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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 16 June 2026 has been entered.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Claims 3-4 are cancelled; claims 1-2 and 5-20 are pending.
Response to Arguments
Applicant's arguments filed 16 June 2026 have been fully considered but they are not persuasive. The Applicant argues (page 7, “Remarks”):
Paragraph [0014] of Grace, however, does not disclose a wedge-shaped elongated cutting portion, a first flat surface, a second flat surface, or a first flat surface that tapers to a second flat surface so as to be wider than the second flat surface. Paragraph [0014] instead describes a tubular outer member with an inwardly tapering ramped surface and a tubular inner member carrying a plurality of resiliently flexible blades. A bore of a tubular member that constricts as it proceeds distally, and a plurality of flexible blades that deflect radially inwardly within that bore, are structurally distinct from a wedge-shaped cutting portion defined by two opposed flat surfaces of differing width that taper toward one another. Grace does not disclose the wedge-shaped elongated cutting portion recited in claim 1, and claim 1 is therefore not anticipated by Grace.
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The Examiner respectfully disagrees with this assessment of Grace, and provides previously cited Figure 10D as depicting the “wedge-shaped” portion as claimed.
The Applicant further argues:
Claims 2 and 13 each recite that the edge is a radial blade. The Office Action relies on paragraph [0014] of Grace for this limitation. Paragraph [0014] does not recite a radial blade. Paragraph [0014] recites a plurality of resiliently flexible blades that, upon actuation, engage a ramped surface and are deflected radially inwardly within the bore of a tubular outer member. The word radially in Grace describes the inward direction in which the plurality of flexible blades is deflected during actuation, not a sharpened cutting edge of the type recited in the claims. The radial blade of the claims is a sharpened edge of the elongated cutting portion, as described at paragraph [0035] of the Specification, where the radial blade is an edge sharpened for cutting that cuts bone growth along the bone/implant interface and that cuts efficiently in response to rotational movement of the tool. A plurality of flexible blades that deflect radially inwardly as they are advanced within a surrounding tube does not disclose a radial blade as that term is used in the claims.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “the radial blade is an edge sharpened for cutting that cuts bone growth along the bone/implant interface and that cuts efficiently in response to rotational movement of the tool”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The Applicant argues (page 8, “Remarks”) “Paragraph [0189] of Grace describes an inner cam member in which the plane of a cutting surface of the inner cam member is offset from a plane parallel to the plane of a proximal end of the inner cam member by an angle. The offset described in paragraph [0189] is therefore an offset between two planes of the inner cam member itself, namely the plane of its cutting surface and the plane of its proximal end. It is not an offset of an elongated cutting portion relative to a longitudinal axis of a shaft, as recited in claim 11. Grace does not disclose the elongated cutting portion being offset by an offset angle relative to a longitudinal axis of the shaft, and claim 11 is therefore not anticipated by Grace.”
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-2, 5-11 and 13-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grace (U.S. 2015/0105796). Grace discloses (par. 0014) a proximal end; and a distal end having an elongated cutting portion, wherein the elongated cutting portion has an edge (sharpened for cutting extending a predetermined distance on a first side of the tool, around the distal end, and extending the predetermined distance on a second side of the tool, wherein the elongated cutting portion is wedge-shaped having a first flat surface on a first side of the tool, a second flat surface on a second side of the tool, wherein the second side is opposite of the first side, and wherein the first flat surface tapers to the second flat surface such that the first flat surface is wider than the second flat surface. (“a tubular outer member comprising a ramped surface at a distal end of a bore of the tubular outer member, the ramped surface tapering inwardly proceeding distally to constrict the bore of the tubular outer member; a tubular inner member carried within the bore of the tubular outer member, a distal end of the tubular inner member comprising a plurality of resiliently flexible blades, the tubular inner member being movable from a retracted position to an actuated position and vice versa relative to the tubular outer member, in the retracted position the resiliently flexible blades being disposed within the bore of the tubular outer member, and in the actuated position the resiliently flexible blades at least partially extending from the tubular outer member and the plurality of resiliently flexible blades engaging the ramped surface such that the plurality of resiliently flexible blades are deflected radially inwardly relative to the retracted position”).
As to claims 1 and 5-7, the functional language and statement of intended use have been carefully considered but are not considered to impart any further structural limitations over the prior art. Since Grace utilizes a surgical tool including a cutting portion for removing an implant as claimed by the applicant, Grace is therefore capable of being used in removing a tibial implant while the tool is inserted in a knee. In addition nothing prevents Grace’s cutting tool from being used in the knee of a patient. Therefore, they are capable of used in this location.
Regarding claim 2, Grace discloses (par. 0014) the edge is a radial blade.
Regarding claim 8, Grace discloses (par. 0014) the proximal end includes a connection interface (“an actuator operably connected to the tubular inner member, the actuator being actuatable to move the tubular inner member from the retracted position to the actuated position and vice versa.”).
Regarding claim 9, Grace discloses (par. 0140) a shaft between the distal end and the connection interface.
Regarding claim 10, Grace discloses (par. 0014) a height of the elongated cutting portion is shorter than a height of the shaft.
Regarding claim 11, Grace discloses (Figures 10A-10D) a proximal end; a distal end having an elongated cutting portion, wherein the elongated cutting portion has an edge sharpened for cutting extending a predetermined distance on a first side of the tool, around the distal end, and extending the predetermined distance on a second side of the tool; and a shaft between the proximal end and the distal end, wherein the elongated cutting portion is offset by an offset angle relative to the shaft (par. 0189).
As to claims 11 and 16-18, the functional language and statement of intended use have been carefully considered but are not considered to impart any further structural limitations over the prior art. Since Grace utilizes a surgical tool including a cutting portion for removing an implant as claimed by the applicant, Grace is therefore capable of being used in removing a tibial implant while the tool is inserted in a knee. In addition nothing prevents Grace’s cutting tool from being used in the knee of a patient. Therefore, they are capable of used in this location.
Regarding claim 13, Grace discloses (par. 0014) the edge is a radial blade.
Regarding claim 14, Grace discloses (par. 0014) the elongated cutting portion has a first flat surface on a first side of the tool, a second flat surface on a second side of the tool, wherein the second side is opposite of the first side.
Regarding claim 15, Grace discloses (par. 0014) the first flat surface tapers to the second flat surface.
Regarding claim 19, Grace discloses (par. 0140) a shaft between the distal end and the connection interface.
Regarding claim 20, Grace discloses (par. 0014) a height of the elongated cutting portion is shorter than a height of the shaft.
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Grace (U.S. 2015/0105796). Grace discloses the claimed invention except for the offset angle ranges from 35 degrees to 45 degrees. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide an offset angle of this range, since it has been held that discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH L MALAMUD whose telephone number is (571)272-2106. The examiner can normally be reached Mon - Fri 1:00-9:30 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Unsu Jung can be reached at (571) 272-8506. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEBORAH L MALAMUD/Primary Examiner, Art Unit 3792
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