DETAILED ACTION
This action is in response to Applicant’s amendment filed 10 December 2025.
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 § 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.
Claim(s) 1, 6-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lechner et al. (U.S. Publication No. 2009/0024127).
Lechner et al. discloses a device for registering a bone for a robotic shoulder arthroplasty with a surgical robot, the device comprising: a first portion (22) engageable with a first portion of a bone; and a second portion (22) engageable with a second portion of the bone (Figure 2, paragraph 48), the first portion including: a stopper (58) (paragraph 44-46, “anti-loss safety device”) connected to the internal portion and extending therefrom (the plate extends at least from the cutout portion seen in Figure 5); and a bone spike (24) extending from the stopper, the bone spike engageable with the bone, the stopper engageable with the bone to limit penetration of the bone spike into the bone (the plate (58) has a thickness and thus will limit penetration the distance of the thickness of the plate); the second portion connected to the first portion and rotatable with respect to the first portion (paragraph 48); a registration device (21) connectable to the first portion and configured to interface with the surgical robot for registration of the device and the bone ; and an actuator (25) engageable with the first portion and the second portion to move the second portion toward a closed position away from an open position (paragraph 48).
Regarding claim 6, the first (22) portion is curved (Figure 2).
Regarding claim 7, the device further comprises a tab operable to move the second portion toward the open position (since the device is set up as a traditional plier, the ends opposite the spiked ends can be considered tabs that operate to move the second portion toward the open position).
Regarding claim 8, the device further comprises a coupler releasably securable to the first portion, the coupler configured to releasably secure the registration device to the first portion. (As seen in figure 2, the registration device 21 has a coupler at the end thereof. Thus, the coupler is releasable securable to the first portion at element 26)
Regarding claim 9, the first portion includes a reference bore configured to receive a reference device at least partially therein. (The opening made between the two portions 22 from the spiked end to the pivot 23 can be considered a reference bore).
Regarding claim 10, the actuator (25) is threadably engageable with the first portion to engage the second portion (paragraph 48, “screw connection”).
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) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lechner et al. (U.S. Publication No. 2009/0024127).
Lechner et al. discloses the claimed invention except for a second bone spike threadably securable to the first portion and engageable with the bone. As seen in figure 5, Lechner et al. does disclose 10 spikes 40 that are connected to the ends of the first and second portion. The spikes are disclosed as being pressed or adhered into the first and second portions. Threading is not disclosed; however, it would have been obvious to one skilled in the art to provide a threaded connection between the spikes 40 and the first and second portions as such is a well-established manner to connect two objects. A threaded connection further allows the spikes to be changed out as they dull over time.
Regarding claim 5, the second portion includes a third bone spike engageable with the bone (as seen in figure 2, there are a plurality of spikes 24 on each of the first and second portions).
Response to Arguments
In response to Applicants argument the plate 58 does not limit bone penetration, the Examiner respectfully disagrees. Regardless of how thin the plate is, it will have a thickness that the spikes are limited from penetrating beyond.
In response that the bone spikes do not extend from the plate 58 but from opposing arms 32, the Examiner respectfully disagrees. Both can be true. The spikes extend from the arms 32 and when the plate is attached, they also extend from the plate.
Allowable Subject Matter
Claims 20-22 allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art alone or in combination fails to disclose a device for registering a bone for a surgical robot having a first portion and a second portion engageable to bone. The second portion is connected to the first portion and rotatable with respect thereto. A registration device is coupled to the first portion and an actuator is engaged with the first and second portion to move the second portion toward or away from the first portion. An insert is connected to one or more of the first and the second portion and a bone spike is connected to the insert and the insert is operable to move the bone spike with respect to the first and second portion.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW YANG whose telephone number is (571)272-3472. The examiner can normally be reached 9:00 - 9:00 M-F.
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/ANDREW YANG/Primary Examiner, Art Unit 3775