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 .
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 newly recited “central hinge block” 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.
Specification
The amendment filed 05/04/26 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
On Page 11 of 16, the limitation “(also referred to as a femur support bracket having a central hinge block)”.
On Page 13 of 16, the limitation “(also referred to as a guide slide bearing allowing a sliding movement in a radial direction of the stem support 7)”.
On Page 14 of 16, the limitation “(also referred to as two separate cam pieces)”.
Applicant is required to cancel the new matter in the reply to this Office Action. It is suggested that the Applicant use the original terminology recited in the spec instead.
Claim Objections
Claim 11 is objected to because of the following informalities: In Line 4, the word “is” should be deleted. In Lines 7 & 8, the word “slide contact” should be replaced with the words --sliding contact--. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: In Line 4, the limitation “said cam piece” should be replaced with the words --said at least one of the cam pieces--. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: In Line 4, the limitation “a direction of the slide direction” should be replaced with the limitation --the slide direction--. Appropriate correction is required.
Claim 22 is objected to because of the following informalities: In Line 1, the words “the cam pieces are” should be replaced with the limitation --the at least two separate cam pieces comprise--. Appropriate correction is required.
Claim 25 is objected to because of the following informalities and should be amended as follows: “wherein a longitudinal axis of each [[said]] cam piece[[s are]] is arranged
Claim 29 is objected to because of the following informalities: In Line 19, the words --of the adjustment system-- should be added after the word “block”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11, 14-17, & 19-29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Newly amended Claim 11 recites “An adjustment system for adjusting a trial femur implant in reference to an intramedullary channel of a femur, the adjustment system comprising: a stem support rod adapted to be connected to the intramedullary channel of the femur, said stem support rod is provided with a guide slide bearing at its one axial end portion allowing a sliding movement in a radial direction of said stem support rod; a femur support bracket having a central hinge block adapted to be connected to the guide slide bearing via at least two separate cam pieces being in axial slide contact with the guide slide bearing and being in circumferential slide contact with said central hinge block; and a user adjustment wheel rotatably held within said central hinge block and connected to said cam pieces for manually rotating said stem support rod via said cam pieces relative to a longitudinal axis of the stem support rod in order to adjust a slide direction of said guide slide bearing” which seeks to introduce new matter as the specification does not provide support for the newly added underlined limitations since the newly amended specification itself has also been revised to add the underlined limitations.
The “guide slide bearing” of the stem support 7 appears to be a portion of the outer peripheral surface 12 of 7 which does not include or act as a bearing and thus the addition of this term introduces new matter.
The “central hinge block” of the femur support 5 appears to be a central portion of 5 which does not include a hinge or act as a hinge and thus the addition of this term introduces new matter.
The “at least two separate cam pieces” are pins and do not include cams or act as cams, and the specification does not recite more than 2 pins, thus the addition of this limitation introduces new matter.
There is no support for the “at least two separate cam pieces…” “being in circumferential slide contact with said central hinge block” and thus the limitation introduces new matter.
It is suggested that the Applicant use the terminology recited in the original specification. 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 11, 14-17 & 19-29 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 11 at Line 4 recites the limitation “its one axial end portion” which renders the claim indefinite as it is unclear which one axial end portion is being recited since the stem support rod has multiple ends. For purposes of examination, the limitation is being interpreted as “an end portion thereof”. Appropriate correction is required.
Claim 28 at Line 11 recites “a trial femur support bracket of the adjustment system” which renders the claim indefinite as it is unclear if the recited “a trial femur support bracket” is the same as the one previously recited in Claim 11, or if the claim is reciting another in addition to the one of claim 11. For purposes of examination, the limitation is being interpreted as “the trial femur support block of the adjustment system”. Appropriate correction is required.
Claim 28 at Line 13 recites “a user adjustment wheel of the adjustment system” which renders the claim indefinite as it is unclear if the recited “a user adjustment wheel of the adjustment system” is the same as the one previously recited in Claim 11, or if the claim is reciting another in addition to the one of claim 11. For purposes of examination, the limitation is being interpreted as “the user adjustment wheel of the adjustment system”. Appropriate correction is required.
Claim 28 at Lines 14-15 recites “a longitudinal axis of a stem support rod of the adjustment system” which renders the claim indefinite as it is unclear if the recited “a stem support rod of the adjustment system” (and “a longitudinal axis” thereof) is the same as the one previously recited in Claim 11, or if the claim is reciting another in addition to the one of claim 11. For purposes of examination, the limitation is being interpreted as “the longitudinal axis of the stem support rod of the adjustment system”. Appropriate correction is required.
Claim 28 at Lines 15-16 recites “the longitudinal axis” which renders the claim indefinite as it is unclear if the recited longitudinal axis is the longitudinal axis previously recited in 14, or a longitudinal axis of something else? For purposes of examination, the limitation is being interpreted as “the longitudinal axis of the stem support rod”. Appropriate correction is required.
Claim 29 at Line 13 recites “a trial femur support bracket of the adjustment system” which renders the claim indefinite as it is unclear if the recited “a trial femur support bracket” is the same as the one previously recited in Claim 11, or if the claim is reciting another in addition to the one of claim 11. For purposes of examination, the limitation is being interpreted as “the trial femur support block of the adjustment system”. Appropriate correction is required.
Claim 29 at Line 15 recites “a user adjustment wheel of the adjustment system” which renders the claim indefinite as it is unclear if the recited “a user adjustment wheel of the adjustment system” is the same as the one previously recited in Claim 11, or if the claim is reciting another in addition to the one of claim 11. For purposes of examination, the limitation is being interpreted as “the user adjustment wheel of the adjustment system”. Appropriate correction is required.
Claim 29 at Lines 16-17 recites “a longitudinal axis of a stem support rod of the adjustment system” which renders the claim indefinite as it is unclear if the recited “a stem support rod of the adjustment system” (and “a longitudinal axis” thereof) is the same as the one previously recited in Claim 11, or if the claim is reciting another in addition to the one of claim 11. For purposes of examination, the limitation is being interpreted as “the longitudinal axis of the stem support rod of the adjustment system”. Appropriate correction is required.
Claim 28 at Lines 17-18 recites “the longitudinal axis” which renders the claim indefinite as it is unclear if the recited longitudinal axis is the longitudinal axis previously recited in 14, or a longitudinal axis of something else? For purposes of examination, the limitation is being interpreted as “the longitudinal axis of the stem support rod”. Appropriate correction is required.
Allowable Subject Matter
Claims 11, 14-17 & 19-29 would be allowable if rewritten or amended to overcome the rejection(s) under both 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. (See also the specification, drawing and claim objections above.)
Response to Arguments
Applicant’s amendments, filed 05/04/26, have overcome the objections to claims 15 & 21.
Applicant’s amendments, filed 05/04/26, have overcome the 112(b) rejection for claims 11, 12, 14, 15 & 17.
In Regards to Applicant’s arguments, filed 05/04/26, with respect to the Brugere et al. 102 rejection of claims 11-13 & 15-19: The Applicant’s arguments have been fully considered and the newly amended claims have overcome the Brugere et al. rejection. Thus, the rejection is withdrawn.
In Regards to Applicant’s arguments, filed 05/04/26, with respect to the Brugere et al. in view of McGovern 103 rejection of claims 14 & 20-21: The Applicant’s arguments have been fully considered and the newly amended claims have overcome the Brugere et al. in view of McGovern rejection. Thus, the rejection is withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 JESSICA WEISS whose telephone number is (571) 270-5597. The examiner can normally be reached Monday through Friday, 8:00 am to 4:00 pm EST. If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, KEVIN T. TRUONG, at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JESSICA WEISS/ Primary Examiner, Art Unit 3775
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