DETAILED ACTION
This office action is responsive to the amendment filed December 4, 2025. By that amendment, claims 1-3, 7-9, 11-13, and 17-20 were amended; claim 4 was canceled; and claim 21 was newly presented. Claims 1-3 and 5-21 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
The amendment to the specification of December 4, 2025, has overcome the objection to the specification.
Applicant’s statements of December 4, 2025, regarding claim interpretation under 35 USC 112(f) are acknowledged.
The amendments to the claims of December 4, 2025, have overcome the outstanding rejection of claims 1-20 under 35 USC 112(b).
The amendment of December 4, 2025, overcomes the outstanding rejection under 35 USC 102(b) of claim 1 in view of Claypool et al. (US 2014/0288563 A1). All arguments with respect to this rejection 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 rejection is necessitated by the amendments to the claims of December 4, 2025.
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, 2, 5-7, 10, 18, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Farling et al. (US 2006/0200158 A1).
Regarding claim 1, Farling teaches a surgical instrument as at fig. 6 capable of use in a total knee arthroplasty, the surgical instrument comprising:
a first fastening device 18 having at least one receiver opening 60;
a guide device 14 which is configured to be releasably coupled to the first fastening device 18, the guide device comprising at least one guide slot 26 extending along a longitudinal direction, wherein the at least one receiver opening 60 extends in an orthogonal direction (axis of 20) relative to the longitudinal direction when the guide device 14 is coupled to the first fastening device 18; and
at least one sliding member 20 configured to be inserted along the orthogonal direction (axis of 20) through the at least one receiver opening 60 and into the at least one guide slot 26 to thereby releasably connect the first fastening device 18 with the guide device 14, wherein, when the first fastening device 18 is connected with the guide device 14, the at least one sliding member 20 is movable along the at least one guide slot 26 in the longitudinal direction to thereby allow a relative movement guided in a sagittal guide plane between the first fastening device 18 and the guide device 14 (at least when the engagement is loose as described at [0050]).
Regarding claim 2, the at least one sliding member 20 has a sliding portion (unthreaded portion between 72 and 76) and a push-fit portion 72, wherein, when the first fastening device 18 is connected with the guide device14, the sliding portion is located in the at least one guide slot 26 and the push-fit portion 72 is releasably received in the at least one receiver opening 60.
Regarding claim 5, the instrument includes a carrier element 74 on which the at least one sliding member (between 72 and 76) is fastened.
Regarding claim 6, wherein the carrier element has a base body (the ‘shaft’ below the handle) and a handle portion protruding from the base body.
Regarding claim 7, when the first fastening device 18 is connected with the guide device 14, the handle portion of 74 protrudes from the base body (shaft) along the orthogonal direction as seen at fig. 2.
Regarding claim 10, the instrument includes a fixing device at 72 that is switchable between a fixing state [0051] (tightened) for fixing relative movability between the first fastening device 18 and the guide device 14, and a release state [0050] (loosened) in which relative movability between the first fastening device 18 and the guide device 14 is not fixed.
Regarding claims 18 and 19, the at least one sliding member 20 is considered to be in the form of a cylindrical pin.
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Farling.
Regarding claim 3, the limitations of claim 1 were taught, as above. However, use of two sliding members and two receiver openings, as claimed was not taught.
Provision of a second fastening device 18 and a second sliding member 20 is considered to be mere duplication of parts. For making this rejection, both proposed fastening devices 18 will be referred to, in their entirety, as “a first fastening device”. Inserting a second handle 20 and second fastening device 18 into the slots 26a and 26b, respectively, is considered to be mere duplication of parts. One would have done so in order to permit coupling structures similar to guide body 16 to the device, which devices have a differently structured attachment structure with two slidable rails 48. Such structure would have been capable of being more firmly seated to the device through use of two locking mechanisms, and would have been capable of being larger than the structure 16 shown in order to function with differently sized and shaped patient anatomies.
Allowable Subject Matter
Claims 8, 9, 11-17, 20 and 21 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.
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
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, 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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID W BATES/Primary Examiner, Art Unit 3799