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 .
Abstract
On the first line of the abstract, Applicant may wish to replace “prothesis” with the more common spelling, --prosthesis--, in order to enhance consistency with the remainder of the instant disclosure, although such a revision is not required. A corrected abstract, if any, should be presented on a separate sheet, apart from any other text (MPEP § 608.01(b)).
Drawings
The drawings are objected to because in Figures 1 and 2, the same reference character or numeral “20” is used to identify two different features. 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, 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: On page 8, line 28, “4” should read --3--. In the paragraph bridging pages 9 and 10, the same reference character “20” designates both “fastening devices” and “the prosthesis cover”. Appropriate correction is required.
Claim Objections
Claim 1 is objected to because on line 6, “a the” lacks proper grammatical syntax. Appropriate correction is required.
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.
Claims 1-4, 6, 8-9, 12-15, and 18 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Kim et al., KR 10-2020-0035719 A, which illustrates a prosthesis cover 400 having on an outer surface of a flexible (Figure 5; abstract; machine translation page 2, first two paragraphs; page 3, fifth paragraph) main body a fastening device 550 for affixation to prosthetic component 100 [“inner side which faces…” (amended claim 1 at line 5) being functional (MPEP § 2114) and not a positively recited configuration or arrangement] and also indirectly to an underlying prosthetic finger or wrist (all drawings, including prosthesis 1 shown in Figure 6; page 2, last three paragraphs; page 3, fourth and sixth paragraphs; lower paragraphs of page 3 and upper paragraphs of page 4; upper paragraphs of page 5); structural corrugations and element 660 are applied to the outer surface of the flexible main body (page 3, fifth through seventh paragraphs; page 4, third full paragraph), and regarding the “additive manufacturing process” (amended claim 1 at line 12), “[the] patentability of a product does not depend on its method of production” (MPEP § 2113; emphasis added). Under an alternative interpretation, component 100 may be equated with the claimed fastening device for fixing to an underlying prosthetic finger or hand or forearm (Figures 2 and 5-6; page 3, second paragraph).
Regarding claims 2-4, structural element 660 (Figure 2) has a greater height and a closer spacing to the adjacent corrugation in comparison to corrugation height and the general spacings among corrugations (MPEP § 2125); moreover, the spacings vary with the extent to which an underlying joint is flexed or extended (Figure 5; page 3, fifth paragraph). Regarding claims 6 and 8-9, the structural elements and main body innately possess elastic moduli in order properly engage at connections 500 and 600 (Figure 2; page 3, lower paragraphs; page 4, upper paragraphs) and facilitate prosthetic joint movements (Figures 5-6; abstract; page 3, second and fifth paragraphs; page 5, top paragraphs); the structural elements are of a material which does not penetrate the main body (Figures 2 and 4a-4b; page 3, fifth paragraph, et seq.). Regarding claims 12-14, components 200, 650, or 660, for example, may be viewed as holders or supports. Regarding claim 15, each of fastening devices 550 and 100 (alternative interpretations) is form fitting and force fitting (Figures 2, 3b, 4a-4b, and 5), as explained in the corresponding passages cited above. Regarding claim 18, structural corrugations and structural element 650 are plate-like in form (drawings).
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.
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.
Claims 5, 7, 10-11, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al., KR 10-2020-0035719 A. Regarding claims 5, 7, and 10-11, different materials among the aforementioned structural elements and components 100 and 200 would have been obvious to one of ordinary skill in the art at the effective filing date of the instant invention in order to impart appropriate resiliency at connections 500 and 600 (page 4, second and third full paragraphs), flexibility at the corrugations [abstract (“minimize interference with movement when operating the joint”); page 3, fifth paragraph], and sealing engagement with prosthesis 1 (page 1, last paragraph; page 2, last paragraph; page 3, second paragraph; page 6, second claim); a full-color outer layer or coating, well-known in the art at said effective filing date, would have been obvious in order to better match materials to the color of the prosthesis and/or user’s skin so as to be less conspicuous [page 1, last paragraph (“outer skin”)]. Regarding claim 16, additive manufacturing was common in the art at said effective filing date and would have been obvious in order to customize the components relative to a user’s dimensions [abstract (fixing rings “adapted to encircle a phalange”); page 2, first and last paragraphs (“in close contact with the outer surface of the node 3”); page 3, fourth paragraph (different sizes and shapes for wrist)], which may readily be input to a computer effecting said additive manufacturing. The further limitation of claim 17 is addressed above relative to Applicant’s claims 12-14; for instance, structural element 660 fastens holder and support 200 to the main body (Figures 2 and 3b; page 4, second and third full paragraphs).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure:
KR 10-2022-0047112 A: Figures 2-5, 9 (3D printer 3a), 18, and 26; abstract; pages 2-5 (description of embodiments).
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/DAVID H WILLSE/ Primary Examiner, Art Unit 3774
Prosecution Insights