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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/04/2026 has been entered.
Response to Arguments
Applicant's arguments filed 06/04/2026 have been fully considered but they are not persuasive.
Applicant argues: the advisory action is silent to the rejection under 35 USC 112(b).
Response: the office withdrew the rejection under 35 USC 112(b) in view of the claim amendments presented after final which was consistent with the recommendations presented in the Final rejection.
Applicant argues: claim 1 is now amended to require the portion to be extending away from a surgical field overlying the fixation element and adapted to couple to the tracking member.
Response: the office is of the position that claim 1 is best understood as not positively reciting the “tracking member” and “fixation element” as components of the claimed installation tool, as shown below:
“An installation tool for installing a tracking member”, and
“at least one guide hole located at a first end of the body for guiding a fixation element”.
Moreover, Deffenbaugh discloses a coupler terminating in a portion [at least a portion of 300 by 304, defines a coupler terminating in a portion], Fig. 11 to Deffenbaugh below, that extends away from the at least one guide hole intended to guide a fixation element and therefore extends away from the fixation element intended to be received into the at least one guide hole, and intended to couple to a tracking member 124. Accordingly, Deffenbaugh anticipates the claimed invention by disclosing each and every element as set forth in the claim.
With regards to Applicant’s argument directed to the arrangement of the claimed elements, the office agrees with the Applicant the MPEP 2131 requires the elements to be arranged as required by the claim; however, the office respectfully directs the Applicant to that “the elements” refers to the positively recited elements.
The office respectfully directs the Applicant to MPEP 2131 which at least in part states “A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).”.
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Applicant argues: claim 22 is amended to require only the second portion of the body to form a slot. The slot of Deffenbaugh extends through the entire body 108/102.
Response: the office respectfully disagrees with the Applicant that the entire body is 108/102, as clarified in the annotated Fig.11 to Deffenbaugh below, and consistent with the final rejection dated 02/04/2026, wherein the office action refers to the entire body as a combination of portions 108 and 300, and not 108 and 102.
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In view of the preceding explanation, the rejection is deemed proper and hereby maintained.
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.
Claim(s) 1 – 8, 12 and 14 – 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deffenbaugh et al. (US Pub. 2008/0177173 A1).
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Claim 1, Deffenbaugh discloses an installation tool for installing a tracking member on a substrate [abstract, Figs. 6 – 17 and Fig.11 above], comprising:
a body [at least a portion of 108 and 300, i.e. Fig.11, or, at least a portion of 104 and 108, i.e. Fig. 6];
at least one guide hole [at least one of apertures112] located at a first end of the body for guiding a fixation element into the substrate [capable of guiding screw 106];
a holding mechanism for holding the body to the fixation element [at least the thumbscrew 110 alone or in combination with the configuration of the clamp configuration of 108]; and
a coupler located at an opposing end of the body and terminating in a portion [at least a portion of 300 defines a coupler by 304 terminating in a portion, or at least a portion of 104 defines a coupler by 120 terminating in a portion];
the portion extending away from a surgical field overlying the fixation element [wherein at least a portion of 300 / 104, defining the coupler, extends away from the guide holes 102 intended to receive the fixation pins and therefore extends away from a surgical field overlying the fixation elements intended to be received by holes 102] and adapted to couple to the tracking element [wherein at least a portion of the coupler is capable of coupling to at least a portion of 122 and/or 124].
Deffenbaugh discloses the limitations of claim 1, as above, and further, Deffenbaugh discloses:
Claim 2, wherein the substrate is bone [Fig.17, wherein the tool is capable of being used with bone] and further comprising a second fixation element [one of screws 106].
Claim 3, wherein the portion of the coupler is formed as faceted recess [wherein at least a portion of 300 by 304 defines faceted recess].
Claim 4, wherein the body comprises a first portion defining an angle relative to a second portion wherein the second portion is part of the holding mechanism and located at first end of the body [Fig. 11 above].
Claim 5, wherein the angle is from 0 to 90 degrees [Fig. 11 above, substantially perpendicular].
Claim 6, wherein the holding mechanism comprises a stationary jaw and a movable jaw to clamp the body to the fixation element inserted in the substrate [Fig. 11 above, ¶44].
Claim 7, wherein the movable jaw is moveable relative to the stationary jaw with a tightening element [Fig. 11 above, ¶44, thumbscrew 110].
Claim 8, wherein the at least one guide hole positioned between the stationary jaw and the movable jaw [at least one aperture 112].
Claim 12, wherein the stationary jaw further comprises one or more channels adapted for mating with an outer surface of the fixation element [at least one of the jaws define a semicircular channel capable of mating with 106, Fig. 11 above].
Claim 14, wherein the coupler further comprises a plurality of facets [by 304].
Claim 15, a set screw adapted to simultaneously engage the coupler and the tracking member [set screw 136, ¶48].
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(s) 9 – 10 and 22 – 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deffenbaugh et al. (US Pub. 2008/0177173 A1) in view of Melkent et al. (US Pub. 2011/0118593 A1).
Claims 9 – 10, Deffenbaugh discloses the limitations of claim 8, as above.
Deffenbaugh does not explicitly disclose (claim 9) wherein one of the at least one guide hole is elongated to form a guide tube; and (claim 10) teeth or a jagged edge at an end of the guide tube for gripping the substrate.
Melkent teaches an analogous tool [abstract, Figs. 3 – 4] comprising a body [at least a body portion of 350] having at least one guide hole [at least one of holes 375], and (claim 9) wherein one of the at least one guide hole is elongated to form a guide tube [at least one of guide tubes 310a, b and c]; and (claim 10) teeth or a jagged edge at an end of the guide tube for gripping the substrate [at least one of guide tubes 310a, b and c has teeth 360a, b and c, respectively].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to combine the teachings of Deffenbaugh and Melkent, and construct the tool of Deffenbaugh having at least one cannulated guide tube having teeth at an end in view of Melkent. One would have been motivated to do so in order to allow the user gripping the cannulated guide tube to the treated bone at a desired orientation to facilitate placement of an implement therethrough and into the bone at a desired remote location [Melkent, ¶41 – 45].
Claims 22 and 26, Deffenbaugh discloses an installation tool for attachment to a bone [abstract, Figs. 6 – 17, and Fig. 11 above] comprising:
a body [at least a portion of 108 and 300, i.e. Fig. 11, or, at least a portion of 104 and 108, i.e. Fig. 6] having a first portion and a second portion [at least two portions of the body, defined by 108 and 300, according to an interpretation, wherein the first portion defined by at least a portion of 300 extending away from 102, and the second portion defined by at least a portion of 102 and 108], the first portion having a first end and an opposing end [at least a portion of 300 away from 102 defines a first end and at least a portion of 300 by 102 defines opposing end], the opposing end joined to the second portion [at least a portion of 300 is joined to at least a portion of 102/108], only the second portion forming a slot [at least an elongated gap is only defined between the jaws 102 and 108, defining the second portion];
a coupler extending from the first end of the first portion [at least a portion of 300 by 304 extending away from 102 defines a coupler];
a removable jaw configured to selectively be received in the slot [at least a portion of the thumbscrew 110 defines a removable jaw receivable in the slot].
Deffenbaugh does not explicitly disclose (claim 22) guide tubes extending from the body to define axes of attachment to the bone; and (claim 26) wherein the guide tubes further comprise teeth or a jagged edge.
Melkent teaches an analogous tool [abstract, Figs. 3 – 4] comprising a body [at least a body portion of 350], and (claim 22) guide tubes extending from the body to define axes of attachment to the bone [at least one of guide tubes 310a, b and c defining axes along holes 375]; and (claim 26) teeth or a jagged edge at an end of the guide tube for gripping the substrate [at least one of guide tubes 310a, b and c has teeth 360a, b and c, respectively].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to combine the teachings of Deffenbaugh and Melkent, and construct the tool of Deffenbaugh having at least two cannulated guide tube each having teeth at an end in view of Melkent. One would have been motivated to do so in order to allow the user gripping the cannulated guide tube to the treated bone at a desired orientation to facilitate placement of an implement therethrough and into the bone at a desired remote location [Melkent, ¶41 – 45].
The combination of Deffenbaugh and Melkent discloses the limitations of claim 22, as above, and further, Deffenbaugh discloses:
Claim 23, wherein the slot further comprises one or more capturing members [defined by at least a portion of the wall of the jaw defining aperture 112].
Claim 24, wherein the second portion further comprises one or more channels [aperture 112].
Claim 25, wherein the one or more channels have a shape complementary to the shape of a portion of the outer surface of a fixation element [aperture 112 exhibits a shape complementary to a shape of 106].
Claim 27, wherein the second portion has a hole adapted to receive a portion of a tightening element [a hole in 102 and 108 capable of receiving at least a portion of the thumbscrew 110].
Claim 28, wherein the hole is threaded [to threadably connect with thumbscrew 110].
Claim 29, a threaded knob adapted to engage the hole [at least a portion of the thumbscrew 110 defines a threaded knob to engage the hole].
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deffenbaugh et al. (US Pub. 2008/0177173 A1) in view of Miller (US Pub. 2012/0095462 A1).
Claim 13, Deffenbaugh discloses the limitations of claim 6, as above.
Deffenbaugh does not disclose wherein the movable jaw further comprises one or more tabs.
Miller teaches an analogous tool [Abstract, Figs. 1 – 9] comprising a clamp [102] having jaws [upper and lower jaws], wherein at least one jaw has one or more tabs [150, Figs. 6].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to combine the teachings of Deffenbaugh and Miller, and construct at least one of the jaws of the clamp of Deffenbaugh having tabs in view of Miller. One would have been motivated to do so in order to enhance friction between the jaws and the implement to be clamped therein to prevent undesired relative movement [Miller, ¶43].
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 SAMUEL S. HANNA whose telephone number is (571)270-3248. The examiner can normally be reached 8-5 M-F.
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.
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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/SAMUEL S HANNA/Primary Examiner, Art Unit 3775
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