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
Applicant’s election without traverse of invention II (claims 6-11) in the reply filed on 07/10/26 is acknowledged.
Claims 1-5 and 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/10/26.
The Examiner respectfully notes that while Applicant’s response states that amendments to claim 12 incorporate this claim and its dependent claims into the elected invention, this is incorrect, and claims 12-20 remain withdrawn as being drawn towards a non-elected method of use, since the device of claim 6 can be used with another and materially different method, such as a method of making.
Specification
The disclosure is objected to because of the following informalities:
The specification ([0030]) states that the device (20) is seen in figures 1-3, and includes both the exoskeleton (30) and a robotic hand (100), the figures do not actually show the exoskeleton and “robotic hand” as being part of one device, or even touching one another. This is further unclear since an exoskeleton is understood to be an external element to help or augment part of a user, as opposed to replacing part of the body of the user (as would be understood to occur for a “robotic hand”).
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the exoskeleton, the (singular) device comprising the glove and exoskeleton, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to because:
-item 30 is supposed to be drawn towards an “exoskeleton” but figure 1, item 30 does not show an exoskeleton. The item appears to be pointing towards a shoulder of a user
-Figure 3 item 94 is drawn towards an “active system” but it is unclear what an “active system” is
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 7-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 7 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 7 positively claims “a user”.
Claims 8-11 are rejected for depending on claim 7.
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: “retaining device” in claim 6.
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 § 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 6-11 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 7 is indefinite for claiming the device further comprises an exoskeleton. As the Examiner best understands from the specification and figures, there are two devices: one includes the glove/tubing system/sensors/actuator as is described in claim 6, and the other comprises the exoskeleton. The specification states that these are part of the same device, but the specification does not describe how the two work in conjunction with one another, are connected, and if/how they are related to one another. They appear (from figures) and are described (from the specification) as being two distinct devices with different locations, purposes, functions, effects, parts, etc. and they are not described as being connected or related in any way. Further, while the specification ([0030]) states that the device (20) is seen in figures 1-3, and includes both the exoskeleton (30) and a robotic hand (100), the figures do not actually show the exoskeleton and “robotic hand” as being part of one device, or even touching one another. The Examiner is accordingly unclear on what is actually part of the device, and what the elements of the device are, and how they are interconnected or how they function with regards to one another. It appears from the description, specification, and figures that these are actually two distinct devices, making it unclear how the claimed device with a glove, tubing system, sensors, and actuators also includes an exoskeleton with drums, springs, and a cable.
Remaining claims are indefinite for depending on an indefinite claim.
Claim limitation “retaining device” in claim 6 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification mentions that there is a “retaining device” wrapped around the tube, and uses that phrase four times. However, there is no location within the specification that describes or elaborates on what this “retaining device” might be or what it might include. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 6-11 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wijesundara et al. (US 20180303698 A1) hereinafter known as Wijesundara.
Regarding claim 6 Wijesundara discloses a device comprising:
a glove (Figures 10a-b and figure 34 item 86) comprising digits (Figures 10a-b and figure 34 show five digits),
a tubing system (Figures 1a, 4, 10a-b, 11 and 34 show a tubing system which connects the fluid supply 26 to the passage 30; see also [0128] fluid passageways connect fluid communication between fluid source 26 and cells of actuators) in fluid communication with a fluid supply (26),
a plurality of sensors coupled to the digits (Figure 34 item 72b; [0127]), and
a plurality of soft actuators (items 10a-f) coupled to the tubing system and sensors ([0080], [0127], Figures 1a, 34), wherein the actuators comprise a thickened base (Figure 1b item 54), a fluid cavity above the base and being defined by a tube (Figures 1a-d item 30), and a retaining device wrapped around the tube (Figure 4 item 80).
Regarding claim 7 Wijesundara discloses the device of claim 6 substantially as is claimed,
wherein Wijesundara further discloses an exoskeleton comprising a preloaded elastic spring, a plurality of drums coupled to the spring, and a cable intended to be coupled to a user, the drums, and the spring (this claim appears to be claiming a separate device – e.g. an exoskeleton and its parts) as opposed to further limiting the claimed “device” of claim 6).
Regarding claim 8 Wijesundara discloses the device of claim 7 substantially as is claimed,
wherein Wijesundara further discloses the drums comprise a first drum and a second drum (this again appears to be further limiting part of the exoskeleton, which does not appear to be a positively claimed part of the “device”, but rather a separate device intended to be used in conjunction with the claimed device).
Regarding claim 9 Wijesundara discloses the device of claim 8 substantially as is claimed,
wherein Wijesundara further discloses the first drum comprises a storage drum and a the second drum comprises an output drum (this again appears to be further limiting part of the exoskeleton, which does not appear to be a positively claimed part of the “device”, but rather a separate device intended to be used in conjunction with the claimed device).
Regarding claim 10 Wijesundara discloses the device of claim 8 substantially as is claimed,
wherein Wijesundara further discloses the first drum has the spring wrapped thereon and the second drum comprises a cam-wheel (this again appears to be further limiting part of the exoskeleton, which does not appear to be a positively claimed part of the “device”, but rather a separate device intended to be used in conjunction with the claimed device).
Regarding claim 11 Wijesundara discloses the device of claim 7 substantially as is claimed,
wherein Wijesundara further discloses the fluid supply comprises water ([0080]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jacqueline Woznicki whose telephone number is (571)270-5603. The examiner can normally be reached M-Th 10am-6pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerrah Edwards can be reached on 408-918-7557. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jacqueline Woznicki/Primary Examiner, Art Unit 3774 07/20/26
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