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 .
Election/Restrictions
Applicant’s election of Invention Group I (claims 1-11), Reducer Species A (Figs. 1-2 and 6A-6B), and Control Means Species A (Hydraulic) in the reply filed on February 16, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 16, 2026.
Claims 8 and 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species (the elected species does not include a pneumatic motor and gearbox; the nonelected species of Figs. 7A-7D includes pneumatic motor 122 and gearbox 130), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 16, 2026.
Claims 10 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species (the elected species does not include an electric motor; the nonelected species of Fig. 8 includes electric motor 182), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 16, 2026.
Drawings
The drawings are objected to because the shading of the figures makes it difficult to see the structural details (see Figs. 1-7C and 8-10). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 4 is objected to because of the following informalities: the recitation “the control system is a pneumatic system” is redundant as claim 2 recites “a pneumatic control system.” The Examiner suggests replacing “the control system is a pneumatic system with” with “the pneumatic control system further includes.” Appropriate correction is required.
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: “a moveable component” in claim 1 and “actuators” in claim 2. The disclosure describes the moveable component as a piston (see “100” in Fig. 6B) and the actuators as knobs (see “64” in Fig. 4A).
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 1-7 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 1 recites “a plurality of reducers configured to be actuated by hydraulic control or pneumatic control.” Such a recitation is unclear because the originally-filed claims seem to use “hydraulic” and “pneumatic” interchangeably (see original claims 1 and 2). Thus, it is unclear what the difference is between “hydraulic control” and “pneumatic control” (note that if “hydraulic control” and “pneumatic control” cover the same scope, then reciting both in claim 1 is redundant). Because the originally-filed specification recites “pneumatic control” and not “hydraulic control,” the Examiner is interpreting claim 1 as only reciting “pneumatic control.” Claims 2-7 are rejected because they depend from claim 1.
Claim 3 is 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 3 recites that the inlet port is connected by pneumatic tubing or wiring to a supply of compressed air or electricity. However, claims 1 and 2 as amended no longer include reducers actuated by electronic control or an electronic control system. Thus, it is unclear how reducers actuated by hydraulic/pneumatic control and a pneumatic control system have an inlet port connected by wiring to a supply of electricity. For examination purposes, the Examiner is interpreting claim 3 as reciting “the inlet port being connected by pneumatic tubing to a supply of compressed air.”
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Jackson (US 5,720,751 A) in view of Mladenov et al. (US 2017/0319246 A1).
Claim 1. Jackson discloses a system for reducing a spinal rod comprising:
a reducer (spinal rod pusher assembly 5) configured to be actuated by hydraulic control or pneumatic control (see col. 17, ll. 54-62, which refers to a pneumatic drive mechanism),
the reducer having a reducer body (implant engaging portion 52) and a housing (implant holder 6) coupled to the reducer body (see Fig. 4),
the reducer body having a pair of arms (implant engaging members 60 and 61) separated by a longitudinal slot (adjacent cradle 67) configured to receive the spinal rod (see Fig. 8), a pusher (pusher bar 15) slidably engaged with the arms and having a distally extending tip (abutment member 20) configured to translate the spinal rod along the slot (see Fig. 8), and
the housing having a cylindrical body (see Fig. 4) with a moveable component (stem 16) configured to drive the pusher to apply a compressive load to the spinal rod (see Fig. 7) (Figs. 1-9).
Jackson fails to disclose that the reducer is a plurality of reducers each having the claimed features (claim 1).
Mladenov teaches that a reducer (rotation shaft 100, which includes rod reducer 1000) is a plurality of reducers (rotation shafts 100A, 100B, 100C, and 100D which include rod reducers 1000A, 1000B, 1000C, and 1000D) each having similar structural features (Figs. 1-8B), wherein the plurality of reducers allows the reducers to be sequentially operated as desired by the surgeon (see para. 0055) (Figs. 1-9C).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Jackson such that the reducer is a plurality of reducers each having the claimed features (claim 1), as suggested by Mladenov, in order to allow the reducers to be sequentially operated as desired by the surgeon.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Jackson (US 5,720,751 A) in view of Mladenov et al. (US 2017/0319246 A1) as applied to claim 1 above, and further in view of Chisena et al. (US 2023/0380903 A1).
Jackson and Mladenov fail to teach a pneumatic control system including a panel having a plurality of actuators configured to control each reducer (claim 2), wherein the panel includes an inlet port and a plurality of outlet ports, the inlet port being connected by pneumatic tubing or wiring to a supply of compressed air or electricity, and the outlet ports being connected to the respective reducers (claim 3).
Chisena teaches that a pneumatic control system includes a panel (system 100, which includes controller 130) having a plurality of actuators (inputs 124 – see para. 0191) configured to control different components (see para. 0191), wherein the panel includes an inlet port (entrance zone 156) and a plurality of outlet ports (exit zones 155) (Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the system of Jackson such that it includes a pneumatic control system including a panel having a plurality of actuators (claim 2), wherein the panel includes an inlet port and a plurality of outlet ports (claim 3), as suggested by Chisena, as such would provide means to control the pneumatic drive mechanism disclosed by Jackson. In view of such a modification, and because the system of Jackson as modified by Mladenov includes a plurality of reducers with pneumatic drive mechanisms, it would have been obvious that the plurality of actuators are configured to control each reducer (claim 2) and that the inlet port is connected by pneumatic tubing or wiring to a supply of compressed air or electricity and the outlet ports are connected to the respective reducers (claim 3) in order to enable operation of the reducers.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Jackson (US 5,720,751 A) in view of Mladenov et al. (US 2017/0319246 A1) as applied to claim 1 above, and further in view of McAfee et al. (US 2018/0110504 A1).
Jackson and Mladenov fail to teach wherein the cylindrical body is a pneumatic cylinder configured to receive compressed air (claim 5), wherein the moveable component comprises a piston fitting snuggly inside the pneumatic cylinder, and the piston is configured to translate the pusher distally to drive the spinal rod into alignment (claim 6), and wherein the piston includes a piston head, a piston rod extending distally from the piston head, and a stem protruding proximally from the piston head (claim 7).
McAfee teaches a pneumatic device (tool 40) comprising: a cylindrical body (air cylinder 41) in the form of a pneumatic cylinder (air cylinder 41) configured to receive compressed air (see para. 0042); and a moveable component (piston 50) comprising a piston (piston 50) fitting snuggly inside the pneumatic cylinder (see Figs. 9 and 10), wherein the piston is configured to translate distally (see Fig. 10 in comparison to Fig. 9), wherein the piston includes a piston head (adjacent seals 51), a piston rod (rod portion of piston 50) extending distally from the piston head, and a stem (arm 47) protruding proximally from the piston head (Figs. 8-10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the system of Jackson such that the cylindrical body is a pneumatic cylinder configured to receive compressed air (claim 5), wherein the moveable component comprises a piston fitting snuggly inside the pneumatic cylinder, and the piston is configured to translate the pusher distally to drive the spinal rod into alignment (claim 6), and wherein the piston includes a piston head, a piston rod extending distally from the piston head, and a stem protruding proximally from the piston head (claim 7), as suggested by McAfee, as such would enable the reducers to be actuated by the pneumatic drive mechanism disclosed by Jackson.
Allowable Subject Matter
Claim 4 is 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 and if amended as suggested above to overcome the claim rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIANNA N HARVEY whose telephone number is (571)270-3815. The examiner can normally be reached Mon.-Fri. 8:00am-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eduardo Robert can be reached at (571)272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIANNA N HARVEY/Primary Examiner, Art Unit 3773
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