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 .
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: first biasing member in claims 16 and 20.
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.
Claims 17, 18 and 20 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 17 recites “wherein the contact is a continuous abutting contact.” It is unclear which “contact” is being referred to since claim 16 previously recites a “contact” in lines 7 and 10. A further clarifying amendment is required.
Claim 18 recites “wherein the contact is a direct contact.” It is unclear which “contact” is being referred to since claim 16 previously recites a “contact” in lines 7 and 10. A further clarifying amendment is required.
Claim 20 recites the limitation "the biasing force" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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(s) 1-15 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Bradley, U.S. Patent 6,010,508.
Regarding claims 1 and 2, Bradley discloses a handle for a surgical tool, comprising: a grip (12) having a proximal end (16), a distal end (20) and a through-bore (24), a bit coupler (18) positioned at the distal end of the grip, a plunger (44) slidably positioned within the through-bore of the grip, and a first biasing member (64) in the through-bore of the grip to bias the plunger distally into continuous abutting contact with the bit coupler (via portions 52 of the plunger and 68 of the bit coupler); and a quick connect (18) about the distal end (Figs. 1-4 and Col. 8 lines 26-34).
Regarding claims 3-7, Bradley discloses a surgical tool, comprising: the handle of claim 1 (see rejection of claim 1 above), including: a chisel bit (42) coupled to the bit coupler (18) of the handle (Figs. 1 and 4); wherein the bit coupler comprises a longitudinal bore (78) and the bit includes a key (84, 86, 88) releasably lockable in the longitudinal bore; wherein the longitudinal bore has a cross-section sized to substantially match that of the key; and wherein the longitudinal bore and the key are substantially oval-shaped (it is well-known in geometry that a circle is a specific type of oval; therefore, a circular-shaped bore/key is substantially oval-shaped) (Figs. 5A-5B).
Regarding claims 8-15, Bradley discloses wherein the key (84, 86, 88) includes a proximal end (88), a distal end (86) and a mid-portion (84 circumscribed by a locking channel (area between 86 and 88); wherein the bit coupler further comprises a button (92) slidably positioned in the bit coupler; wherein the button includes a bore (94) alignable with the longitudinal bore (78) of the coupler and a locking tab (portion surrounding 96) releasably engageable with the locking channel; a second biasing member (96) for biasing the locking tab into engagement with the locking channel; wherein, when the bit (42) is inserted and locked within the bit coupler (18), the first biasing member (64) biases the plunger (44) to exert force against the bit; and a cap (13) coupled to the proximal end of the grip (12), wherein the cap includes a strike plate (14) and threads (38) for threadedly engaging threads (34) provided on the grip (Figs. 1 and 3-5B).
Allowable Subject Matter
Claims 16 and 19 are allowed.
Claims 17, 18 and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 20 February 2026, with respect to claim 1, have been fully considered but they are not persuasive. Applicant contends Bradley does not bias plunger 44 distally into continuous abutting contact with bit coupler 18.
However, col. 8 lines 26-34 of Bradley discloses an increased bias of the first biasing member 64 against head 46 of the plunger 44 (i.e. bias in the distal direction), and plunger 44 is in continuous abutting (definitions of abutting are: to border on: to touch along an edge: to cause to touch or lean for support: to touch along a border or with a projecting part; see https://www.merriam-webster.com/dictionary/abut) contact with the bit coupler (via portion 52 of the plunger continuously bordering and touching projection portion 68 of the bit coupler 18) as can be seen in Figs. 2-4.
Therefore, claim 1 still stands rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) to Bradley.
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 Eric Gibson whose telephone number is (571)270-5274. The examiner can normally be reached Monday-Thursday ~6:00 A.M. to 4:00 P.M. (CST).
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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/ERIC S GIBSON/ Primary Examiner, Art Unit 3775