DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-16, drawn to prosthetic knee.
Group II, claim(s) 17-20, drawn to a device for actuation of a prosthetic knee.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Group I and Group II lack unity of invention because even though the inventions of these groups require the technical feature of elongated hollow body having one or more bores, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Steel et al. U.S. Publication 2018/0289513 A1. Steel et al. discloses an elongated hollow body 40 comprising a plurality of bores (see Figure 4).
During a telephone conversation with Charles Sirek on Tuesday, June 23, 2026 a provisional election was made without traverse to prosecute the invention of group I, claims 1-16. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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) 1-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Steel et al. U.S. Publication 2018/0289513 A1.
Regarding Claim 1, Steel et al. discloses prosthetic knee, comprising: a unibody hydraulic cylinder extending between a proximal end and a distal end (see Figures 3-4), comprising: a central bore 54 configured to movably receive a piston 58 attached to a piston rod 62 (paragraph [0052]); one or more bores configured to house a motorized valve system including a valve 80 (paragraph [0055]); one or more pathways 66 via which hydraulic fluid flows (paragraph [0054]), and one or more bores configured to house 100 cabling connecting the motorized valve system to a circuit board (paragraph [0055]), wherein the central bore and one or more pathways are in fluid communication with each other via the valve (paragraph [0055]).
Regarding Claim 2, Steel et al. discloses wherein the one or more bores configured to house a motorized valve system 80 are two bores, each configured to house a motorized valve system with a valve (as seen in Figure 3-4 and paragraph [0055-0056]).
Regarding Claim 3, Steel et al. discloses wherein the unibody hydraulic cylinder has a single sealing surface 72 at one end thereof (as seen in Figures 3-4, paragraph [0055]).
Regarding Claim 4, Steel et al. discloses wherein the single sealing surface 72 is at the distal end of the unibody hydraulic cylinder (as seen in Figure 3-4 and paragraph [0055]).
Regarding Claim 5, Steel et al. discloses wherein the central bore 54, one or more bores configured to house the motorized valve system, one or more pathways and one or more bores configured to house cabling extend at least partially along parallel axes along a length of the unibody hydraulic cylinder.
Regarding Claim 6, Steel et al. discloses wherein the central bore 54 has a larger diameter than the one or more bores configured to house the motorized valve system (as seen in figure 3-4).
Regarding Claim 7, Steel et al. discloses wherein the one or more bores configured to house the motorized valve system has a larger diameter than the one or more pathways (as seen in Figure 3).
Regarding Claim 8, Steel et al. discloses wherein the one or more pathways are two pathways 66, 66a, 66b (as seen in Figures 3-4).
Regarding Claim 9, Steel et al. discloses a unibody hydraulic cylinder (see Figure 3 and 4) for a prosthetic knee, comprising: a central bore 54 configured to movably receive a piston 58 attached to a piston rod 62 (paragraph [0052]); one or more bores configured to house a motorized valve system including a valve 80 (paragraph [0055]); one or more pathways 66 via which hydraulic fluid flows (paragraph [0054]), and one or more bores configured to house 100 cabling connecting the motorized valve system to a circuit board (paragraph [0055]), wherein the central bore and one or more pathways are in fluid communication with each other via the valve (paragraph [0055]).
Regarding Claim 10, Steel et al. discloses wherein the one or more bores configured to house a motorized valve system 60 are two bores, each configured to house 100 a motorized valve system with a valve (as seen in Figures 3-4 and paragraph [0052], [0054]).
Regarding Claim 11, Steel et al. discloses further comprising a single sealing surface 72 at one end of the unibody hydraulic cylinder (as seen in Figure 4 and paragraph [0052]).
Regarding Claim 12, Steel et al. discloses wherein the single sealing surface 72 is at a distal end of the unibody hydraulic cylinder (paragraph [0052]).
Regarding Claim 13, Steel et al. discloses wherein the central bore 54, one or more bores configured to house the motorized valve system 60, one or more pathways 66, 66a, 66b and one or more bores configured to house cabling extend at least partially along parallel axes (paragraph [0058]).
Regarding Claim 14, Steel et al. discloses wherein the central bore 54 has a larger diameter than the one or more bores configured to house the motorized valve system 60 (as seen in figure 4).
Regarding Claim 15, Steel et al. discloses wherein the one or more bores configured to house the motorized valve system 60 has a larger diameter than the one or more pathways 66, 66a, 66b (as seen in Figure 4).
Regarding Claim 16, Steel et al. discloses wherein the one or more pathways are two pathways 66, 66a, 66b (as seen in Figure 3-4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEEMA MATHEW whose telephone number is (571) 270-1452. The examiner can normally be reached on Monday-Friday 9 am – 5 pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, SPE, Melanie Tyson at (571) 272-9062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SEEMA MATHEW/
Primary Examiner, Art Unit 3774
Prosecution Insights