DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Response to Arguments
Applicant’s arguments, see amendment and remarks, filed April 29, 2026, with respect to objections to the title and abstract have been fully considered and are persuasive. The objection of the specification has been withdrawn.
Applicant’s arguments, see amendment and remarks, filed April 29, 2026, with respect to the rejection of claims 1-2 under 35 U.S.C. 112(b) or (e) as being anticipated by each of Grold et al. U.S. publication no. 2005/0184878 (“Grold”); Sears et al. U.S. publication no. 2005/0192676 (“Sears”); and Colgate et al. U.S. publication no. 2008/0200994 (“Colgate”) have been fully considered and are persuasive. Therefore, the anticipation rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of additional prior art and/or considerations. In particular, prior art to Grold and Sears fails to teach the newly claimed features of first and second sensors and corresponding first and second actuators that describe the disclosed (see Applicant’s filed specification at paragraph [0116] of publication of Application) “multiple tactile feedback sensors 296 and actuators 298 [that] provide a more sophisticated tactile feedback of the strength of the grip.” However, Colgate discloses, teaches and/or fairly suggests multiple tactile feedback sensors and actuators 136, 138 [that] provide a more sophisticated tactile feedback of the strength of the grip (e.g., see at least paragraphs [0031], [0034]-[0035] and [0039]-[0041]; and figures 1c, 3a-b, 6a-6b and 7; etc.) including at least first and second sensors (i.e., “detectors”), wherein a first actuator (i.e., “motor”) is configured to respond to the first sensor and generate a first response, and wherein a second actuator (i.e., “motor” is configured to respond to the second sensor and generate a second response (e.g., see at least paragraphs [0031], [0034]-[0035] and [0039]-[0041]; and figures 1c, 3a-b, 6a-6b and 7; etc.). However, Colgate fails to specifically state that the disclosed “fingertip” includes a “thumb” substantially as claimed. However, this is well-known in the art as is shown by the identified secondary reference. The detailed rejection under 35 U.S.C. 103(a) is found hereinbelow.
Applicant failed to either file a terminal disclaimer or particularly point out any supposed errors with respect to the non-statutory double patenting rejection. The non-statutory double patenting rejection is herein maintained.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-7 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Colgate et al. U.S. publication no. 2008/0200994 (“Colgate”) in view of Kuiken et al. U.S. publication no. 2007/0038311 A1 (“Kuiken”).
Regarding claim 1, Colgate discloses a system for providing feedback from a prosthetic hand having a thumb and a finger (figure 1a), comprising: a first sensor (including at least a portion of “detector” 121 or the like including at least one force sensor 132 and at least one accelerometer 134) mounted on a fingertip (e.g., see at least paragraphs [0031], [0033] and [0038]; and figure 1a, etc.); a second sensor (including at least a portion of “detector” 121 or the like including at least one force sensor 132 and at least one accelerometer 134) mounted on a fingertip (e.g., see at least paragraphs [0031], [0033] and [0038]; and figure 1a, etc.); a first actuator (at least one of at least two motors 136, 138; seq.) configured for: responding to said first sensor and generating a first response; and communicating a first feedback based on the first response (e.g., see at least paragraphs [0031], [0034]-[0035] and [0039]-[0041]; and figures 1c, 3a-b, 6a-6b and 7; etc.); and a second actuator configured for: responding to said second sensor generating a second response; and communicating a second feedback based on the second response (e.g., see at least paragraphs [0031], [0034]-[0035] and [0039]-[0041]; and figures 1c, 3a-b, 6a-6b and 7; etc.); wherein said first actuator (at least one of at least two motors 136, 138; seq.) is remote from said first sensor (including at least a portion of “detector” 121 or the like including at least one force sensor 132 and at least one accelerometer 134) and/or said second actuator (at least one of at least two motors 136, 138; seq.) is remote from said second sensor (including at least a portion of “detector” 121 or the like including at least one force sensor 132 and at least one accelerometer 134) (e.g., see at least figure 1a).
Colgate is silent regarding the first finger tip of the first sensor is a tip of a thumb. In the same field of endeavor, namely prosthetic hand devices, Kuiken teaches including a sensor in a thumb pad of a prosthetic hand in order to obtain desirable grasping information for feedback to a patient (e.g., see at least figures 1, 2, 8 and 9; and paragraphs [0021]-[0022], [0052], etc.).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to include the detector of Colgate on a thumb pad (a.k.a. a location “oriented inwardly of the thumb” in order to obtain desirable force or grip information for feedback to the user, as taught and/or suggested by Kuiken with predictable results and a reasonable expectation of success.
Regarding claim 2, Colgate discloses one or both of the first actuator and second actuator comprises a vibration motor (e.g., see at least figures 1a and 1c; and paragraphs [0031] and [0041], etc.).
Regarding claim 3, Colgate discloses one or both of the first actuator and the second actuator is [at least one of operably and physically] incorporated into a prosthetic controller (see at least paragraph [0034]).
Regarding claims 4 and 5, Colgate discloses the second sensor or oriented inwardly of the finger (e.g., see at least paragraph [0038]; and figures 1, 2b and 2c, etc.). Kuiken, as applied to the invention of Colgate above teaches the first sensor (thumb sensor) is oriented inwardly of the thumb (e.g., see at least figures 1, 2, 8 and 9; and paragraphs [0021]-[0022], [0052], etc.).
Regarding claims 6 and 7, Colgate discloses the first response corresponds to the amount of force experienced by the first sensor and the second response corresponds to the amount of force experienced by the second sensor (e.g., see at least paragraphs [0005]-[0006], [0009], [0031], [0033]-[0036], [0049]-[0051] and figure 7).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 9,114,028. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims are merely narrower than the present application claims. Species anticipates genus. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). See at least claims 8-10 and 13-15 of the patent that include all of the limitations [or narrower versions thereof] of the present application claims.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/433,840 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims are merely narrower than the present application claims. Species anticipates genus. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). See at least claims 1, 4, 16 and 17 of the reference application that include all of the limitations [or narrower versions thereof] of the present application claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 MARCIA LYNN WATKINS whose telephone number is (571)270-1456. The examiner can normally be reached Mon. & Tues. 3-8pm and Thurs. 12-6pm.
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/MARCIA L WATKINS/Primary Examiner, Art Unit 3774
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