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 .
This Office action is in response to the amendment filed 11/13/2024. Claims 1-19 are pending with claims 2-19 being newly added.
Terminal Disclaimer
The terminal disclaimer filed on 11/13/2024 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,304,735 B2 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
Claim 16 is objected to because of the following informalities:
In claim 16, insert a period at the end thereof. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 16-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites the limitation "the proximal pin holes" in lines 7-8 and in lines 9-10. Claim 16 also recites the limitation “the distal pin holes” in line 10. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites that “the slot defines a cutting plane for cutting a base of the first metatarsal or a base of the first cuneiform.” Thereafter, claim 17 recites the step of cutting the base of the first metatarsal and the base of the first cuneiform through the slot. The recitation creates confusion as to whether the slot recited in the claim 16 is capable of performing the method step of claim 17 – cutting both the base of the first cuneiform and the base of the first metatarsal.
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) 16 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dacosta et al. (U.S. 2019/0336140 A1) as cited in the IDS filed 07/09/2024.
Concerning claim 16, as best understood, Dacosta et al. disclose a method of correcting a bunion, the method comprising: placing a reversible cut guide (see Fig. 1, element 100) across a dorsal side of a first tarsometatarsal (TMT) joint defined by a first cuneiform (see Fig. 53, element 604) and a first metatarsal (see Fig. 53, element 602 and par. 0134), the reversible cut guide comprising: a body; a plurality of first pin holes (132 and 134) extending parallel through the body (see par. 0135, lines 11-13 which discloses that the openings 132 and 134 may extend through the body parallel to the extension member); a plurality of second pin holes (see Fig. 1, elements 142 and 144) extending through the body parallel to the first pin holes (see par. 0136, lines 11-12 which discloses that the openings 142, 144 may extend through the body parallel to the extension member); and a joint-seeking paddle (see Fig. 2, element 128) extending downward from the body between the first pin holes and the second pin holes such that, when the joint-seeking paddle is at least partially disposed within the first TMT joint, the first pin holes define a first predetermined spacing relative to the first TMT joint; and a slot (see Fig. 2, element 120) extending through the body parallel (see par. 0131) to a plane of the joint-seeking paddle
such that the slot defines a cutting plane for cutting a base of the first metatarsal or a base of the first cuneiform; after the placing step, inserting a plurality of metatarsal pins (see Fig. 57, elements 608 and 610) into the first metatarsal at a first predetermined spacing relative to the first TMT joint; excising the first TMT joint, the excising comprising: cutting the base of the first metatarsal proximate the first TMT joint so as to define a cut face of the first metatarsal; and cutting the base of the first cuneiform proximate the first TMT joint so as to define a cut face of the first cuneiform (see par. 0184); after the placing step, inserting a plurality of cuneiform pins into the first cuneiform (see Fig. 57, elements 612 and 616) at a second predetermined spacing relative to the first TMT joint; compressing the first TMT joint using a compressor block (see Fig. 64, element 552)such that the cut face of the first metatarsal contacts the cut face of the first cuneiform; and fixing the first TMT joint (see par. 0185, lines 17-19).
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Concerning claim 19, wherein the step of cutting the base of the first cuneiform (see Fig. 62, element 604) is performed through the slot (see Fig. 1, element 120).
Allowable Subject Matter
Claims 1-15 are allowed.
Response to Arguments
Applicant’s arguments filed 11/13/2024 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN HAMMOND whose telephone number is (571)270-3819. The examiner can normally be reached Monday-Friday 8 - 4 PM .
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eduardo C. Robert, at 571 272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELLEN C HAMMOND/Primary Examiner, Art Unit 3773
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