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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 20 April 2026 has been entered.
Response to Amendment
This Office Action is responsive to the amendment filed on 20 April 2026. As directed by the amendment: Claims 1, 7, and 14 have been amended, and claims 3, 5, 8-11, and 15-18 are cancelled. Claims 1, 2, 4, 6, 7, 12-14, and 19-22 currently stand pending in the application.
Response to Arguments
Applicant’s arguments filed 20 April 2026, addressing a rejection under 35 USC 112(d), are moot because the previous Office Action (Final rejection dated 12 September 2024) did not present a rejection under 35 USC 112(d), but rather withdrew the rejection under 35 USC 112(d) presented in the Non-final rejection dated 23 April 2024.
Applicant's arguments filed 20 April 2026 have been fully considered but they are not persuasive. As to Balamuth et al. (US 2,990,616), Applicant contends that Balamuth’s flat portion in FIGS. 10a-10b does not narrow in the proximal direction. Examiner respectfully submits that the portion of the flat portion that is identified by Applicant in the arguments (see page 7; a portion of the flat portion is circled in annotated figures presented in the arguments) does narrow in the proximal direction, since the D-shaped flat portion has a proximal end (tip/curve of the “D”) that is narrower than a distal end (straight arm of the “D”) due to the taper of the D-shape.
As to the rejections under 35 U.S.C. 102(a)(1)/(2), Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Examiner notes that the arguments did not address the embodiment of Balamuth (FIGS. 4a-4b) relied upon in the rejections.
Drawings
The drawing sheets filed 20 April 2026 have not been entered. They appear to be taken from a different application and have no relevance to the instant application.
Claim Objections
Claims 1, 2, 4, 6, 7, 12-14, and 19-22 are objected to because of the following informalities: improper antecedence. Appropriate correction is required. The following amendments are suggested:
Claim 1 / line 11: “narrowing in the proximal direction; and”
Claim 7 / lines 11-12: “the central longitudinal first axis.”
Claim 14 / lines 11-12: “the central longitudinal first axis.”
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, 4, 6, 7, 12-14, and 19-22 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claims 1, 7, and 14, the limitation “wherein the flat portion extends along a plane which is parallel to the central longitudinal axis” (claim 1 / lines 12-13; claim 7 / lines 11-12; claim 14 / lines 11-12) is not supported by the specification as originally filed, which recites that the flat portion extends along a plane that is substantially parallel to the central longitudinal axis.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6, 13, and 19 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 6, 13, and 19 fail to further limit the subject matter of claims 1, 7, and 14, respectively. Claim 1 recites a plane which is parallel, and dependent claim 6 recites a plane which is substantially parallel, which does not further limit claim 1 and in fact is broader. Claims 7 and 14 recite a plane which is parallel, and claims 13 and 19 recite a third axis which is substantially parallel; since a plane and a third axis along which the flat portion extends would be collinear, claims 13 and 19 are not further limiting and are broader than claims 7 and 14 due to the term “substantially.” Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4, 6, 7, 13, 14, and 19 are rejected under 35 U.S.C. 102(a)(1)/(2) as anticipated by U.S. Patent No. 2,990,616 to Balamuth et al. (hereinafter, “Balamuth”).
As to claim 1, Balamuth discloses a surgical cutting device, comprising: an elongated shaft (2), shown in FIG. 1, having a proximal portion (cylindrical portion of 2) and a distal portion (tapering portion of 2) connected between a proximal end and a distal end; a central longitudinal axis extending through the elongated shaft; wherein the proximal portion has a first diameter and the distal portion has a second diameter (taken at smaller diameter distal end of the tapered distal portion), the first diameter being larger than the second diameter; a cutting tip, FIGS. 4a-4b, at the distal end of the elongated shaft (the cutting tip of FIGS. 4a-4b is located at the position of 14 in FIG. 1, at the distal end), extending along a second axis which is at an angle (angle of 40) relative to the central longitudinal axis, FIG. 4a; wherein the cutting tip comprises a curved blade (40), wherein the curved blade comprises an inner wall (proximal facing concave wall of 40) extending to a base (arc where curved inner wall meets flat portion) of the cutting tip and a flat portion (the not curved portion including: flat faces including the angled cutaway that connects to the curved inner wall and the flat sidewall proximal to the angled cutaway, shown facing to the right in FIG. 4a and facing forward in FIG. 4b) connected to the curved blade extending and narrowing in the proximal direction (the proximal end of the flat angled cutaway is narrower than the distal end of the flat angled cutaway where it meets the curved inner wall), FIG. 4b; and wherein the flat portion extends along a plane which is parallel to the central longitudinal axis (the flat sidewall of the flat portion extends along a plane parallel to the central longitudinal axis), FIG. 4a.
As to claim 2, Balamuth discloses the device of claim 1, wherein the distal portion is tapered, FIG. 1, decreasing in diameter in a distal direction.
As to claim 4, Balamuth discloses the device of claim 1, wherein the angle of the second axis relative to the central longitudinal axis is greater than 90 degrees (where the central longitudinal axis extends up and down in FIG. 4a), FIG. 4a.
As to claim 6, Balamuth discloses the device of claim 1, wherein the flat portion extends along a plane which is substantially parallel to the central longitudinal axis (the flat sidewall of the flat portion extends along a plane substantially parallel to the central longitudinal axis; additionally, the angled cutaway of the flat portion extends along a plane substantially parallel to the central longitudinal axis where substantially parallel is interpreted as parallel, plus or minus 45 degrees).
As to claim 7, Balamuth discloses a surgical cutting device, comprising: an elongated shaft (2), shown in FIG. 1, having a proximal portion (cylindrical portion of 2) and a distal portion (tapering portion of 2) connected between a proximal end and a distal end; a central longitudinal first axis extending through the elongated shaft; a cutting tip, FIGS. 4a-4b, at the distal end of the elongated shaft (the cutting tip of FIGS. 4a-4b is located at the position of 14 in FIG. 1, at the distal end), extending along a second axis, which is at an angle (angle of 40) relative to the central longitudinal first axis, FIG. 4a; and wherein the cutting tip comprises a curved blade (40) which is open in a proximal direction, FIGS. 4a-4b, wherein the curved blade comprises an inner wall (proximal facing concave wall of 40) extending to a base (arc where curved inner wall meets flat portion) of the cutting tip and a flat portion (the not curved portion including: flat faces including the angled cutaway that connects to the curved inner wall and the flat sidewall proximal to the angled cutaway, shown facing to the right in FIG. 4a and facing forward in FIG. 4b) connected to the curved blade extending and narrowing in the proximal direction (the proximal end of the flat angled cutaway is narrower than the distal end of the flat angled cutaway where it meets the curved inner wall), FIG. 4b; and wherein the flat portion extends along a plane which is parallel to the central longitudinal axis (the flat sidewall of the flat portion extends along a plane parallel to the central longitudinal axis), FIG. 4a.
As to claim 13, Balamuth discloses the device of claim 7, wherein the flat portion extends in the proximal direction along a third axis which is substantially parallel to the central longitudinal first axis (the flat sidewall of the flat portion extends along a third axis substantially parallel to the central longitudinal first axis; additionally, the angled cutaway of the flat portion extends along a third axis substantially parallel to the central longitudinal first axis where substantially parallel is interpreted as parallel, plus or minus 45 degrees).
As to claim 14, Balamuth discloses a surgical cutting device, comprising: an elongated shaft (2), shown in FIG. 1, having a proximal portion (cylindrical portion of 2) and a distal portion (tapering portion of 2) connected between a proximal end and a distal end; a central longitudinal first axis extending through the elongated shaft; a cutting tip, FIGS. 4a-4b, at the distal end of the elongated shaft (the cutting tip of FIGS. 4a-4b is located at the position of 14 in FIG. 1, at the distal end), extending along a second axis, which is at an angle (angle of 40) relative to the central longitudinal first axis, FIG. 4a; wherein the cutting tip comprises a curved blade (40) which is open in a proximal direction, FIGS. 4a-4b, wherein the curved blade comprises an inner wall (proximal facing concave wall of 40) extending to a base (arc where curved inner wall meets flat portion) of the cutting tip and a flat portion (the not curved portion including: flat faces including the angled cutaway that connects to the curved inner wall and the flat sidewall proximal to the angled cutaway, shown facing to the right in FIG. 4a and facing forward in FIG. 4b) connected to the curved blade extending and narrowing in the proximal direction (the proximal end of the flat angled cutaway is narrower than the distal end of the flat angled cutaway where it meets the curved inner wall), FIG. 4b; wherein the flat portion extends along a plane which is parallel to the central longitudinal axis (the flat sidewall of the flat portion extends along a plane parallel to the central longitudinal axis), FIG. 4a; and a handle attached at the proximal end of the elongated shaft.
As to claim 19, Balamuth discloses the device of claim 14, wherein the flat portion extends in the proximal direction along a third axis which is substantially parallel to the central longitudinal first axis (the flat sidewall of the flat portion extends along a third axis substantially parallel to the central longitudinal first axis; additionally, the angled cutaway of the flat portion extends along a third axis substantially parallel to the central longitudinal first axis where substantially parallel is interpreted as parallel, plus or minus 45 degrees).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 2,990,616 to Balamuth et al. (hereinafter, “Balamuth”).
As to claim 7, in another interpretation, Balamuth discloses a surgical cutting device, comprising: an elongated shaft (2), shown in FIG. 1, having a proximal portion (cylindrical portion of 2) and a distal portion (cylindrical portion of 2) connected between a proximal end and a distal end; a central longitudinal first axis extending through the elongated shaft; a cutting tip, FIGS. 10a-10b, at the distal end of the elongated shaft (the cutting tip of FIGS. 10a-10b is located at the position of 14 in FIG. 1, at the distal end), extending along a second axis, which is at an angle (angle of 61) relative to the central longitudinal first axis, FIG. 10a; and wherein the cutting tip comprises a blade (61) which is open in a proximal direction, FIGS. 10a-10b, wherein the blade comprises an inner wall (proximal facing wall of 61) extending to a base (connecting line where proximal facing wall meets D-shaped flat cutaway portion) of the cutting tip and a flat portion (portions having flat surfaces, including: flat angled cutaway portion of frustoconical portion that connects to the base/blade inner wall, and the flat sidewall of the hex base that is proximal to the angled cutaway, shown facing to the right in FIG. 10a and facing forward in FIG. 10b) connected to the blade extending and narrowing in the proximal direction (the flat angled cutaway portion of the flat portion that connects to the base/blade inner wall extends and narrows in the proximal direction), FIG. 10b; and wherein the flat portion extends along a plane which is parallel to the central longitudinal axis (the flat sidewall of the hex base of the flat portion extends along a plane parallel to the central longitudinal axis).
As to claim 12, Balamuth discloses the device of claim 7, wherein the flat portion is D-shaped (at the flat angled cutaway portion of the flat portion), FIG. 10b.
Balamuth is silent as to the blade being curved.
In another embodiment, shown in FIGS. 4a-4b, Balamuth teaches a curved blade (40).
Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the blade in Balamuth’s embodiment shown in FIGS. 10a-10b a curved blade, to provide an arcuate cut or to provide more surface area to the blade, since Balamuth contemplates the blade may be curved and since combining prior art elements according to known methods to yield predictable results is within the ordinary skill in the art.
Claims 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Balamuth in view of U.S. Patent No. US 9,649,126 to Robertson et al. (hereinafter, “Robertson”).
As to claims 20-22, Balamuth discloses wherein the base is semi-circular (the arc where curved inner wall meets the flat portion is semi-circular because it is curved in the shape of a perimeter of a circle) and extends in a second plane substantially perpendicular to the second axis (the base extends in a second plane substantially perpendicular to the second axis, i.e. the plane of the flat angled cutaway, because the base forms the end of the curved inner wall where it meets the flat angled cutaway and the arc extends in the second plane).
Balamuth is silent as to wherein a cross-section of the curved blade in a first plane perpendicular to the second axis is crescent-shaped.
Robertson teaches a surgical cutting device, in the same field of endeavor of surgical cutting devices, comprising an elongated shaft (200), shown in FIG. 74; a central longitudinal axis extending through the elongated shaft, FIG. 74; a cutting tip (1360) at the distal end of the elongated shaft, extending along a second axis which is at an angle relative to the central longitudinal axis; wherein the cutting tip comprises a curved blade (1360) (col. 32 / lines 49-51), wherein a cross-section of the curved blade in a plane perpendicular to the second axis is crescent-shaped (due to lateral cutting edge 1362), FIG. 76.
Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide lateral cutting edges on the sides of the curved blade in Balamuth, as taught by Robertson, to provide an increased ability for side cutting and to ensure precise passage of the blade through tissue and bone due to the sharp cutting edges. The tapering of the sides of the curved blade into lateral cutting edges would result in the cross-section of the curved blade in a first plane perpendicular to the second axis being crescent-shaped.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRACY L KAMIKAWA whose telephone number is (571)270-7276. The examiner can normally be reached M-F 10:00-6:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong, can be reached at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRACY L KAMIKAWA/Examiner, Art Unit 3775
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