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 .
This office action is in response to the preliminary amendment filed 12/9/24. As directed by the amendment, claims 1-20 have been cancelled and claims 21-40 have been added. As such, claims 21-40 are pending in the instant application.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21 and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 17 of U.S. Patent No. 11,944,581.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include each structural and functional limitation as claimed (see patent claim 2 which sets forth the second exoskeleton being set forth for a second foot of a user, claim 1 including the first exoskeleton, actuator, controller including processor and memory with sending of packet(s) for determination of latency between the two exoskeletons, method claims 17 and 16 being the equivalent of system claims 2 and 1, respectively), but includes additional limitations (such as the exoskeleton explicitly being a boot instead of generally for the foot/feet of the user) such that any infringement on the patent claims would result in infringement on the instant claims.
Instant claim 21 corresponds to patent claim 2. Instant claim 35 corresponds to patent claim 17.
Claims 21-31, 33-37, and 38-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 3-4, 8, 5, 9, 7, 2, 16, 18, 20, 17 of U.S. Patent No. 11,944,581 in view of Mooney et al. (2018/0104075).
Regarding instant claim 21, the patent claim includes each structural and functional limitation as claimed (see claim 1 including the first exoskeleton, actuator, controller including processor and memory with sending of packet(s) for determination of latency between the two exoskeletons, method claims 17 and 16 being the equivalent of system claims 2 and 1, respectively), but is silent as to including the additional exoskeleton being for the other foot of the user; however, Mooney discloses a similar system/method which includes use of exoskeletons, and communication therebetween, for each foot of the user (see Mooney claim 13 for example). Thus 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 patent claim to use multiple exoskeleton devices, one for each foot, as taught by Mooney, in order to provide gait assistance for a user in need of such assistance.
Instant claim 21 corresponds to patent claim 1 or 9. Instant claim 22-23 correspond to patent claims 3-4, respectively. Instant claim 24 corresponds to patent claim 8. Instant claim 25 corresponds to patent claim 5. Instant claim 26 and 30-31 corresponds to patent claim 9. Instant claims 27-29 corresponds to patent claim 7. Instant claim 33 corresponds to patent claim 8. Instant claim 34 corresponds to patent claim 1. Instant claim 35 corresponds to patent claim 16 or the obvious use of patent claim 1 which discloses a method. Instant claim 36 corresponds to patent claim 18. Instant claim 37 corresponds to patent claim 20. Instant claim 38 corresponds to patent claim 17. Instant claim 39 corresponds to the use of patent claim 9. Instant claim 40 corresponds to the use of patent claim 8.
Claim 32 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,944,581 in view of Mooney and Clausen (2009/0222105).
Regarding instant claim 32, the modified patent claim 2 is silent as to explicitly disclosing a timer; however, Clausen teaches a similar exoskeleton which includes this element (see Clausen para. 0235). Thus it would have been obvious to modify the patent claim 2 system to include a timer, as taught by Clausen, as this is a well-known element and would have been obvious to include for coordination between elements for gait assistance.
Claims 21-22 and 24-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11, 17, 12-15, 19, and 20 of U.S. Patent No. 11,147,733.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include each structural and functional limitation as claimed (see patent claim 11 which sets forth the first and second boot exoskeleton for the user’s feet, processor and memory defining the controller, the electric motor being the actuator which provides torque) but includes additional limitations (see patent claim 11, specific type of actuator being an electric motor for example) such that the patent claims are narrower versions of the instant claims. As such, any infringement on the patent claims would result in infringement on the instant claims.
Instant claim 21 corresponds to patent claim 11. Instant claims 22 and 24 corresponds to patent claim 17. Instant claims 25-26 correspond to patent claim 11. Instant claims 27-30 correspond to patent claims 12-15, respectively. Instant claim 31 corresponds to patent claim 31. Instant claim 32 corresponds to patent claim 19. Instant claims 33 and 34 correspond to patent claim 20.
Claim 23 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,147,733 in view of Olson et al. (2012/0089063).
Regarding instant claim 23, the patent claim 11 is silent as to including a display for outputting the indication of the latency via a user interface; however, Olson teaches a similar exoskeleton device which includes a display/user interface (see Olson para. 0113 and 0117 for example). Thus 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 patent claim 11 to include such a display/user interface, as taught by Olson, in order to provide visual display to the user information regarding the system (see Olson para. 0113 and 0117).
Claims 35-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 10, and 5 of U.S. Patent No. 11,147,733 in view of Clausen.
Regarding claim 35, the patent claim 1 sets forth a method of use for an exoskeleton which includes each limitation as claimed (see patent claim 1 which sets forth the first and second exoskeleton boots, sending packets to determine latency and generating command based thereon, electric motor being the actuator for providing torque), but is silent as to performing these tasks with a controller including one or more processors coupled to memory; however, Clausen teaches a similar exoskeleton which operates under the control of a controller including a processor coupled to memory (see Clausen para. 0302-0303). Thus 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 patent claim 1 to include these necessary elements, the processor and memory as taught by Clausen, as this would have been obvious to choose such a well-known controller and one would expect the modified patent claim 1 device to perform equally as well.
Instant claims 35 and 37 corresponds to patent claim 1. Instant claim 36 corresponds to patent claim 7. Instant claim 38 corresponds to patent claim 38. Instant claims 39-40 correspond to patent claim 5.
Allowable Subject Matter
Claims 21-40 would be allowable if rewritten or amended to overcome the non-statutory double patenting rejections set forth in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Rogozinski (2018/0177665), Zoss et al. (2013/0231595), Choi et al. (2019/0070060), Yagi (2018/0325764), and Olson et al. (2012/0089063) disclose exoskeleton systems/methods similar to the claimed/disclosed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLIN W STUART whose telephone number is (571)270-7490. The examiner can normally be reached M-F: 9-5.
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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.
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/COLIN W STUART/Primary Examiner, Art Unit 3785
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