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 .
Claim Objections
Claims 3-9, 17 are objected to because of the following informalities:
Claim 3 is objected to for referring to “measurements” with improper antecedent basis.
Claim 4 is objected to for referring to “the first portion” with improper antecedent basis.
Claim 5 is objected to for referring to “the first set”, “the plurality of sensors”, “measurements”, and “the first portion” with improper antecedent basis.
Claim 6 is objected to for referring to “the first set” and “the plurality of sensors” with improper antecedent basis.
Claim 7 is objected to for referring to “measurements” with improper antecedent basis.
Claim 8 is objected to for referring to “the second set” with improper antecedent basis.
Claim 9 is objected to for referring to “measurements” with improper antecedent basis.
Claim 17 is objected to for referring to “measurements” multiple times with improper antecedent basis.
Appropriate correction is required.
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.
Claims 3, 5, 7, 9, 17 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 pre-AIA the applicant regards as the invention.
Claim 3 is indefinite for referring to “a low-power mode of energy consumption”, but it is unclear what Applicant believes to be “low-power mode”. The specification does not appear to elaborate on what would be considered to be low power, as opposed to for example, not low power, or high power. Without understanding where the boundaries of the claim are, the claim is indefinite.
Claim 5 is indefinite for referring to a “low-resolution sampling rate” for similar reasons as claim 3. It is unclear to the Examiner what Applicant considers to be a “low-resolution” sampling rate, as opposed to, for example, a high-resolution sampling rate or a non-low-resolution sampling rate. The specification does not provide any guidance regarding this term, meaning the Examiner is unclear where the boundaries are.
Claim 7 is indefinite for referring to “a high-power mode” for the same reasons as claim 3.
Claim 9 is indefinite for referring to a “high-resolution sampling rate” for the same reasons as claim 5.
Claim 17 is indefinite for referring to a “low-resolution sampling rate” and a “high-resolution sampling rate” for the same reasons as claim 5.
Remaining claims are rejected for depending on a rejected claim.
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-4, 6-8, 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Donofrio et al. (US 20070179739 A1) hereinafter known as Donofrio in view of Robertson et al. (US 20100312188 A1) hereinafter known as Robertson.
Regarding claim 1 Donofrio discloses a hip prosthesis (Figure 1 item 30) for implanting in a hip of a host (Figure 1), the prosthesis comprising:
a femoral component comprising a femoral stem and a femoral head ([0002] hip prosthesis has a femoral head and stem; Figure 2a items 34, 36), where a receptacle is located within the stem ([0054] a pedometer 100 is disposed within the femoral stem 36 of the implant, indicating the presence of a receptacle for the pedometer where it sits),
and an implantable reporting processor disposed in the receptacle which comprises:
at least one sensor ([0042] sensor 110) configured to monitor host activity (This is stated as an “intended use” of the claimed device. The applicant is advised that a recitation of the intended use of an invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02 (II). In this case, the patented structure of Donofrio was considered capable of performing the cited intended use. See, for example the Abstract: measuring the amount of joint use.) by making measurements (The applicant is advised that, while the features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In addition, it has been held by the courts that apparatus claims cover what a device is, not what a device does. See MPEP 2144 (I). In this case, the patented apparatus of Donofrio discloses (as detailed above) all the structural limitations required to perform the recited functional language, therefore was considered to anticipate the claimed apparatus. See, for example [0043] sensors can detect acoustic waves, vibrations, loads, impedance, motion, and movement), and a memory configured to store the measurements ([0053] the pedometer has a memory to store data; see also [0068], [0073], etc.),
a radio circuit ([0078]) and an antenna (see Donofrio claim 89) configured to transmit the measurements to a location outside of the host (this functional limitation is met by the radio circuit of Donofrio. See for example [0006]),
and a battery disposed in the receptacle ([0042], [0047]) and coupled to the processor, wherein the battery provides energy to the processor ([0042]),
but is silent with regards to the sensor being activated to make the measurements from a processing circuit, based on an energy consumption profile that specifies a plurality of different time periods, and a different respective maximum energy consumption for each of the plurality of different time periods.
However, regarding claim 1, Robertson teaches a processing circuit configured to activate a sensor to make measurements ([0057] the receiver has sensing abilities) based on an energy consumption profile that specifies a plurality of different time periods and a different respective maximum energy consumption for each of the time periods ([0051]-[0052] cycling between an active state and an inactive state, with the active state having a higher maximum energy consumption than the inactive state). Donofrio and Robertson are involved in the same field of endeavor, namely implantable sensors. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the hip of Donofrio by having an energy conscious processing circuit as is taught by Robertson in order to provide a mechanism for the prosthesis, sensor, and process to conserve power, thus extending the amount of time a user can go between charging the battery and making the prosthesis easier to use.
Regarding claim 2 the Donofrio Robertson Combination teaches the hip prosthesis of claim 1 substantially as is claimed,
but is silent with regards to a summation of maximum energy consumptions not exceeding a total energy the battery is able to provide the processor.
However, regarding claim 2 Donofrio teaches that the summation of amount of data storage of the prosthesis not exceed the total amount of data storage the prosthesis has ([0073]). While different from energy, the person of ordinary skill in the art at the time the invention was filed would have understood the principle applies to all parts of the invention, with the amount of power being used not exceeding the amount of power available, amount of data stored not exceed the amount of data space available, etc. Such a concept is considered to be a basic engineering principle, to ensure the device functions as expected without operational errors, dying, not saving information, etc.
Regarding claim 3 the Donofrio Robertson Combination teaches the hip prosthesis of claim 1 substantially as is claimed,
wherein Robertson further teaches one of the different time periods comprises a first portion during which the circuit activates the sensor to make measurements in a low-power mode of energy consumption ([0052] the idle/inactive state performs minimal functions to minimize or stop current draw; [0054], [0057] the receiver includes a sensor and so its active functions include data collection (and so in an inactive or idle state it ceases the data collection)).
Regarding claim 4 the Donofrio Robertson Combination teaches the hip prosthesis of claim 1 substantially as is claimed,
wherein Donofrio further discloses the at least one sensor includes a plurality of sensors ([0088]),
and wherein the Combination teaches the processing circuit is configured to activate a first set of the sensors during [a] first portion (Robertson teaches the processing circuit can activate the sensor ([0051]), which is understood to be capable of occurring during a “first portion”, for example, in an active high-power state).
Regarding claim 6 the Donofrio Robertson Combination teaches the hip prosthesis of claim 2 substantially as is claimed,
wherein Donofrio further discloses the first set of the plurality of sensors comprises at least one accelerometer ([0088]).
Regarding claim 7 the Donofrio Robertson Combination teaches the hip prosthesis of claim 1 substantially as is claimed,
wherein Robertson further teaches one of the different time periods comprises a second portion during which the circuit actives the sensor to make measurements in a high-power mode of energy consumption ([0051] the active, high-powered state; [0052], [0054], [0057] the receiver includes sensor capabilities and data collection in the high-powered state).
Regarding claim 8 the Donofrio Robertson Combination teaches the hip prosthesis of claim 7 substantially as is claimed,
wherein Donofrio further discloses the sensor comprises a plurality of sensors ([0088]) and
wherein the Combination further teaches the processing circuit is configured to activate a “second set” of the plurality of sensors during [a] second portion (Robertson [0051]-[0052], [0054], [0057] the receiver and its sensors are powered on in a high-power active moved, where the sensors acquire physiological data in that mode).
Regarding claim 10 the Donofrio Robertson Combination teaches the hip prosthesis of claim 8 substantially as is claimed,
wherein Donofrio further discloses the second set of the plurality of sensors comprises at least one accelerometer and at least one gyroscope ([0088]).
Regarding claim 11 the Donofrio Robertson Combination teaches the hip prosthesis of claim 1 substantially as is claimed,
wherein the Combination further teaches the processor further comprises a timing circuit configured to activate the processing circuit based on a first schedule (Robertson [0051] teaches the cycle between active and inactive states can be a cyclical, time-dependent one) and activates the radio circuit based on a second schedule different from the first schedule (Donofrio [0073] discloses that the transfer of data from the pedometer’s memory can occur at intervals not related to the data collection, including at specific hours, days, weeks, or months.).
Regarding claim 12 the Donofrio Robertson Combination teaches the hip prosthesis of claim 11 substantially as is claimed,
wherein the Combination further teaches the first schedule includes a number of times of activation of the processing circuit that is greater than the number of times of activation of the radio circuit (Robertyson [0051] indicates that the data collection can occur on the order of every 5-20 seconds, for example, and Donofrio [0073] discloses that the transmission of data to the external receiver can be on the order of, for example hours, days, weeks, or months, which is larger than every 5-20 seconds.).
Regarding claim 13 the Donofrio Robertson Combination teaches the hip prosthesis of claim 1 substantially as is claimed,
wherein Robertson further teaches the plurality of different time periods comprises two time period ([0051] the switch between the active and inactive states can be triggered by an applied stimulus or physiological parameters, or in response to user instructions, which indicates at least the presence of a first time period where the state is in an active/inactive state, and a second time period after the stimulus/trigger),
but is silent with regards to whether or not the second time period is greater than the first.
However, the person of ordinary skill in the art at the time the invention was filed would have found it obvious for the second time period to be greater than the first time period, since when the time periods are based on a user input or physiological stimulus in order to trigger the switch, the person of ordinary skill would understand the obviousness of these time periods being at least slightly, more likely very, different.
Regarding claim 14 the Donofrio Robertson Combination teaches the hip prosthesis of claim 13 substantially as is claimed,
but is silent with regards to the first time period being at least one month.
However, regarding claim 14 the person of ordinary skill to have the first time period be any amount of time, including at least one month, since it would be obvious to have the device in a high power mode and collect data for any amount of time.
Claim 5 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Donofrio and Robertson as is applied above in view of McCracken (US 4161782 A).
Regarding claim 5 the Donofrio Robertson Combination teaches the hip prosthesis of claim 2 substantially as is claimed,
but is silent with regards to a first set of the plurality of sensors being configured to make measurements at a low-resolution sampling rate during the first portion.
However, regarding claim 5 McCracken teaches sensors in a lower power mode can make measurements at a low-resolution sampling rate (Column 6 lines 23-31). Donofrio and McCracken are involved in the same field of endeavor, namely powered sensors. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the sampling rate of the power-saving sensors of the Donofrio Robertson Combinatoin so that they operate with a low-resolution sampling rate to save power as is taught by McCracken in order to ensure the prosthesis is able to conserve power, thus increasing the amount of time a user has between charges and thus making the prosthesis less annoying.
Regarding claim 9 the Donofrio Robertson Combination teaches the hip prosthesis of claim 8 substantially as is claimed,
but is silent with regards to the second set of sensors being configured to make measurements at a high-resolution sampling rate during the second portion.
However, regarding claim 9 McCracken teaches sensors with variable power conservation states should have equally varying sample rate resolution, indicating a higher-resolution sampling rate at a high power usage time (Column 6 lines 23-31). Donofrio and McCracken are involved in the same field of endeavor, namely powered sensors. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the sampling rate of the power-saving sensors of the Donfrio Robertson Combination so that they use a lower resolution sampling rate when conserving power and a higher resolution sampling rate when using power in order to conserve power with a cyclical switch between sampling rates, thus increasing the amount of time a user has between charges and thus making the prosthesis less annoying.
No Prior Art Applied
Regarding claim 15 the Donofrio Robertson Combination teaches the hip prosthesis of claim 13 substantially as is claimed,
wherein Robertson further teaches the plurality of different time periods further comprises a third time period ([0051] the time periods cycle between active and inactive, indicating a first time period can be active, a second time period can be active.
However, the prior art fails to teach there being a third time period that has a different maximum energy consumption allowance than that of the first and second time periods. While prior art exists that discusses multiple timer periods (e.g. Robertson [0051] teaches at least three time periods, as it cycles between periods one, to two, and back; or alternatively Corndorf et al. (US 8145320 B2) who teaches waking a sensor up a various intervales, at least at three different times (abstract, Figures 3a-c), this is not considered to be the same as having three different maximum energy consumption phases, with the third time period phase being greater than both the first and second time periods.
Regarding claim 17 the Donofrio Robertson Combination teaches the hip prosthesis of claim 1 substantially as is claimed,
wherein Donofrio further discloses the sensor comprises a plurality of sensors ([0088]),
at least one of the plurality of different time periods comprises a first portion and a second portion (this is considered inherent).
However, the prior art fails to teach the processing circuit being configured to activate a first set of the sensors during the first portion to make measurements at a low-resolution sampling rate, and activate a second set of the plurality of sensors during the second portion to make measurements at a high-resolution sampling rate.
While the prior art teaches activating different sets of sensors within different time periods (Donofrio [0088] teaches a plurality of sensors, which indicates the presence of multiple “sets”, which are all activated during any and all time periods, and teaches power conservation techniques to activate a sensor during a high-power consumption time period (Robertson [0051]), and also teaches how high-sampling rates are desirably used during high power consumption times (McCracken Column 6 lines 23-31), the prior art fails to teach activation of both sets of sensors at different (e.g. high and low) sampling rates during the same time period. The prior art is understood only to teach/make obvious the activation of the sensors at different sampling rates at time periods that have different power consumption requirements.
Allowable Subject Matter
Claims 15-16 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jacqueline Woznicki whose telephone number is (571)270-5603. The examiner can normally be reached M-Th 10am-6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerrah Edwards can be reached on 408-918-7557. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jacqueline Woznicki/Primary Examiner, Art Unit 3774 06/30/26
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