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 .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gunnsteinsson U.S. Publication No (2014/0350446 A1).
With respect to claim 1, Gunnsteinsson discloses an orthopedic walking boot [0015] and [0043] and (120, fig.4), comprising:
a housing (where element 120 is located in fig.4) configured to encompass at least a user’s foot;
a mechanically adjustable ramp insert via scissor jack mechanism (138, fig.4) positioned between the insole (134) and a plantar sole portion (132) and [0046]; and
a mechanically adjustable lift via adjustment dial (126, fig.4) and [0048, the exemplary configuration, with manual adjustment of the adjustment dial 126, a practitioner or other authorized person can rotate the adjustment dial 126 one increment, once a week, in order to decrease the height of the insole 134 by 1 mm once every week in order to increase the amount of stretch of the Achilles tendon by 1 mm each week during use of the device. In this manner, a more even stretch of the Achilles tendon can be achieved, in order to avoid drastic changes in the stretched length of the tendon, which may lead to re-rupture of the tendon].
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. (11,690,750 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the application claim is a broader recitation of the invention than that of the patented application.
Claim 1of the instant application recites: an orthopedic walking boot, comprising: a housing configured to encompass at least a user’s foot; a mechanically adjustable ramp insert; and a mechanically adjustable lift.
Claim 1 of U.S. Patent No. (11,690,750 B2) recites: an orthopedic walking boot, comprising: a housing configured to encompass at least a user's foot; a mechanically adjustable ramp insert comprising a ramp surface and disposed in the housing; an adjusting mechanism configured to adjust an elevation angle of the ramp surface; and a mechanically adjustable lift configured to cause the mechanically adjustable ramp insert to descend within the housing as the ramp surface is elevated such that vertical displacement of the user's foot caused by elevation of the ramp surface is substantially attenuated.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between claim 1 of the current application and claim 1 of U.S. Patent No. (11,690,750 B2) lies in the fact that the patented claims include many more elements and is thus much more specific. Thus, the invention of claim 1 of U.S. Patent No. (11,690,750 B2) is in effect a “species” of the “generic” invention of current application claim 1. It has been held that the generic invention is “anticipated” by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 of the current application is anticipated by claim 1 of U.S. Patent No. (11,690,750 B2) it is not patentably distinct from claim 1 of U.S Patent No. (11,690,750 B2).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1and 15 of U.S. Patent No. (12,178,733 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the application claim is a broader recitation of the invention than that of the patented application.
Claim 1of the instant application recites: an orthopedic walking boot, comprising: a housing configured to encompass at least a user’s foot; a mechanically adjustable ramp insert; and a mechanically adjustable lift.
Claims 1 and 15 of U.S. Patent No. (12,178,733 B2) recites: an orthopedic walking boot, comprising: a housing configured to encompass at least a user's foot; a mechanically adjustable ramp insert disposed in the housing and comprising: a base, a ramp surface comprising at least one guide, a bracket configured to slide along the at least one guide as the ramp surface is elevated, a first support rotatably coupled to the bracket and disposed between the base and the ramp surface; and a second support rotatably coupled to the bracket and disposed between the base and the ramp surface; and an adjusting mechanism configured to adjust an elevation angle of the ramp surface; further comprising a mechanically adjustable lift configured to cause the mechanically adjustable ramp insert to descend within the housing as the ramp surface is elevated such that vertical displacement of the user's foot caused by elevation of the ramp surface is substantially attenuated.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between claim 1 of the current application and claim 1 of U.S. Patent No. (12,178,733 B2) lies in the fact that the patented claims include many more elements and is thus much more specific. Thus, the invention of claim 1 of U.S. Patent No. (12,178,733 B2) is in effect a “species” of the “generic” invention of current application claim 1. It has been held that the generic invention is “anticipated” by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 of the current application is anticipated by claim 1 of U.S. Patent No. (12,178,733 B2) it is not patentably distinct from claim 1 of U.S Patent No. (12,178,733 B2).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1and 17 of U.S. Patent No. (11,109,993 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the application claim is a broader recitation of the invention than that of the patented application.
Claim 1of the instant application recites: an orthopedic walking boot, comprising: a housing configured to encompass at least a user’s foot; a mechanically adjustable ramp insert; and a mechanically adjustable lift.
Claims 1 and 17 of U.S. Patent No. (11,109,993 B2) recites: an orthopedic walking boot, comprising: a housing configured to encompass at least a user's foot; a mechanically adjustable ramp insert disposed in the housing and comprising: a ramp surface, a base, a threaded shaft secured to an adjusting mechanism at a first end and configured to rotate with the adjusting mechanism, a first slider nut comprising internal threads, the first slider nut configured to move along the threaded shaft as the threaded shaft is rotated, a bracket in physical contact with the ramp surface, a first support coupled to the first slider nut at a first end and to the bracket at a second end, and a second support coupled to the base at a first end and to the bracket at a second end, wherein the first end of the first support is configured to move toward the first end of the second support, thereby causing mechanically adjustable ramp insert to elevate the ramp surface; and the adjusting mechanism configured to adjust an elevation angle of the ramp surface; further comprising a mechanically adjustable lift configured to cause the mechanically adjustable ramp insert to descend within the housing as the ramp surface is elevated such that vertical displacement of the user's foot caused by elevation of the ramp surface is substantially attenuated.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between claim 1 of the current application and claim 1 of U.S. Patent No. (11,109,993 B2) lies in the fact that the patented claims include many more elements and is thus much more specific. Thus, the invention of claim 1 of U.S. Patent No. (11,109,993 B2) is in effect a “species” of the “generic” invention of current application claim 1. It has been held that the generic invention is “anticipated” by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 of the current application is anticipated by claim 1 of U.S. Patent No. (11,109,993 B2) it is not patentably distinct from claim 1 of U.S Patent No. (11,109,993 B2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OPHELIA ALTHEA HAWTHORNE whose telephone number is (571)270-3860. The examiner can normally be reached M-F 8:00 AM-5:00 PM, EST.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alireza Nia can be reached at 5712703076. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OPHELIA A HAWTHORNE/ Primary Examiner, Art Unit 3786
Prosecution Insights