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.
Specification
The title of the invention is not descriptive of the claimed invention. In particular, the claimed invention is directed to “a tactile feedback system for a prosthetic arm apparatus,” while the title of the application is “arm prosthetic device.” A new title is required that is clearly indicative of the invention to which the claims are directed.
Applicant is reminded of the proper content of an abstract of the disclosure. A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length. See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the content fails to meet the abovementioned criteria or reflect the claimed invention. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.
The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting directly or indirectly from an international application filed before November 29, 2000. Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)).
Claims 1-3 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Grold et al. U.S. publication no. 2005/0184878 A1 (“Grold”).
Regarding claims 1-3, Grold discloses a tactile feedback system fully capable of use for or with a prosthetic arm apparatus, the system comprising: a tactile feedback sensor (e.g., see at least paragraph [0025]); and a feedback actuator that is a vibration motor (e.g., see at least paragraph [0011]); wherein the tactile feedback sensor senses force information (paragraph [0007], etc.), relays the force information to a feedback actuator, and the feedback actuator communicates the feedback information to a user (e.g., see at least abstract, etc.). Grold further teaches the sensor, controller and feedback generator may be incorporated and accommodated within a person’s shoe with the feedback generator including feedback vibrations (e.g., see at least paragraph [0011] ).
Claims 1-3 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Sears et al. U.S. publication no. 2005/0192676 A1 (“Sears”).
Regarding claims 1 and 2, Sears discloses a tactile feedback system for a prosthetic arm apparatus (e.g., see at least paragraph [0019]), comprising: a tactile feedback sensor (e.g., figures 1-5; paragraphs [0020], [0023]-[0027], etc.); and a feedback actuator that is a vibration motor (e.g., figures 1-5; paragraphs [0027], [0029], [0031]-[0032], [0035], etc.); wherein the tactile feedback sensor (figures 1-5) senses force information, relays the force information to the feedback actuator (figures 1-5), and the feedback actuator communicates the feedback information to a user (e.g., see at least figures; and paragraphs [0019]-[0035], etc.).
Regarding claim 3, Sears discloses the feedback actuator is [operably, even if not physically, and/or based on a delineation of what is considered or named to be included in a so-called ‘prosthetic controller’] ‘incorporated’ into a prosthetic controller (e.g., see at least figures 3 and 5).
Claims 1-3 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Colgate et al. U.S. publication no. 2008/0200994 A1 (“Colgate”).
Regarding claims 1 and 2, Colgate discloses a tactile feedback system (including at least 121, 122, 123) for a prosthetic arm apparatus (120), comprising: a tactile feedback sensor (121; figures 1a and 1c; paragraphs [0031] and [0033]); and a feedback actuator (123) that is a vibration motor (e.g., see at least figures 1a and 1c; and paragraphs [0031] and [0041], etc.); wherein the tactile feedback sensor (121) senses force information (see at least paragraphs [0009], [0031] and [0033]-[0036], etc.), relays [vi at least signal processing 122] the force information to the feedback actuator (123), and the feedback actuator (123)communicates the feedback information to a user (e.g., see at least figures 1; and paragraphs [0031]-[0035], etc.).
Regarding claim 3, Colgate discloses the feedback actuator is [at least one of operably and physically] incorporated into a prosthetic controller (see at least paragraph [0034]).
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
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