Detailed Action
This office action is for US application number 18/025,309 evaluates the claims as filed on October 23, 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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 10, 2025 and October 23, 2025 has been entered.
Response to Arguments
Applicant's arguments filed October 23, 2025 have been fully considered but they are not persuasive. The rejections in this office action have been amended to address the amended claims. Examiner directs Applicant to the rejection below for a more in-depth description of the limitations.
Election/Restrictions
This application is in condition for allowance except for the presence of claims 3, 4, 13, 14, 16-20, and 21-25 directed to an invention non-elected with traverse in the reply filed on May 7, 2025. Applicant is given TWO (2) MONTHS from the date of this letter to cancel the noted claims or take other appropriate action (37 CFR 1.144). Failure to take action during this period will be treated as authorization to cancel the noted claims by Examiner’s Amendment and pass the case to issue. Extensions of time under 37 CFR 1.136(a) will not be permitted since this application will be passed to issue.
The prosecution of this case is closed except for consideration of the above matter.
Claims 1, 2, 5-12, and 15 are allowable. Claims 3, 4, 13, and 14, previously withdrawn from consideration as a result of a restriction requirement, require all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement between species a)-e), as set forth in the Office action mailed on March 20, 2025, is hereby withdrawn and claims 3, 4, 13, and 14 hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claims 1, 2, 5-12, and 15 are directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(B), claim 16-20 and 21-25, directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on March 20, 2025 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/126,608, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Application No. 17/126,608 fails to provide adequate support for the blocking element and actuating element of claims 5 and 7 as well as the guide element configured to enable pivoting of the pull wire of claim 15.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “a rack with an unlock button to ensure translation of the head and holding of the aiming piece” of claim 14 lines 2-3 and “inserting a first screw over the first positioning wire after the first positioning wire has been inserted into the first bone portion and the second bone portion” of claim 25 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim(s) 1, 15, and 16 is/are objected to because of the following informalities:
Claim 1 line 1 should read “1. (Currently Amended) A reusable surgical guide” to accurately reflect the claim status.
Claim 19 line 1 should read “19. (Withdrawn - Currently Amended) The method according to claim 16,” to accurately reflect the claim status.
Claim 20 line 1 should read “20. (Withdrawn - Currently Amended) The method according to claim 16,” to accurately reflect the claim status.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: "an aiming piece" in claim 1 line 12, "a blocking element" in claim 5 line 4, "an actuating element" in claim 5 line 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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(s) 3, 4, 16-20, and 22-25 is/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 pre-AIA the applicant regards as the invention.
Claim(s) 3 is/are unclear with regards to “whose” in line 2 and line 3 and “who” has the recited features and what person is intended to be claimed by “whose” and how such could potentially be appropriate in a product claim. There is insufficient antecedent basis for “the passage of the so-called aiming piece” in the claim. Claim 3 line 4 is unclear as to which “the head” such is intended to claim, i.e. that of claim 1 line 4 or one of the heads of claim 3 line 2. Claim 3 line 4 is also unclear as to “the bent branch” and to which recited bent branch of line 2 such is intended to refer. Finally, claim 3 line 5 is unclear as to the comma usage and if the comma is erroneous or if there is a noun missing prior to the verb “extending”. Examiner is interpreting this as referring to the species of Figs. 19-21 and suggests amending to clarify in a manner supported by the original disclosure.
Claim(s) 4 is/are unclear with regards to “each branch being provided with at least two through holes, extending opposite one another in pairs” in lines 2-3 in light of the comma usage and if the comma is erroneous or if there is a noun missing prior to the verb “extending”. Examiner is interpreting this as referring to the species of Figs. 1-13 and suggests amending to clarify in a manner supported by the original disclosure.
Claim(s) 16 is/are unclear with regards to how one can reasonably assert to perform the claimed function without the necessary step of providing a guide to be positioned in line 12 or if such is intended to be a depended claim that recited positioning the guide of claim 1. Examiner is interpreting this as requiring the particulars of claim 1 either by depending from claim 1 or providing a guide such as that noted in the preamble for the recited method to be used upon and suggests amending to either provide a guide with the appropriate limitations or amend line 11 to depend from claim 1, e.g. “positioning the surgical guide of claim 1 adjacent to a first bone,”.
Claim(s) 16 recites/recite the limitation "inserting the pull wire” in line 15. There is insufficient antecedent basis for “the pull wire” limitation in the claim. It is unclear how one could reasonably perform a method step with a structure that has not been positively recited. Examiner is interpreting this as requiring the pull wire and reciting a step of using the device recited in claim 1 or a device with the same features and suggests amending to clarify in a manner supported by the original disclosure.
Claim(s) 16 is/are unclear with regards to “retracting the slideable member in a proximal direction through the first slide in a state in which the pull wire extends through the through hole and into the first bone portion such that the first bone portion is moved relative to the second bone portion” in lines 17-20 and the meaning of “in a state in which”. Examiner is interpreting this as requiring reciting a step of using the device recited in claim 1 or a device with the same features and suggests amending to clarify in a manner supported by the original disclosure.
Claim(s) 16 is/are unclear with regards to “the first positioning wire being inserted in a state in which the surgical guide together with the pull wire holds relative positions of the first bone portion and the second bone portion” in lines 23-25 and the meaning of “in a state in which”. Examiner is interpreting this as requiring reciting a step of using the device recited in claim 1 or a device with the same features and suggests amending to clarify in a manner supported by the original disclosure.
Claim(s) 19 recites/recite the limitation "the medial direction" in line 2. There is insufficient antecedent basis for this limitation in the claim. Examiner is interpreting this as referring to, and suggests amending as, “[[the]]a medial direction”.
Claim(s) 17-20 and 22-25 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for its/their dependence on one or more rejected base claims.
Allowable Subject Matter
Claims 1, 2, 5-14, and 15 are allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY R SIPP whose telephone number is (313)446-6553. The examiner can normally be reached on Mon - Thurs 6-4.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice or telephone the Examiner.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached on (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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/AMY R SIPP/Primary Examiner, Art Unit 3775