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
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected specie, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/03/2026.
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 “mounting plate with one wing” and a “mounting plate with ten wings” must be shown or the feature(s) canceled from the claim(s). These are potential embodiments within the scope of the open ended clause used in the claims (7-12), yet an embodiment (Fig. 4) with only two wings is shown. Suggested clause or amendment could be “the mounting plate having a first and second wing extending from opposing sides of a center portion of the mounting plate ” which is supported by the figure of the disclosure. No new matter should be entered as it is not clear how one wing or more than two wings would be arranged.
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.
Specification
The disclosure is objected to because of the following informalities: the specification is unclear because reference characters "121" and "123" have both been used to designate at a minimum one wing. According to the drawings (Fig. 4), the feature might suggest two separate wings, but it is not clear according to the written description since paragraphs 60,61 refer to both locations by the open-ended clause “at least one” implying at a minimum one wing. So does the two sides on opposite portions of the mounting plate suggest both define one wing? The drawings only show this. One of ordinary skill does not have limitations read into claims or interpretations into disclosure, thus, nothing is implied and the specification therefore cannot be said to inherently imply anything specifically. 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 1-15 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.
In claim 1, the recitation of “a foot cover surrounding the prosthetic foot, the footwear having…” is ambiguous because it not evident if a “cover” is meant to be part of footwear or not. Applicant is reminded limitations are not read into claims, nor drawings imply anything into a claim, thus claims must be definite as to what a feature means and thus it should be clear of all intended elements as to what their structure is. For purposes of examining it is understood that multiple features could be intended by functionally reciting the “foot cover’ and “footwear” since two clauses are used, but the ambiguity is whether these are potentially integral or how they are structured and arranged. The claim (s) do not positively recite these nor specifically detail both, however, the ambiguity lies in the fact that technically both elements “cover” a prosthetic foot when used for an amputee having a prosthetic foot and it is not clear what defines these functionally recited elements with any clarity.
Claim 5 recites the limitation "the center portion" in lines 1,2 of the claim. There is insufficient antecedent basis for this limitation in the claim.
The term “flexible” in claim 8 is a relative term which renders the claim indefinite. The term “flexible” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The recitation of “wing is commensurately flexible to the footbed” fails to clearly establish the intention of the feature. Is the wing a more resilient material than the footbed? No positive structure is recited for the footbed, nor a material to thus know if the wing recited feature is a property or physical capability, meaning use of the plate with at least one wing so it is indefinite exactly as to the scope of the clause.
Dependent claims carry the same issue of ambiguity as the independent.
Claim Rejections - 35 USC § 102
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) 1,7-10,12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marlin (2016/0008147). Fig. 10 shows an attachment system 150 for connecting footwear to a prosthetic foot assembly including a prosthetic foot and a foot cover surrounding the prosthetic foot, the footwear having a footbed defining an insole or inner surface and an outsole or outer surface, the attachment system comprising: a pin 156 arranged to protrude from the inner surface of the footwear and connect to the prosthetic foot assembly; a mounting plate secured to the pin and arranged to extend along the inner surface of the footwear; at least one fastener 152 arranged to secure the pin to the footbed, see also paragraph 48. Please note the intended use carries no weight or in other words if the positively recited features are the same as in the prior art (elements recited are broad and generic), then they must inherently be able to perform the same function or intended use. Regarding claim 7, Fig. 8 shows the mounting plate includes at least one wing extending from a center portion of the mounting plate whereat the base of the pin attaches to the mounting plate. With respect to claim 8, as best understood Marlin disclose the mounting plate having at least one wing can be of a flexible material and design, see paragraphs 41,43. Additionally Marlin discloses (paragraphs 46,47) that the at least one wing is commensurately flexible (resiliently attached therewith) to the footbed. With respect to claim 9, Marlin discloses (paragraph 51) the at least one wing is rotatable relative to the footbed. Regarding claim 10, Fig. 7 shows an end defines a length of the at least one wing to align with a longitudinal axis of the footbed. Regarding claim 12, Marlin discloses securing (paragraphs 46,47) the at least one wing secures to the inner surface of the footbed, see also Fig. 7.
Claim(s) 1-5,14,16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Green et al. (2017/0281371). Fig. 1 shows an attachment system 10 for connecting footwear 30 to a prosthetic foot assembly including a prosthetic foot 12 and a foot cover surrounding the prosthetic foot, the footwear having a footbed 40 defining an insole or inner surface and an outsole or outer surface, the attachment system comprising: see Figs. 19A,B showing a pin 178 arranged to protrude from the inner surface of the footwear (please note (no structure is implied by the clause and further the direction is unlimited in where it is required, thus the feature is met by the scope of the claim) and connect to the prosthetic foot assembly in the latch; a mounting plate 28 secured to the pin and arranged to extend along the inner surface of the footwear, see Fig. 2. Fig. 19B shows at least one fastener 182,184 (not being given any special definition) arranged to secure the pin 180 to the footbed. Regarding claim 2, Fig. 19A shows the pin defines a head 180 at an end of a shaft 178 extending from a base secured to the mounting plate (Fig. 19B), the head having a greater diameter than a diameter of the shaft. Regarding claim 3, it can be construed that the mounting plate 28 (see Fig. 7A, paragraph 111 stating flexible material used) is more flexible than the pin (inherently rigid as it maintains head to withstand springs, Fig. 19B. With respect to claim 4, Fig. 19B shows how the mounting plate 28 is fixedly secured to the base of the pin via springs 184. Regarding claim 5, Fig. 19A shows the post embedded in a base structure center portion and protrudes out from the mounting plate with the head disposed therein. Please note claims are to the attachment assembly and a foot cover is not positively recited or required according to the preamble. Thus, per Green in stating (paragraph 64) prosthetic foots are possible embodiments, it is known in the art prosthetic foots are provided with covers, when not a blade prosthetic foot. Thus, it can be understood (paragraph 187) that when joined covering materials of a foot prosthetic are used an opening or pocket can be used to receive elements to couple. Regarding claim 14, in giving the broadest reasonable interpretation it must be noted that the foot cover is an intended use with head of the pin, but Green discloses a prosthetic foot, capable of having a foot cover. Further it is inherent a foot cover has an opening to receive the attachment mechanism including the head of the pin since the connection for the prosthetic foot element extends out from the foot attachment assembly. Regarding claim 16, the same reasoning applies as similar features are recited as in claim 1. It is also noteworthy that Green et al. disclose (paragraphs 64,68) foot prosthetics that inherently provide for a cover for a prosthetic foot.
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) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Green et al. (2017/0281371) in view of Halldorsson et al. (2013/0289742). Green et al. is explained supra. However, Green et al. did not explicitly state the material relationship of the mounting plate is formed from plastic and the pin is formed from metal. Halldorsson et al. teach (paragraph 99) that in a prosthetic attachment system, plates can be made of plastic. Halldorsson et al. also teach (paragraph 102) that in a prosthetic attachment system, a fastener or screw can be made of metal. Thus, it would have been obvious to one of ordinary skill in the art to provide a plastic plate and metal pin as taught by Halldorsson et al. in the prosthetic attachment assembly of Green et al. such that a lightweight, flexible material is used for the plate and durable fastener material for the pin as is known in the art. Selecting known materials for elements of prosthetics only involves routine skill in the art.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Marlin (2016/0008147) in view of Doddroe et al. (2010/0042228). Marlin is explained supra. However, Marlin did not explicitly state the a thickness of the at least one wing tapers from the center portion to an end portion of the at least one wing. Doddroe et al. teach (Fig. 3) a mounting plate 30 that an extension from the center portion to an end portion of the mounting plate can be construed to define at least one wing. Please note no special definition is being given to a “wing” and thus the broadest interpretation can be applied. Doddroe et al. teach (paragraph 33) a thickness of the at least one wing tapers to the end of the mounting plate. It would have been obvious to one of ordinary skill in the art to provide a thickness of the at least one wing tapers from the center portion to an end portion of the at least one wing as taught by Doddroe et al. with the attachment assembly of Marlin such that the user can be provided with greater shock absorbing capability at a heel portion area, see Doddroe (from the tapering or varied thickness).
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Green et al. (2017/0281371) in view of Ralph et al. (5989291). Green et al. is explained supra. However, Green et al. did not explicitly state the shaft defines a central threaded bore arranged to engage the at least one fastener, the at least one fastener defining a length greater than a thickness of the footbed such that the at least one fastener engages the outer surface of the footbed and extends therethrough to engage the shaft. Ralph et al. teach (Figs. 7,9) that in a prosthetic attachment system, a plate including a shaft 204 defines a central threaded bore 209 arranged to engage the at least one fastener 205. Thus, it would have been obvious to one of ordinary skill in the art to provide an alternative spring loaded arrangement (using washer) and provide the shaft with a central threaded bore arranged to engage the a fastener as taught by Ralph et al. in the prosthetic attachment assembly of Green et al. such that the fastening arrangement allows for adjustability if needed as is known in the art. Selecting known orientations for the fastener only involves routine skill in the art, thus one can have the fastener extend through and engage an outer surface of structure used therewith.
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over Green et al. (2017/0281371) in view of Clausen et al. (WO 2005/117746). Green et al. is explained supra. However, Green et al. did not explicitly state providing the cover with a toe opening separating a first toe portion from a second toe portion of the cover; and engaging a toe anchor to the toe opening. Clausen et al. show (Figs. 8B,9B,13B) foot covers with toe opening separating a first toe portion from a second toe portion of the cover. It is noted that Green et al. disclose (paragraph 94) anchoring structure can be used on the foot wear or best understood foot cover. Thus, it would have been obvious to one of ordinary skill in the art to provide the user based on need with a foot cover and have the cover with a toe opening separating a first toe portion from a second toe portion of the cover as taught by Clausen et al. with the attachment assembly for a prosthetic by Green et al. and further engage a toe anchor with the toe opening when providing the user with specific footwear as such desired by the user, see Green as incorporating anchor or toe securement for the foot cover only involves routine skill in the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E PELLEGRINO whose telephone number is (571)272-4756. The examiner can normally be reached 8:30am-5:00pm M-F.
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/BRIAN E PELLEGRINO/Primary Examiner, Art Unit 3799
