Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Disclosure
The disclosure is objected to because of the following informalities: At the beginning of the specification, the status of the parent application should be updated. In claim 1, last line, “hand” is misspelled. Appropriate correction is required.
Double Patenting
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,685,652. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim limitations are plainly set forth in or would have been obvious from the patent claims. Regarding claim 7, O-rings were quite common in the art at the effective date of the present invention and would have been obvious for forming a seal between a metacarpal brace and upper and lower palm parts in view of patent claim 7 (“a seal between the upper part and the lower part [of the palm]”) and patent claim 11 (“metacarpal brace is configured to form a sealed connection with the palm”) in order to help impart the ability “to operate when submerged in water” (patent claim 1 at column 48, lines 26-28).
Claims 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17 and 25 of U.S. Patent No. 12,678,302 in view of Puchhammer et al., US 2010/0318194 A1. Regarding claims 17-18, the actuators being motors individually housed within sealed housings would have been obvious from the compactness and responsiveness of electrical motors and from the actuators being “individually sealed within the digits” (patent claim 25, which digits themselves are innately individual or separate from each other and offer distinct locations for motor housings; the “automated prosthetic hand” (first line of patent claim 17) is structurally capable (MPEP § 2114) of being donned with or “surrounded by a closed water-tight outer casing” such that “no electrical component becomes wet even if the prosthesis 10 is immersed in water” (Puchhammer et al.: paragraphs 0012, 0034). Regarding claim 19, knuckle joints would have been immediately obvious from natural knuckle joints found in humans and some animals and from the mounting arrangement (patent claim 17 at column 50, lines 26-28) in order to facilitate movement of the digits (fourth and fifth lines of patent claim 17).
Claim Rejections - 35 USC § 102
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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1-6 and 8 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Puchhammer, US 2010/0198362 A1, which discloses an automated hand (abstract; drawings; paragraphs 0001, 0030+) comprising two or more digits 10, 20, 30 extending from palm 2, 6, 13, 26 (paragraphs 0006, 0011, 0031-0032) and one or more motors 4 configured to cause at least one of the digits to move (Figure 7; paragraphs 0006-0010, 0015, 0019, 0031-0032, 0049-0050), wherein the automated hand is configured to operate when submerged in water [paragraphs 0014 (“encapsulated in a waterproof fashion in order to ensure functional reliability even when using the prosthetic grip unit in harsh surroundings” (emphasis added), 0042 (“accumulator 6 itself has a waterproof design and has a likewise waterproof contact with the drive 4”); page 4, claim 15] and wherein the two or more digits extend from respective sealed knuckle joints at 8, 11, 15, 21 in order to help impart the waterproofing referenced above, with “seal” being broadly defined as “something that secures (as a wax seal on a document)” or as “a tight and perfect closure (as against the passage of gas or water)” (Merriam-Webster’s Collegiate Dictionary, 10th ed.: 1996).
Regarding claim 2, the knuckle joints are of a fluid tight construction in that they are integrally or structurally formed with palm base 2 directly or via a component like disk 49, sealed against driven disk 48 [Figures 1, 7; paragraphs 0007, 0010, 0014, 0031 (“bearing 5… constitutes the central bearing for the movable member 10”), 0032, 0035-0036, 0050; page 4, claim 3]. Regarding claims 3-6, base 2 may alternatively be viewed as a metacarpal brace (paragraph 0001), with the motors tightly engaging and mounted within apertures in metacarpal brace 2 so as to form a fluid-tight interface (Figures 1, 7; paragraphs 0007, 0009, 0014, 0031, 0049-0050; page 4, claim 15) and metacarpal brace forming a sealed connection with palm 6, 13, 26 (paragraphs 0014, 0042, 0049). Regarding claim 8, metacarpal brace 2 is resiliently flexible in that it innately possesses a modulus of elasticity [paragraph 0030 (“metal”, “light metal”)].
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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 7, 17, and 19-20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Puchhammer, US 2010/0198362 A1. Regarding claim 7, O-rings were commonly used in the art at the effective date of the instant invention and would have been obvious for metacarpal brace 2 against palm components 6, 13, 26 in order to adequately seal electrical components (paragraphs 0013-0014, 0042, 0049). Regarding claim 17, motors individually housed within sealed housings would have been obvious to the ordinary practitioner at the effective date of the present invention in order to provide independently controlled movements of digits 10 and 20 [Figures 4, 7; paragraphs 0006-0007, 0009, 0014, 0031-0032, 0042, 0046 (“integrated separately”), 0049-0050] so as to expand the versatility of the prosthetic hand (paragraphs 0003, 0011, 0019, 0047). The further limitations of claims 19-20 are addressed above.
Claims 10-16 and 18 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Puchhammer, US 2010/0198362 A1, in view of Poirters, US 2018/0133028 A. Regarding claims 10 and 12-13, Puchhammer lacks specifics on a lower arm prosthesis or receptacle apparatus to which helical thread 3 is attached (paragraph 0030), but Poirters teaches that a standard quick connect wrist joint 22 (Figures 1-2) facilitates coupling with batteries, electronics, etc., with ports or passages for electrical cables (paragraphs 0072, 0074), and such a wrist joint would have been obvious for Puchhammer, which also routes cabling through connection means 3 to receive EMG signals (paragraph 0037) from sensors typically placed within said receptacle apparatus for attaching to a residual arm, with the ordinary practitioner having been left to select a suitable prosthetic wrist and socket for receiving a residual arm and with further motivation (to combine) provided by Poirters likewise locating electronics in a palm unit (paragraph 0074) and similarly disclosing features for electrically and fluidically isolating components [Figures 2, 6-7, 25-26; paragraphs 0028, 0090, 0093, 0095 (“O-rings or similar seals”)]; a watertight sealing of the Poirters wrist joint 22 and the residual arm socket or sleeve would thus have been obvious from the stated intent to provide a waterproof prosthesis for harsh environments (Puchhammer: paragraphs 0014, 0042) and in order to help protect the myoelectric sensors and the residual arm.
Regarding claim 11, emulating natural wrist movements with axles and the like was quite common in the art at the date of the present invention, as seen from subgroup A61F 2/585 of the cooperative patent classification system, and would have been obvious to one of ordinary skill in the art in order to provide one or more degrees of freedom to the prosthesis of Puchhammer. Regarding claim 18, hydraulic motors located in the digits would have been an obvious variant in view of Poirters [paragraphs 0032 (“fingers and thumb could potentially be fully hydraulic”), 0044 (“housing elements formed as hollow digit-like shapes”)] with the Poirters metal alloy housing (paragraph 0044) and the compatibility with waterproof cosmeses, gloves, or coverings (discussed in the double patenting rejections above) alleviating concerns (Poirters: paragraphs 0004, 0032) as to robustness and fluid leakage. Regarding claims 15-16, a sealed electronics housing, motor controller and electronics, and a printed circuit board are evident from Figure 7 and paragraphs 0013-0014, 0018, 0046, and 0049 of Puchhammer. The further limitations of claim 14 are addressed above (MPEP § 707).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David H. Willse, whose telephone number is 571-272-4762. The examiner can normally be reached on Monday through Thursday. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Melanie Tyson can be reached at telephone number 571-272-9062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID H WILLSE/ Primary Examiner, Art Unit 3774
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