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 .
The first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ) apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an effective filing date on or after March 16, 2013 wherein the effective filing date is:
(i) if subparagraph (ii) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(ii) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under 35 U.S.C. 119, 365(a), or 365(b) or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, or 365(c); or
(B) a specific reference under 35 U.S.C. 120 , 121, or 365(c), to any patent or application that contains or contained at any time a claim as defined in paragraph (A), above.
Status of the Claims
Claim(s) 1-20 is/are pending.
Response to Arguments
Applicant’s arguments, filed 7/20/2026, with respect to the claim objections have been fully considered and are persuasive. The objections of claims 2-3 has/have been withdrawn due to the Applicant’s amendments.
Applicant’s arguments with respect to claims 1-20 have been considered but are moot in view of the new grounds of rejection. The Examiner notes the change in prior art was necessitated by the Applicants amendments.
Although Haque, Shen, and Laubscher are re-used herein, Sanchez is added to teach some of the amended claim language. The following responses are relevant to the instant rejection.
Applicant argues the reasoning for combining is based on hindsight. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Further, the Examiner notes Shen teaches that the actuator of their invention is suitable for robotic knee joints (e.g. pg. 2, col. 2 teaches the invention is for a robotic knee joint; see also pg. 3, col. 1, last paragraph). As Shen teaches this specific use of the actuator, this rationale was not gleaned from Applicant's disclosure. Rather, it is a substitution of one known actuator (Haque) for another known actuator (Shen). Though not previously explicitly stated this reasoning is supported by MPEP 2143(I)((B)). Therefore, Applicant's arguments are not found to be persuasive.
Applicant’s arguments regarding the amended folded language are moot as they are taught by newly cited prior art to Sanchez.
Claim Objections
Claims 7 and 16 are objected to because of the following informalities:
Claims 7 and 16 each recites “wherein output sprocket”, which should be “wherein the output sprocket”
Appropriate correction is required.
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.
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.
Prior Art Cited Herein
Herein, Haque: M. R. Haque and X. Shen, "A Unified Knee and Ankle Design for Robotic Lower-Limb Prostheses," 2020 IEEE/ASME International Conference on Advanced Intelligent Mechatronics (AIM), Boston, MA, USA, 2020, pp. 729-734, doi: 10.1109/AIM43001.2020.9159017.
Provided with 4/20/2026 Office action
Herein, Shen: Shen, T., Afsar, M. R., Haque, M. R., McClain, E., Meek, S., and Shen, X. (September 20, 2021). "Quadrupedal Human-Assistive Robotic Platform (Q-HARP): Design, Control, and Preliminary Testing." ASME. J. Mechanisms Robotics. April 2022; 14(2): 021004. https://doi.org/10.1115/1.4052321.
Provided with 4/20/2026 Office action
In citations, col. 1 is the left-hand column
In citations, col. 2 is the right-hand column
Herein, Sanchez: J. H. Sanchez, W. Amanhoud, A. Billard and M. Bouri, "Foot Control of a Surgical Laparoscopic Gripper via 5DoF Haptic Robotic Platform: Design, Dynamics and Haptic Shared Control," 2021 IEEE International Conference on Robotics and Automation (ICRA), Xi'an, China, 2021, pp. 12559-12566, doi: 10.1109/ICRA48506.2021.9561887.
Provided with this Office action
Herein, Maxon: Maxon Motor. "EC 45 flat, 70 Watt" Media Release, Aug 16, 2011, https://www.maxongroup.net.au/medias/sys_master/8798025154590.pdf?attachment=true.
Provided with this Office action
Claims 1-5, 7-12, 14-18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haque in view of Shen and further in view of Sanchez.
Regarding Claim 1, Haque teaches an actuator for a powered prostheses prosthesis (e.g. pg. 732 col. 1 sect. IV discloses an actuator for a powered prosthesis) comprising:
Haque teaches a two-stage motor (e.g. Figure 3), but fails to teach the particular motor claimed (remaining claim limitations).
Shen teaches an actuator comprising:
a motor (e.g. annotated Figure 2a below) comprising a motor output shaft (e.g. Figure 2(a), shaft through axis of rotation of the motor which the chain around the middle sprocket connects to), connected to a motor output sprocket (e.g. pg. 3 col. 1 and fig. 2a-b illustrates a motor, a motor output sprocket (1st 7-tooth small sprocket));
an intermediate shaft (e.g. annotated Figure 2(a) below) comprising a first intermediate sprocket (54-teeth sprocket supported by an intermediate shaft) and a second intermediate sprocket (2nd 7-tooth small sprocket attached to intermediate shaft);
an output sprocket (45-tooth double sprocket);
a first drive chain configured to engage the first intermediate sprocket and the motor output sprocket (e.g. pg. 3 col. 1 discloses that a motor sprocket (1st 7-tooth small sprocket) drives a first intermediate sprocket (54-teeth sprocket) through a first drive chain/roller chain); and
a second drive chain configured to engage the second intermediate sprocket and the output sprocket (e.g. pg. 3 col. 1, discloses that the second intermediate sprocket (2nd 7-tooth small sprocket) drives an output sprocket (54-teeth sprocket) through a second drive chain/roller chain),
Haque and Shen are concerned with the same field of endeavor as the claimed invention, namely two-stage actuators.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the actuator for a powered prosthesis of Haque to include that the actuator further comprises a motor with a motor output shaft, connected to a motor output sprocket; an intermediate shaft comprising a first intermediate sprocket and a second intermediate sprocket; an output sprocket; a first drive chain configured to engage the first intermediate sprocket and the motor output sprocket; and a second drive chain configured to engage the second intermediate sprocket and the output sprocket as taught by Shen in order to power joint mechanisms such as a robotic/artificial joints and perform hinge-like movements (e.g. Shen, pg. 2, col. 2 teaches the invention is for a robotic knee joint; see also pg. 3, col. 1, last paragraph) and as it is a simple substitution of one known element (knee joint actuator) for another to obtain predictable results (MPEP 2143(I)) of powering a joint mechanism/hinge-joint through its hinging motions. .
The combination of Haque and Shen discloses the invention substantially as claimed but fails to teach the details of the housing as claimed.
Shen teaches, in what appears to be another embodiment, Figure 3, wherein the actuator further comprises a load-bearing actuator housing having a three-part clamshell configuration (e.g. annotated Figure 3 below) comprising an output-side shell (e.g. annotated Figure 3 below), a central shell (e.g. annotated Figure 3 below), and a motor-side shell (e.g. annotated Figure 3 below), the motor-side shell housing the motor (e.g. Figure 3), and the output-side shell and the central shell forming a hollow structure that accommodates the first drive chain and the second drive chain (e.g. Figure 3);
wherein the clamshell configuration has a shape configured to permit knee-joint range of motion without interference (e.g. pg. 3, column 1, last paragraph, the device is a for use as a knee),
the first drive chain and the second drive chain are arranged within the hollow structure (e.g. Figure 3).
Shen Figure 3, Shen Figure 2, and Haque are concerned with the same field of endeavor as the claimed invention, namely two-stage actuators.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Haque and Shen such that there is a three-part clamshell housing as taught by Shen’s Figure 3 around the actuator of Figure 2(b) as it is combining prior art elements according to known methods to yield predictable results (MPEP 2143(I)). Here, the results are predictable because each claimed element performs in the same manner in the combination as it does separately. Specifically, enclosure of the actuation mechanism protects it from debris that may interfere with the mechanical components therein.
The combination of Haque and Shen discloses the invention substantially as claimed but fails to teach wherein the first drive chain and the second drive chain are arranged so that they are folded over one another.
Sanchez teaches an actuator having a sprocket and chain arrangement connected to a motor where the first drive chain and the second drive chain are arranged within the hollow structure so that they are folded over one another (e.g. annotated Figure 3 below).
Sanchez and Shen are concerned with the same field of endeavor as the claimed invention, namely actuators with sprockets and chains connected to a motor. Haque are concerned with the same field of endeavor as the claimed invention, namely two-stage actuators.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Haque and Shen such that the first drive chain and the second drive chain are arranged within the hollow structure so that they are folded over one another as taught by Sanchez as it is a simple substitution of one known element (arrangement of sprockets and chains) for another to obtain predictable results (MPEP 2143(I)) of a two-stage actuator (as combined) having a more compact design (per Sanchez) that functions to control knee joint/hinge movements (per Haque and Shen).
PNG
media_image1.png
606
1191
media_image1.png
Greyscale
Annotated Figure 2a, Shen
PNG
media_image2.png
625
397
media_image2.png
Greyscale
Annotated Figure 3, Shen
PNG
media_image3.png
833
1070
media_image3.png
Greyscale
Annotated Figure 3, Sanchez
Regarding Claim 2, the motor is fixedly attached to the actuator housing (e.g. Shen, Fig. 3, all of the components, including the motor are fixed together and to the housing).
Regarding Claim 3, the actuator housing comprises a proximal end and a distal end (e.g. Shen, Figure 3, top/bottom are proximal/distal), the proximal end is proximal to an output sprocket (e.g. Shen, Figure 3, as the attachments are outside the housing on the top/bottom and the output sprocket is within the housing, the proximal end must be more proximal than any component inside the housing, including the output sprocket), and that the distal end comprises an attachment surface (e.g. Shen, Figure 3, as both ends have an attachment surface, either orientation of proximal/distal is met).
Regarding Claim 4, the proximal end comprises a rotational joint assembly (e.g. Shen, Figure 4, when attached to the body, the top attachment in Figure 3, attaches in such a way as to rotate, see legs at differing degrees of rotation in Figure 4(a)).
Regarding Claim 5, the output sprocket defines a first axis of rotation and the motor output sprocket defines a second axis of rotation, and wherein the first axis of rotation is coaxial with the second axis of rotation (e.g. Sanchez, annotated Figure 3 above).
Regarding Claim 7, the output sprocket produces less than or equal to 80 newton meters of torque (e.g. Shen, pg. 3 col. 1 discloses that the actuator design provides an output torque as high as 113 Nm, i.e. the output sprocket is capable of producing less than or equal to 80 newton meters of torque).
Regarding Claim 8, the actuator comprises a dual-stage actuator (e.g. Shen, pg. 3, col. 1).
Regarding Claim 9, the actuator further comprises a prosthesis (e.g. Haque, fig. 7).
Regarding Claim 10, the prosthesis is a prosthetic ankle (e.g. Haque, fig. 7d-f).
Regarding Claim 11, the powered prostheses is a prosthetic knee (e.g. Haque, fig. 7a-c).
Regarding Claim 12, the actuator is less than 200mm long (e.g. Shen, pg. 3, col. 1, first paragraph, ankle length is 140 mm).
Regarding Claim 14, the combination of Haque, Shen, and Sanchez teaches a powered prosthesis (e.g. Haque, pg. 732 col. 1 sect. IV discloses an actuator for a powered prosthesis) comprising:
a first limb section and a second limb section (e.g. Haque, see annotated fig. 8 below);
an actuator coupled to the first limb section and the second limb section (e.g. Haque, fig. 6 illustrates an actuation system, pg. 732 sect. IV-A and B disclose actuators for both a first limb section and a second limb section e.g. lower leg and ankle as shown in fig. 8), the actuator comprising:
a motor (e.g. Shen, annotated Figure 2a above) comprising a motor output shaft (e.g. Shen, Figure 2(a), shaft through axis of rotation of the motor which the chain around the middle sprocket connects to), connected to a motor output sprocket (e.g. Shen, pg. 3 col. 1 and fig. 2a-b illustrates a motor, a motor output sprocket (1st 7-tooth small sprocket));
an intermediate shaft (e.g. Shen, annotated Figure 2(a) above) comprising a first intermediate sprocket (Shen, 54-teeth sprocket supported by an intermediate shaft) and a second intermediate sprocket (Shen, 2nd 7-tooth small sprocket attached to intermediate shaft);
an output sprocket (Shen, 45-tooth double sprocket);
a first drive chain configured to engage the first intermediate sprocket and the motor output sprocket (e.g. Shen, pg. 3 col. 1 discloses that a motor sprocket (1st 7-tooth small sprocket) drives a first intermediate sprocket (54-teeth sprocket) through a first drive chain/roller chain); and
a second drive chain configured to engage the second intermediate sprocket and the output sprocket (e.g. Shen, pg. 3 col. 1, discloses that the second intermediate sprocket (2nd 7-tooth small sprocket) drives an output sprocket (54-teeth sprocket) through a second drive chain/roller chain);
wherein the actuator further comprises a load-bearing actuator housing having a three-part clamshell configuration (e.g. Shen, annotated Figure 3 above) comprising an output-side shell (e.g. Shen, annotated Figure 3 above), a central shell (e.g. Shen, annotated Figure 3 above), and a motor-side shell (e.g. Shen, annotated Figure 3 above), the motor-side shell housing the motor (e.g. Shen, Figure 3), and the output-side shell and the central shell forming a hollow structure that accommodates the first drive chain and the second drive chain (e.g. Shen, Figure 3);
wherein the clamshell configuration has a shape configured to permit knee-joint range of motion without interference (e.g. Shen, pg. 3, column 1, last paragraph, the device is a for use as a knee); and
wherein the first drive chain and the second drive chain are arranged within the hollow structure so that they are folded over one another (e.g. Sanchez, annotated Figure 3 above).
PNG
media_image4.png
862
810
media_image4.png
Greyscale
Annotated Figure 8, Haque
Regarding Claim 15, the output sprocket defines a first axis of rotation and the motor output sprocket defines a second axis of rotation, and wherein the first axis of rotation is coaxial with the second axis of rotation (e.g. Sanchez, annotated Figure 3 above).
Regarding Claim 16, the output sprocket produces less than or equal to 80 newton meters of torque (e.g. Shen, pg. 3 col. 1 discloses that the actuator design provides an output torque as high as 113 Nm, i.e. the output sprocket is capable of producing less than or equal to 80 newton meters of torque).
Regarding Claim 17, the actuator comprises a dual-stage actuator (e.g. Shen, pg. 3, col. 1).
Regarding Claim 18, the first limb comprises a lower prosthetic leg and the second limb section comprises a prosthetic foot (e.g. Haque, annotated fig. 8 above).
Regarding Claim 20, the actuator is less than 200mm long (e.g. Shen, pg. 3, col. 1, first paragraph, ankle length is 140 mm).
Claim 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haque in view of Shen and further in view of Sanchez, as evidenced by Maxon.
Regarding Claim 6, the combination of Haque, Shen, and Sanchez discloses the invention substantially as claimed but fails to teach the motor is an exterior-rotor brushless DC (ER- BLDC) motor.
Haque further teaches an exterior-rotor brushless DC (ER- BLDC) motor (e.g. Haque, pg. 732 col. 2 discloses powered prostheses that use a brushless motor (EC 45 flat, Maxon Motor) i.e. with an exterior rotor, see Maxon Motor reference with additional details on external rotor design).
Sanchez and Shen are concerned with the same field of endeavor as the claimed invention, namely actuators with sprockets and chains connected to a motor. Haque are concerned with the same field of endeavor as the claimed invention, namely two-stage actuators.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Haque, Shen, and Sanchez by incorporating the ER-BLDC as taught by Haque as it is a simple substitution of one known element for another to obtain predictable results (MPEP 2143(I)) of a known lightweight motor (e.g. Haque, pg. 732, col. 2).
Claims 13 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haque in view of Shen in view of Sanchez as discussed supra and further in view of Laubscher.
Regarding Claims 13 and 19, the combination of Haque, Shen, and Sanchez discloses the invention substantially as claimed but fails to teach the actuator has a range of motion greater than 100 degrees.
Laubscher discloses an actuator comprising: a motor (pg. 15-17 disclose an actuator for a powered orthosis comprising a motor as seen in fig. 2.3) and an actuator that has a range of motion greater than 100 degrees (see Table V for capabilities of a joint actuator).
Sanchez, Shen, and Laubscher are concerned with the same field of endeavor as the claimed invention, namely actuators with sprockets and chains connected to a motor. Haque are concerned with the same field of endeavor as the claimed invention, namely two-stage actuators.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the actuator such that the actuator has a range of motion greater than 100 degrees as taught by Laubscher in order to span the necessary range of motion at joints e.g. knee joints (e.g. Laubscher, paragraph bridging pgs. 15-16).
Relevant Prior Art
US 2003/0089576 A1 to Peter teaches an actuator having a motor, intermediate gear(s), and an output gear using sprockets and chains (e.g. Figure 1).
US 2018/0283507 A1 to Sawicki, et al teaches an actuator having a motor, intermediate gear(s), and an output gear using sprockets and chains (e.g. Figures 2-3).
US 2020/0039064 A1 to McKinley, et al teaches an actuator housing having two sides and an intermediate portion (e.g. Figure 7).
US 2018/0283507 A1 to Lee teaches an actuator having a motor, intermediate gear(s), and an output gear using sprockets and chains (e.g. Figures 3-4) in a multi-part housing (e.g. Figures 1, 3-4).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESLIE A LOPEZ whose telephone number is (571)270-7044. The examiner can normally be reached 8:30 AM - 5:30 PM, MST.
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, JERRAH EDWARDS can be reached at (408)918-7557. 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.
/LESLIE A LOPEZ/Primary Examiner, Art Unit 3774 10/14/2026
Prosecution Insights