DETAILED ACTION
This office action is responsive to the amendment filed November 14, 2025. By that amendment, claims 1 and 3-6 were amended; and claims 13-16 were newly presented. Claims 1-16 are pending.
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 with respect to the rejection of claim(s) 1, 6, 8, and 12 under 35 USC 102 in view of Seki (US 6,258,096) and claim 2 under 35 USC 103 in view of Seki and Habegger (US 2012/0101504) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The newly presented rejections are necessitated by the amendments to the claims of November 14, 2025.
Priority
Examiner acknowledges applicant’s statement that the certified copy of the foreign priority document was submitted to the office. Examiner believes this to be the case, but is not able to access the document from his view of the case file (computer issues?)
Examiner respectfully requests applicant re-submit the certified copy, at which time the priority date of the foreign document will be indicated. He believes this to be the simplest manner to get the document before examiner to review. If applicant wishes to pursue alternative means, examiner is open to those, as well.
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 1-16 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.
Claims 1 and 14-16 each includes the phrase “instead of the anterior edge of the tibia”. It is unclear what is meant by this phrase, rendering metes and bounds of the claims unclear. Examiner requests clarification to each of the claims.
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dahners (US 5,162,039).
Regarding claim 1, as best understood, Dahners teaches a surgical device as at fig. 6 capable of aligning an inferred extramedullary alignment rod 12 during a total knee arthroplasty, the surgical device comprising:
a supporting portion 54 and second leg clamp connected to 28 having at least two supporting geometries (each clamp is considered a supporting geometry) separated from one another along a supporting line (an axis of the bone) that extends in a proximodistal direction and are each adapted for support on an anterior edge of a tibia (there is no reason that both clamps cannot be coupled to an anterior edge of a tibia); and
a reference portion of 12 (e.g. the portion between the two connectors 36/22) that projects in an anterior direction from the supporting portion 54 and has at least two reference geometries (at locations where 36 and 22 are coupled) separated from one another along a reference line that extends in the proximodistal direction along the portion of 12,
the reference line being separated from the supporting line by an anterior distance and extending parallel to the supporting line as in fig. 6,
the at least two reference geometries and/or the reference line serving as a reference for aligning the extramedullary alignment rod (my moving the connectors) instead of the anterior edge of the tibia,
the at least two reference geometries of the connectors at 36 and 22 are each adapted for at least mediolaterally form-fit mounting against an outer surface of the extramedullary alignment rod 12 as seen in fig. 6.
Regarding claim 2, the reference portion of 12 has at least two first reference geometries separated from one another along a first reference line (the portions of 12 retained by the connectors 22 and 36), and two second reference geometries separated from one another along a second reference line (two other locations where 22 and 36 can couple to 12), the first reference line being separated by an anterior first distance from the supporting line and the second reference line being separated by an anterior second distance from the supporting line.
Regarding claim 12, the system of claim 1 is taught, and includes and an extramedullary alignment rod 12.
Allowable Subject Matter
No prior art rejection is made of claims 14-16. At such time as the outstanding rejection under 35 USC 112(b) is overcome, the claims will be allowed.
Claims 3-11 and 13 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. The claims cannot be allowed until such time as the outstanding rejection under 35 USC 112(b) is overcome.
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 David Bates whose telephone number is (571)270-7034. The examiner can normally be reached Monday through Friday, 10AM-6PM
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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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/DAVID W BATES/Primary Examiner, Art Unit 3799