DETAILED ACTION
This action is in response to the Preliminary Amendment filed 1/23/2025. Currently, claims 8-27 are pending in the application. Claims 1-7 are cancelled by Applicant. New claims 8-27 are added by Applicant.
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 .
Claim Objections
Claim 19 is objected to because of the following informalities: in order to improve the clarity of the claim(s), “a wearer” in line 4 of the claim should be amended to recite ---the wearer---. 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 8-27 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. Claim 8 recites the limitation "the lateral sidewall of said heel enclosure" in lines 16-17 of the claim. There is insufficient antecedent basis for this limitation in the claim. Claims 9-27 depend on claim 8 and therefore, include the same error.
Claims 8-27 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. Claim 8 recites the limitation "the medial sidewall of said heel enclosure" in lines 18-19 of the claim. There is insufficient antecedent basis for this limitation in the claim. Claims 9-27 depend on claim 8 and therefore, include the same error.
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.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,957,611. Although the claims at issue are not identical, they are not patentably distinct from each other. Regarding claim 8, all of the limitations therein are substantially recited and anticipated by claim 1 of US ‘611.
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.
Claim(s) 8-17 and 19-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Birmingham (US 6,299,587) in view of Dittmer et al. (US 6,669,659).
In regards to claims 8 and 24, Birmingham teaches in Figures 1 and 2 (note: Figure 2 is taught in column 3, lines 7-9 to be the ankle-foot orthosis system 10 of Figure 1 but with an alternative embodiment of the post member 12a, 12b)
a heel enclosure (attachment device 26, U-shaped member 28, first attachment post 40, second post member 46) having a rear portion (arched portion of U-shaped member 28 positioned rearward of attachment post 40 and second post member 46) and a forward portion (horizontal portions of U-shaped member 28 positioned forward of attachment post 40 and second post member 46, first attachment post 40, second post member 46), wherein
said rear portion (arched portion of U-shaped member 28 positioned rearward of attachment post 40 and second post member 46) is for receiving a heel portion of a shoe (as shown in Figure 1),
the external ankle brace (ankle-foot orthosis system 10) is configured to restrict movement of an ankle (inasmuch no mechanism to permit inversion or eversion of the ankle is taught) in a first direction (inversion-eversion) and permit movement of the ankle (via pivotal connection, taught in columns 3-4, lines 60-1) in a second direction (dorsiflexion-plantarflexion) normal to (dorsiflexion-plantarflexion movement occurs in a plane that is perpendicular to the plane of inversion-eversion) the first direction (inversion-eversion), wherein said external ankle brace (ankle-foot orthosis system 10) is configured to be disposed on an exterior of (as shown in Figure 1) the shoe (shoe 30) and the shoe (shoe 30) having (as taught in column 3, lines 54-57) the heel portion (heel 38), a sole (sole sidewall 32), a toe (front portion 36), a top (upper portion of shoe 30), and oppositely disposed sides (left and right sides of shoe 30),
said forward portion (horizontal portions of U-shaped member 28 positioned forward of attachment post 40 and second post member 46, first attachment post 40, second post member 46) includes a medial sidewall (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the medial side of ankle-foot orthosis system 10) and a lateral sidewall (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the lateral side of ankle-foot orthosis system 10) for collectively surrounding (as shown in Figure 2) the oppositely disposed sides (medial and lateral sides) of the shoe (shoe 30), the medial (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the medial side of ankle-foot orthosis system 10) and lateral (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the lateral side of ankle-foot orthosis system 10) sidewalls being cantilevered (as shown in Figure 2) from the rear portion (arched portion of U-shaped member 28 positioned rearward of attachment post 40 and second post member 46) of the heel enclosure (attachment device 26, U-shaped member 28, first attachment post 40, second post member 46), the medial (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the medial side of ankle-foot orthosis system 10) and lateral (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the lateral side of ankle-foot orthosis system 10) sidewalls each being configured to extend from (as shown in Figure 1) the heel portion (heel 38) of the shoe (shoe 30) in a longitudinal direction beyond a talus of a wearer’s foot and toward the wearer’s toe (as shown in Figure 1), each of the medial (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the medial side of ankle-foot orthosis system 10) and lateral (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the lateral side of ankle-foot orthosis system 10) sidewalls being at least partially located adjacent (near) to (as shown in Figure 1) an instep area of a corresponding medial or lateral side of the shoe (shoe 30), and
the external ankle brace (ankle-foot orthosis system 10) further comprises:
a lateral upright extension (lateral post 12a or 12b) selectively (via pivotal connection, taught in columns 3-4, lines 60-1) perpendicular to (as shown in Figure 2) at least the lateral sidewall (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the lateral side of ankle-foot orthosis system 10) of said heel enclosure (attachment device 26, U-shaped member 28, first attachment post 40, second post member 46) and pivotally attached (via pivotal connection, taught in columns 3-4, lines 60-1) to said lateral sidewall (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the lateral side of ankle-foot orthosis system 10);
a medial upright extension (medial post 12a or 12b) selectively (via pivotal connection, taught in columns 3-4, lines 60-1) perpendicular to (as shown in Figure 2) at least the medial sidewall (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the medial side of ankle-foot orthosis system 10) of said heel enclosure (attachment device 26, U-shaped member 28, first attachment post 40, second post member 46) and pivotally attached (via pivotal connection, taught in columns 3-4, lines 60-1) to said medial sidewall (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the medial side of ankle-foot orthosis system 10).
Birmingham does not teach a lower fastening system comprising at least one connecting strap for connecting said lateral sidewall to said medial sidewall underneath the sole of the shoe; and wherein the at least one connecting strap is a synthetic strap.
However, Dittmer et al. teaches in Figures 1 and 4 and column 3, lines 37-41 an analogous device that includes a lower fastening system (lowermost strap 60) comprising at least one connecting strap (lowermost strap 60) for connecting (column 3, lines 37-41 teaches “Velcro strap 60 wraps around opposing segments of assemblies 12 and 14 and the leg of the person to hold the splint firmly in place”) said lateral sidewall (lateral segment 12f or 14f) to said medial sidewall (medial segment 12f or 14f) underneath the sole of the shoe (as shown in Figure 1, the lowermost strap 60 extends underneath the sole of the shoe); and wherein the at least one connecting strap (lowermost strap 60) is a synthetic strap (column 3, line 39 teaches “Velcro strap 60;” Velcro® is a synthetic material).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the device of Birmingham to also include a lower fastening system comprising at least one connecting strap for connecting said lateral sidewall to said medial sidewall underneath the sole of the shoe; and wherein the at least one connecting strap is a synthetic strap as taught by Dittmer et al. because this element is known to provide an additional mechanism to hold the brace more “firmly in place,” as Dittmer et al. teaches in column 3, lines 37-41.
In regards to claim 9, Birmingham and Dittmer et al. teach the apparatus of claim 8. Birmingham teaches in Figure 2 and columns 3-4, lines 60-1 a lateral ankle joint (formed by pivotal connection taught in columns 3-4, lines 60-1) that pivotally connects (as taught in columns 3-4, lines 60-1) said lateral upright extension (lateral post 12a or 12b) to said lateral sidewall (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the lateral side of ankle-foot orthosis system 10) and allows said lateral upright extension (lateral post 12a or 12b) to move in the second direction (dorsiflexion-plantarflexion) relative to said heel enclosure (attachment device 26, U-shaped member 28, first attachment post 40, second post member 46).
In regards to claim 10, Birmingham and Dittmer et al. teach the apparatus of claims 8 and 9. Birmingham teaches in Figure 2 that said lateral ankle joint (formed by pivotal connection taught in columns 3-4, lines 60-1) in combination with said lateral upright extension (lateral post 12a or 12b) and said heel enclosure (attachment device 26, U-shaped member 28, first attachment post 40, second post member 46) is configured to prevent movement of the ankle in (inasmuch the pivotal connection, attachment device 26, U-shaped member 28, first attachment post 40, second post member 46 and lateral post 12a or 12b form a physical support that inhibits inversion or eversion of the ankle) the first direction (inversion-eversion).
In regards to claim 11, Birmingham and Dittmer et al. teach the apparatus of claims 8 and 9. Birmingham teaches in Figure 2 and columns 3-4, lines 60-1 a medial ankle joint (formed by pivotal connection taught in columns 3-4, lines 60-1) that pivotally connects (as taught in columns 3-4, lines 60-1) said medial upright extension (medial post 12a or 12b) to said medial sidewall (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the medial side of ankle-foot orthosis system 10) and allows said medial upright extension (medial post 12a or 12b) to move in the second direction (dorsiflexion-plantarflexion) relative to said heel enclosure (attachment device 26, U-shaped member 28, first attachment post 40, second post member 46).
In regards to claim 12, Birmingham and Dittmer et al. teach the apparatus of claim 8. Birmingham teaches in Figure 1 that the shoe (shoe 30) is an athletic shoe (Figure 1 teaches shoe 30 being a sneaker, which is an athletic shoe).
In regards to claim 13, Birmingham and Dittmer et al. teach the apparatus of claim 8. Birmingham teaches in Figure 2 an upright fastening system (calf band 18a) comprising one connecting strap (calf band 18a), the one connecting strap (calf band 18a) being the only connecting strap of (as shown in Figure 2) the upright fastening system (calf band 18a), the one connecting strap (calf band 18a) for connecting (as shown in Figure 2) said lateral upright extension (lateral post 12a or 12b) to said medial upright extension (medial post 12a or 12b) above the ankle (as shown in Figure 2, the calf band 18a connects posts 12a and 12b at a position that would be located above the wearer’s ankle in use).
Birmingham does not teach the one connecting strap for removably connecting said lateral upright extension to said medial upright extension above the ankle.
However, Dittmer et al. teaches in Figure 1 and column 3, lines 38-41 an analogous device with the one connecting strap (uppermost strap 60) for removably connecting (column 3, lines 37-41 teaches “Velcro strap 60 wraps around opposing segments of assemblies 12 and 14 and the leg of the person to hold the splint firmly in place;” Velcro® is a removable fastening mechanism) said lateral upright extension (lateral segments 12a-12e or 14a-14e) to said medial upright extension (medial segments 12a-12e or 14a-14e) above the ankle (as shown in Figure 1, the uppermost strap 60 connects segments 12a-12e and 14a-14e at a position that would be located above the wearer’s ankle in use).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the one connecting strap of Birmingham as modified by Dittmer et al. to provide the one connecting strap for removably connecting said lateral upright extension to said medial upright extension above the ankle as taught by Dittmer et al. because this element is known to enable the upright fastening system to more firmly and adjustably “hold the splint firmly in place,” as Dittmer et al. teaches in column 3, lines 37-41.
In regards to claim 14, Birmingham and Dittmer et al. teach the apparatus of claims 8, 9 and 11. Birmingham teaches in Figure 2 that the external ankle brace (ankle-foot orthosis system 10) prevents inversion and eversion (inasmuch no mechanism to permit inversion or eversion of the ankle is taught; further, the pivotal connections, attachment device 26, U-shaped member 28, first attachment post 40, second post member 46, post 12a and post 12b form physical supports that inhibit inversion or eversion of the ankle), the movement of the ankle in the first direction (inversion-eversion) being inversion.
In regards to claim 15, Birmingham and Dittmer et al. teach the apparatus of claims 8, 9 and 11. Birmingham teaches in Figure 2 and columns 3-4, lines 60-1 that the external ankle brace (ankle-foot orthosis system 10) permits dorsiflexion and plantar flexion (via pivotal connection, taught in columns 3-4, lines 60-1), the movement of the ankle in the second direction (dorsiflexion-plantarflexion) being dorsiflexion.
In regards to claim 16, Birmingham and Dittmer et al. teach the apparatus of claim 8. Birmingham teaches in Figure 2 at least one connecting strap (calf band 18a) of the upper fastening system (calf band 18a).
Birmingham does not teach that the at least one connecting strap of the upper fastening system is connected, at locations forward of the lateral upright extension and medial upright extension, to portions of the lateral sidewall and of the medial sidewall which extend substantially longitudinally from the rear portion.
However, Dittmer et al. teaches in Figure 1 and column 3, lines 37-41 an analogous device wherein the at least one connecting strap (uppermost strap 60 and middle strap 60) of the upper fastening system (uppermost strap 60 and middle strap 60) is connected (indirectly, via lateral segments 12a-12e or 14a-14e; column 3, lines 37-41 teaches “Velcro strap 60 wraps around opposing segments of assemblies 12 and 14 and the leg of the person to hold the splint firmly in place”), at locations forward of (as shown in Figure 1) the lateral upright extension (lateral segments 12a-12e or 14a-14e) and medial upright extension (medial segments 12a-12e or 14a-14e), to portions of (as shown in Figure 1) the lateral sidewall (lateral segment 12f or 14f) and of the medial sidewall (medial segment 12f or 14f) which extend substantially longitudinally from (as shown in Figure 1, the segments 12f, 14f extend longitudinally forward from the rear edge of lateral segment 12f or 14f) the rear portion (rear edge of lateral segment 12f or 14f).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the at least one connecting strap of the upper fastening system of Birmingham as modified by Dittmer et al. to provide that the at least one connecting strap of the upper fastening system is connected, at locations forward of the lateral upright extension and medial upright extension, to portions of the lateral sidewall and of the medial sidewall which extend substantially longitudinally from the rear portion as taught by Dittmer et al. because this element is known to enable the upright fastening system to more firmly and adjustably “hold the splint firmly in place,” as Dittmer et al. teaches in column 3, lines 37-41.
In regards to claim 17, Birmingham and Dittmer et al. teach the apparatus of claims 8, 9 and 11. Birmingham teaches in Figure 2 and 3-4, lines 60-1 that said medial ankle joint (formed by pivotal connection taught in columns 3-4, lines 60-1) in combination with said medial upright extension (medial post 12a or 12b) and said heel enclosure (attachment device 26, U-shaped member 28, first attachment post 40, second post member 46) is configured to prevent movement in (inasmuch the pivotal connections, attachment device 26, U-shaped member 28, first attachment post 40, second post member 46, post 12a and post 12b form physical supports that inhibit inversion or eversion of the ankle) the first direction (inversion-eversion).
In regards to claim 19, Birmingham and Dittmer et al. teach the apparatus of claim 8. Birmingham teaches in Figure 2 an upright fastening system (calf band 18a) comprising at least one connecting strap (calf band 18a) for connecting (as shown in Figure 2) said lateral upright extension (lateral post 12a or 12b) to said medial upright extension (medial post 12a or 12b) above the ankle (as shown in Figure 2, the calf band 18a connects posts 12a and 12b at a position that would be located above the wearer’s ankle in use).
Birmingham does not teach the upright fastening system comprising at least one connecting strap for removably connecting said lateral upright extension to said medial upright extension above the ankle, the at least one connecting strap of the upright fastening system extending in front of the shin of a wearer of the shoe when worn by the wearer.
However, Dittmer et al. teaches in Figure 1 and column 3, lines 38-41 an analogous device with an upright fastening system (middle strap 60) comprising at least one connecting strap (middle strap 60) for removably connecting (column 3, lines 37-41 teaches “Velcro strap 60 wraps around opposing segments of assemblies 12 and 14 and the leg of the person to hold the splint firmly in place;” Velcro® is a removable fastening mechanism) said lateral upright extension (lateral segments 12a-12e or 14a-14e) to said medial upright extension (medial segments 12a-12e or 14a-14e) above the ankle (as shown in Figure 1, the middle strap 60 connects segments 12a-12e and 14a-14e at a position that would be located above the wearer’s ankle in use), the at least one connecting strap (middle strap 60) of the upright fastening system (middle strap 60) extending in front of the shin of a wearer of the shoe when worn by the wearer (as shown in Figure 1).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the upright fastening system of Birmingham as modified by Dittmer et al. to provide the upright fastening system comprising at least one connecting strap for removably connecting said lateral upright extension to said medial upright extension above the ankle, the at least one connecting strap of the upright fastening system extending in front of the shin of a wearer of the shoe when worn by the wearer as taught by Dittmer et al. because this element is known to enable the upright fastening system to more firmly and adjustably “hold the splint firmly in place,” as Dittmer et al. teaches in column 3, lines 37-41.
In regards to claim 20, Birmingham and Dittmer et al. teach the apparatus of claims 8-10. Birmingham teaches in Figure 2 an upright fastening system (calf band 18a) comprising at least one connecting strap (calf band 18a) for connecting (as shown in Figure 2) said lateral upright extension (lateral post 12a or 12b) to said medial upright extension (medial post 12a or 12b) above the ankle (as shown in Figure 2, the calf band 18a connects posts 12a and 12b at a position that would be located above the wearer’s ankle in use).
Birmingham does not teach the upright fastening system comprising at least one connecting strap for removably connecting said lateral upright extension to said medial upright extension above the ankle.
However, Dittmer et al. teaches in Figure 1 and column 3, lines 38-41 an analogous device with the upright fastening system (uppermost strap 60) comprising at least one connecting strap (uppermost strap 60) for removably connecting (column 3, lines 37-41 teaches “Velcro strap 60 wraps around opposing segments of assemblies 12 and 14 and the leg of the person to hold the splint firmly in place;” Velcro® is a removable fastening mechanism) said lateral upright extension (lateral segments 12a-12e or 14a-14e) to said medial upright extension (medial segments 12a-12e or 14a-14e) above the ankle (as shown in Figure 1, the uppermost strap 60 connects segments 12a-12e and 14a-14e at a position that would be located above the wearer’s ankle in use).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the upright fastening system of Birmingham as modified by Dittmer et al. to provide the upright fastening system comprising at least one connecting strap for removably connecting said lateral upright extension to said medial upright extension above the ankle as taught by Dittmer et al. because this element is known to enable the upright fastening system to more firmly and adjustably “hold the splint firmly in place,” as Dittmer et al. teaches in column 3, lines 37-41.
In regards to claim 21, Birmingham and Dittmer et al. teach the apparatus of claims 8-10. Birmingham teaches in Figure 2 and columns 3-4, lines 60-1 a medial ankle joint (formed by pivotal connection taught in columns 3-4, lines 60-1) that pivotally connects (as taught in columns 3-4, lines 60-1) said medial upright extension (medial post 12a or 12b) to said medial sidewall (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the medial side of ankle-foot orthosis system 10) and allows said medial upright extension (medial post 12a or 12b) to move in the second direction (dorsiflexion-plantarflexion) relative to said heel enclosure (attachment device 26, U-shaped member 28, first attachment post 40, second post member 46).
In regards to claim 22, Birmingham and Dittmer et al. teach the apparatus of claims 8, 9 and 11. Birmingham teaches in Figure 2 that said lateral ankle joint (formed by pivotal connection taught in columns 3-4, lines 60-1) in combination with said lateral upright extension (lateral post 12a or 12b) and said heel enclosure (attachment device 26, U-shaped member 28, first attachment post 40, second post member 46) and said medial ankle joint (formed by pivotal connection taught in columns 3-4, lines 60-1) in combination with said medial upright extension (medial post 12a or 12b) and said heel enclosure (attachment device 26, U-shaped member 28, first attachment post 40, second post member 46) are configured to prevent movement in (inasmuch the pivotal connections, attachment device 26, U-shaped member 28, first attachment post 40, second post member 46, post 12a and post 12b form physical supports that inhibit inversion or eversion of the ankle) the first direction (inversion-eversion).
In regards to claim 23, Birmingham and Dittmer et al. teach the apparatus of claim 8. Birmingham teaches in Figures 1 and 2 and column 4, lines 43-45 an upper fastening system (strap 90) comprising at least one connecting strap (strap 90) for (indirectly) connecting (via attachment between attachment posts 40, 46, as taught in column 4, lines 43-44) said lateral sidewall (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the lateral side of ankle-foot orthosis system 10) to said medial sidewall (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the medial side of ankle-foot orthosis system 10) only across the top of (as shown in Figure 1) the shoe (shoe 30), wherein the at least one connecting strap (strap 90) of the upper fastening system (strap 90) is for removably (column 4, lines 43-45 teaches “selectively detachable strap 90”) connecting (indirectly, via attachment between attachment posts 40, 46, as taught in column 4, lines 43-44) the lateral sidewall (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the lateral side of ankle-foot orthosis system 10) to the medial sidewall (horizontal portion of U-shaped member 28 positioned forward of attachment post 40 or second post member 46 and positioned on the medial side of ankle-foot orthosis system 10) across the top of (as shown in Figure 1) the shoe (shoe 30).
In regards to claim 25, Birmingham and Dittmer et al. teach the apparatus of claim 8. Birmingham does not teach an upright fastening system comprising two separate connecting straps for removably connecting said lateral upright extension to said medial upright extension above the ankle.
However, Dittmer et al. teaches in Figure 1 an analogous device with an upright fastening system (uppermost strap 60 and middle strap 60) comprising two separate connecting straps (uppermost strap 60 and middle strap 60) for removably connecting (column 3, lines 37-41 teaches “Velcro strap 60 wraps around opposing segments of assemblies 12 and 14 and the leg of the person to hold the splint firmly in place;” Velcro® is a removable fastening mechanism) said lateral upright extension (lateral segments 12a-12e or 14a-14e) to said medial upright extension (medial segments 12a-12e or 14a-14e) above the ankle (as shown in Figure 1, uppermost strap 60 and middle strap 60 connect to assemblies 12 and 14 at locations positioned above the user’s ankle).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the device of Birmingham as modified by Dittmer et al. to include an upright fastening system comprising two separate connecting straps for removably connecting said lateral upright extension to said medial upright extension above the ankle as taught by Dittmer et al. because this element is known to enable the upright fastening system to more securely and adjustably “hold the splint firmly in place,” as Dittmer et al. teaches in column 3, lines 37-41.
In regards to claim 26, Birmingham and Dittmer et al. teach the apparatus of claim 8. Birmingham and Dittmer et al. do not teach that the at least one connecting strap for connecting said lateral sidewall to said medial sidewall underneath the sole of the shoe comprises two connecting straps for connecting said lateral sidewall to said medial sidewall underneath the sole of the shoe.
However, it would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to provide that the at least one connecting strap for connecting said lateral sidewall to said medial sidewall underneath the sole of the shoe comprises two connecting straps for connecting said lateral sidewall to said medial sidewall underneath the sole of the shoe, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. One having ordinary skill in the art before the effective filing of the present invention would find it obvious that providing two of the at least one connecting strap for connecting said lateral sidewall to said medial sidewall underneath the sole of the shoe taught by Birmingham as modified by Dittmer et al. would provide an additional mechanism to hold the brace more firmly in place.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Birmingham (US 6,299,587), in view of Dittmer et al. (US 6,669,659) and further in view of Peters (US 5,676,642).
In regards to claim 18, Birmingham and Dittmer et al. teach the apparatus of claims 8, 9 and 11. Birmingham teaches in Figure 2 that said heel enclosure (attachment device 26, U-shaped member 28, first attachment post 40, second post member 46) further includes oppositely disposed upper (topmost edges of first attachment post 40 and second post member 46) and lower ends (bottommost edges of U-shaped member 28).
Birmingham and Dittmer et al. do not teach where said medial ankle joint is positioned closer to said upper end than the position of said lateral ankle joint.
However, Peters teaches in Figures 1 and 4, column 5, lines 17-28 and column 6, lines 32-36 an analogous device where said medial ankle joint (inner rivet 12; column 6, lines 32-36 teaches that the inner rivet 12 defines a pivot point) is positioned closer to said upper end than the position of (Figure 4, column 5, lines 17-28 and column 6, lines 32-36 teach that the inner rivet 12 is positioned closer to the topmost edges of uprights 36, 38 than the outer rivet 14) said lateral ankle joint (outer rivet 14; column 6, lines 32-36 teaches that the outer rivet 14 defines a pivot point).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the medial and lateral ankle joints of Birmingham as modified by Dittmer et al. such that said medial ankle joint is positioned closer to said upper end than the position of said lateral ankle joint as taught by Peters because this element is known to enable the external ankle brace to pivot “along the same axis as the foot, providing maximum comfort and maximum flexing of the ankle forward and backward (plantarflexion and dorsiflexion),” as Peters teaches in column 5, lines 17-28.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Birmingham (US 6,299,587), in view of Dittmer et al. (US 6,669,659) and further in view of Drillio (US 2014/0066829).
In regards to claim 27, Birmingham and Dittmer et al. teach the apparatus of claim 8. Birmingham and Dittmer do not teach that the heel enclosure is a rigid heel enclosure.
However, Drillio teaches in the abstract and [0025] an analogous device with the heel enclosure (“cup for receiving the heel,” taught in the abstract) being rigid (the abstract teaches “a rigid, unitary cup for receiving the heel”).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the heel enclosure of Birmingham as modified by Dittmer et al. to be rigid as taught by Drillio because this element is known to enable the heel enclosure to provide support and stability.
Conclusion
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/VICTORIA HICKS FISHER/Primary Examiner, Art Unit 3786 11/10/2025