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 .
Election/Restrictions
Applicant’s election without traverse of Species A and Subspecies 1B in the reply filed on October 6th, 2025 is acknowledged.
Claims 2 (Species D) and 10 (Species F) withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 6th, 2025.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-15 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-10 and 18-21 of copending Application No. 18/435,002. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim Rejections - 35 USC § 102
(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.
Claims 1, 9, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Slocum (U.S. Publication 2022/0226033).
Regarding claims 1, 9, and 11:
Slocum discloses a device (for example Figures 9A and 9B) comprising:
(claim 1) a handpiece (902, 944, etc.) configured to be held by a hand and to drive impacting of bone
(claim 1) wherein the handpiece includes
(claim 1) a first actuator (946A) configured to be hand-actuated to cause the impacting to be in a forward direction toward the bone
(claim 1) a second actuator (946B) configured to be hand-actuated to cause the impacting to be in a rearward direction away from the bone
(claim 1) wherein the first actuator and the second actuator are configured to be independently actuated (paragraph 83)
(claim 9) wherein the first actuator and the second actuator include a depressible trigger
(claim 7) a motor (936) operatively coupled to the first actuator and the second actuator
(claim 11) a surgical implement (for example paragraphs 52-53; the tool is not shown but disclosed as something such as a broach)
(claim 11) wherein actuation of the first actuator is configured to cause the surgical implement to be driven in a forward direction and wherein actuation of the second actuator causes the surgical implement to be driven in a rearward direction
Regarding claims 12 and 13:
Slocum discloses a method of using the device discussed above comprising:
(claim 12) actuating the first actuator causing the surgical implement to move forward relative to the bone (the reference discloses using 946A causes the impact tool to generate a driving force, i.e. a forward force)
(claim 12) actuating the second actuator causing the surgical implement to move rearward relative to the bone (the reference discloses using 946B causes the impact tool to generate a retraction force to extract the implement from the bone)
(claim 13) wherein the second actuator is actuated after the first actuator (the retraction force would be used after the driving force)
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Slocum (U.S. Publication 2022/0226033) in view of Straslicka (U.S. Publication 2015/0351820).
Slocum discloses the invention as claimed, see above, except for the handpiece including a third actuator. Straslicka teaches a device (for example see Figure 2) comprising a handpiece including a first actuator (a first element 28) configured to cause forward movement of a tool, i.e. clockwise movement, a second actuator (a second element 28) configured to caused rearward movement of a tool, i.e. counter-clockwise movement, wherein the handpiece further includes a third actuator (a third element 28; paragraph 27) configured to be hand-actuated and capable of causing rearward movement of a tool away from bone. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Slocum wherein the handpiece includes a third actuator in view of Straslicka, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claims 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Slocum (U.S. Publication 2022/0226033) in view of Anderson (U.S. Patent 8,894,654).
Regarding claim 5:
Slocum discloses the invention as claimed, see above, except for the second actuator being configured to be actuated and override the first actuator. Anderson teaches a device (for example see Figure 1) comprising a handpiece having a first actuator (32) and a second actuator (62), wherein while the first actuator is activated the second actuator is configured to be actuated and override the first actuator (column 11 line 22 to column 12 line 3 and column 21 line 64 to column 22 line 33) in order to ease removal of a tool from bone. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Slocum wherein while the first actuator is activated the second actuator is configured to be actuated and override the first actuator in order to ease removal of a tool from bone.
Regarding claim 14:
Slocum disclose the method as claimed, see above, except for the step of actuating the second actuator while the first actuator is actuated to override the first actuator and move the surgical implement rearward relative to a bone. Anderson discloses a method comprising the steps of actuating a first actuator to cause a surgical implement to move forward relative to a bone and actuating a second actuator to cause a surgical implement to move rearward relative to a bone (column 21 line 64 to column 22 line 33), wherein the method further comprises the step of actuating the second actuator while the first actuator is actuated to override the first actuator and move the surgical implement rearward relative to a bone (column 21 line 64 to column 22 line 33) in order to ease removal of a tool from bone. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to perform the method of Slocum further comprising the step of actuating the second actuator while the first actuator is actuated to override the first actuator and move the surgical implement rearward relative to a bone in view of Anderson in order to ease removal of a tool from bone.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Slocum (U.S. Publication 2022/0226033) in view of Carusillo (U.S. Publication 2022/0241045).
Slocum discloses the invention as claimed, see above, except for the first actuator including a magnet to cause a first Hall effect sensor to send out a first voltage to a motor and the second actuator including a magnet to cause a second Hall effect sensor to send out a second voltage to a motor. Carusillo teaches a device (for example see Figure 5) comprising a motor (84) and a handpiece (62) including a first actuator and a second actuator (80), wherein the first actuator includes a first Hall effect sensor and a first magnet configured to cause the first Hall effect sensor to output a first voltage to the motor and the second actuator includes a second Hall effect sensor and a second magnet configured to cause the second Hall effect sensor to output a second voltage to the motor in order to allow for incremental voltage to be applied to the motor. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Slocum wherein the first actuator includes a first Hall effect sensor and a first magnet configured to cause the first Hall effect sensor to output a first voltage to a motor and the second actuator includes a second Hall effect sensor and a second magnet configured to cause the second Hall effect sensor to output a second voltage to a motor in order to allow for incremental voltages to be applied to the motor.
The device of Slocum as modified by Carusillo discloses a device comprising a first actuator having a first Hall effect sensor and a first magnet configured to cause the first Hall effect sensor to output a first voltage to the motor to move in a first direction and the second actuator having a second Hall effect sensor and a second magnet configured to cause the second Hall effect sensor to output a second voltage to the motor to move in a second direction.
Allowable Subject Matter
Claims 4, 6, and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 4, the examiner was unable to find a reference or a combination of references that disclose and/or teach the handpiece having three actuators wherein one of the second or third actuators is on the handle and the other of the second or third actuators is on the body.
Regarding claim 6, the examiner was unable to find a reference or a combination of references that disclose and/or teach at least one of the actuators having a tactile element to distinguish one actuator from the other.
Regarding claim 15, the invention of Slocum as modified by Anderson discloses a method of actuating the second actuator while the first actuator is actuated and overriding the first actuator (see above), but the references do not explicitly state that releasing the second actuator while keeping the first actuator engaged would cause the motor to return to a forward movement of the tool. The examiner was unable to find a reference or a combination of references that disclose and/or teach the step of ceasing the actuation of the second actuator while keeping the first actuator actuated to move the tool forward.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited references the examiner felt were relevant to the application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas Woodall whose telephone number is (571) 272-5204. The examiner can normally be reached on Monday-Friday 8am to 5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, 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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/NICHOLAS W WOODALL/Primary Examiner, Art Unit 3775