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 .
Election/Restrictions
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/23/2026.
Applicant's election with traverse of claims 1-11, 21-22 in the reply filed on 4/23/2026 is acknowledged. The traversal is on the ground(s) that the groups are not patentably distinct from each other. This is not found persuasive because the search and/or examination burden is not limited exclusively to a prior art search but also includes that effort required to apply the art by making and discussing all appropriate grounds of rejection. Multiple inventions, such as those in the present application, normally require additional reference material and further discussion for each additional invention examined. Concurrent examination of multiple inventions would thus typically involve a significant burden even if all searches were coextensive. However, in the present application, the prior art search would not be coextensive.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim 21 is 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 21 recites the limitation "said top plate, said bottom plate". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 2 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than
an abstract idea. A streamlined analysis of claim 2 follows.
Regarding claim 2, the claim recites a system for evaluating mechanical properties of bone tissue. Thus, the claim is directed to a machine/apparatus, which is one of the statutory
categories of invention. The claim is then analyzed to determine whether it is directed to any judicial exception. The following limitations set forth a judicial exception:
"analyze said data to provide output corresponding to bone transverse bending stiffness."
These limitations describe a mathematical calculation. Furthermore, the limitations also describe a mental process as the skilled artisan is capable of performing the recited limitations and making a mental assessment thereafter. Examiner also notes that nothing from the claims suggest that the limitations cannot be practically performed by a human, or using simple pen/paper.
Next, the claim as a whole is analyzed to determine whether any element, or combination of elements, integrates the identified judicial exception into a practical application. For this part of the 101 analysis, the following additional limitations are considered:
"A system further comprising a processor, configured to receive vibration response data from said limb…".
These additional limitations do not integrate the judicial exception into a practical
application. Rather, the additional limitations are each recited at a high level of generality such that it amounts to insignificant extra-solution activity, e.g., mere data gathering steps necessary to perform the identified judicial exception do not integrate the claims into a practical application. See MPEP 2106.05(g).
The additional limitations also do not add significantly more to the identified judicial exception because they are recited at a high level of generality. Moreover, Examiner takes official notice that "a processor configured to receive…" is widely- understood, routine, and conventional.
Therefore, claims 2 is not patent eligible under 35 USC 101.
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) 1-3, 7, 10 is/are rejected under 35 U.S.C. 102(a(1)) as being anticipated by Bowman (US 20200245924)
Regarding Claim 1, Bowman discloses A system for evaluating mechanical properties of bone tissue, the system (abstract) comprising: a limb support (160) comprising a first, adjustable constraint for constraining a first location on said limb (paragraph 0104-0108) , and a second, adjustable constraint (140) for constraining a second location on said limb of a test subject (paragraph 0102-0104); a probe (54), configured to apply static and oscillatory forces over a range of frequencies to said limb (paragraph 0096-0097); an electromechanical actuator (52), positioned in an isolation subsystem (40) (paragraph 0096); wherein said probe (54) is in mechanical communication with said electromechanical actuator (52) (paragraph 0096-0097); and wherein said isolation subsystem (40) is configured to dampen transmission of vibrations from said electromechanical actuator (52) (paragraph 0081-0082).
Regarding Claim 2, Bowman discloses The system of claim 1 further comprising: a processor (30), configured to receive vibration response data from said limb and analyze said data to provide an output corresponding to bone transverse bending stiffness (paragraph 0090-0093).
Regarding Claim 3, Bowman discloses The system of claim 1 wherein: the second constraint (140) comprises a pair of padded bars (142) configured to secure an elbow therebetween (paragraph 0111).
Regarding Claim 7, Bowman discloses The system of claim 1 wherein: the electromechanical actuator and isolation subsystem are connected to a positioning apparatus capable of moving the electromechanical actuator and isolation subsystem throughout 3 dimensions (paragraph 0103).
Regarding Claim 10, Bowman discloses The system of claim 1 wherein: the probe is capable of applying static and oscillatory forces over a range of frequencies to the test subject at a number of different locations proximate to an ulna (paragraph 0093-0094).
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 (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 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 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.
Claim(s) 4, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bowman (US 20200245924).
Regarding Claim 4, Bowman discloses all of the claimed limitations except the first constraint comprises first and second clamps, the first clamp configured to be positioned proximate to the second clamp to secure a wrist of the test subject therebetween. Bowman fails to disclose or suggest that first constraint has clasps. However, Bowman teaches the use of the cradle mechanism to control the position of the wrist (paragraph 0059). To provide the device of Bowman with a clasp for the wrist would have been obvious to one of ordinary skill in the art in view of teachings of Bowman, since all the claimed elements are known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functioning and the combination would have yielded predictable results.
Regarding Claim 8, Bowman discloses all of the claimed limitations except The system of claim 4 further comprising: a threaded leadscrew, positioned below said first and second clamps, and configured to permit a distance between said first and second clamps to be varied. Bowman teaches using one or more screws to adjust the proximity of the “jaws” which retain the forearm position (paragraph 0111). To provide the device of Bowman using a threaded leadscrew to adjust the clasp distance for the wrist would have been obvious to one of ordinary skill in the art in view of teachings of Bowman, since all the claimed elements are known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functioning and the combination would have yielded predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YASMEEN S WARSI whose telephone number is (571)272-9942. The examiner can normally be reached Monday-Friday 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Valvis can be reached at 571-272-4233. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YASMEEN S WARSI/Examiner, Art Unit 3791
/MAY A ABOUELELA/Primary Examiner, Art Unit 3791
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