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 .
Response to Amendment
This Office Action is responsive to the amendment filed on 12 June 2026. As directed by the amendment: claims 1, 10, 13, and 19 have been amended, and claims 11 and 12 are cancelled. Claims 1-10 and 13-23 currently stand pending in the application.
The amendments to the specification are sufficient to overcome the previous specification objection, which is accordingly withdrawn.
Response to Arguments
Applicant's arguments filed 12 June 2026 have been fully considered but they are not persuasive. As to claim 1, Applicant contends that Narayan (5,176,688) does not disclose dimensional asymmetry between the two sets of projections, namely that the second projections (carried on the driving body) extend further from their base than the first projections (carried on the second end portion of the proximal portion). Examiner respectfully submits that claim 1 requires the first radial extension to be from a second end surface of the second end portion, and the second radial extension to be from a distal surface of the driving body. A second end surface of the second end portion can be interpreted to be the surface of the distal end of component 36 (which comprises part of the second end portion), and a distal surface of the driving body can be interpreted to be the distal surface of the hollow in the shaft 56 of the driving body, in which interpretations the second radial extension is greater than the first radial extension. Additionally, each of the radial extensions can be measured or taken at a particular part of the angled surface of the respective projection – the first radial extension taken at a lower more distal part of the angled top surface of the first projection would be less than the second radial extension taken at a more distal part of the angled bottom surface of the second projection, even if the radial extensions are measured as the heights of the projections themselves. Since Narayan discloses the claimed extensions, the force transmission rationale that motivates the asymmetric extension relationship need not be imported.
As to claim 19, Applicant contends that Narayan does not disclose an impactor with a channel, a rod translatably disposed within an impactor channel, nor a distal portion configured to contact such a rod. Examiner respectfully submits that Narayan discloses an impactor with a channel (interior of 18), a rod (31) translatably disposed within an impactor channel (col. 2 / lines 59-63; the rod is translatably disposed within 11 which is within the channel and therefore the rod is translatably disposed within the channel), and a distal portion (distal portion of 11) configured to contact such a rod (the distal portion contacts the rod because the rod translates or slides therein). The impaction force is delivered to the rod (31, col. 4 / lines 1-13), through the distal portion since the rod extends through the distal portion.
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 6, 7, and 20-23 are rejected under 35 U.S.C. 112(b) 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.
As to claim 6, the limitation “a distal surface” renders the claims indefinite, because it is unclear if this refers to “a distal surface of the driving body” previously recited in claim 1 / line 17, or to a different distal surface of the driving body. For examination purposes, the limitation will be interpreted in the former instance, as the distal surface.
As to claim 20, the limitation “a first end portion and a second end portion of the proximal portion” render the claims indefinite, because it is unclear if this refers to “a proximal portion…including a first end portion, a second end portion” previously recited in claim 19 / lines 4-5, or to different first and second end portions of the proximal portion. For examination purposes, the limitation will be interpreted in the former instance, as the first end portion and the second end portion of the proximal portion.
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.
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 1-4, 8, 9, and 19-22 are rejected under 35 U.S.C. 102(a)(1)/(2) as anticipated by U.S. Patent No. 5,176,688 to Narayan et al. (hereinafter, “Narayan”), or in the alternative, under 35 U.S.C. 103 as being unpatentable over Narayan.
As to claim 1, Narayan discloses an adaptor configured to receive a rotational force from a surgical drill (motor 46) to impart an axial impaction force to a surgical impactor connectable to a robotic arm (interpreted as language of intended use), the adaptor comprising: a proximal portion (29 and 28) defining a longitudinal axis and including a first end portion (proximal, larger diameter portion of 29) and a second end portion (distal end portion of 29 and 28, including body of 36), FIG. 2, the proximal portion defining a body bore (37) extending between the first end portion and the second end portion along the longitudinal axis (col. 3 / lines 9-11), the second end portion including a plurality of first projections (angled teeth of 36) extending proximally therefrom into the body bore (col. 3 / lines 24-32), FIG. 2, each of the plurality of first projections including a first contacting surface (angled top surface of projection) defining a first radial extension (height from distal end of 36 to the angled top surface of the projection) from a second end surface (surface of the distal end of 36) of the second end portion; a distal portion (smaller diameter distal portion of 11) connected to the proximal portion and insertable into the surgical impactor (interpreted as language of intended use; fully capable of being insertable into a surgical impactor of a complementary size, e.g. 18, which is fully capable of applying an impact as an impactor) to locate the distal portion with respect to the surgical impactor, FIG. 2; a shaft (54) extending into the body bore, the shaft engageable (via 47) with the surgical drill (motor 46) to receive the rotational force; a driving body (56 and 34) translatable within the body bore along the longitudinal axis and connected to the shaft (at slip joint 48) (col. 3 / lines 46-52), the driving body including a plurality of second projections (angled teeth of 34) extending distally therefrom (col. 3 / lines 24-32), each of the plurality of second projections including a second contacting surface (angled bottom surface of projection) defining a second radial extension (height from a distal surface of the hollow in the shaft 56 of the driving body, to the angled bottom surface of the projection) from a distal surface (distal surface of the hollow in the shaft 56 of the driving body) of the driving body, the second radial extension being greater than the first radial extension (the second radial extension is greater than the first radial extension since the second radial extension is from the hollow in 56; additionally, each of the radial extensions can be measured or taken at a particular part of the angled surface of the respective projection – the first radial extension taken at a lower more distal part of the angled top surface of the first projection would be less than the second radial extension taken at a more distal part of the angled bottom surface of the second projection, even if the radial extensions are measured as the heights of the projections themselves), FIG. 2, the plurality of second projections engageable with the plurality of first projections to translate the driving body distally relative to the shaft in response to rotation of the shaft (continuous rotation of the shaft and driving body past the point when the steps/teeth of 36 and 34 are aligned, i.e. slightly beyond the position shown in FIG. 2, causes the driving body 56/34 to translate distally relative to the shaft 54 under the force of biasing element 33; col. 3 / lines 46-52 and col. 3 / line 66 – col. 4 / line 9); and a biasing element (33) located within the body bore engaged with the proximal portion and the driving body to bias the driving body distally (col. 3 / lines 4-14).
As to claim 2, Narayan discloses the adaptor of claim 1, wherein the proximal portion defines an outer surface having a diameter greater than a diameter of an outer surface of the distal portion, FIG. 2.
As to claim 3, Narayan discloses the adaptor of claim 1, wherein the second end portion of the proximal portion is engageable with the surgical impactor (interpreted as language of intended use) to limit distal translation of the adaptor within the surgical impactor (due to the larger diameter of the proximal portion, it can abut against the surgical impactor and limit further distal translation).
As to claim 4, Narayan discloses the adaptor of claim 1, wherein the first end portion defines a proximal bearing (smaller diameter bore that receives proximal end of shaft 54, which is a bearing because it is a part that supports another part by surrounding and guiding the shaft) for the shaft.
As to claim 8, Narayan discloses the adaptor of claim 1, wherein the first end portion of the proximal portion includes a taper (tapering distal end of the first end portion) extending distally into the body bore (an interior of the tapering portion extends distally, in the direction of the taper, into the body bore to create the smaller diameter proximal portion of the body bore) to support the biasing element (with the shelf created by the smaller diameter portion of the body bore), FIG. 2.
As to claim 9, Narayan discloses the adaptor of claim 1, wherein each of the plurality of first projections includes an angled surface rotatably engageable with an angled surface of one of the plurality of second projections to cause proximal translation of the driving body (away from 36) within the body bore (col. 3 / line 66 – col. 4 / line 6), FIG. 2, and wherein each of the angled surfaces of the plurality of second projections is complementary to each of the angled surfaces of the plurality of first projections, FIG. 2.
Assuming arguendo, Narayan discloses the second end portion including a first projection (angled tooth of 36 shown in FIG. 2) and the driving body including a second projection (angled tooth of 34), but is silent as to a plurality of first projections and a plurality of second projections.
It appears that Narayan implies a second one of each of the first and second projections, located on a far side of the tool in the view of FIG. 2 opposite to the projections shown, since the facing surfaces of the cams adjacent to the projections angle upward/toward the other cam, which would terminate in the peaks of the second first and second projections, and the facing surfaces along the tops of the projections shown in FIG. 2 angle downward/away from the other cam, which would terminate in the base/root adjacent to the second first and second projections. Assuming arguendo, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a plurality of first projections and a plurality of second projections, e.g. two first projections and two second projections, since discovering an optimum value of a result effective variable involves only routine skill in the art, and two projections on each complementary face of the cams 34/36 would allow the angled teeth to interact with each other to achieve the relative longitudinal movement of the driving body as required by Narayan. The mere duplication of the essential working parts of a device involves only routine skill in the art. The second ones of the first and second projections would be located on a far side of the tool in the view of FIG. 2 opposite to the projections shown, and would be formed by the meeting of the angled surfaces shown in Narayan. This would also balance the tool since without a second interacting pair of projections, when the driving body is translated proximally so that the cams 34/36 are separated, on the far side of the tool the cams would be separated without any interacting surfaces, which would leave that side of the cams hovering apart from each other which would result in excessive strain and torqueing on the tool.
As to claim 19, Narayan discloses an impaction adaptor connectable to a surgical drill (motor 46) and a surgical impactor (interpreted as language of intended use), the impaction adaptor comprising: a body comprising: a proximal portion (29 and 28) defining a body bore (37) and including a first end portion (proximal, larger diameter portion of 29), a second end portion (distal end portion of 29 and 28, including body of 36), FIG. 2, and a first plurality of projections (angled teeth of 36); and a distal portion (smaller diameter distal portion of 11) connected to the proximal portion and sized and shaped to be received within a channel of the surgical impactor (e.g. interior of 18; interpreted as language of intended use; fully capable of being received within a channel of a surgical impactor of a complementary size, e.g. 18, which is fully capable of applying an impact as an impactor) and to contact a rod (31) translatably disposed within the channel (col. 2 / lines 59-63; the rod is translatably disposed within 11 which is within the channel and therefore the rod is translatably disposed within the channel; the distal portion contacts the rod because the rod translates or slides therein; interpreted as language of intended use without positive recitation of a rod); a shaft (54) located at least partially within the body bore and engageable (via 47) with the surgical drill (motor 46) to be driven to rotate within the body bore; a biasing element (33) located within the body bore and engaged with the proximal portion of the body, FIG. 2; and a driving body (56 and 34) located at least partially within the body bore, FIG. 2, the driving body secured to the shaft (at slip joint 48) (col. 3 / lines 46-52) and engaged with the biasing element (the biasing element abuts against 34, col. 3 / lines 11-14), the driving body including a plurality of second projections (angled teeth of 34) rotatably engageable with the first plurality of projections to cause translation of the driving body relative to the body to deliver an impaction force to the surgical impactor in response to rotation of the shaft (col. 3 / lines 46-52 and col. 3 / line 66 – col. 4 / line 9), the driving body engaging the second end portion (at 36) of the proximal portion to deliver the impaction force through the distal portion to the rod (the impaction force is delivered to the rod 31, col. 4 / lines 1-13, through the distal portion since the rod extends through the distal portion; interpreted as language of intended use without positive recitation of a rod).
As to claim 20, Narayan discloses the impaction adaptor of claim 19, wherein the body defines a longitudinal axis, and the body bore extends longitudinally between a first end portion (proximal, larger diameter portion of 29) and a second end portion (distal end portion of 29 and 28, including body of 36), FIG. 2, of the proximal portion.
As to claim 21, Narayan discloses the impaction adaptor of claim 20, wherein the second end portion of the proximal portion is engageable with the surgical impactor (interpreted as language of intended use) to limit distal translation of the impaction adaptor with respect to the surgical impactor (due to the larger diameter of the proximal portion, it can abut against the surgical impactor and limit further distal translation).
As to claim 22, Narayan discloses the impaction adaptor of claim 20, wherein the first end portion of the proximal portion defines an aperture (smaller diameter bore that receives proximal end of shaft 54) extending through the first end portion of the proximal portion, the shaft extending through the aperture into the body bore, FIG. 2.
Assuming arguendo, Narayan discloses a first projection (angled tooth of 36 shown in FIG. 2) and a second projection (angled tooth of 34), but is silent as to a plurality of first projections and a plurality of second projections.
It appears that Narayan may imply a second one of each of the first and second projections, located on a far side of the tool in the view of FIG. 2 opposite to the projections shown, since the facing surfaces of the cams adjacent to the projections angle upward/toward the other cam, which would terminate in the peaks of the second first and second projections, and the facing surfaces along the tops of the projections shown in FIG. 2 angle downward/away from the other cam, which would terminate in the base/root adjacent to the second first and second projections. Assuming arguendo, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a plurality of first projections and a plurality of second projections, e.g. two first projections and two second projections, since discovering an optimum value of a result effective variable involves only routine skill in the art, and two projections on each complementary face of the cams 34/36 would allow the angled teeth to interact with each other to achieve the relative longitudinal movement of the driving body as required by Narayan. The mere duplication of the essential working parts of a device involves only routine skill in the art. The second ones of the first and second projections would be located on a far side of the tool in the view of FIG. 2 opposite to the projections shown, and would be formed by the meeting of the angled surfaces shown in Narayan. This would also balance the tool since without a second interacting pair of projections, when the driving body is translated proximally so that the cams 34/36 are separated, on the far side of the tool the cams would be separated without any interacting surfaces, which would leave that side of the cams hovering apart from each other which would result in excessive strain and torqueing on the tool.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Narayan.
As to claim 5, Narayan discloses the adaptor of claim 1, further comprising: a pair of opposing protrusions (prongs on either side of slot 58 in shaft 54) of the shaft (54).
As to claim 6, Narayan discloses the adaptor of claim 5, wherein the driving body (56 and 34) includes a proximal surface and a distal surface, the driving body defining a shaft bore (hollow in 56 that receives 54) extending longitudinally therebetween (the shaft bore extends into the proximal surface of the driving body at 56 and into the driving body up to the distal surface of the hollow in 56) and configured to receive a portion of the shaft (col. 3 / lines 46-52).
As to claim 7, Narayan discloses the adaptor of claim 6, wherein the shaft defines a slot (58) configured to translatably receive the driving body (at pin 57) to transfer torque from the shaft to the driving body (col. 3 / lines 46-52).
Narayan is silent as to a pair of opposing protrusions extending radially outward from a body surface of the shaft (claim 5); wherein the driving body defines a slot extending longitudinally through the proximal surface of the driving body and intersecting the shaft bore, the slot configured to translatably receive the pair of opposing protrusions to transfer torque from the shaft to the driving body (claim 7).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide Narayan’s shaft (54) with a pin at its distal end, providing a pair of opposing protrusions (opposing ends of the pin) extending radially outward from a body surface of the shaft, and to provide Narayan’s driving body (at 56) with a slot extending longitudinally through the proximal surface of the driving body and intersecting the shaft bore, the slot configured to translatably receive the pair of protrusions to transfer torque from the shaft to the driving body, since a mere reversal of the essential working parts of a device (reversing which component has the pin and which component has the slot) involves only routine skill in the art. The pin on the distal end of the shaft (providing the pair of opposing protrusions) engaging with (sliding in and out of) the slot extending into a proximal surface of the driving body would allow axial movement between the shaft and driving body while also allowing conjoint rotation (torque transfer), as both required by Narayan. The cylindrical body of the shaft would still be received in the shaft bore of the driving body, with the slot for receiving the pin (now on the shaft) intersecting the shaft bore (the slot extends on either side of the shaft bore to receive opposing ends of the pin).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Narayan in view of U.S. Patent No. 4,883,130 to Dixon.
As to claim 23, Narayan is silent as to wherein the first end portion of the proximal portion comprises a removable cap defining a plurality of apertures and the proximal portion defines a plurality of threaded bores, and wherein the plurality of threaded bores and the plurality of apertures are configured to concurrently receive a plurality of fasteners to secure the removable cap to the proximal portion.
Dixon teaches a modular device comprising a proximal portion (14) comprising a removable cap on its first proximal end portion, the removable cap defining a plurality of apertures and the proximal portion defines a plurality of threaded bores, FIG. 2, and wherein the plurality of threaded bores and the plurality of apertures are configured to concurrently receive a plurality of fasteners to secure the removable cap to the proximal portion.
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 Narayan’s device modular to allow for assembly of the device and for ease of cleaning and/or disposal after use, by providing the proximal end of the first end portion of the proximal portion as a removable cap, secured to the rest of the first end portion of the proximal portion by threaded fasteners as taught by Dixon. Although Narayan is silent as to the construction of the proximal end of the device, it would appear likely or at least would be beneficial that the proximal end is removable in order to allow insertion of the drill (motor 46) and other components into the proximal portion which are too large to fit through the distal end. As taught by Dixon, the removable cap would have apertures aligned with threaded bores in the proximal portion against which the removable cap abuts, and threaded fasteners would be received through the aligned apertures and bores to secure the removable cap to the proximal portion.
Allowable Subject Matter
Claims 10 and 13-18 are allowed.
REASONS FOR ALLOWANCE
The following is an examiner’s statement of reasons for allowance: None of the searched, pertinent prior art clearly shows by itself, or in combination with each other, an adaptor as claimed in claim 10. The closest prior art to Narayan et al. discloses the claimed invention, including a shaft (54) extending into a body bore (37), but is silent as to a first portion of the shaft includes a facet engageable with the surgical drill, and a second portion of the shaft is hemispherically shaped. The distal end of the shaft in Narayan is slotted (58) to interact with the driving body (56 and 34).
The claims distinguish over the uncovered relevant art cited in the attached PTO-892.
It would not have been obvious in view of the cited art to make modifications to resolve the above deficiencies and arrive at the claimed invention.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 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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