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 .
Specification
The disclosure is objected to because of the following informalities: in para [0069], the term “flair” should read “flare.
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.
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: a ratchet mechanism allowing an incremental increase in stretching the elastic portion of the strap and being releasable to release all tension in claim 1.
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.
As per paragraph [0022] of the specification, “the ratchet mechanism is a buckle having a button for releasing all tension when the button is pushed”.
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 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, 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); and 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 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 CFR 3.73(b).
Claims 1-13 and 15-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of U.S. Patent No. (12,544,248 B1). Although the conflicting claims are not identical, they are not patentably distinct from each other because the application claims are a broader recitation of the invention than that of the patented application.
Claim 1 of the instant application recite: An orthosis comprising: a first portion configured for placement on a first portion of a limb; a second portion configured for placement on a second portion of a limb; the first portion and the second portion attached to one another by at least one joint permitting relative rotation between the first portion and the second portion; and, a strap, at least a portion of the strap being an elastic portion, the strap having a ratchet mechanism allowing an incremental increase in stretching the elastic portion of the strap and being releasable to release all tension, a first end of the strap connected to the first portion at a location offset from the at least one joint, and a second end of the strap connected to the second portion at a location offset from the at least one joint.
Claim 1 of U.S. Patent No. (12,544,248 B1) recite: an ankle foot orthosis comprising: an upper portion configured for placement on a lower leg; a lower portion configured for placement on a foot; the upper portion and lower portion attached to one another by a lateral joint and a medial joint, the lateral joint and medial joint allowing rotation of the upper portion with respect to the lower portion; a strap, at least a portion of the strap being an elastic portion, the strap having a ratchet mechanism allowing an incremental increase in stretching the elastic portion of the strap and being releasable to release all tension, a first end of the strap connected to the upper portion offset from and anterior to the lateral joint and the medial joint, and a second end of the strap connected to the lower portion offset from and anterior to the lateral joint and medial joint.
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. (12,544,248 B1) 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. (12,544,248 B1) 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. (12,544,248 B1) it is not patentably distinct from claim 1 of patent (12,544,248 B1).
All of the limitation of claim 2 can be found in claim 10 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 3 can be found in claim 11 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 4 can be found in claim 12 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 5 can be found in claim 13 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 6 can be found in claim 2 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 7 can be found in claim 6 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 8 can be found in claim 7 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 9 can be found in claim 3 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 10 can be found in claim 4 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 11 can be found in claim 5 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 12 can be found in claim 14 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 13 can be found in claim 15 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 15 can be found in claim 17 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 16 can be found in claim 8 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 17 can be found in claim 9 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 18 can be found in claim 18 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 19 can be found in claim 19 of U.S. Patent No. (12,544,248 B1).
All of the limitation of claim 20 can be found in claim 1 of U.S. Patent No. (12,544,248 B1).
Allowable Subject Matter
Claim 14 is objected to as being dependent upon a rejected base claim, but would be allowable if 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 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.
Conclusion
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/OPHELIA A HAWTHORNE/ Primary Examiner, Art Unit 3786
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