Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This office action is in response to applicant’s reply filed on December 17, 2025.
Claims 21-23 have been elected.
Information Disclosure Statement
As required by M.P.E.P. 609(C), the applicant’s submission of the Information Disclosure Statement dated September 18, 2024 is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending. As required by M.P.E.P 609, a copy of the PTOL-1449 initialed and dated by the examiner is attached to the office action.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a control module configured for in claim 21, said control module configured for in claim 22, and control module configured for in claim 23.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification states a control module is implemented in hardware (e.g., device module comprising a processor); see [0007] and [0087].
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 22 and 23 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 22, the claim recites “maintaining the orientation during commanding”. It is unclear if the orientation recited refers to an original orientation of the prosthetic (i.e., measured prior to evaluation) or orientation after evaluation (i.e., adjusted orientation). As such, the claim is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite. For the purposes of examination the limitation is interpreted as “maintaining an assessed orientation during commanding”.
Regarding claim 23, the claim depends on parent claim 22 and does not address indefiniteness issue presented in the parent claim. As such, the claim is similarly rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 11666462B2 (hereinafter referred to as “the reference patent 1”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 21 under examination are anticipated by claims 1 and 3 of the reference patent 1.
Regarding claim 21, reference patent 1 recites:
Prosthetic having an orientation comprising a control module configured for (A prosthetic device having ... a control module ... the control module configured to perform)(claim 1):
receiving a signal that is indicative of a commanded direction of movement (receiving at least one orientation signal ... indicative of a commanded direction of movement)(claim 1);
evaluating whether said prosthetic can move in the commanded direction with the orientation (evaluating whether the prosthetic device may move in the commanded direction while maintaining a current angle of rotation)(claim 1; the examiner notes an angle is a type of orientation),;
if the prosthetic cannot move in the commanded direction with the orientation then adjusting the orientation to enable moving in the commanded direction (adjusting the angle of rotation of the prosthetic device if the prosthetic device cannot move in the commanded direction with the current angle)(claim 3); and
commanding said prosthetic to move in the commanded direction (commanding ... the prosthetic device in the commanded direction)(claim 1).
As shown in the mapping above, claims 1 and 3 of the reference patent 1 includes all the limitations of claim 21 of the instant application, while also reciting further limitations. As such, claims 1 and 3 of the reference patent 1 anticipates claim 21 of the instant application.
Claims 22 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 4 of the reference patent 1 in view of Paasivaara et al. (US20030125814A1).
Regarding claim 22, claims 1 and 3 of the reference patent 1 does not recite maintaining an assessed orientation (i.e., angle) during the commanding (i.e., movement). However, maintaining an assessed angle during movement is taught by Paasivaara (FIG. 5 shows an upper arm part 7 attached to the body ... the upper arm part is moved forward from a predetermined position (extension of the arm), in which a forearm part 8 lying ... horizontal or at a predetermined angle in relation to the horizontal plane ... position being detectable with a corresponding sensor 5 in this part 8)([0035]; Figure 5 – maintaining a horizonal position during a forward movement is shown).
It would have been obvious to person of ordinary skill in the art before the effective filling date of the claimed invention to maintain an assessed angle during movement, as disclosed by Paasivaara, within claim 22 of the reference patent 1 to enable partial movement of limbs. This would allow for a prosthetic to mimic a function of an upper limb (The invention can also be applied in a support device replacing the existence or function of an upper limb)([0035]).
Regarding claim 23, reference patent 1 in view of Paasivaara recites:
Prosthetic of claim 22 wherein said control module is configured for adjusting the orientation in accordance with a position limiting boundary (reference patent 1 - the control module adjusts the angle of rotation of the prosthetic device in accordance with the joint limits of the plurality of actuators)(claim 4; the examiner notes joint limits are a type of position limiting boundary).
Claims 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 10369022B2 (hereinafter referred to as “the reference patent 2”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 21 under examination are anticipated by claims 1 and 3 of the reference patent 2.
Regarding claim 21, reference patent 1 recites:
Prosthetic having an orientation comprising a control module configured for (An arm prosthetic device having ... a control module for commanding ... the control module configured to perform operations)(claim 1):
receiving a signal that is indicative of a commanded direction of movement (receiving at least one orientation signal ... indicative of a commanded direction of movement)(claim 1);
evaluating whether said prosthetic can move in the commanded direction with the orientation (evaluating whether the prosthetic device may move in the commanded direction based on a current angle of rotation)(claim 1; the examiner notes an angle is a type of orientation),;
if the prosthetic cannot move in the commanded direction with the orientation then adjusting the orientation to enable moving in the commanded direction (adjusting the angle of rotation of the prosthetic device if the prosthetic device cannot move in the commanded direction based on the current angle of rotation)(claim 3); and
commanding said prosthetic to move in the commanded direction (commanding ... the prosthetic device in the commanded direction)(claim 1).
As shown in the mapping above, claims 1 and 3 of the reference patent 2 includes all the limitations of claim 21 of the instant application, while also reciting further limitations. As such, claims 1 and 3 of the reference patent 2 anticipates claim 21 of the instant application.
Claims 22 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 4 of the reference patent 2 in view of Paasivaara.
Regarding claim 22, claims 1 and 3 of the reference patent 2 does not recite maintaining an assessed orientation (i.e., angle) during the commanding (i.e., movement). However, maintaining an assessed angle during movement is taught by Paasivaara (FIG. 5 shows an upper arm part 7 attached to the body ... the upper arm part is moved forward from a predetermined position (extension of the arm), in which a forearm part 8 lying ... horizontal or at a predetermined angle in relation to the horizontal plane ... position being detectable with a corresponding sensor 5 in this part 8)([0035]; Figure 5 – maintaining a horizonal position during a forward movement is shown).
It would have been obvious to person of ordinary skill in the art before the effective filling date of the claimed invention to maintain an assessed angle during movement, as disclosed by Paasivaara, within claim 22 of the reference patent 2 to enable partial movement of limbs. This would allow for a prosthetic to mimic a function of an upper limb (The invention can also be applied in a support device replacing the existence or function of an upper limb)([0035]).
Regarding claim 23, reference patent 2 in view of Paasivaara recites:
Prosthetic of claim 22 wherein said control module is configured for adjusting the orientation in accordance with a position limiting boundary (reference patent 2 - the control module adjusts the angle of rotation of the prosthetic device in accordance with the joint limits of the plurality of actuators)(claim 4; the examiner notes joint limits are a type of position limiting boundary).
Allowable Subject Matter
Claim 21 would be allowable if the double patenting rejections are overcome.
Claims 22-23 would be allowable if the double patenting and 35 U.S.C. 112 rejections are overcome.
The following is an examiner’s statement of reasons for allowance:
Prior art Jónsson et al. (US20060135883A1) discloses processing prosthetic limb motion including evaluating certainty of motion (see Figures 3 and 4), Petrofsky et al. (US5888212) discloses controlling prosthetic movement based on feedback (see Figures 15 and 22), Van Der Merwe et al. (WO2010120403A2) discloses altering prosthetic control based on limits (see Figure 27 and [0171-0178]), Clausen et al. (US7637959B2) discloses adjusting orientation of a prosthetic during movement (see Figures 9 and 11), and Ragnarsdottlr et al. (US20070050047A1) discloses adjusting a prosthetic based on surroundings (see Figures 10 and 22).
However none of the prior art teach “evaluating whether a prosthetic can move in a commanded direction with an orientation”, “adjusting the orientation when the prosthetic can not move in the commanded direction”, and “commanding the prosthetic to move in the commanded direction” as recited in claim 21. As such, claim 21 along with dependent claims 22-23 would be allowable if the rejections set forth are overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yongjia Pan whose telephone number is (571)270-1177. The examiner can normally be reached Monday - Friday, 9:00 AM - 5:00 PM EST.
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, Scott Baderman can be reached at 571-272-3644. 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.
/YONGJIA PAN/Primary Examiner, Art Unit 2118