arrester (see below), the exoskeleton comprising:
a first half (cylindrical portion of 40) connected to a second half (conical portion of 40);
a first ring having a first diameter (see below);
a second ring having a second diameter (see below), wherein the second diameter is different from the first diameter (see below);
a first end defining a first aperture (opening at one end of 40); and
a second end defining a second aperture (opening at opposing end),
wherein the first ring and the second ring have a circular cross-section (when sliced/transected creating ring-shaped slices)
wherein the first half and the second half form a body (40), wherein the first ring and the second ring are connected to the body (see below);
wherein the exoskeleton is configured for the first ring and the second ring to roll on a surface when the retractable fall arrestor is in use (capable of; when the body is positioned angled on its side [additional figure inserted below] such that the two contact rings are contacting a surface; note how the first contact ring protrudes outward from the body, which would elevate the conical portion up from the surface, allowing for the two contact rings to roll on a surface; see further remarks in Response to Arguments).
wherein the body is configured to hold a retractable fall arrester that comprises a connector (60) for connecting the retractable fall arrester to a structural anchor (via connecting components), wherein the retractable fall arrester further comprises a lifeline (70); and
wherein the first aperture is configured to receive the connector (60) which connects to the structural anchor (via connecting components);
wherein the second aperture is configured for receiving the lifeline (70, see below).
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KR ‘193 does not disclose wherein at least a portion of first contact surface and second contact surface comprise a shock absorbing material, or wherein the exoskeleton comprises a resilient plastic material
However, Auston et al. teach:
wherein at least a portion of first contact surface and second contact surface comprise a shock absorbing material ([0068]); and wherein the exoskeleton comprises a resilient plastic material ([0068]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the exoskeleton of KR ‘193 of a resilient plastic shock absorbing material, as taught by Auston et al. so as to provide protection exoskeleton during routine use, where it may inadvertently bang against surfaces from which it is supported, the resilient plastic shock absorbing material, adding to the durability of the apparatus.
Claim(s) 11, 13, 22 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR ‘193 as applied to claims 3, 8, 15 and 19 above, and further in view of Auston et al. el. (US 2019/0076679).
KR ‘193 does not disclose wherein at least a portion of first contact surface and second contact surface comprise a shock absorbing material, or wherein the exoskeleton comprises a resilient plastic material
However, Auston et al. teach:
11 & 22. The exoskeleton of claim 8 & 19, wherein at least a portion of first contact surface and second contact surface comprise a shock absorbing material ([0068]); and
13 & 25. The exoskeleton of claim 3 & 15, wherein the exoskeleton comprises a resilient plastic material ([0068]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the exoskeleton of KR ‘193 of a resilient plastic shock absorbing material, as taught by Auston et al. so as to provide protection exoskeleton during routine use, where it may inadvertently bang against surfaces from which it is supported, the resilient plastic shock absorbing material, adding to the durability of the apparatus.
Response to Arguments
Applicant's arguments filed December 23, 2025 have been fully considered but they are not persuasive.
Applicant first argues that element 40 of primary reference KR ‘193 is disclosed as a “cover” or “casing” and that it is never disclosed that the casing functions as an exoskeleton, as opposed to merely covering or encasing the fall arrest device. This argument is not found persuasive for at least the following reasons. First of all, a cover can be an exoskeleton, just as a casing can be an exoskeleton, just as an exoskeleton can be a cover, or encasing, or a housing. One element can be identified by many different names, and sometimes provide multiple functions as well. The cover/casing 40 of capital KR’ 193 not be identified by the name “exoskeleton” in reference, but it does perform the same function as it provides an outer protective shell, or cage of sorts, for a fall arrest system positioned within. Applicant argues that the prior art functions for “merely covering or encasing the fall arrest device.” This is not persuasive as the fact that a casing covers and encases something does not prevent it from also being something else, for example an exoskeleton. Applicant’s own “exoskeleton” also acts as a cover for casing, but that doesn’t preclude it from also being exoskeleton, or housing or cage, or protective body, etc. etc.
Applicant next argues that the primary reference Kr ‘193 never discloses the narrow end of element 40 as making contact with any surface. Examiner notes that this was discussed in the interview with applicant’s representative on December 16, 2025. In the interview, which was a videoconference with shared screens, the examiner explained how the first and second surface contact rings of 40, as identified above, would be in contact with a surface. An image similar to the one below was shared and discussed at the time. Examiner noted at the time of the interview, that the claim language then (and still) is only claiming the apparatus “configured to”, and that the structure of the prior art would allow for the contact rings to roll on a surface as claimed, if/when in an orientation is that depicted below. It is also be noted that at least claims 1 & 3 only claim that the surface contact rings “be in contact with a surface”, which is much broader than what the applicant appears to be arguing against. As noted in the rejections of claims 1 & 3 above, “a surface” could even be the surface of body 40.
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Applicant’s remarks are focused heavily on intended use and the assumption that the prior art could, or would, only be able to be used in one orientation and on specific surfaces. Again, it appears the applicant is arguing a narrower interpretation of the claim language than that actually presented by the claimed limitations.
For at least these reasons applicant’s remarks are not found persuasive in the claims remain rejected as advanced 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 COLLEEN M CHAVCHAVADZE whose telephone number is (571)272-6289. The examiner can normally be reached M-F 8:00AM-4:00PM.
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, Daniel Cahn can be reached at 571-270-5616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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COLLEEN M. CHAVCHAVADZE
Primary Examiner
Art Unit 3634
/COLLEEN M CHAVCHAVADZE/ Primary Examiner, Art Unit 3634
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