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 .
Response to Arguments
Applicant's arguments filed 12/22/2025 have been fully considered but they are not persuasive.
Applicant argues: Deffenbaugh fails to teach a tool with a coupler having portion able to receive either handle or tracking member. The only handle mentioned in Deffenbaugh are 86 and 320, which cannot be equated to the exchangeable handle as claimed.
Response: the office is of the position that the office action referred to the handle as being a gripping portion by 122, which exhibits substantially identical structure to the claimed handle. The ordinary meaning for the term “handle” on www.google.com is “the part by which a thing is held, carried, or controlled”, and the term “handle” was given its broadest reasonable interpretation in consistent with the specification.
Applicant argues: placement of a handle on the hinged arcuate support 104 cannot be held in a stable position.
Response: the office is of the position that though the handle may be unstable in relation to other elements not required by the claim(s), Deffenbaugh discloses that the handle is stable in relation to at least support 104 [¶57 - ¶58]. Moreover, Deffenbaugh does not disclose that the hinge is included in all the embodiments, i.e. Fig.9 shows the henge 170, however, Fig.11 shows alternative embodiment with no hinge.
In view of the preceding explanation, the rejection is deemed proper and hereby maintained.
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 3 and 25 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.
In claim 3, the recitation of “wherein to the coupler the portion of the coupler” makes the claim unclear and vague for not specifying what Applicant regards as the claimed invention, clarification is requested.
For the sake of examination, the preceding limitations is interpreted as referring to “wherein
Claim 25 recites the limitation "the shape of a portion of the outer surface of a fixation element" in line 2. There is insufficient antecedent basis for this limitation in the claim.
For the sake of examination, the preceding limitation is interpreted as referring to "a shape of a portion of an outer surface of a fixation element".
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, 14 – 16 and 21 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], comprising:
a body [at least a portion of 108 and 300, i.e. Fig.11];
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];
a coupler located at an opposing end of the body and terminating in a portion [at least a portion of 300 defines a coupler terminating in a portion]; and
both a removable handle [at least a gripping portion by 122] and the tracking member [at least a gripping portion by 124] adapted to couple one or the other to the portion [Figs. 11 – 12, 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 groove adapted to engage the removable handle [at least a portion of the groove defined between 320 capable of engaging at least a portion of 122, Fig. 12].
Claim 16, wherein the removable handle further comprises a coupling mechanism for holding and releasing the removable handle to/from the coupler [at least a portion of 308].
Claim 21, wherein the portion has length less than that of the handle [wherein at least a portion of 300 has a defined length that is less than a defined length of at least a portion of 122].
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] comprising:
a body [at least a portion of 108 and 300, i.e. Fig. 11] having a first portion and a second portion [at least two portions of the body], the first portion having a first end and an opposing end [at least a portion of 300 away from and towards 102 define ends], the opposing end joined to the second portion [at least a portion of 300 is joined to at least a portion of 108], the second portion forming a slot [at least an elongated gap between the jaws 102 and 108];
a coupler extending from the first end of the first portion [at least a portion of 300 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
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 SAMUEL S. HANNA whose telephone number is (571)270-3248. The examiner can normally be reached 8-5 M-F.
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/SAMUEL S HANNA/Primary Examiner, Art Unit 3775