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 .
Response to Amendment
The amendment to the claims filed on 11/01/2023 is objected to as not complying with the requirements of 37 CFR 1.173(b)(2) and (d)(1)&(2) because each change relative to US Pat. No. 11,318,341 (“the ‘341 patent”) has not been properly marked. 37 CFR 1.173(b)(2) and (d)(1)&(2) state:
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “<U>” and end with “</U>” to properly identify the material being added.
The claims presented in the amendment filed 11/01/2023 do not include markings with respect to the original claims of US Pat. No. 11,318,341 (“the ‘341 patent”). Single brackets should be used to indicate claim language removed from an original patented claim.
These corrections should be submitted with the next correspondence.
Reissue Declaration
37 CFR 1.175 reads, in pertinent part:
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor’s oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
Further, MPEP § 1414 (II) states,
For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. The corresponding corrective action which has been taken to correct the original patent need not be identified in the oath/declaration. (emphasis added).
The reissue declaration filed with this application is defective because it fails to sufficiently identify the error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. This reissue application seeks to enlarge the scope of the claims of the patent by ”remov[ing] limitations from the support base and presents a new claim 21 which provides an alternative form of a broadened claim 1.” However, this error statement does not identify a single word, phrase, or expression in original claim 1 and how it renders the original patent wholly or partly inoperative or invalid. Instead, the error statement generally refers to limitations from the support base; however, the support base is still being claimed and therefore cannot in itself be an error supporting this reissue prosecution. Also generally referring to support base “limitations” does not amount to identifying a single word, phrase, or expression in original claim 1 and how it renders the original patent wholly or partly inoperative or invalid. Furthermore, merely stating that claim 21 provides an alternative form of a broadened claim 1 does not identify a single word, phrase, or expression from original claim 1 and how it renders the original patent wholly or partly inoperative or invalid. It is suggested that the error statement include a least one word from claim 1 that is now being deleted as causing the error that renders the original patent wholly or partly inoperative or invalid. Applicant must supply a new Reissue Declaration in response to this rejection.
Claim Rejections - 35 USC § 251 - Reissue Declaration
The following is a quotation of the first paragraph of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 1-11, 13-15, 21-26 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect in the declaration is set forth in the discussion above in this Office action.
Information Disclosure Statement
To date, no information disclosure statement (IDS) has been filed in this reissue application that includes a list of all patents, publications, applications, or other information submitted for consideration by the Office and published on the face of the original ‘341 patent. In order for those references to be published on the face of any reissue patent resulting from this proceeding, an IDS must be filed including a list of all patents, publications, applications, or other information that appear on the face of the published ‘341 patent.
Application Data Sheet (ADS)
An ADS was filed on 11/01/2026. The Domestic Benefit section of the ADS does not identify this application as a reissue of the original patent application 17/126,423. Additionally, the ADS does not include the domestic benefit of the 17/126,423 application to US Pat. applications 16/445,960; 16/183,670; and 16/130,953. Additionally, the filing receipt is incorrect with the omission of 16/183,670 being a CIP of 16/130,953. The submission of a corrected ADS with a complete domestic benefit section should be filed with a request for corrected filing receipt with a marked up copy of the current receipt to include 16/183,670 being a CIP of 16/130,953.
Claim Objections
Claim 26 is objected to because of the following informalities: the last line of the claim seems to have a typographical error coupling the right cord to the left attachment member. For examination purposes, the claim is understood to have the right cord coupled to the right attachment member. Appropriate correction is required.
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 1-6 and 24-26 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. The claim limitation “connector member” has been amended to read “attachment member.” It is unclear from the specification this new element references. For instance, the ‘341 specification does not use the term “attachment member” so it is unclear if this claim term is still referencing the connector members (520a /520b) or the attachment clips (521a /521b).
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, 4-8, 13-15 and 24-26 is/are rejected under 35 U.S.C. 102(a)(1)] as being anticipated by US Pat. No. 5,582,579 to Chism et al. (“Chism”).
Regarding claim 1, Chism discloses portable lower limb therapy device (see Technical Field), comprising: a support base (at least elements 28, 26 and 12) having an exterior surface and an interior surface (inner sole 26), wherein the interior surface is configured to receive a foot of a user (see col. 4, ll. 16-18, “In use, a wearer's foot is inserted through open portion 18, such that the wearer's heel fits against the lower heel 22 and sole 26”) and the exterior surface includes at least one smooth surface (29) which enables the support base to slide on a discrete surface that is also smooth (see col. 6, ll. 4-11, “It may also be preferred to provide the bottom surface of outer sole 28 and the rear exterior of heel portion 14 with a slide and/or wear surface (e.g., as shown at 29) to facilitate and withstand repeated sliding motion of the user's heel along a surface (e.g., table, floor or bed) on which the user is lying. Slide surface 29 might be provided in the form of a slick coating of wear resistant plastic, nylon material, or the like.”); wherein the support base includes a proximal edge and a distal edge (see Fig. 2); a closed force transfer system (55, see Fig. 2) integral (see col. 4, ll. 41-44, “A pair of spaced foot support straps 56 connects ends 57 and 58, and preferably, are sewn or otherwise attached about the outer periphery of the open toe portion 16 of boot 12.”) with the support base, wherein the closed force transfer system includes at least one attachment member (60/61) and at least one discrete cord member (40/70) having a front end (O-ring, see annotated Fig. 2) and an opposing handle end (45) (see Fig. 2); wherein the at least one attachment member (60/61/72) is integral with the support base (straps 56 being sewn to the boot 12 make the connector member integral with the support base, see col. 4, ll. 41-44); wherein the front end (O-ring, see annotated Fig. 2)
PNG
media_image1.png
722
524
media_image1.png
Greyscale
of the at least one discrete cord member is selectively coupled with the attachment member (see Fig. 2); and wherein the closed force transfer system is operative to allow force exerted through the at least one discrete cord member to be transferred to the support base (col. 5, ll. 50-51, “When the patient achieves full unassisted flexion, the flexion straps 40 and 70 are utilized to gently flex the joint beyond that point.”).
Regarding claim 4, Chism discloses the portable lower limb therapy device of claim 1 and also teaches wherein said interior surface comprises a resilient pad member (26).
Regarding claim 5, Chism discloses the portable lower limb therapy device of claim 1 and also teaches wherein the at least one discrete cord member has a modulus of elasticity which enables the at least one discrete cord member to provide resistance of a predetermined weight. This limitation is considered inherent to any material used to fabricate the cords since they function to keep the foot in maximum flexion beyond full unassisted flexion. See col. 5, ll. 50+.
Regarding claim 6, Chism discloses the portable lower limb therapy device of claim 1 and also teaches at least one handle member (49) attached to the handle end (45) of the at least one discrete cord member (40/70).
Regarding claim 24, Chism discloses the portable lower limb therapy device of claim 1 and also teaches that the attachment member is defined by a clip (72).
Regarding claim 25, Chism discloses the portable lower limb therapy device of claim 5 and also teaches that the cord member is defined by a resistance band. The cord is inherently considered a resistance band since it maintains the foot in the maximum amount of flexion. See col. 5, ll. 50-51, “When the patient achieves full unassisted flexion, the flexion straps 40 and 70 are utilized to gently flex the joint beyond that point. When the maximum amount of flexion has been reached with the assistance of the flexion straps, the patient is instructed to maintain that flexion for a predetermined amount of time (e.g., 30 seconds).”
Regarding claim 26, see Fig. 2 for both right and left side attachment members and cords.
Regarding claim 7, Chism discloses portable lower limb therapy device (see Technical Field), comprising: a support base (at least elements 28, 26 and 12) having an exterior surface and an interior surface (inner sole 26), wherein the interior surface is configured to receive a foot of a user (see col. 4, ll. 16-18, “In use, a wearer's foot is inserted through open portion 18, such that the wearer's heel fits against the lower heel 22 and sole 26”) and the exterior surface includes at least one smooth surface (29) which enables the support base to slide on a discrete surface that is also smooth (see col. 6, ll. 4-11, “It may also be preferred to provide the bottom surface of outer sole 28 and the rear exterior of heel portion 14 with a slide and/or wear surface (e.g., as shown at 29) to facilitate and withstand repeated sliding motion of the user's heel along a surface (e.g., table, floor or bed) on which the user is lying. Slide surface 29 might be provided in the form of a slick coating of wear resistant plastic, nylon material, or the like.”); wherein the support base includes a proximal edge, a distal edge as well as a right and a left side (see Fig. 2); a closed force transfer system (55, see Fig. 2) integral (see col. 4, ll. 41-44, “A pair of spaced foot support straps 56 connects ends 57 and 58, and preferably, are sewn or otherwise attached about the outer periphery of the open toe portion 16 of boot 12.”) with the support base, wherein the closed force transfer system includes a plurality of connection members (60/61) each having a back end (72) and at least one discrete cord member (40/70) having a front end (O-ring, see annotated Fig. 2) and an opposing handle end (45) (see Fig. 2); wherein the at least one connector member (60/61/72) is integral with the support base (straps 56 being sewn to the boot 12 make the connector member integral with the support base, see col. 4, ll. 41-44); wherein the front end (O-ring, see annotated Fig. 2)
PNG
media_image1.png
722
524
media_image1.png
Greyscale
of the at least one discrete cord member is selectively coupled with the back end (72) of the connector member (60/61); and wherein the closed force transfer system is operative to allow force exerted through the at least one discrete cord member to be transferred to the support base (col. 5, ll. 50-51, “When the patient achieves full unassisted flexion, the flexion straps 40 and 70 are utilized to gently flex the joint beyond that point.”).
Regarding the claim limitation of the plurality of connector members being integral with the support base at both a location adjacent to the proximal edge and a location adjacent to the distal edge with the back end position closer to the location adjacent the distal edge, see annotated Figs 1 and 2 below.
PNG
media_image2.png
794
490
media_image2.png
Greyscale
PNG
media_image3.png
722
490
media_image3.png
Greyscale
Regarding claim 8, Chism discloses the portable lower limb therapy device of claim 7 and also teaches wherein a first connector member among the plurality of connector members is positioned adjacent to the right side of the support base and a second connector member among the plurality of connector members is positioned adjacent to the left side of the support base. See Fig. 2.
Regarding claim 13, Chism discloses the portable lower limb therapy device of claim 1 and also teaches wherein said interior surface comprises a resilient pad member (26).
Regarding claim 14, Chism discloses the portable lower limb therapy device of claim 1 and also teaches wherein the at least one connector member has a higher modulus of elasticity than the at least one discrete cord member. This limitation is considered inherent to any material used to fabricate the flexible cords versus the stiff material of the connector members (72).
Regarding claim 15, Chism discloses the portable lower limb therapy device of claim 1 and also teaches at least one handle member (49) attached to the handle end (45) of the at least one discrete cord member (40/70).
Regarding claim 21, Chism discloses portable lower limb therapy device (see Technical Field), comprising: a support base (at least elements 28, 26 and 12) having an exterior surface and an interior surface (inner sole 26), wherein the interior surface is configured to receive a foot of a user (see col. 4, ll. 16-18, “In use, a wearer's foot is inserted through open portion 18, such that the wearer's heel fits against the lower heel 22 and sole 26”); wherein the support base includes a proximal edge, a distal edge as well as a right and a left side (see Fig. 2); a closed force transfer system (55, see Fig. 2) integral (see col. 4, ll. 41-44, “A pair of spaced foot support straps 56 connects ends 57 and 58, and preferably, are sewn or otherwise attached about the outer periphery of the open toe portion 16 of boot 12.”) with the support base, wherein the closed force transfer system includes a cord member (70/55/40) extending from a first discrete handle on a right side to underneath the support base to a second handle on the left side. See the combination of Figs. 1 and 2. As shown in the figures the cord (40 and 70) extends away from both the left and right sides of the device.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 9-10 and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chism in view of US Pat. No. 9,186,536 to Strachan (“Strachan”).
Chism meets the portable lower limb therapy device of claims 8 and 21 above, but fails to teach wherein the closed force transfer system includes a cross member positioned above the support base at a cross location between the proximal edge and the distal edge (claim 9); the cross member is integral with both the first connector member and the second connector member (claim 10); wherein the closed force transfer system includes a cross member positioned between the proximal edge and the distal edge, with the cord member passing through the cross member in order to extend from the right side of the portable lower limb therapy device to the left side (claim 22); and wherein the cross member is positioned above the support base (claim 23).
Strachan teaches such a configuration. See Fig. 8. As stated by Strachan in col. 5, ll. 28-51, “As such, the second support member 40 is shaped and dimensioned to fit about the forefoot of the user. With this mind, and to ensure a snug fit at the forefoot of a user, the second support member 40 is provided with first and second eyelets 74, 76 on opposite first and second lateral sides 60, 62 thereof allowing the second support member 40 to be wrapped about the forefoot of the user. In particular, and as will be discussed below in greater detail, a resilient strap is run through the first and second eyelets 74, 76 connecting the first and second lateral sides 60, 62 of the second support member 40. When the resilient strap is secured to the belt 12 as discussed herein, the first and second lateral sides 60, 62 of the second support member 40 are pulled together with the forefoot of the user secured in the loop defined by the second support member 40. It is appreciated this configuration allows for the second support member 40 to accommodate various foot sizes. It is appreciated it may be desirable to space the first lateral side 60 from the second lateral side 62 when the resilient strap is pulled drawing the first lateral side 60 toward the second lateral side 62. Where this is desired a rigid spacer cylinder may be positioned over the resilient strap in the area between the first eyelet 74 of the first lateral side 60 and the second eyelet 76 of the second lateral side 62.”
At the time of filing, it would have been obvious by one skilled in the art to incorporate this structure of Strachan into the invention of Chism. Both devices are analogous in the art of rehab/training devices; therefore, a combination is proper. Additionally, one would have been motivated to make this incorporation in order to “to ensure a snug fit at the forefoot of a user” as taught by Strachan above. One would also expect predictable results the in combination continuing to function as disclosed in Chism.
Allowable Subject Matter
Claims 2-3 and 11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and/or to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE SERKE WILLIAMS whose telephone number is (571)272-4970. The examiner can normally be reached Monday through Friday core hours 8am-4pm ET.
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, Eileen Lillis can be reached at 571-272-6928. 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.
/CATHERINE S WILLIAMS/Reexamination Specialist, Art Unit 3993
CONFEREES:
/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993