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 .
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 specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: there is lack of antecedent basis in the specification for the limitation(s) triggering 35 U.S.C. 112(a), new matter, rejection as described in detail hereinbelow.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 23 and 32-39 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The follow rejection relates to dependent claims 23 and 36. This is a continuing application. Claim limitations must find support in the originally filed disclosure of the parent application. Each of the independent claims of this application are directed to features of distinct embodiment of figure 14 because they require features of at least “an opening along a top surface of the orienting device, the opening being covered by the first structural part; and an opening along a bottom surface of the orienting device, the opening being covered by the second structural part,” which features are limited to the distinct embodiment of figure 14. Dependent claims 23 and 36 each recites the limitation “the interior surfaces of the orienting device have a shape that corresponds to contoured surfaces of the first and second structural parts.” Examiner is unable to find written description support in the original disclosure for any “interior surfaces” of the orienting device that are shaped to correspond with contoured surfaces of the first and second structural parts” as required by claim 23. While the spacer 401, but not spacer 402, appears to include top and bottom exterior surfaces that have a shape that corresponds to contoured surfaces of the first and second structural members (figure 14 of Applicant’s filed disclosure), this is not what is claimed. Rather, claim 21, upon which claim 23 depends, shows that “a hollow space [is] defined by interior surfaces of the orienting device.” Thus, the claim contains new matter.
This is a continuing application. Claim limitations must find support in the originally filed disclosure of the parent application. Independent claim 32 of this application is directed to features of distinct embodiment of figure 14 because it requires the features of “an opening along a top surface of the orienting device, the opening being covered by the first structural part; and an opening along a bottom surface of the orienting device, the opening being covered by the second structural part,” which features are limited to the distinct embodiment of figure 14. Examiner is unable to find written description support in Applicant’s originally filed disclosure for the embodiment of Figure 14 including multiple “interior surfaces” of the orienting device 4 [alone] “defining” a hollow space. The hollow space filled by adhesive 5 (see figure 14 replicated above) is defined by a combination of interior surfaces of the orienting device (4) and first and second structural members (10) (20), as required by dependent claim 21. Thus, recitation in new independent claim 32 of “a hollow space defined by interior surfaces of the orienting device” constitutes new matter. Claims 33-39 depend from independent claim 32.
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 19-39 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.
Claim 19 recites the limitation “the opening” in the second from the last line in the claim. However, two openings have been recited above. Namely the opening along the top surface (claim 19, line 5) and the opening along the bottom surface (claim 19, line 7). Thus, the term “the opening” in line 7 is indefinite. This rejection may be overcome by amending the claim to recite “the opening of the bottom surface”.
Claims 23 and 36 each recites the limitation “the interior surfaces” of the orienting device “corresponds to contoured surfaces of the first and second structural parts”. However, claim 21, upon which claim 23 depends when read in light of the guidance of the original disclosure (elected by original presentation to embodiment of figure 14) recites an interior surfaces of the orienting device in part helping to form the hollow space. Thus, when read in light of the original disclosure, it is unclear how the interior surfaces, forming the hollow space, are said to also correspond to contoured surfaces of the first and second structural parts substantially as claimed. The claim is indefinite. [See at least figure 14 and page 14 of the originally filed disclosure].
Claims 26 and 39 each recites the limitation “substantially completely”. However, the metes and bounds of the term “substantially” in the phrase “substantially completely” is not set forth in the specification in a manner to make the claim definite. The scope of the claim containing this term is unknown, making the claim indefinite.
Claim 27 depends directly from independent claim 19. Claim 27 recites the limitation “the hollow space” in line 3. There is lack of antecedent basis for this limitation in the claim. Moreover, the claimed “hollow space” is indefinite without knowing how such a space is structurally defined (e.g., as recited in dependent claim 21, which claim is not included in the dependency chain of claim 27).
Independent claim 32 recites the limitation “a hollow space defined by interior surfaces of the orienting device”. However, when read in light of the original disclosure (figure 14, see explanation above under 35 U.S.C. 112(a) rejection), it is unclear how the hollow space is “defined” only by interior surfaces of the orienting device, substantially as claimed. For example, it appears to also require interior surfaces of the structural members and a spacer in order to “define” the hollow space.
Claim Rejections - 35 USC § 102
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.
Claims 19-26, 28, 30 and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Daher et al. U.S. patent no. 4,091,472 (“Daher”).
Regarding claims 19-21, 28 and 32, Daher discloses an orthopedic component (figure 1) formed as a prosthetic foot or an orthotic component (figure 1), comprising: first (20) and second (21) structural parts comprising leaf springs (e.g., see at least figure 1; and col. 2, lines 58-64); and an orienting device (10) configured to orient the structural parts (20, 21) relative to each other (figure 1; col. 2, lines 31-33; and col. 2, line 65, through col. 3, line 3), the orienting device (10) comprising: a [blind] opening (22) along a top surface of the orienting device (figure 1; and col. 2, line 65, through col. 3, line 5), the [blind] opening (22) being covered by the first structural part (20) (e.g., figure 1; and col. 2, line 65, through col. 3, line 5); a [blind] opening (22) along a bottom surface of the orienting device (figure 1; and col. 2, line 65, through col. 3, line 5), the [blind] opening (22) being covered by the second structural part (22) (e.g., figure 1; and col. 2, line 65, through col. 3, line 5); and a hollow space (25- figure 1; and col. 3, line 5) defined by interior surfaces of the orienting device (10), the first structural part (20) and the second structural part (21) (e.g., figure 1).
Regarding claim 22, Daher discloses the orienting device (10) is adhesively bonded to the first and second structural parts (20, 21) with an adhesive (26) received in the hollow space (25) (e.g., see at least figure 1; col. 3, lines 4-17; and col. 4, lines 3-7).
As best understood regarding claim 23, Daher discloses the interior surfaces of the orienting device (10) have a shape that corresponds to contoured surfaces of the first and second structural parts (20, 21) (e.g., see at least figure 1).
Regarding claims 24 and 25, Daher discloses at least one of the first and second structural parts (20, 21) is attached to the orienting device (10) on one side by the adhesive (26) that comprises a resilient material (e.g., see at least figure 1; col. 3, lines 4-17; and col. 4, lines 3-7).
Regarding claim 26, Daher discloses the adhesive (26) substantially completely fills the hollow space (25) (e.g., see at least figure 1).
Regarding claim 30, Daher discloses the orienting device (10) comprises a functional component (e.g., see at least figure 1).
Claims 19-21 and 28-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Christensen WIPO publication no. 02/02034 A1.
Regarding claims 19-21, 28-30, 32 and 34, Christensen discloses an orthopedic component (10, seq.) formed as a prosthetic foot or orthotic component (e.g., figures 1, 3, 5 and 7), comprising: first (26, seq.) and second (14, seq.) structural parts (e.g., figures 1, 3, 5 and 7) formed as leaf springs comprising fiber-reinforced plastic components (e.g., see at least page 7, lines 1-6); and an orienting device (154, 158; seq.) comprising a functional component that is configured to orient the structural parts (26, 14) relative to each other (e.g., figures 1, 3, 5 and 7), the orienting device (154, 158; seq.) comprising: an opening along a top surface of the orienting device [formed by spacing of spacers 154, 158], the opening being covered by the first structural part (26) (e.g., figures 1, 3, 5 and 7); an opening along a bottom surface of the orienting device [formed by spacing of spacers 154, 158], the opening being covered by the second structural part (14) (e.g., figures 1, 3, 5 and 7); and a hollow space (framed by upper leaf spring 26, lower leaf spring 14 and spacers 154, 158- e.g., see at least figures 1, 3, 5 and 7) defined by interior surfaces of the orienting device (154, 158), the first structural part (26) and the second structural part (14).
Regarding claims 31 and 33, Christensen discloses the orienting device (154, 158; seq.) includes spacers (154, 158) to space apart the first (26) and second (14) structural parts from each other (e.g., figures 1, 3, 5 and 7).
Claim Rejections - 35 USC § 103
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.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Daher et al. U.S. patent no. 4,091,472 (“Daher”) in view of Phillips U.S. patent no. 5,290,319.
Regarding claim 27, as described supra, Daher discloses the invention substantially as claimed. Daher is silent regarding at least one feed connection is formed in the orienting device, the at least one feed connection being fluidically connected to the hollow space substantially as claimed.
In the same field of endeavor, namely prosthetic feet or orthotics, Phillips teaches using an inflatable member (14) in a resilient toe area of a prosthetic foot (e.g., see at least figures 1-2), wherein the inflatable hollow space is connected via at least one feed connection extending through structural or functional components of the prosthetic foot (e.g., see at least figure 1-2).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claim invention to replace the resilient member (26) in the hollow space (25) of Daher with an inflatable resilient member (14 or the like of Phillips), as is taught and/or suggested by Phillips, in order to provide for a resilient member that can have changeable resilience properties with predictable results and a reasonable expectation of success. Moreover, 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 extend the at least one feed connection fluidically connected to the hollow space in the invention of Daher in view of Phillips to be formed in and extending through the orienting device (10 of Daher) in order to provide a short distance to external atmosphere and in order to avoid extra long feed lines that could cause tripping if looped around the device so as to meet all of the limitations within the claims.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Daher et al. U.S. patent no. 4,091,472 (“Daher”) in view of Pitkin et al. U.S. patent no. 6,290,730 (“Pitkin”).
Regarding claim 29, as described supra, Daher discloses the invention substantially as claimed. Daher is silent regarding the plastic components (20, 21) are specifically formed as fiber-reinforced plastic components substantially as claimed.
In the same field of endeavor, namely orthopaedic components, Pitkin teaches forming a flexible plate portion of an orthopedic component from either plastic or fiber reinforced plastic (e.g., see at least col. 5, lines 3-7; and claim 16).
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 form the structural components (20, 21) of Daher from a fiber reinforced plastic component, as taught and/or suggested by Pitkin, in order to optimize the energy return and component strength as a desired material for a particular user/device with predictable results and a reasonable expectation of success. Additionally, note that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Also see MPEP 2144.04.
Claims 31 and 33-39 are rejected under 35 U.S.C. 103 as being unpatentable over Daher et al. U.S. patent no. 4,091,472 (“Daher”) in view of Doddroe et al. U.S. patent no. 6,602,295 (“Doddroe”).
Regarding claims 31 and 33, as described supra, Daher discloses the invention substantially as claimed. Daher is silent regarding the orienting device includes spacers to space apart the first and second structural parts from each other substantially as claimed.
In the same field of endeavor, namely prosthetic or orthotic devices, Doddroe teaches forming toe spring (40) and foot plate (20) with a central split in order to help and facilitating medial and lateral rollover characteristics. Moreover, Doddore teaches using a pair of toe spring clamps (42) in order to provide a rigid or pivotal connection between the toe springs and the toe part of the foot plate (e.g., see at least figures 1A and 2; and col. 4, lines 57-59, 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 form the springs 20 and 21 of Daher as split toe springs in order to aid in walking on uneven terrain or toe characteristics, as taught by Doddroe, and modify the invention of Daher such that it includes toe clamp 42 at a toe end of Daher as a portion of the claimed orienting device in order to aid in connection of the split toe prosthetic foot with predictable results and a reasonable expectation of success. Therefore, including the toe clamp 42 as a portion of the orienting device of Daher results in an orienting device (10 of Daher and 42 of Doddroe applied to Daher’s toe end) that includes spacers device (10 of Daher and 42 of Doddroe applied to Daher’s toe end) to space apart first and second (20, 21 of Daher) structural parts from each other (e.g., see at least figure 1 of Daher and figure 1A of Doddroe).
Regarding claim 34, Daher discloses first (20) and second (21) structural parts comprising leaf springs (e.g., see at least figure 1; and col. 2, lines 58-64).
Regarding claim 35, Daher discloses the orienting device (10) is adhesively bonded to the first and second structural parts (20, 21) with an adhesive (26) received in the hollow space (25) (e.g., see at least figure 1; col. 3, lines 4-17; and col. 4, lines 3-7).
As best understood regarding claim 36, Daher discloses the interior surfaces of the orienting device (10) have a shape that corresponds to contoured surfaces of the first and second structural parts (20, 21) (e.g., see at least figure 1).
Regarding claims 37 and 38, Daher discloses at least one of the first and second structural parts (20, 21) is attached to the orienting device (10) on one side by the adhesive (26) that comprises a resilient material (e.g., see at least figure 1; col. 3, lines 4-17; and col. 4, lines 3-7).
Regarding claim 39, Daher discloses the adhesive (26) substantially completely fills the hollow space (25) (e.g., see at least figure 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Smith U.S. publication no. 2015/0289996 A1 discloses a bonded toe end of an orthopedic component with first and second structural components. Element 18 constitutes an “orienting device” substantially as claimed (e.g., see at least figures).
Phillips U.S. patent no. 6,206,934 teaches use of a polyurethane, flexible adhesive for connection of prosthetic foot parts.
Mosler U.S. publication no. 2014/0012397 discloses spacers used to orient first and second structural leaf springs with respect to one another (e.g., see at least figures).
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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