578Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Preliminary Amendment
Acknowledgement is hereby made to the Preliminary Amendment filed 26 February 2025. Claims 18-26 are pending in the application. Claims 1-17 have been cancelled.
Claim Objections
Claims 20-22 and 25 are objected to because of the following informalities:
In claim 20, line 4, “switch” should read --switches--.
In claim 21, lines 1-2, “the one or more fluidic actuators” should read --the one or more additional fluidic actuators--.
In claim 22, line 2, “expand/contract” should read --expand and/or contract--.
In claim 25, line 1, “wherein in” should read --wherein--.
Appropriate correction is required.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
The recited first fluidic actuator in claim 18. Multiple embodiments and variations of fluidic actuators are described in the specification at para.’s 0136- 0162, inter alia.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 18-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,228,118 (‘118) in view of Forsell (U. S. Patent Application Publication No. 2011/0087337).
As to claim 18 of the instant application, this is a broader version of claims 1, 7 and/or 9 of the ‘118 patent, reciting common subject matter with a couple of differences. First, ‘118 recites a hydraulic pump but not a battery powered hydraulic pump as recited in the instant application. And, ‘118 recites a fluidic switch but not an electrically controlled fluidic switch. To these points, Forseell teaches a similar device having a battery powered hydraulic pump 110 (FIG. 74A, para.’s 2958 & 3745) and an electrically controlled fluidic switch 314 (FIG. 79, para.’s 3773, “[t]he remote control of the external energy-transmission device 304 controls the hydraulic valve shifting device 314 to shift the hydraulic fluid flow direction”, the shifting device reads on the recited fluidic switch and the device is evidently electronically controlled remotely as indicated). With this in mind, it would have been obvious to one having ordinary skill in the art before the effective filing date of the instant application to modify the ‘118 patent with a battery powered pump and electrically controlled fluidic switch in order to provide a compact portable power source and allow external remote control of the device as demonstrated by Forsell, Id.
As to claim 19, this claim is covered by claim 4 of the ‘118 patent.
As to claim 20, this claim is covered by claims 4 and 5 of the ‘118 patent.
As to claims 21 and 22, these claims are covered by claim 3 of the ‘118 patent.
Claim 23 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,228,118 (‘118) in view of Forsell (U. S. Patent Application Publication No. 2011/0087337) as applied to claim 18 above, further in view of Tanaka (U. S. Patent No. 5,441,232).
As to claim 23, the ‘118 patent and Forsell are discussed above __both silent as to the first electrically controlled fluidic switch comprises: a first port and a second port; a magnetic valve core moveable between: a first position in which fluid flow is blocked between the first port and the second port; and a second position in which fluid is able to flow between the first port and the second port; and at least one electromagnet arranged to move the magnetic valve core between the first position and the second position. These elements make up the well known components of a solenoid valve. In this regard, Tanaka teaches a solenoid valve having a first port 19 and a second port 20 (FIG. 1, col. 3, ll. 35-45, inter alia); a magnetic valve core 14 Id., moveable between: a first position in which fluid flow is blocked between the first port 19 and the second port 20 (FIG. 2, valve embodiment showing blocked position, under normal operation); and a second position in which fluid is able to flow between the first port 19 and the second port 20 (FIG. 1, shown); and at least one electromagnet 12 Id., arranged to move the magnetic valve core 14 between the first position and the second position (under normal operation). With this in mind, it would have been obvious to one having ordinary skill in the art before the effective filing date of the instant application to substitute and replace the fluidic switch of the ‘118 patent with the solenoid valve of Tanaka, an electronically controlled valve known to provide predictable fluid flow control having expected results as taught by Tanaka. The use of the solenoid valve of Tanaka in the combination of the ‘118 patent and Forsell is considered a simple substitution of one known electrically controlled valve for that of another. Where a claimed improvement on a device or apparatus is no more than "the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement," the claim is unpatentable under 35 U.S.C. 103(a). MPEP 2143(I)B. 1
Claim 26 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,228,118 (‘118) in view of Forsell (U. S. Patent Application Publication No. 2011/0087337) as applied to claim 18 above, further in view of in view of Farkos (U. S. Patent No. 3740171).
As to claim 26, the ‘118 patent and Forsell are discussed above __both silent as to the hydraulic pump comprises a reciprocating pump. However, electromagnetic reciprocating pumps are known for use in various applications. In this regard, Farkos teaches an electromagnetic reciprocating pump 10 (FIG. 1, Abstract). With this in mind, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to substitute and replace the pump of the ‘118 patent with the electromagnetic reciprocating pump of Farkos__yielding predictable fluid pumping performance with expected results. The use of the pump of Farkos in the combination of the ’118 patent and Forsell is considered a simple substitution of one known pump for that of another. Where a claimed improvement on a device or apparatus is no more than "the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement," the claim is unpatentable under 35 U.S.C. 103(a). Ex Parte Smith, 83 USPQ.2d 1509, 1518-19 (BPAI, 2007) (citing KSR v. Teleflex, 127 S.Ct. 1727, 1740, 82 USPQ2d 1385, 1396 (2007)).
Claims 18-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,846,274 (‘274) in view of Forsell (U. S. Patent Application Publication No. 2011/0087337).
As to claim 18 of the instant application, this is a broader version of claim 1 of the ‘274 patent, reciting common subject matter with the following differences in terminology: First, ‘274 recites a fluidic pump but not a battery powered hydraulic pump as recited in the instant application. And, ‘274 recites a plurality of valves but not an electrically controlled fluidic switch2. To these points, Forseell teaches a similar device having a battery powered hydraulic pump 110 (FIG. 74A, para.’s 2958 & 3745) and an electrically controlled fluidic switch 314 (FIG. 79, para.’s 3773, “[t]he remote control of the external energy-transmission device 304 controls the hydraulic valve shifting device 314 to shift the hydraulic fluid flow direction”, the shifting device reads on the recited fluidic switch and the device is evidently electronically controlled remotely as indicated). With this in mind, it would have been obvious to one having ordinary skill in the art before the effective filing date of the instant application to modify the ‘274 patent with a battery powered pump and electrically controlled fluidic switch in order to provide a compact portable power source and allow external remote control of the device as demonstrated by Forsell, Id.
As to claim 19, this claim is covered by claim 1 of the ‘274 patent since it recites synonymous valves vice fluidic switches.
As to claim 20, this claim is covered by claims 1 of the ‘274 patent.
As to claims 21 and 22, these claims are covered by at least claim 2 of the ‘274 patent that comprehensively recites the structural details and operation of the fluidic actuators.
Claim 23 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,846,274 (‘274) in view of Forsell (U. S. Patent Application Publication No. 2011/0087337) as applied to claim 18 above, further in view of Tanaka (U. S. Patent No. 5,441,232).
As to claim 23, the ‘274 patent and Forsell are discussed above __both silent as to the first electrically controlled fluidic switch comprises: a first port and a second port; a magnetic valve core moveable between: a first position in which fluid flow is blocked between the first port and the second port; and a second position in which fluid is able to flow between the first port and the second port; and at least one electromagnet arranged to move the magnetic valve core between the first position and the second position. These elements make up the well known components of a solenoid valve. In this regard, Tanaka teaches a solenoid valve having a first port 19 and a second port 20 (FIG. 1, col. 3, ll. 35-55); a magnetic valve core 14 Id., moveable between: a first position in which fluid flow is blocked between the first port 19 and the second port 20 (FIG. 2, valve embodiment showing blocked position, under normal operation); and a second position in which fluid is able to flow between the first port 19 and the second port 20 (FIG. 1, shown); and at least one electromagnet 12 Id., arranged to move the magnetic valve core 14 between the first position and the second position (under normal operation). With this in mind, it would have been obvious to one having ordinary skill in the art before the effective filing date of the instant application to substitute and replace the fluidic switch of the ‘274 patent with the solenoid valve of Tanaka, an electronically controlled valve known to provide predictable fluid flow control having expected results as taught by Tanaka. The use of the solenoid valve of Tanaka in the combination of the ‘274 patent and Forsell is considered a simple substitution of one known electrically controlled valve for that of another. Where a claimed improvement on a device or apparatus is no more than "the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement," the claim is unpatentable under 35 U.S.C. 103(a). MPEP 2143(I)B.3
Claim 26 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,846,275 (‘274) in view of Forsell (U. S. Patent Application Publication No. 2011/0087337) as applied to claim 18 above, further in view of in view of Farkos (U. S. Patent No. 3740171).
As to claim 26, the ‘274 patent and Forsell are discussed above __both silent as to the hydraulic pump comprises a reciprocating pump. However, electromagnetic reciprocating pumps are known for use in various applications. In this regard, Farkos teaches an electromagnetic reciprocating pump 10 (FIG. 1, Abstract). With this in mind, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to substitute and replace the pump of the ‘274 patent with the electromagnetic reciprocating pump of Farkos __yielding predictable fluid pumping performance with expected results. The use of the pump of Farkos in the combination of the ’274 patent and Forsell is considered a simple substitution of one known pump for that of another. Where a claimed improvement on a device or apparatus is no more than "the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement," the claim is unpatentable under 35 U.S.C. 103(a). Ex Parte Smith, 83 USPQ.2d 1509, 1518-19 (BPAI, 2007) (citing KSR v. Teleflex, 127 S.Ct. 1727, 1740, 82 USPQ2d 1385, 1396 (2007)).
Allowable Subject Matter
Claim 18-23 and 26 would be allowable provided that the nonstatutory double patenting rejections are overcome.
Claims 24 and 25 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record either alone or in combination does not teach or fairly suggest the device of claim 18 with each and every limitation, specifically the fluidic circuit comprising a fluidic loop fluidically coupled between the pump outlet and the pump inlet, the fluidic circuit comprising: a first fluidic actuator capable of varying at least one of its shape, size, orientation and hardness using the hydraulic fluid; a first electrically controlled fluidic switch for controlling flow of the hydraulic fluid flowing between the pump outlet, the pump inlet and the first fluidic actuator.
Claims 24 and 25 would be allowable for the same reasons set forth for claim 18 if the nonstatutory double patenting rejections are overcome. Otherwise, claim 24 and 25 recite specific details of the electrically controlled fluidic switch not contemplated by the available prior art.
Forsell is considered the closest are of record but fails to teach or suggest, inter alia, the device including a fluidic loop arranged in the manner claimed. Forsell shows an open, i. e., non-looping circuit, teaching away from the instant invention.4
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Robertson (U. S. Patent No. 5245885) is noteworthy prior art, disclosing a
robotic joint with finger actuator 2 having bladders 25, 26 operated by a pair of pumps 28, 29 connected to reservoirs 33, 34.
Gil (U. S. Patent Application Publication No. 2009/0275796) is cited as representative of the general state of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH J HANSEN whose telephone number is (571)272-6780. The examiner can normally be reached Monday Friday 7:00 AM to 4:00 PM (MT).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached at (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KENNETH J HANSEN/Primary Examiner, Art Unit 3746
1 Applicant claims a combination that only unites old elements with no change in the respective functions of those old elements, and the combination of those elements yields predictable results; absent evidence that the modifications necessary to effect the combination of elements is uniquely challenging or difficult for one of ordinary skill in the art, the claim is unpatentable as obvious under 35 U.S.C. 103(a). Ex Parte Smith, 83 USPQ.2d at 1518-19 (BPAI, 2007) (citing KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1396. Accordingly, since the applicant[s] have submitted no persuasive evidence that the combination of the above elements is uniquely challenging or difficult for one of ordinary skill in the art, the claim is unpatentable as obvious under 35 U.S.C. 103(a) because it is no more than the predictable use of prior art elements according to their established functions resulting in the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement.
2 The term fluidic switch in synonymous with the term valve in this context.
3 Applicant claims a combination that only unites old elements with no change in the respective functions of those old elements, and the combination of those elements yields predictable results; absent evidence that the modifications necessary to effect the combination of elements is uniquely challenging or difficult for one of ordinary skill in the art, the claim is unpatentable as obvious under 35 U.S.C. 103(a). Ex Parte Smith, 83 USPQ.2d at 1518-19 (BPAI, 2007) (citing KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1396. Accordingly, since the applicant[s] have submitted no persuasive evidence that the combination of the above elements is uniquely challenging or difficult for one of ordinary skill in the art, the claim is unpatentable as obvious under 35 U.S.C. 103(a) because it is no more than the predictable use of prior art elements according to their established functions resulting in the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement.
4 Applicant’s remarks on pp. 7-8 of its 20 September 2024 response in parent application no. 17/812,900 are hereby incorporated into these reasons for allowance.