DETAILED ACTION
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.
Double Patenting
The non-statutory 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 nonstatulory obviousness-
type 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, 6.g., in re Berg, 140 F.3d
1428, 46 USPQ2d 1226 (Fed. Cir. 1998): in re Goodman, 11 F.3d 1646, 29 USPO2d
2010 (Fed. Cir. 1993); In re LongL, 759 F.2d 887, 225 USPG 645 (Fed. Cir. 1985): in re
Van Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982): In re Vogel, 422 F.2d 438,
164 USP 619 (CCPA 1970): and in re Thorington, 416 F.2d 528, 163 USPQ 644 (COPA
1969}.
A timely fled 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 a
nonstatutory double patenting ground provided the conflicting application or patent
either is shown to be commonly owned with this application, or claims an invention
made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign
a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply
with 37 CER 3.7300}.
Claims 1-4 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1,3,4,6 of U.S. co-pending application 18/802,802. Although the conflicting claims are not identical, they are not
patentably distinct from each other because the claims in the current pending
application are anticipated by the claims in the cited U.S. co-pending application
18/802,802. In particular, claim 1 of '802 includes at least the limitations found in claim 1
of the instant application, e.g., a prosthetic ankle joint comprising: a main body, a main body housing, a body cavity that is housing a non-linear spring, a main body platform; a pyramid adaptor. (See inre Goodman, 17 F. 3c 1046, 29
USPGQed 2010 (Fed Cir. 1993); once an applicant has received a patent for a species
or a more specific embodiment, he or she is not entitled to a patent for the generic or
broader invention without filing a terminal disclaimer.
As to claim 3 is not patentably distinct from each other because they are
essentially the same as to claim 4 in the co-pending US application 18/802,802.
As to claims 2, 4 are not patentably distinct from each other because they are
essentially the same as to claims 4,6 in the co-pending US application 18/802,802.
This is a provisional nonstatutory double patenting rejection because the
patentably indistinct claims have not in fact been patented.
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, 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Day et al U.S 2023/0210675.
Claim 1: Day et al disclose prosthetic ankle joint as best seen in figures 3-4 comprising: a main body118 having a main body distal end and a main body housing, wherein the main body housing further comprises a body cavity146 housing a non-linear spring 150/152 having a spring distal end and a spring proximal end, a main body platform (figures 3-4); a pyramid adaptor 132 comprising a bottom pyramid adaptor face (see figures 3-4, paragraph 45); and wherein the non-linear spring 150/152 is attached to the main body at the spring distal end and the pyramid adaptor at the spring proximal end.
Claim 3: Day et al disclose prosthetic ankle joint as best seen in figures 3-4, comprising: a prosthetic foot 104 having a shank 190; and an ankle joint 118 attached to the shank, wherein the ankle joint further comprises a main body 118 having a main body distal end and a main body housing, wherein the main body housing further comprises a body cavity 146 housing a non-linear spring 150/152 having a spring distal end and a spring proximal end, a main body platform, a pyramid adaptor 132 comprising a bottom pyramid adaptor face (see paragraph 45), and wherein the non-linear spring 150/152 is attached to the main body at the spring distal end and the pyramid adaptor at the spring proximal end.
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) 2, 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Day et al.
Claims 2, 4: Day et al disclose the invention substantially as claimed but is silent regarding wherein the non-linear spring has a cross-sectional shape of rectangular, square, circular, triangular, trapezoidal or oval shape. It would have been to one ordinary skilled in the art at the time the invention was made to construct the device with the non-linear spring has a cross-sectional shape of rectangular, square, circular, triangular, trapezoidal or oval shape, since the applicant has not disclosed that doing so solves any stated problem or is anything more than selecting one of numerous shapes or configurations a person ordinary skill in the art would find available to substitute with the device that is having the non-linear spring has a cross-sectional shape of rectangular, square, circular, triangular, trapezoidal or oval shape which is known in the medical art.
Conclusion
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/VI X NGUYEN/Primary Examiner, Art Unit 3771
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