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 .
Status of Claims
This Action is in response to the amendment filed on June 30, 2026.
As directed by the amendment: Claims 1 and 8 were amended. Claims 1-16 are pending and currently under consideration for patentability under 37 CFR 1.104.
Election/Restrictions
Claims 6-7 and 10-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 30, 2026.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Reference character “24” in Figure 2.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 force application system operatively coupled with the engagement mechanism, and configured to apply a force to the engagement mechanism, thereby providing the abduction or flexion assistance to the arm about the shoulder” in claim 1. The corresponding structure described in the specification is a rotary actuator (“an abduction rotary actuator”, “an external/internal rotary actuator”, “a lower rotary actuator” see para. [0010]-[0012] of the published application).
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.
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 § 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.
Claim(s) 1-5 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Branch (2003/0130600) in view of Marti et al. (2015/0360069).
Regarding claim 1, Branch discloses a device for manipulating an arm of a user (Fig. 1), thereby providing abduction or flexion assistance to a shoulder of the user (at least abduction assistance as seen in Fig. 3; “user 5 demonstrating the apparatus as it provides abduction to, in this instance, the right shoulder of the user 5” see para. [0017]), the device comprising:
(a) an engagement mechanism (arm carriage 50, Fig. 1) configured to operatively couple with the user's arm (see Fig. 3) and configured to pivot about an axis (axis associated with pivot-fixing pin 89, Fig. 5) defined by the gleno-humeral joint of the shoulder as the shoulder abducts or flexes (see Fig. 3 and para. [0017], the engagement mechanism 50 pivots about an axis associated with the gleno-humeral joint of the shoulder as the shoulder abducts; see also para. [0195]-[0196]);
(b) a scapular restriction mechanism comprising a pad (anti-scapular elevation pad assembly 84, Fig. 3) configured to restrict movement of a scapula of the user's shoulder during a first phase of abduction or flexion (“provides an acromial counterpoint by maintaining the shoulder in place preventing vertical elevation of the scapula during the abduction process” see the first sentence of [0111]. The first phase is considered the first thirty to sixty degrees of abduction) and to move in an approximately anatomically correct ratio with gleno-humeral motion during a second phase of abduction or flexion (“This element is part of and moves along with the arm carriage 50” see the second sentence of [0111] and see the range R in Fig. 3, the arm carriage 50 moves at least in an “approximately” anatomically correct manner of natural abduction in range R. This abduction range relies on gleno-humeral motion. The second phase is considered from sixty degrees to the maximum abduction in Fig. 3); and
(c) a force application system (power unit 90 with pivoting pump handle 95 and hydraulic cylinder 98, see Figs. 1-3. This is considered an equivalent structure of the force application system under 112(f) because it applies a rotary force to the arm) operatively coupled with the engagement mechanism (power unit 90 helps drive movement of the engagement mechanism 50, see Fig. 3; see “The movement of the apparatus from the position within range "R" is provided by use of a hydraulic cylinder 98, and the use of associated hydraulics … powered by the power unit 90” see para. [0113]), and configured to apply a force to the engagement mechanism (hydraulic force is applied to engagement mechanism 50 via hydraulic cylinder 98, see para. [0113]), thereby providing the abduction or flexion assistance to the arm about the shoulder (abduction assistance as the engagement mechanism 50 moves through a substantially natural abduction range R, see Fig. 3).
Branch is silent regarding the pad being operatively connected to a gear mechanism, wherein the gear mechanism is configured to cause the pad to move in an approximately anatomically correct ratio with gleno-humeral motion during the second phase of abduction or flexion.
Marti teaches a related shoulder rehabilitation device for improving the end range of motion (see Fig. 1, Abstract) which allows a user to perform abduction exercises (see Figs. 8-9). The device includes a rotating joint adjacent the shoulder joint (second link member axis 118, Fig. 1, Fig. 8) that includes a gear mechanism (polycentric gear system 138, Fig. 4; “The one or more link member axes may be polycentric gear systems to provide rotation of the link members. FIG. 4 shows an example of such a polycentric gear system 138” see lines 1-6 of [0040]. Thus, the second link member axis 118 includes a polycentric gear system 138), wherein the gear mechanism (138) is configured to cause an arm link (second link member 108, Fig. 1, Figs. 8-9) to move in an approximately anatomically correct ratio with gleno-humeral motion during (at least) a second phase of abduction (“Such a polycentric gear system 138 anatomically imitates or matches a rotating shoulder joint where the humeral head during arm elevation causes the clavicle to rotate upward” see lines 10-13 of [0040]. Referring to Applicant’s anatomical diagram in Figures 1A-1B of the instant application, the movement of clavicle 101 is connected to and moves with the scapula 105 as they rotate upward, and substantially matches the rotation of the gleno-humeral joint 102. Thus, the gear mechanism 138 is expected to be able to perform the recited function of moving in an approximately anatomically correct ratio with the gleno-humeral motion as the shoulder is abducted in a second, latter phase). Marti additionally states that the polycentric gear mechanism (138, Fig. 4) “may reduce arm migration when an arm is rotated through a range of motion, reducing risk of further injury” (see lines 13-15 of [0040]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the pivoting connection of the arm carriage (50, Figs. 2-3 of Branch; see annotated Figure A below) of Branch to have a polycentric gear mechanism as taught by Marti so the movement of the arm carriage and scapular restriction pad will anatomically imitate or match a rotating shoulder joint which may reduce arm migration when the arm is rotated through a range of motion, reducing risk of further injury.
PNG
media_image1.png
517
807
media_image1.png
Greyscale
Annotated Fig. A (from Fig. 8 of Marti, and Fig. 2 of Branch): In the proposed modification, the polycentric gear mechanism (circled on the left, also depicted at 138, Fig. 4 of Marti) has been provided at the pivoting location (circled on the right) of the arm carriage (50) of Branch. Thus, in the modified device, when the user’s shoulder undergoes abduction movement, the polycentric gear mechanism (138, Fig. 4 of Marti) will cause the arm carriage (50, Branch) and the attached scapular pad (84, Branch) to anatomically imitate or match the rotating shoulder joint.
In the modified device, when the user’s shoulder undergoes abduction movement (as in Fig. 3 of Branch; see also Figs. 8-9 of Marti), the polycentric gear mechanism (138, Fig. 4 of Marti) will cause the arm carriage (50, Figs. 2-3 of Branch) to anatomically imitate or match the rotating shoulder joint. The scapular restriction pad (84, Fig. 3 of Branch) is stated to “move[] along with the arm carriage 50” (see the second sentence of [0111] of Branch). Thus, the pad (84, Branch) is operatively connected to the gear mechanism (138, Marti), wherein the gear mechanism (138, Marti) is configured to cause the pad (84, Branch) to move in an approximately anatomically correct ratio with gleno-humeral motion during a second phase of abduction (the gear mechanism “anatomically imitates or matches a rotating shoulder joint where the humeral head during arm elevation causes the clavicle to rotate upward” see lines 10-13 of [0040] of Marti).
Regarding claim 2, the modified Branch/Marti device discloses wherein the approximately anatomically correct ratio is approximately 1:2 scapular to gleno-humeral motion during the second phase of abduction or flexion (see Fig. 3 of Branch, the range R includes movement in the second phase of abduction. It is well known that during this second phase, there is approximately 1:2 scapular to gleno-humeral motion. For example, Applicant’s own specification in para. [0041] states that “a number of studies have indicated that glenohumeral motion dominates in the first 30-60 degrees of flexion and abduction and that the 2:1 ratio of glenohumeral motion to scapular motion represents natural shoulder motion.” Branch’s carriage 50 is shown to undergo abduction over 90 degrees in the range R, and has been modified to include Marti’s polycentric gear mechanism which “anatomically imitates or matches a rotating shoulder joint where the humeral head during arm elevation causes the clavicle to rotate upward” see lines 10-13 of [0040]. Thus, the modified device will move at least “approximately” with this portion of abduction).
Regarding claim 3, the modified Branch/Marti device discloses wherein the force application system (90, 95, 98 of Branch) comprises an abduction rotary actuator (power unit 90 ultimately produces rotational power, to cause arm carriage 50 to rotate through an abduction range R, see Fig. 3; see para. [0113] of Branch) configured to apply rotational force to the engagement mechanism (50 of Branch) to cause the engagement mechanism to move in abduction (the power unit 90 causes the arm carriage 50 to rotate through abduction range R, see Fig. 3; see para. [0113] of Branch).
Regarding claim 4, the modified Branch/Marti device discloses wherein the force application system (90, 95, 98 of Branch) comprises an external/internal rotary actuator (power unit 90 ultimately produces rotational power, to cause carriage 50 to rotate through an external/internal rotation range R, see Fig. 4; see para. [0018] and [0113] of Branch) configured to apply rotational force to the engagement mechanism (50, see Fig. 4 of Branch) to cause the engagement mechanism to move in external rotation or internal rotation (“providing external rotation to the user’s right shoulder within a range R” see para. [0018] and Fig. 4 of Branch, the rotation is provided by hydraulic cylinder 98).
Regarding claim 5, the modified Branch/Marti device discloses wherein the force application system (90, 95, 98 of Branch) comprises a lower rotary actuator (hydraulic cylinder 98, Fig. 1, Fig. 4 of Branch, is located at a relatively lower point of the apparatus), configured to apply rotational force to the engagement mechanism (external rotation is provided to arm carriage 50, see Fig. 4 of Branch) to cause the engagement mechanism to move in external rotation or internal rotation (providing external rotation to the user’s right shoulder within a range R” see para. [0018] and Fig. 4 of Branch, the rotation is provided by hydraulic cylinder 98).
Regarding claim 8, Branch discloses a method for manipulating a user's arm, thereby providing abduction or flexion assistance to a shoulder of the user (providing abduction or external rotation as seen in Fig. 3, Fig. 4; “user 5 demonstrating the apparatus as it provides abduction to, in this instance, the right shoulder of the user 5” see para. [0017]), the method comprising:
(a) engaging the arm of the user with an engagement mechanism (arm carriage 50, see Fig. 3, Fig. 4) configured to pivot about an axis (axis associated with pivot-fixing pin 89, Fig. 5) defined by the gleno-humeral joint of the shoulder as the arm extends or flexes about the shoulder (see Fig. 3, the engagement mechanism 50 pivots about an axis defined by the gleno-humeral joint of the shoulder as the shoulder abducts; see also para. [0195]-[0196]);
(b) restricting movement of a scapula of the shoulder during a first phase of movement using a scapular restriction mechanism comprising a pad (anti-scapular elevation pad assembly 84, Fig. 3; The first phase is considered the first thirty to sixty degrees of abduction) positioned to inhibit scapular motion (the pad 84 restricts at least the vertical elevation movement of the scapula, as it “provides an acromial counterpoint by maintaining the shoulder in place preventing vertical elevation of the scapula during the abduction process” see the first sentence of [0111]. The first phase is considered the first thirty to sixty degrees of abduction) and allowing movement of the scapula during a second phase of movement in an approximately anatomically correct ratio of gleno-humeral motion to scapular motion (the pad 84 “is part of and moves along with the arm carriage 50” see the second sentence of [0111] and see the range R in Fig. 3. The scapula is allowed to move to at least some degree in order to allow the abduction range R to exceed 90 degrees as seen in Fig. 3. This movement is considered at least an “approximately” anatomically correct ratio of gleno-humeral motion to scapular motion because the arm moves in a natural abduction range R. This abduction range relies on approximately normal gleno-humeral motion. The second phase is considered from sixty degrees to the maximum abduction in Fig. 3); and
(c) activating a force application mechanism (the user activates power unit 90 with pivoting pump handle 95 and hydraulic cylinder 98, see Figs. 1-3) to apply an incremental force to the engagement mechanism (the “pivoting pump handle 95” moves in increments based upon pivoting, see Fig. 3 and para. [0112]-[0113]), thereby creating a torque about the axis through the gleno-humeral joint of the shoulder and causing abduction or flexion of the user's arm about the shoulder of the user (the user creates torque about the axis through the gleno-humeral joint of the shoulder by pivoting pump handle 95 to cause the arm carriage 50 to move through abduction range R, Fig. 3; see para. [0112]-[0113]).
Branch is silent regarding the causing the pad to move via a gear mechanism operatively coupled to the pad (to allow the approximately anatomically correct ratio of gleno-humeral motion to scapular motion).
Marti teaches a related shoulder rehabilitation device for improving the end range of motion (see Fig. 1, Abstract) which allows a user to perform abduction exercises (see Figs. 8-9). The device includes a rotating joint adjacent the shoulder joint (second link member axis 118, Fig. 1, Fig. 8) that includes a gear mechanism (polycentric gear system 138, Fig. 4; “The one or more link member axes may be polycentric gear systems to provide rotation of the link members. FIG. 4 shows an example of such a polycentric gear system 138” see lines 1-6 of [0040]. Thus, the second link member axis 118 includes a polycentric gear system 138), wherein the gear mechanism (138) is configured to cause an arm link (second link member 108, Fig. 1, Figs. 8-9) to move in an approximately anatomically correct ratio of gleno-humeral motion to scapular motion during (at least) a second phase of movement (“Such a polycentric gear system 138 anatomically imitates or matches a rotating shoulder joint where the humeral head during arm elevation causes the clavicle to rotate upward” see lines 10-13 of [0040]. Referring to Applicant’s anatomical diagram in Figures 1A-1B of the instant application, the movement of clavicle 101 is connected to and moves with the scapula 105 as they rotate upward, and substantially matches the rotation of the gleno-humeral joint 102. Thus, the gear mechanism 138 is expected to “allow” the scapula to move during a second phase of movement in an approximately anatomically correct ratio of gleno-humeral motion to scapular motion as the shoulder is abducted in a second, latter phase of movement). Marti additionally states that the polycentric gear mechanism (138, Fig. 4) “may reduce arm migration when an arm is rotated through a range of motion, reducing risk of further injury” (see lines 13-15 of [0040]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the pivoting connection of the arm carriage (50, Figs. 2-3; see annotated Figure A above) of Branch to have a polycentric gear mechanism as taught by Marti so the movement of the arm carriage and scapular restriction pad will anatomically imitate or match a rotating shoulder joint which may reduce arm migration when the arm is rotated through a range of motion, reducing risk of further injury.
In the modified method, when the user’s shoulder undergoes abduction movement (as in Fig. 3 of Branch; see also Figs. 8-9 of Marti), the polycentric gear mechanism (138, Fig. 4 of Marti) will cause the arm carriage (50, Figs. 2-3 of Branch) to anatomically imitate or match the rotating shoulder joint (see Fig. 9 of Marti). The scapular restriction pad (84, Fig. 3 of Branch) “is part of and moves along with the arm carriage 50” (see the second sentence of [0111] of Branch and see the carriage movement in Fig. 3). Thus, the method allows movement of the scapula during a second phase of movement (the scapula is “allowed” to move as the user abducts to a maximum range as seen in range R in Fig. 3 of Branch and in Fig. 8 of Marti) in an approximately anatomically correct ratio of gleno-humeral motion to scapular motion (the gear mechanism “anatomically imitates or matches a rotating shoulder joint where the humeral head during arm elevation causes the clavicle to rotate upward” see lines 10-13 of [0040] of Marti) by causing the pad (84, Branch) to move via the gear mechanism (138, Marti, by moving the arm carriage 50 of Branch) operatively coupled to the pad (the gear mechanism 138 of Marti is operatively coupled to the pad 84 via the arm carriage 50 of Branch. The gear mechanism 138 is mounted at the pivoting location of the arm carriage 50, and the scapular restriction pad 84 “is part of and moves along with the arm carriage 50”).
Regarding claim 9, the modified Branch/Marti method discloses wherein the approximately anatomically correct ratio is approximately 2:1 gleno-humeral to scapular motion (see Fig. 3 of Branch, the range R includes approximately anatomically correct abduction motion. It is well known that during the second phase, there is approximately 2:1 gleno-humeral to scapular motion. For example, Applicant’s own specification in para. [0041] states that “a number of studies have indicated that glenohumeral motion dominates in the first 30-60 degrees of flexion and abduction and that the 2:1 ratio of glenohumeral motion to scapular motion represents natural shoulder motion.” Branch’s carriage 50 and the user’s arm is shown to undergo abduction over 90 degrees in the range R, and has been modified to include Marti’s polycentric gear mechanism which “anatomically imitates or matches a rotating shoulder joint where the humeral head during arm elevation causes the clavicle to rotate upward” see lines 10-13 of [0040]. Thus, the modified method will allow movement of the scapula at least “approximately” with this portion of abduction).
Response to Arguments
Applicant's arguments filed June 30, 2026, have been fully considered but they are not persuasive.
Regarding the argument that claim 1 has been amended to recite structural features of the scapular restriction mechanism, specifically “a scapular restriction mechanism comprising a pad operatively coupled to a gear mechanism” … and thus overcome the rejection under 35 U.S.C. 112(b) (see the last paragraph of page 6 of the Remarks, through the third paragraph of page 7), this argument is persuasive and the 112(b) rejection(s) are withdrawn in light of the amendment(s).
Regarding the argument that claim 1 is not anticipated by Branch based upon the claim 1 amendments (see the last line of page 7 of the Remarks, through the first paragraph of page 8), this argument is persuasive in light of the amendment(s). However, claim 1 is now rejected under 35 U.S.C. 103 as being unpatentable over Branch (2003/0130600) in view of Marti et al. (2015/0360069).
Regarding the argument that Branch’s anti-scapular elevation pad assembly (84) is structurally and functionally distinct from Applicant’s claimed scapular restriction mechanism, because Branch’s pad assembly moves along with the arm carriage throughout the abduction process and prevents vertical elevation of the scapula throughout the entire abduction process rather than being configured to operate in two distinct phases: (1) restricting scapular motion during a first phase, and then (2) allowing controlled scapular motion in an anatomically correct ratio during a second phase. Rather, Branch’s pad prevents vertical elevation of the scapula throughout the entire abduction process (see the second and third paragraphs of page 8 of the Remarks), this argument is not persuasive.
First, it is noted that claim 1 is now rejected under 35 U.S.C. 103 as being unpatentable over Branch (2003/0130600) in view of Marti et al. (2015/0360069) so the modified device will “anatomically imitate[] or match[] a rotating shoulder joint where the humeral head during arm elevation causes the clavicle to rotate upward” see lines 10-13 of [0040] of Marti).
Second, the claims do not require the scapular restriction mechanism to be stationary at any time. Thus, it is immaterial that Branch’s scapular restriction mechanism moves throughout the abduction process. Branch’s scapular restriction pad (84) still satisfies the claim 1 requirement(s) of: (1) restricting movement of a scapula (vertical elevation is restricted) of the user’s shoulder during (at least) a first phase of abduction, and (2) the gear mechanism (138, as taught by Marti) is configured to cause the pad to move in an approximately anatomically correct ratio with gleno-humeral motion during a second phase of abduction because the gear mechanism (138) “anatomically imitates or matches a rotating shoulder joint where the humeral head during arm elevation causes the clavicle to rotate upward” (see lines 10-13 of [0040] of Marti).
Regarding the argument that Branch does not disclose a gear mechanism operatively coupled to a pad that is configured to cause the pad to move in an anatomically correct ratio with gleno-humeral motion during a second phase of abduction or flexion (see the last paragraph of page 8 of the Remarks), this argument is persuasive. However, claim 1 is now rejected under 35 U.S.C. 103 as being unpatentable over Branch (2003/0130600) in view of Marti et al. (2015/0360069). Marti has been relied upon for the feature of the gear mechanism.
Regarding the argument that the Examiner’s analysis reads the concept of “moving along with the arm carriage” as meeting the claim requirement that the mechanism “move in an approximately anatomically correct ratio with gleno-humeral motion during a second phase of abduction or flexion” but this conflates passive movement of the pad being carried along with the arm carriage, with the active, controlled movement achieved by Applicant’s gear mechanism that is specifically configured to cause the pad to move (see the first paragraph of page 9 of the Remarks), this argument is not persuasive.
Claim 1 is now rejected under 35 U.S.C. 103 as being unpatentable over Branch (2003/0130600) in view of Marti et al. (2015/0360069). Marti provides the gear mechanism (138) that actively moves the carriage (50, Branch) and the attached pad (84, Branch) to “anatomically imitate[] or match[] a rotating shoulder joint” (see lines 10-13 of [0040] of Marti) as described in the rejection statement(s) above.
Regarding the argument that as described in Applicant’s specification, the gear mechanism (including gears 14, 18, 20, and 22, along with associated chains and linkages) translates rotational motion in a “substantially 2:1 ratio, thereby representing anatomically correct gleno-humeral to scapular motion” (see the first paragraph of page 9 of the Remarks), this argument is not persuasive.
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the gear mechanism including a plurality of gears with associated chains and linkages, translating rotational motion in a substantially 2:1 ratio) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Regarding the argument that Branch does not teach this two-phase approach, and instead Branch maintains the shoulder in place to prevent vertical elevation of the scapula “during the abduction process” as a whole, without distinguishing between a first phase where scapular motion is restricted and a second phase where controlled scapular motion is permitted in an anatomically correct ratio, which the claimed invention is specifically engineered to accommodate (see the second paragraph of page 9 of the Remarks), this argument is not persuasive.
First, it is reiterated that Branch is no longer relied upon to anticipate claim 1. Claim 1 is now rejected under 35 U.S.C. 103 as being unpatentable over Branch (2003/0130600) in view of Marti et al. (2015/0360069) so the modified device will “anatomically imitate[] or match[] a rotating shoulder joint where the humeral head during arm elevation causes the clavicle to rotate upward” see lines 10-13 of [0040] of Marti).
Second, it is reiterated that the claims do not require the scapular restriction mechanism to be stationary at any time. Thus, it is immaterial that Branch’s scapular restriction mechanism moves throughout the abduction process. Branch’s scapular restriction pad (84) still satisfies the claim 1 requirement(s) of: (1) restricting movement of a scapula (vertical elevation is restricted) of the user’s shoulder during (at least) a first phase of abduction, and (2) the gear mechanism (138, as taught by Marti) is configured to cause the pad to move in an approximately anatomically correct ratio with gleno-humeral motion during a second phase of abduction because the gear mechanism (138) “anatomically imitates or matches a rotating shoulder joint where the humeral head during arm elevation causes the clavicle to rotate upward” (see lines 10-13 of [0040] of Marti).
Regarding the argument that claims 2-5 depend from independent claim 1 and thus are believed to be allowable (see the penultimate paragraph of page 9 of the Remarks), this argument is not persuasive because claim 1 is not allowable.
Regarding the argument that claim 8 has been similarly amended to include structural recitations distinguishing the claimed method over Branch, such as “restricting movement of a scapula of the shoulder during a first phase of movement using a scapular restriction mechanism comprising a pad positioned to inhibit scapular motion and allowing movement of the scapula during a second phase of movement in an approximately anatomically correct ratio of gleno-humeral motion to scapular motion by causing the pad to move via a gear mechanism operatively coupled to the pad” and Branch does not teach this method step for the same reasons discussed above (see the first paragraph of page 10 of the Remarks), this argument is not persuasive.
Branch is no longer relied upon to anticipate claim 8. However, claim 8 is now rejected under 35 U.S.C. 103 as being unpatentable over Branch (2003/0130600) in view of Marti et al. (2015/0360069) so the modified method will “anatomically imitate[] or match[] a rotating shoulder joint where the humeral head during arm elevation causes the clavicle to rotate upward” see lines 10-13 of [0040] of Marti). See the 35 USC 103 rejection(s) above. The arguments with respect to claim 1 were not found persuasive (see above), and thus the argument that claim 8 is allowable for the same reasons is not persuasive.
Regarding the argument that claim 9 depends from independent claim 8 and thus is believed to be allowable (see the second paragraph of page 10 of the Remarks), this argument is not persuasive because claim 8 is not allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lan et al. (10,512,581) discloses a related shoulder joint rehabilitation device that allows the upper limb to move freely and has a linear actuator to move the mechanism up/down to follow the shoulder joint. Deshpande et al. (2020/0030173) discloses a related exoskeleton with shoulder actuation joints that permit natural anatomic motion during flexion. Kim et al. (2021/0154081) discloses a related exoskeleton with a mechanism that allows the rotation center of the shoulder to be moved up and down during flexion/extension. Chang et al. (KR 20120015704 A) discloses a shoulder joint rehabilitation device that has a screw-nut actuator to move the mechanism up/down to follow the center of the rotation axis of the shoulder joint.
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 CHRISTOPHER E MILLER whose telephone number is (571)270-1473. The examiner can normally be reached Mon-Fri 9:00-5:30 (Eastern).
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, Timothy Stanis can be reached at 571-272-5139. 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.
/CHRISTOPHER E MILLER/ Examiner, Art Unit 3785
Prosecution Insights