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 .
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.
Claim 4 and 14 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.
Claims 4 and 14 are rejected as indefinite for the recitation of “the center axis being coincident with the second pivot axis/pivot axis” in lines 1-2. This is indefinite since claims 1 and 11 recite that the center axis and the pivot axis/second axis are parallel to one another in lines 15 and 23, respectively. A person of skill will understand that parallel lines have the same width or have a constant gap between them and never collide, however coincident lines do not have a constant space and are on top of each other, or in other words, one line entirely covers the other line. Therefore, it is unclear how the axes can simultaneously be coincident and parallel.
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) 1-2, 6-7, 9-12, 16-17, 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goble et al (US Patent Pub. 20050015153A1).
Goble discloses a surgical tissue cutting system. Specifically in regards to claims 1 and 11, Nelson discloses a powered surgical handpiece comprising: a body, a motor disposed inside the body, and a mount defining a first pivot axis (axis through center of mount of driver that connects to 105) and drivingly connected to the motor; and a rasp (520) selectively removably connected to the mount (portion which connects to 105, Fig. 29) of the powered surgical handpiece (Goble recites that the rasp assembly once insertion handle 160 is removed from pivot arm 105 can be connected to a reciprocal driver. such as a reciprocal saw.) (Fig. 29 and Para. [0089]). The rasp (520) comprising: opposed proximal and distal ends (114 and 116, Fig. 6), the proximal end (114) including a mount portion (105) with the mount portion defining a second pivot axis (axis through center of 105) substantially coincident with the first pivot axis (axis through center of mount of driver that connects to 105) when the rasp (520) is connected to the mount, and a rasp region (522): extending perpendicularly from the mount portion between the mount and the distal end and including the distal end, having opposed first and second surfaces (524/ surface opposite 524) connecting at a common edge (edge shown at Fig. 29) with the first surface (surface opposite 524) being convex and the second surface (524) being concave, having a plurality of cutting projections (118) disposed on the second surface (524), the cutting projections (118) pivotable about the pivot axis (axis through 105) and having a center axis (axis along center of 128) substantially parallel to the second pivot axis (axis through 105) (The end 148 by means of pin 150 allows the rasp body 522 to pivot to different angles such as perpendicular to the arm 105 or mount.) (Fig. 29 and 6; and Para. [0155],[0082]). At least one of the first and second surfaces (524 and surface opposite 524) arcing away from the pivot axis (axis through 105) and back toward the pivot axis (axis through 105), and the common edge defining a periphery of the rasp region (522) that is any one of elliptical, ovate, obovate, lanceolate and oblanceolate (Fig. 29).
In regards to claims 2 and 12, Goble discloses wherein the mount portion (105) is substantially planar and is substantially normal to the pivot axis (axis through 105) (Fig. 29).
In regards to claims 7 and 17, Nelson discloses wherein the rasp (520) has no cutting projections on the common edge (Fig. 29).
In regards to claims 9-10 and 19-20, Goble discloses wherein the rasp region (522) has a shape of a wedge segment of a spheroid, and wherein the wedge segment has an included angle of less than 120 degrees (As seen in Fig, 29, the rasp body 522 is a segment that appears to be less than 120deg of a spheroidal object.) (Fig. 29).
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.
Claim(s) 5, 8, 15, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goble in view of Sidebotham et al (US Patent Pub. 20180125503A1).
Goble discloses a surgical cutting system comprising a rasp with a body extending from a mount at a proximal end to a distal end, the mount defining a pivot axis, the rasp further having opposed first and second surfaces that arc away from the pivot axis and back toward the pivot axis. However, the reference is silent as to the thickness of the rasp or how that geometry was determined.
Sidebotham discloses a surgical tissue cutting system. Specifically, Sidebotham discloses a powered surgical handpiece comprising: a body (body connected to hub 400 recited as a BJ2100 handpiece available from Shanghai Bojin Medical Instrument Co., Ltd), a mount (coupling for 412/410) defining a first pivot axis (454) and drivingly connected to the motor; and a rasp (100, Fig. 11-14a) comprising: opposed proximal and distal ends (410,116), the proximal end including a mount portion (410/406) with the mount portion defining a second pivot axis (axis through 410) substantially coincident with the first pivot axis (454) when the rasp (100/400) is connected to the mount, and a rasp region (100): extending between the mount (410/406) and the distal end (116) and including the distal end (106), having opposed first and second surfaces (104/106) connecting at a common edge (edge shown at Fig. 13) with the first surface (104) being convex and the second surface (106) being concave, having a plurality of cutting projections (128) disposed on the second surface (106), and having a center axis (axis along center of 100) substantially parallel to the second pivot axis (axis through 410) (Fig. 11-14a and 21; and Para. [0073]-[0075]). In regards to claims 5 and 15, Sidebotham wherein the rasp region (100) has a thickness (T) less than one third of an available distracted distance (Applicant in their specification as originally filed in Para. [0069] recites wherein the rasp region thickness is between .25-1.25mm. Sidebotham discloses that the blade 100 has a thickness of 0.12” at location 116 and a thickness of .016” at the middle which would make the range of thickness be 0.3048-.4064mm.) (Fig. 12-13; and Para. [0074]). In regards to claims 8 and 18, Sidebotham discloses wherein a geometry of the rasp region is derived from a database of measurement data (Para. [0074],[0104]). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the rasp body (522) of Goble by making the thickness in the range of .25-1.25mm and to derive the geometry of the rasp from a database as taught in Sidebotham to have a blade having a radius of an arc swept by the cutting structure that can be equal to or substantially equal to the radius of the first surface such that osteotomy surfaces produced by the cutting structure and the first surface have equal or substantially equal radii (Para. [0074]).
Claim(s) 6 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goble in view of Nelson et al (US Patent Pub. 20130304070A1).
Goble discloses a surgical cutting system comprising a rasp with a body extending from a mount at a proximal end to a distal end, the mount defining a pivot axis, the rasp further having opposed first and second surfaces that arc away from the pivot axis and back toward the pivot axis. However, the reference is silent as to rasp region having cutting teeth on both sides.
Nelson discloses a surgical tissue cutting system. Specifically in regards to claims 6 and 16, Nelson discloses a rasp (980) having a rasp region (984) with first and second surfaces (986/988) wherein the first surface (988) is convex and the second surface (986) is concave, and wherein the rasp region (984) has cutting projections on both the first and second surfaces (986/988) (Nelson recites that the surface 988 can have cutting features 992 as well.) (Fig. 49a-49b; and Para. [0210]). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the rasp region (522) of Goble to have cutting projections on both first and second surfaces as taught in Nelson in order to create a smoother more conforming surface.
Allowable Subject Matter
Claims 21-22 allowed.
The closes art which is the Gobles reference cited above recites a rasp that can have a mount portion that is normal to the rasp portion however, as demonstrated in the Fig. 29 of the reference the if the rasp body 522 is normal to the arm 105 then the pivot axis is not in the same reference plane as the first and second surfaces that arc away and towards the pivot axis as recited in the claims.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the arguments do not apply to the new combination of references being used in the current rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELA I SHIRSAT whose telephone number is (571)270-5269. The examiner can normally be reached M-F 9:00am-5:30pm MST.
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/MARCELA I. SHIRSAT/ Primary Examiner, Art Unit 3775
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