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 .
Response to Amendment
Applicant’s amendments to claim 1 filed 12/31/2025 is acknowledged by the examiner.
Claim 1 is currently pending and under examination.
Response to Arguments
Applicant's arguments filed 12/31/2025 have been fully considered but they are not persuasive.
Applicant’s argument: It is submitted that Colbert fails to disclose “the strut component is partially embedded in an elastomeric web of the framework”; and that “each of the first and second arm components is partially embedded in the elastomeric web of the framework” as amended.
Examiner’s response: In light of the amendments to claim 1, the office action has been updated. Colbert still reads on the amended claim as explained in the office action below. Further, the applicant does not discuss the reference applied against the claim, explaining how the claim avoids the reference or distinguish from them.
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 pre-AIA 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) 1 is/are rejected under pre-AIA 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over Colbert (US 4,781,179).
Regarding claim 1, Colbert discloses a support (10) for an area of a body that includes a hinge joint (see Figs. 1-3B; device 10 is a support for the knee which is a hinge joint), comprising:
a flexible, elastically stretchable framework (12, 14, 41, 60, 16) configured to extend across the hinge joint of the area of the body (see Figs. 1-3B; definition of framework: a supporting structure around which something can be built, https://dictionary.cambridge.org/us/dictionary/english/framework, or a skeletal openwork, or structural frame, https://www.merriam-webster.com/dictionary/framework, and thus upper harness 12, connector 60, strap 14, elastic band material 41, and lower harness 16 make up a framework as they are supporting structures and the suspension rods 18, 20, 52, 54 can be built around these supporting structures and they are the frame of device 10, as seen in Fig. 5, and upper harness 12, lower harness 16 are flexible, see Col. 3 lines 33-35 and Col. 3 lines 57-58, and strap 14 comprises an elastic band material 41, thus making it flexible and elastically stretchable, see Col. 3 lines 50-52, and strap 14, elastic band material 41, and connector 60 is configured to extend across the knee or the hinge joint of the area of the body); and
a hinge mechanism (18, 20, 36, 38) affixed to the framework (12, 14, 41, 60, 16), the hinge mechanism (18, 20, 36, 38) comprising a strut component and first and second arm components (18, 20) (see Figs. 1-2 and 5, and Annotated Figs. 1 and 5 of Colbert; upper rod 18 and lower rod 20, which are first and second arms, both are pivotally connected to connector 60 via fasteners 38, 36, respectively, and have a strut component in between upper rod 18 and lower rod 20, as pointed out in Annotated Fig. 1 of Colbert and Annotated Fig. 5 of Colbert, thus forming a hinge mechanism, which is affixed or secured to the framework 12, 14, 41, 60, 16 via fasteners 32, 34, 36, 38);
wherein the first arm component (18) is connected to the strut component such that the first arm component (18) is rotatable relative to the strut component only about a first pivot axis of a first hinging member (38) (see Annotated Fig. 1 of Colbert, and see Col. 3 lines 39-42; as seen in Annotated Fig. 1 of Colbert, upper rod 18 is connected to the strut component via fastener 38 such that upper rod 18 is rotatable or is pivotable relative to the strut component about a first pivot axis via fastener 38, as upper rod 18 is pivotable about fastener 38, and thus is a first hinging member);
wherein the second arm component (20) is connected to the strut component such that the second arm component (20) is rotatable relative to the strut component only about a second pivot axis of a second hinging member (36) (see Annotated Fig. 1 of Colbert, and see Col. 3 lines 53-56; as seen in Annotated Fig. 1 of Colbert, lower rod 20 is connected to the strut component via fastener 36 such that lower rod 20 is rotatable or pivotable relative to the strut component about a second pivot axis via fastener 36, as lower rod 20 is pivotable about fastener 36, and thus is a second hinging member);
wherein the strut component is configured to extend with the framework (12, 14, 41, 60, 16) across the hinge joint such that the first pivot axis is located on a first side of the hinge joint and the second pivot axis is located on a second, opposite side of the hinge joint (see Annotated Fig. 1 of Colbert; as seen in Annotated Fig. 1 of Colbert, the strut component extends with the connector 60, which is part of framework 12, 14, 41, 60, 16, across the knee or the hinge joint such that the first pivot axis is located on an upper side of the knee or hinge joint via fastener 38, and the second pivot axis is located on an opposite lower side of the knee or hinge joint via fastener 36); and
wherein the first hinging member (38) and the second hinging member (36) are spaced apart from one another with a portion of the framework (12, 14, 41, 60, 16) disposed in between the first hinging member (38) and the second hinging member (36) (see Figs. 1 and 5; fasteners 38, 36 are spaced apart from one another via the strut component, as seen in Annotated Fig. 1 of Colbert, and a portion of connector 60 and strap 14 are disposed between the space between fasteners 38, 36, as best seen in Figs. 1 and 5);
wherein the strut component is partially embedded in an elastomeric web of the framework (12, 14, 41, 60, 16) (see Annotated 1 of Colbert and Fig. 5; the definition of embed is “to envelope or enclose,” https://www.dictionary.com/browse/embed, and thus the strut component, labeled in Annotated Fig. 1, is partially embedded by strap 14+protector pad 60 which forms an elastomeric web, which is part of the framework 12, 14, 41, 60, 16, as the strut component is partially enveloped on one side by the strap 14+protector pad 60, and juts out on the opposite side that is not in contact with the strap 14+protector pad 60); and
wherein each of the first and second arm components (18, 20) is partially embedded in the elastomeric web of the framework (12, 14, 41, 60, 16) (see Figs. 1 and 5; a lower portion of the upper rod 18 and an upper portion of the lower rod 20 are partially embedded by strap 14+protector pad 60 as these portions of the upper rod 18 and lower rod 20 are partially enveloped or enclosed by the strap 14+protector pad).
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Annotated Fig. 1 of Colbert.
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Annotated Fig. 5 of Colbert.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1 is/are rejected under pre-AIA 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over Colbert in view of Mason (4,697,583).
Regarding claim 1, Colbert discloses a support (10) for an area of a body that includes a hinge joint (see Figs. 1-3B; device 10 is a support for the knee which is a hinge joint), comprising:
a flexible, elastically stretchable framework (12, 14, 41, 60, 16) configured to extend across the hinge joint of the area of the body (see Figs. 1-3B; definition of framework: a supporting structure around which something can be built, https://dictionary.cambridge.org/us/dictionary/english/framework, or a skeletal openwork, or structural frame, https://www.merriam-webster.com/dictionary/framework, and thus upper harness 12, connector 60, strap 14, elastic band material 41, and lower harness 16 make up a framework as they are supporting structures and the suspension rods 18, 20, 52, 54 can be built around these supporting structures and they are the frame of device 10, as seen in Fig. 5, and upper harness 12, lower harness 16 are flexible, see Col. 3 lines 33-35 and Col. 3 lines 57-58, and strap 14 comprises an elastic band material 41, thus making it flexible and elastically stretchable, see Col. 3 lines 50-52, and strap 14, elastic band material 41, and connector 60 is configured to extend across the knee or the hinge joint of the area of the body); and
a hinge mechanism (18, 20, 36, 38) affixed to the framework (12, 14, 41, 60, 16), the hinge mechanism (18, 20, 36, 38) comprising first and second arm components (18, 20) (see Figs. 1-2 and 5; upper rod 18 and lower rod 20, which are first and second arms, both are pivotally connected to connector 60 via fasteners 38, 36, respectively, thus forming a hinge mechanism, which is affixed or secured to the framework 12, 14, 41, 60, 16 via fasteners 36, 38);
wherein the first arm component (18) is rotatable only about a first pivot axis of a first hinging member (38) (see Figs. 1 and 5, and see Col. 3 lines 39-42; the upper rod 18 is rotatable or is pivotable about a first pivot axis via fastener 38, as upper rod 18 is pivotable about fastener 38, and thus is a first hinging member);
wherein the second arm component (20) is rotatable only about a second pivot axis of a second hinging member (36) (see Figs. 1 and 5, and see Col. 3 lines 53-56; lower rod 20 is rotatable or pivotable about a second pivot axis via fastener 36, as lower rod 20 is pivotable about fastener 36, and thus is a second hinging member);
wherein the first pivot axis is located on a first side of the hinge joint and the second pivot axis is located on a second, opposite side of the hinge joint (see Figs. 1 and 5; the first pivot axis is located on an upper side of the knee or hinge joint via fastener 38, and the second pivot axis is located on an opposite lower side of the knee or hinge joint via fastener 36); and
wherein the first hinging member (38) and the second hinging member (36) are spaced apart from one another with a portion of the framework (12, 14, 41, 60, 16) disposed in between the first hinging member (38) and the second hinging member (36) (see Figs. 1 and 5; fasteners 38, 36 are spaced apart from one another and a portion of connector 60 and strap 14 are disposed between the space between fasteners 38, 36, as best seen in Figs. 1 and 5);
wherein each of the first and second arm components (18, 20) is partially embedded in the elastomeric web of the framework (12, 14, 41, 60, 16) (see Figs. 1 and 5; a lower portion of the upper rod 18 and an upper portion of the lower rod 20 are partially embedded by strap 14+protector pad 60 as these portions of the upper rod 18 and lower rod 20 are partially enveloped or enclosed by the strap 14+protector pad).
Colbert is silent on the hinge mechanism comprising a strut component; wherein the first arm component is connected to the strut component such that the first arm component is rotatable relative to the strut component only about a first pivot axis of a first hinging member; wherein the second arm component is connected to the strut component such that the second arm component is rotatable relative to the strut component only about a second pivot axis of a second hinging member; wherein the strut component is configured to extend with the framework across the hinge joint; and wherein the strut component is partially embedded in an elastomeric web of the framework.
However, Mason teaches an analogous hinge mechanism (20, 22, 114) (see Figs. 2-3 and 6; femoral side bar 20 and tibial side bar 22 are analogous first and second arm components), and the hinge mechanism (20, 22, 114) comprising a strut component (114) (see Figs. 2-4 and 6; outer hinge plate 114 is a strut component connected to femoral side bar 20 and tibial side bar 22); wherein the first arm component (20) is connected to the strut component (114) such that the first arm component (20) is rotatable relative to the strut component (114) only about a first pivot axis of a first hinging member (see Figs. 2-4 and 6; the femoral side bar 20 is connected to outer hinge plate 114 via pin 116 such that the femoral side bar 20 is rotatable relative to the outer hinge plate 114 only about a first pivot axis and thus is a first hinging member); wherein the second arm component (22) is connected to the strut component (114) such that the second arm component (22) is rotatable relative to the strut component (114) only about a second pivot axis of a second hinging member (see Figs. 2-4 and 6; the tibial side bar 22 is rotatable relative to the outer hinge plate 114 via pin 118 such that the tibial side bar 22 is rotatable relative to the outer hinge plate 114 only about a second pivot axis and thus is a second hinging member); wherein the strut component (114) is configured to extend with the framework (12) across the hinge joint (see Figs. 1A-4 and 6-9; the outer hinge plate 114 is configured to extend with undersleeve 12 which is a framework, as it is a supporting structure, across the hinge joint which is the portion of the knee where the tibia and femur come together, as seen in Fig. 9), providing independent hinging members to better follow the natural motion of a user’s knee.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the connection between the first arm component and second arm component (18, 20, respectively) of Colbert to be connected to a strut component (114) such that the first arm component is rotatable relative to the strut component only about a first pivot axis of a first hinging member, and the second arm component is rotatable relative to the strut component only about a second pivot axis of a second hinging member, and wherein the strut component is configured to extend with the framework across the hinge joint as taught by Mason to have provided an improved support that provides independent hinging members to better follow the natural motion of a user’s knee. Therefore, the combination of Colbert in view of Mason results in wherein the strut component (114 of Mason) is partially embedded in an elastomeric web of the framework (12, 14, 41, 60, 16 of Colbert) (see Figs. 1 and 5 of Colbert; as previously modified above, the outer hinge plate 114 of Mason is partially embedded by strap 14+protector pad 60 of Colbert, which forms an elastomeric web, which is part of the framework 12, 14, 41, 60, 16, as the hinge plate 114 of Mason is in between the first arm component 18 of Colbert and the second arm component 20 of Colbert, and the outer hinge plate 114 is partially enveloped on one side by the strap 14+protector pad 60 of Colbert and juts out on the opposite side that is not in contact with the strap 14+protector pad 60 of Colbert).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 19/031935 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,299,952 B2 in view of Colbert.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 1 of patent ‘952 recites the limitations of a support for an area of a body that includes a hinge joint, comprising: a flexible, elastically stretchable framework configured to extend across the hinge joint of the area of the body; and a hinge mechanism affixed to the framework, the hinge mechanism comprising a strut component and first and second arm components; wherein the first arm component is connected to the strut component such that the first arm component is rotatable relative to the strut component only about a first pivot axis of a first hinging member; wherein the second arm component is connected to the strut component such that the second arm component is rotatable relative to the strut component only about a second pivot axis of a second hinging member; wherein the strut component is configured to extend with the framework across the hinge joint such that the first pivot axis is located on a first side of the hinge joint and the second pivot axis is located on a second, opposite side of the hinge joint.
The patent ‘952 fails to recite wherein the first hinging member and the second hinging member are spaced apart from one another with a portion of the framework disposed in between the first hinging member and the second hinging member; wherein the strut component is partially embedded in an elastomeric web of the framework; and wherein each of the first and second arm components is partially embedded in the elastomeric web of the framework.
However Colbert teaches an analogous first hinging member (38) and an analogous second hinging member (36), and wherein the first hinging member (38) and the second hinging member (36) are spaced apart from one another with a portion of the framework (12, 14, 41, 60, 16) disposed in between the first hinging member (38) and the second hinging member (36) (see Figs. 1 and 5; fasteners 38, 36 are spaced apart from one another via the strut component, as seen in Annotated Fig. 1 of Colbert, and a portion of connector 60 and strap 14 are disposed between the space between fasteners 38, 36, as best seen in Figs. 1 and 5); and wherein the strut component is partially embedded in an elastomeric web of the framework (12, 14, 41, 60, 16) (see Annotated 1 of Colbert and Fig. 5; the definition of embed is “to envelope or enclose,” https://www.dictionary.com/browse/embed, and thus the strut component, labeled in Annotated Fig. 1, is partially embedded by strap 14+protector pad 60 which forms an elastomeric web, which is part of the framework 12, 14, 41, 60, 16, as the strut component is partially enveloped on one side by the strap 14+protector pad 60, and juts out on the opposite side that is not in contact with the strap 14+protector pad 60); and wherein each of the first and second arm components (18, 20) is partially embedded in the elastomeric web of the framework (12, 14, 41, 60, 16) (see Figs. 1 and 5; a lower portion of the upper rod 18 and an upper portion of the lower rod 20 are partially embedded by strap 14+protector pad 60 as these portions of the upper rod 18 and lower rod 20 are partially enveloped or enclosed by the strap 14+protector pad), providing two individual hinge mechanisms to better mimic the natural movement of the knee joint, and is more comfortable for a user.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the first hinging member and second hinging member of patent ‘952 to be spaced apart from one another with a portion of the framework disposed in between the first hinging member and the second hinging member, and wherein the strut component is partially embedded in an elastomeric web of the framework; and wherein each of the first and second arm components is partially embedded in the elastomeric web of the framework as taught by Colbert to have provided an improved support that provides two individual hinge mechanisms to better mimic the natural movement of the knee joint and is more comfortable for a user.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBIN HAN whose telephone number is (408)918-7579. The examiner can normally be reached Monday - Thursday, 9-5 PM EST.
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/ROBIN HAN/Examiner, Art Unit 3786
/ALIREZA NIA/Supervisory Patent Examiner, Art Unit 3786