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 .
Claim Objections
Claims 1, 10, and 14 are objected to because of the following informalities: In claims 1 and 14, second to last line of each, “relative toward each other” lacks proper grammatical syntax. In claim 10, lines 1-2, “is continuously and formed” lacks proper syntax. Appropriate correction is required.
Double Patenting
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-19 of U.S. Patent No. 12,167,974 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant limitations are evident in or would have been obvious from claims 15-19 of said patent. Regarding claims 1 and 14, the seal element defining “first and second plane side areas protruding radially from the liner profile and distally toward each other to a radially outward end” (patent claim 16 at column 14, lines 56-59) that may comprise “a plane outer end” (patent claim 17) implies a trapezoidal shape. Regarding claims 3 and 16, the plane outer end being rounded would have been obvious in order to lessen stress concentrations and enhance the durability of the seal element. Regarding claims 5 and 18, the angles as defined would have been obvious from patent claim 18 in order to utilize the liner profile or base as a convenient reference for the angulation of seal plane side areas.
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 1-20 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Egilsson et al., US 2007/0123998 A1, which discloses a prosthetic liner 1 adapted to provide an interface between a residual limb and a prosthetic socket 5, the prosthetic liner 1 comprising a body portion having an elongate and generally conical shape with a closed distal end and an open proximal end so as to define a longitudinal axis and being formed from an elastomeric material (Figures 1, 9-10, 37-39, 41; abstract; paragraphs 0015, 0051-0052, 0055-0056, 0090-0092, 0111, 0113). The body portion includes a seal element region having at least one seal element formed by prosthetic liner 1 and the elastomeric material of the body portion (Figures 3, 15-16, 38, 40-42; paragraphs 0018, 0059, 0072, 0091, 0101). In some embodiments, the seal element defines a trapezoidal shape having first and second plane side areas protruding outward from a generally conical liner profile and extending toward each other so as to form a radially outward end (Figures 24, 30, 35; paragraphs 0080-0083, 0088, 0098, 0101).
Regarding claims 2-3 and 15-16, the radially outward end includes a rounded surface circumferentially about liner 1 and also longitudinally at each edge, even if the surface radius is infinitesimal; attention is also directed to the variants of Figures 30 and 35. Regarding claims 4 and 17, the seal element extends about an entirety of a circumference of the body portion [Figures 3 (seal element 6), 37-38, 43, 47; paragraphs 0015, 0020, 0024, 0061]. Regarding claims 5-8 and 18-20, the oblique angles of the seal trapezoidal form as depicted in Figure 24 may be the same or dissimilar, particularly under the various types of stress distributions or gradients imposed during a gait cycle, donning and doffing, and other activities, and influenced by “bony protuberances and irregular shapes” of a residual limb (paragraphs 0014, 0023, 0064, 0077, 0081, 0107, 0114); regarding claims 11-12, seal heights are likewise variable because of the uneven distribution of stresses about a liner circumference during use. Regarding claim 13, the liner body portion possesses a distal circumferentially uniform wall thickness [Figures 1, 9-10, 38-39, 41; paragraph 0053 (“anisotropy is optional”)]. The further limitations of other claims are readily apparent (MPEP § 707) from the specification passages and the drawings (MPEP § 2125) cited in the explanations presented above.
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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