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 .
The first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ) apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an effective filing date on or after March 16, 2013 wherein the effective filing date is:
(i) if subparagraph (ii) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(ii) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under 35 U.S.C. 119, 365(a), or 365(b) or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, or 365(c); or
(B) a specific reference under 35 U.S.C. 120 , 121, or 365(c), to any patent or application that contains or contained at any time a claim as defined in paragraph (A), above.
Status of the Claims
Claim(s) 1-13 is/are pending.
Information Disclosure Statement
The information disclosure statement filed 3/13/2024 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because FOR citations numbers 2, 3, and 4 were not provided in English or with an English equivalent. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
All non-lined through citations were considered.
Claim Objections
Claims 1-12 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claims cannot depend from any other multiple dependent claim. See MPEP § 608.01(n).
Specifically, each of claims 1-12 serve as the basis for other multiple dependent claims as follows.
Each of claims 1 and 2 is a basis for claims 3-6, 8-13
Claim 3 is a basis for claims 4-6, 8-13
Claim 4 is a basis for claims 5-6, 8-13
Claim 5 is a basis for claims 6, 8-13
Each of claim 6 and 7 is a basis for claims 8-13
Claim 8 is a basis for claims 9-13
Claims 9 is a basis for claims 10-13
Claims 10 is a basis for claims 12-13
Claims 11 is a basis for claims 12-13
Claims 12 is a basis for claims 13
For purposes of examination the Examiner considers each of claims 2-6 and 8-13 to depend from claim 1. This consideration is to maintain compact prosecution because multiple dependent claims are typically not further considered in prosecution until the multiple dependency is corrected.
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 1-13 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 1, lines 2 and 5 recites “the main surface”. It is unclear what is considered “main” as what is considered “main” can be dependent on the person viewing/interacting with the device.
Claim 1, lines 2 and 5 recites the limitation "the main surface". There is insufficient antecedent basis for this limitation in the claim. For purposes of examination the Examiner notes this language is being interpreted as “a main surface” in the first instance of this term.
Claim 12, line 2 recites the limitation "the middle third". There is insufficient antecedent basis for this limitation in the claim. For purposes of examination the Examiner notes this language is being interpreted as “a middle third”.
Claim 12, line 3 recites the limitation "the ends". There is insufficient antecedent basis for this limitation in the claim. For purposes of examination the Examiner notes this language is being interpreted as “ends”.
Claim(s) 2-11 and 13 are rejected as dependent from a rejected claim.
Claim Interpretation - 35 USC § 112, 6th paragraph
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
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.
This application see Table I below 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: see Table I below in claim see Table I below.
Table I: Language Invoking 112(f)
Claim(s)
Placeholder
Functional Language
Corresponding Structure
(Original Specification)
1-6, 8-12
component
bearing
One or more flat surfaces, pages 2-3
Bridge-like connection, pages 3, 10
Can have one or more stops, page 4
Metal or metal alloy, page 5
Bearing block with a bearing receptacle, pages 5, 13
Having through-holes, page 12
#600 in the Figures, page 7
4
device
pretensioning
Bracket, clamping system*, belt, screw connection
6
element
stop
Stops, page 4
On the surface of the leaf spring, page 8
* the term “clamping system” would invoke 112(f) if claimed and has no corresponding structure in the disclosure
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.
This application see Table II below includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: see Table II below in claim see Table II below.
Table II: Language Not Invoking 112(f)
Claim(s)
Placeholder
Functional Language
Corresponding Structure
In Claim(s)
1, 4-6, 8-9, 12
element
spring
Leaf spring
1, 4-5
element
elastomer
Elastomer
10
block
bearing
block
10
receptacle
bearing
receptacle
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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) 1-4 and 6-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson, et al (Johnson) (US 6,129,766).
Regarding Claim 1, Johnson teaches an orthopedic system (e.g. Figures 12-13) having a leaf spring element (40) (#174; shown separately in Figure 15) and a bearing component (600) (#s22/88/226) which is supported on the main surface (e.g. Figure 13, considered the as shown top surface of #174) of the leaf spring element (40) (e.g. Figure 13) and is fixed to the leaf spring element (40) (e.g. Figure 13), characterized in that at least one elastomer element (71, 72) is arranged between the bearing component (600) and the main surface (41) of the leaf spring element (40) (e.g. Figure 13, #s 204, 206; column 8, lines 23-44) and is fastened to the leaf spring element (40) and to the bearing component (600) (e.g. Figure 13) in a manner transmitting tensile forces and shear forces (as broadly claimed elastomer elements transmit tensile forces and shear forces across their bodies when these forces are applied; however, e.g. column 8, lines 23-44; further, the elastomer elements are between and in contact with each of the spring element and the bearing component and thus when sufficient levels of force are applied, they are transmitted from one of the features to the next).
Regarding Claim 2, the bearing component (600) has at least one flat support surface (610; 620) (e.g. Figure 12, at least portions of the top are flat).
Regarding Claim 3, the bearing component (600) has a plurality of support surfaces (610, 620) spaced apart from one another (e.g. annotated Figure 12(1) below, arrows).
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584
622
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Annotated Figure 12(1), Johnson
Regarding Claim 4, the elastomer element (71, 72) is fastened to the leaf spring element (40) and/or the bearing component (600) via a pretensioning device (60) (e.g. Figures 13, 15, 17; the elastomer element is placed in #s 208/210 of the spring leaf and openings where #s 222 are in e.g. Figures 17, 20 using #s 222/212; together #s 222/121 act as a clamp, which is “a device designed to bind or constrict or to press two or more parts together so as to hold them firmly,” <https://www.merriam-webster.com/dictionary/clamp>).
Regarding Claim 6, at least one stop (630) is arranged on the bearing component (600) (e.g. Figure 13, 20; stops are openings into which #s 222 rest), which stop (630) is arranged, in a starting position, spaced apart from a secondary surface (43) and/or a stop element of the leaf spring element (40) (e.g. Figure 13).
Regarding Claim 7, a plurality of stops are arranged opposite one another (e.g. Figures 13, 20).
Regarding Claim 8, the bearing component (600) is mounted elastically on the leaf spring element (40) in three rotational and translational degrees of freedom (e.g. Figures 13, 1; there is rotation where element #188 is, but there are additional axes of rotation at the connection of #88 which moves the bearing component as a whole in at least three degrees of freedom).
Regarding Claim 9, the leaf spring element (40) is produced from a fiber composite material (e.g. column 8, lines 3-22) and the bearing component (600) is produced from a metal (e.g. column 10, lines 42-62, #226 is made of metal).
Regarding Claim 10, the bearing component (600) is formed as a bearing block with a bearing receptacle (640) (e.g. Figures 12, 20-21).
Regarding Claim 11, a further component (10) is fastened to or formed on the bearing component (600) in a rotationally rigid or elastic manner (e.g. Figures 13, 17, #188).
Regarding Claim 12, the bearing component (600) is arranged in the middle third between the ends of the leaf spring element (40) (e.g. Figure 13, at least part of the bearing component is within the middle third of the leaf spring; e.g. annotated Figure 13(1) below).
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446
724
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Annotated Figure 13(1), Johnson
Regarding Claim 13, Johnson teaches a prosthetic foot insert (e.g. abstract) having an orthopedic system as claimed in any one of the preceding claims (discussed supra for claim 1).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson, et al (Johnson) (US 6,129,766) as discussed supra and further in view of Pusch, et al (Pusch) (US 2017/0049584 A1).
Regarding Claim 5, Johnson discloses the invention substantially as claimed but fails to teach the elastomer element (71, 72) is glued to the bearing component (600) and/or the leaf spring element (40).
Pusch teaches a foot prosthesis (e.g. abstract) having an elastomer glued to another component of the device (e.g. [0019]).
Pusch and Johnson are concerned with the same field of endeavor as the claimed invention, namely prosthetic feet having leaf spring elements and elastomer elements.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Johnson such that the elastomer element is glued, as taught by Pusch, to the bearing component and/or the leaf spring element (connection location as discussed supra from Johnson) as it is a simple substitution of one known element (here, connection means) for another to obtain predictable results (MPEP 2143(I)) of a secure connection between components.
Relevant Prior Art
US 5,800,569 to Phillips teaches a prosthetic foot having a bearing component, an elastomer element, and a leaf spring (e.g. Figures 1-2, column 8, lines 7-31).
US 6,290,730 B1 to Pitkin, et al teaches a prosthetic foot having a bearing component, an elastomer element, and a leaf spring (e.g. Figures 1-2, column 2, lines 54-63).
US 2005/0060045 A1 to Smith, et al teaches a prosthetic foot having a bearing component, an elastomer element, and a leaf spring (e.g. Figure 8, [0047]).
US 2014/0012397 A1 to Mosler, et al teaches a prosthetic foot having a bearing component, an elastomer element, and a leaf spring (e.g. Figure 1, [0034]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESLIE A LOPEZ whose telephone number is (571)270-7044. The examiner can normally be reached 8:30 AM - 5:30 PM, MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, THOMAS BARRETT can be reached at (571)272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LESLIE A LOPEZ/Primary Examiner, Art Unit 3774 6/23/2026
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