`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
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`12/810,596
`
`06/25/2010
`
`Takashi Kawakami
`
`RATNERPRESTIA
`PO. BOX 980
`VALLEY FORGE, PA 19482-0980
`
`BPO—107LS
`
`7832
`
`
`
`
`
`M LER, CHRISTOPHERE
`
`ART UNIT
`
`PAPER NUIVIBER
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`3771
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/16/2014
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ptocorrespondence @ratnerprestia.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 12/810,596 KAWAKAMI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`Christopher Miller it?“ 3771
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
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`1)IZI Responsive to communication(s) filed on 5 December 2013.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) 1,3,5 and 6is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`is/are allowed.
`6 El Claim s)
`s) 1, 3, 5-6 is/are rejected.
`
`)
`
`
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`is/are objected to.
`
`are subject to restriction and/or election requirement.
`9)I:I Claim(s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`
`hit
`:i/wwwusnto. ov/ atentS/init events/
`iindex.‘$ orsend an inquiry to PPI-iieedback{®usgto.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
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`b)|:l Some” c)I:l None of the:
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`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`2) I] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`.
`4) I:I Other:
`.
`
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20141203
`
`

`

`Application/Control Number: 12/810,596
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`Page 2
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`Art Unit: 3771
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`DETAILED ACTION
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`1.
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`The present application is being examined under the pre-AlA first to invent
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`provisions.
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`Status of Claims
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`2.
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`This Action is in response to the amendment filed on December 5, 2013.
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`As directed by the amendment: Claims 1 and 5 were amended. Claims 2, 4, and
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`7-24 are cancelled. Claims 1, 3, and 5-6 are pending and currently under consideration
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`for patentability under 37 CFR 1.104.
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`Claim Objections
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`3.
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`Claim 1
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`is objected to because of the following informalities:
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`Claim 1, line 5 recites “the muscle force assisting device adapted to assists”
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`which appears to be an error. Examiner suggests --the muscle force assisting device is
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`adapted to assist--.
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`Appropriate correction is required.
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`Claim Rejections - 35 USC § 1 12
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`4.
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`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
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`5.
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`Claims 1, 3, and 5-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-
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`AlA), second paragraph, as being indefinite for failing to particularly point out and
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`

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`Application/Control Number: 12/810,596
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`Page 3
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`Art Unit: 3771
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`distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA
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`the applicant regards as the invention.
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`Claim 1, line 6 recites “such as” which renders the claim indefinite because it is
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`unclear whether the limitations following the phrase are part of the claimed invention.
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`See MPEP § 2173.05(d).
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`Claim 1, line 9 recites “one end of an actuator that is extensible is provided on
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`the first attachment” and it is unclear if this "end" is extensible, or if it is just the actuator
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`in general which is extensible. For the purposes of examination, this has been
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`considered to mean the actuator is extensible.
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`Claim 1, the penultimate line recites the second attachment “stretches” with
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`respect to the first attachment and it is unclear what is meant by the second attachment
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`stretching. Does the material of the second attachment actually stretch, or does the
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`second attachment rotate relative to the first attachment? It appears that the springs
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`stretch, but the second attachment merely rotates.
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`Claim 5, line 2 recites “the one end” and it is unclear which end is being referred
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`to. Two ends have been recited for the actuator in claim 1.
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`Claim 5, line 2 recites “the artificial muscle” which lacks antecedent basis. There
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`is no “artificial muscle” in claim 1.
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`Claim 5, lines 2—3 recite “wherein the one end of the artificial muscle is displaced
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`with respect to the first attachment, the one end of the artificial muscle is displaced’ and
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`it is unclear what the purpose of the italicized portion is. The claim has already stated
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`that "the one end of the artificial muscle is displaced".
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`

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`Application/Control Number: 12/810,596
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`Page 4
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`Art Unit: 3771
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`Claim 5, line 3 recites “the one end of the artificial muscle” and it is unclear which
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`end is being referred to. Two ends have been recited for the actuator in claim 1.
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`Claim 5, line 5 recites "the one end of the artificial muscle" and it is unclear which
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`end is being referred to. Two ends have been recited for the actuator in claim 1.
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`Claim 6, line 6 recites “the one end of the artificial muscle” and it is unclear which
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`end is being referred to.
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`Claim 3 is rejected based on their dependence on a rejected base claim.
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`Claim Rejections - 35 USC § 103
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`6.
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
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`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
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`7.
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`Claims 1, 3, and 5-6, as best understood, are rejected under pre-AIA 35
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`U.S.C. 103(a) as being unpatentable over Liu (5,364,323) in view of Doran
`
`(6,179,799).
`
`Regarding claim 1, Liu discloses a muscle force assisting device comprising a
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`first attachment (arm covering body 50, Fig. 3) adapted to be arranged along one bone
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`of a joint (the forearm bones at the wrist joint), and a second attachment (U-shaped
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`movable base 60, Fig. 3) adapted to be arranged along an other bone of the joint (the
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`hand bones at the wrist joint), in which the muscle force assisting device is adapted to
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`assist motion of a user’s joint such as a wrist (the springs provide a restoring force
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`which helps assist the user’s joint back to its original position), wherein the first
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`

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`Application/Control Number: 12/810,596
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`Page 5
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`Art Unit: 3771
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`attachment (50) and the second attachment (60) are connected to each other through a
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`spring joint (spiral spring 80, Fig. 3), and a coil spring is used as the spring joint (a spiral
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`spring is a coil spring). One end of the spring joint (80) is provided on a side of the first
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`attachment, and an other end of the spring joint (80) is provided on a side of the second
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`attachment (see Fig. 3). The first attachment and the second attachment are connected
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`to each other through only the spring joint (80). When a direction of a turning axis of the
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`joint is defined as a Z-Axis, a phantom line passing through the turning axis of the joint
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`and extending perpendicular to the Z-axis along a longitudinal direction of the first
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`attachment is defined as an X-axis, and a phantom line passing through the turning axis
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`of the joint and extending perpendicular to the Z-axis and the X-axis is defined as a Y-
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`axis, and when one end of the second attachment with respect to an intersection
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`between the X-axis and the Y-axis is displaced in a plus direction of the Y-axis, in a
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`state where the second attachment is stretched (rotated) with respect to the first
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`attachment, an axis of the coil spring is located at a minus position of the Y-axis (see
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`annotated Figure A below and the corresponding caption).
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`

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`Application/Control Number: 12/810,596
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`Page 6
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`Art Unit: 3771
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`
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`First Attachment
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`\
`
`
`
`g;333::i::r:::t::"::-‘-M""
`:s-x
`».
`"':‘-‘:~:»:=::=~:::7:?
`
`
`I
`
`g|
`l
`
`'
`
`‘
`
`. An axis of
`i The, coil spring
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`Annotated Figure A (from Figure 4A of Liu): Figure 4A has been amended to delete reference
`characters and lead lines for clarity, and it has been shaded to emphasize the state of the muscle force
`assisting device when one end of the second attachment is displaced in a plus direction of the Y-axis to
`stretch/rotate with respect to the first attachment. When the second attachment is rotated in the positive
`Y direction, an axis of the coil spring is still located at a minus position of the Y-axis.
`"An axis" is a broad
`limitation and does not require this axis to be at the center of the coil spring in its relaxed state.
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`Liu is silent regarding one end of an actuator that is extensible provided on the
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`first attachment, and an other end of the actuator being provided on the second
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`attachment
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`Doran teaches an orthosis for supination and pronation of the wrist having an
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`extensible actuator (swing arm 33 and rod 45, Fig. 2) with one end (end 46, Fig. 5)
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`provided on a first attachment (forearm platform 26, Fig. 1), and an other end (end 47,
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`Fig. 5) of the actuator is provided on a second attachment (wrist cuff 50, Fig. 5). The
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`actuator (33, 45) may be selectively actuated (see col. 3, lines 61-66) to apply a force to
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`rotate the wrist (see col. 1, lines 42-45). Having an actuator for supination and
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`pronation of the wrist is helpful for rehabilitation of the human wrist (see col. 1, lines 5-
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`9).
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`

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`Application/Control Number: 12/810,596
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`Page 7
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`Art Unit: 3771
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`Therefore, it would have been obvious to one having ordinary skill in the art at
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`the time the invention was made to modify the Liu device to include an extensibile
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`actuator spanning from the first attachment to the second attachment as taught by
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`Doran so that the device may be selectively used in wrist rehabilitation to help return the
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`functioning of supination and pronation of the wrist joint.
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`Regarding claim 3, the modified Liu/Doran device discloses a coil spring (spiral
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`spring 80, Fig. 3 of Liu). A coil spring is used as an extension spring because it will
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`supply a return force if the spring is extended/pulled.
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`Regarding claim 5, the modified Liu/Doran device discloses one end (46, Fig. 5
`
`of Doran) of the actuator is displaced with respect to the first attachment, thereby
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`increasing a bending angle of the second attachment with respect to the first attachment
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`(see col. 3, lines 60-66 of Doran; the actuator increases the bending angle of the
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`second attachment with respect to the first attachment as the wrist is rotated) as
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`compared with a case where the one end of the artificial muscle is not displaced (if
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`there is no movement with the actuator, there will not be any change in the bending
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`angle of the second attachment with respect to the first attachment).
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`Regarding claim 6, the modified Liu/Doran device discloses the first attachment
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`includes a swing arm (swing arm 33, Fig. 2 of Doran), an end of the swing arm on a side
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`opposite from the joint is a turning fulcrum (pivot 56, Fig. 5 of Doran is opposite the wrist
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`joint), and an end of the swing arm (33) on a side of the joint is a displacing end (pivot
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`block 37, Fig. 4 of Doran is on a side of the joint), and the one end of the actuator (33,
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`

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`Application/Control Number: 12/810,596
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`Page 8
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`Art Unit: 3771
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`45) is provided on the displacing end of the swing arm (end 46 of Doran is provided on
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`the displacing end of the swing arm).
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`Response to Arguments
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`8.
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`Applicant’s arguments with respect to references Keropian and Koeneman (see
`
`pages 4-6 of the Remarks) have been considered but are moot because the arguments
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`do not apply to the references being used in the current rejection.
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`9.
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`Regarding the argument that Liu fails to show an X-axis and a Y-axis passing
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`through a turning axis of arm covering 50 and movable base 60 (see the fourth
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`paragraph of page 6 of the Remarks), this argument is not well taken. As seen in
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`annotated Figure A above, Liu has a spring coil connecting a first attachment to a
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`second attachment. When the second attachment is rotated in the positive Y-direction
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`(see shaded portion of Fig. A above) with respect to the first attachment, an axis of the
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`coil spring is located at a minus position of the Y-axis.
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`It is noted that “an axis” of the
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`coil spring is a broad limitation which could cover any axis that includes a part of the coil
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`spring. Furthermore, when viewing the coil spring (80) of Figure 4A of Liu,
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`it is unclear
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`why the coil spring (70) of Figure 1A of the instant application would behave any
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`differently than the coil spring of Liu because they appear to be structurally identical.
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`What material or structural properties does the coil spring (70, Fig. 1A) of the instant
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`application possess that the coil spring (80) of Liu lacks that would cause them to
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`behave differently?
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`10.
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`Regarding the argument that "one of ordinary skill in the art would understand
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`that the turning axis of the wrist joint to be the axis passing across the wrist, around
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`

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`Application/Control Number: 12/810,596
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`Page 9
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`Art Unit: 3771
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`which the hand can be moved upward or downward with respect to the forearm” (see
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`the fifth paragraph of page 6 of the Remarks), this argument is not well taken. This
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`argument is not pertinent to the instant rejection because the instant rejection relies
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`upon Figure 4A of Liu rather than Figure 4B. However, it will still be noted that the
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`claims do not require the turning axis of the joint to be an axis around which a body
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`member can be moved “upward or downward”. The Liu device allows left to right
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`rotation as seen in Figure 4B, and therefore the labeling of the Y-axis in the final
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`rejection mailed September 6, 2013 was correct.
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`Conclusion
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`11.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure. Potter (3,631,542) discloses a brace which has an extensible
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`actuator. Stermer (5,013,037) discloses a physical therapy device which has a coil
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`spring connecting two attachments wherein an axis of the coil spring is in a minus
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`direction of the Y-axis. Cruz (5,653,680) discloses an active wrist brace with coil
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`springs connecting a first attachment to a second attachment.
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`12.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Christopher Miller whose telephone number is (571 )270-
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`1473. The examiner can normally be reached on Monday - Friday, 10:00am - 7:00pm
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`ET.
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`lf attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Justine Yu can be reached on 5712724835. The fax phone number for the
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`organization where this application or proceeding is assigned is 571 -273-8300.
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`

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`Application/Control Number: 12/810,596
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`Page 10
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`Art Unit: 3771
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`
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`
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`
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`
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`
`/Christopher Miller/
`Examiner, Art Unit 3771
`
`/J USTI N E YU/
`
`Supervisory Patent Examiner, Art Unit 3771
`
`