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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 321, referred to as “221” in the description for Fig. 3.
The drawings are also objected to because threads 761 and 761 described in the specification are not clearly shown in Fig. 7.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: tooth 45 is not shown.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Specification
The disclosure is objected to because of the following informalities: in the description for Fig. 7, “710” is referred to as “710mm”.
Appropriate correction is required.
Claim Objections
Claims 1-12 are objected to because they appear to be a direct translation of a foreign language document. Applicant is requested to check the claims and ensure they are in idiomatic English. Appropriate correction is required.
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 1-12 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 1, the recitation “…said tool holder having a distal end and a proximal end disposed on a longitudinal axis,..” renders the claim vague and indefinite because it is unclear which longitudinal axis is being referred to in the claim. Further, the proximal end and the distal end are disposed along the longitudinal axis. For examination, the longitudinal axis is interpreted to be the longitudinal axis of the tool holder.
In claim 1, the recitation “a first said slidably mating part being provided with a longitudinal excavation extending from the distal end thereof such that said longitudinal excavation may be obturated but for the distal extremity thereof by sliding the second slidably mating part,….” and the recitation “whereby a tool element may be inserted into said excavation when exposed, and trapped therein when obturated” renders the claim vague and indefinite because the functional language is not supported by adequate recitation of structure and interaction thereof.
In claim 5, the recitation “keyed channel” renders the claim vague and indefinite because “a channel lacks structure.” The qualifier “keyed” is not supported by recitation of adequate structure to define the term. The recitation “said keyed channel” lacks antecedent basis.
In claims 6 and 7, the recitation “..outer dimensions conform to a bounding cylinder bearing one or more helical features coaxial with said bounding cylinder” renders the claims vague and indefinite because the helical features are on the outer surface of the respective locking elements (Figs. 7 and 9 and objection to the Drawings).
In claim 6, the recitation “..a distal extremity whose outer dimensions conform to a bounding cylinder bearing whose outer dimensions conform to a bounding cylinder bearing one or more helical features coaxial with said bounding cylinder” renders the claim vague and indefinite because it is unclear what structure or feature (for e.g. shape) is being referred to in the claim. Fig. 7 shows an imaginary circle 780 referred to as bounding cylinder in Applicant’s specification. It is suggested that Applicant claim the actual structure and interaction thereof shown in Fig. 7.
Claim 7 recites features already recited in claim 6 rendering the claim vague and indefinite because it is unclear whether these features are the same as those recited in claim 6 or other features.
In claim 8, the recitation “..adapted to be inserted into said excavation when exposed, and trapped therein when obturated” renders the claim vague and indefinite because it is unclear what state “when obturated” is referring to or what elements are obturated.
In claims 10-12, the recitation “constituted” is confusing since it is unclear what type of transitional phrase is used in the claim to understand the scope of the claims. It is suggested that Applicant use “comprising.”
In claim 10, the recitation “surgical instrument” is very broad because there are many types of surgical instruments. Applicant’s specification describes only an osteotome (box osteotome), rasp, reamer or impactor (implant impactor). Thus, the scope of the claim is not defined.
In claims 10-12, the recitation “constituted” is confusing since it is unclear what type of transitional phrase is used in the claim to understand the scope of the claims. It is suggested that Applicant use “comprising.”
Appropriate correction is required.
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 and 5-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu (US 20160346908 A1).
Regarding claim 1, Liu discloses a lining or tool holder 60 for a modular tool, the tool holder including: a distal end and a proximal end disposed along a longitudinal axis of the tool holder (20, Fig. 1), the tool holder split longitudinally into two slidably mating parts (68, Fig. 1), the slidably mating parts being provided with mutually engaging retaining elements (Fig. 1, 67, 69) the mutually engaging retaining elements being configured to allow relative movement of the slidably mating parts along the longitudinal axis but prevent or eliminate relative movement in any other direction when engaged, a first said slidably mating part being provided with a concave recess (62, Fig. 1) or longitudinal excavation extending from the distal end thereof such that said longitudinal excavation may be obturated or closed but for the distal extremity thereof by sliding the second slidably mating part so as to bring the distal extremity of the second slidably mating part into proximity with the distal extremity of the first slidably mating part (interpreted to mean the low edge of one part 69 engages the high edge 67 of the other part in an assembled configuration), and such that said longitudinal excavation may be exposed by sliding the second slidably mating part so as to separate the distal extremity of the second slidably mating part from the distal extremity of the first slidably mating part whereby a tool element may be inserted into said excavation when exposed, and trapped therein when obturated (Fig. 1, paras [0027]- [0028], shaft 30 is received inside the concave recess and fins 36 of shaft 30 of the tool are received in the slits 64 formed by the low edges 69).
Regarding claim 5, Liu discloses a handle (20, Fig. 1) including a channel having facets 26 or “keyed channel” that restrains the slidably mating parts from sliding relative to one another when engaged with the handle (paras [0022]-[0029]).
Regarding claims 6 and 7, Liu discloses a distal extremity whose outer dimensions conform to a bounding cylinder (connection bearing 28, Fig. 1) bearing one or more helical features or threads coaxial with said bounding cylinder, such that a threaded ring 50 may by screwed onto the body (para [0030]).
Regarding claim 8, Liu discloses a tool element or shaft 30 that is adapted to be inserted into the longitudinal excavation when exposed (unassembled configuration), and trapped therein when obturated or closed.
Regarding claims 9-12, Liu discloses a screw driver or instrument or impactor (capable of being struck or handling impacts on the end of handle 20) or osteotome (tool capable of chipping bone) capable of being used for orthopedic surgery. No structure is being claimed to distinguish the surgical instrument over the Liu device.
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) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 20160346908 A1) in view of Schaller et al. (US 9693814).
Liu discloses all elements of the claimed invention except for the material of construction of the tool holder.
It is well known to construct components of a screw driver including the handle and torque transfer member or tool holder of polymeric materials such as thermoplastic or thermosets, as evidenced by Schaller et al. (col. 9, lines 11-37).
Therefore, it would have been obvious to one of ordinary skill in the art to have constructed the Liu tool holder of a thermoplastic polymer since it was well known to construct torque transfer instruments used in medical applications of thermoplastic polymers to enable forming methods such as injection molding (disclosed by Liu at paras [0004]-[0006]).
Allowable Subject Matter
Non application of prior art to claims 2 and 3 indicates allowable subject matter provided the rejections made under 35 USC 112(b) are overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anu Ramana whose telephone number is (571)272-4718. The examiner can normally be reached 8:00 am-5:00 pm.
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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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February 13, 2026
/Anu Ramana/Primary Examiner, Art Unit 3775