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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/26/2024 was received and placed in the record on file. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
Replacement drawings were received on 3/15/2024. These drawings are accepted and placed in the record on file.
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.
Currently, there are no limitation in the instant claims that invoke a 112(f) means plus function interpretation.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 and 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ritland (US 2003/0236447 A1).
Regarding claims 1-5 and 8-12; Ritland discloses an orthopedic joint finder device (element 10), comprising:
an elongate planar member (element 14; wherein the examiner notes that guide portion element 14 exists in a plane and thus meets the BRI of a planar member, figures 1, 4-16) having a handle (element 12) at one end thereof (see figures 1, and 4-16); and
a tubular member (element 30 insertable into guide channel element 22) extending at least partially along a longitudinal axis of the elongate planar member (wherein when element 30 is inserted along longitudinal axis of element 14 via guide channel element 22; see figures 1 and 5).
Further regarding claim 2-5; Ritland discloses the handle (element 12) is substantially perpendicular to the elongate planar member (element 14) (wherein it is disclosed that the handle is angled between about 90 and about 135 which includes substantially perpendicular of about 90, paragraph [0038]).
Further regarding claim 3-5; Ritland further comprising an elongate recess (guide channel element 22) extending along a longitudinal axis of the elongate planar member (element 14) (see figures 1, 3, 5, 7, 9, 11, 13, 14, 15).
Further regarding claim 4-5; Ritland discloses the elongate recess (guide channel element 22) is positioned centrally between lateral ends of the elongate planar member (wherein guide channel 22 is centered along guide portion element 14; figures 1, 2, 4-7, 9, 11, 13, 14).
Further regarding claim 5; Ritland discloses the tubular member (element 30) is positioned at least partially in the elongate recess (guide channel element 22) (paragraphs [0042]; figures 2-5)
Further regarding claim 8; Ritland discloses the elongate recess (element 22) extends partially along a longitudinal length of the elongate planar member (element 14) (wherein guide channel extends length of guide element 14; paragraph [0040]; figures 1, 2, 4-7, 9, 11, 13, 14).
Further regarding claim 9; Ritland discloses the tubular member (element 30) extends partially along a longitudinal length of the elongate planar member (wherein the examiner notes that the tubular member is slideable within guide channel element 22, and is placeable to extend partially along the length depending on how far it is inserted; paragraphs [0042]-[0047]; figures 1-5)
Further regarding claim 10; Ritland discloses the tubular member extends along an entire longitudinal length of the elongate planar member (wherein the examiner notes that the tubular member can be inserted such that it extends along the entire longitudinal length; paragraphs [0042]-[0047]; figures 1-5).
Further regarding claim 11; Ritland discloses the elongate recess (element 22) extends along a partial length of the elongate planar member (element 14) (wherein the examiner notes that if the elongate recess extends the entire length of element 14, then it also extends along a partial length of element 14; furthermore figure 3 discloses wherein the recess element 22 extends partially as it does not extend to curved tip element 24; see figure 3)
Further regarding claim 12; Ritland discloses the elongate planar member (element 14) has a slot (element 22) extending from a distal end (element 23) thereof and terminating at a distal end of the tubular member (element 30) (wherein the element 22 would terminate at the distal end of element 30 when tubular insert element 30 is beginning to be inserted into element 22; see figures 1, 3 and 5).
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.
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.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Ritland as applied to claim 1 above, and further in view of DiCarlo (US 5,180,388).
Ritland is described in the rejection of claim 1 above; however Ritland does not explicitly disclose graduation marking on at least one surface of the elongate planar member (claim 6), or that the graduation markings correspond to depth measurements from a distal end of the elongate planar member (claim 7).
DiCarlo teaches the use graduated markings (element 22) on at least one surface of a guide element (element 12) wherein the graduated markings correspond to depth measurements from a distal end of the guide element to indicate how far a tool inserted into the guide element extends beyond the distal end of the guide (column 2, line 48 – column 3, line 10; figure 1).
Regarding claims 6 and 7; Ritland discloses an orthopedic joint finder device that acts as a guide for tools (paragraph [0042]). DiCarlo teaches in a similar orthopedic art, the use of graduated markings on a guide element to indicate how far a tool has been inserted beyond the distal end of the guide element (column 2, line 48 – column 3, line 10; figure 1). Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to modify Ritland’s orthopedic joint finder to include graduation markings on at least one surface of the elongate planar member (element 14) as taught by DiCarlo in order to indicate how far a tool inserted into the guide channel element 22 extends from the distal end of the guide.
Further regarding claim 7; the Ritland/DiCarlo combination as described in the rejection above. DiCarlo further teaches the use of markings (element 36) on the tool shaft in order to indicate depth measurements of the distal end of the tool from the distal end of the elongate planar member (column 2, line 48 – column 3, line 10). Therefore, it would have been obvious to further modify Ritland/Dicarlo to include a marking on the tool shaft inserted into the guide channel (element 22) of the elongate member (element 40) such that the graduation markings correspond to the depth measurement from a distal end of the elongate planar member.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2016/0278789 to Garvey et al; discloses cannulated countersink and depth gauge multi-instrument.
US 2012/0016373 to Impellizzeri; discloses a device to assist with the placement of screws in bone tissue.
US 9,439,641 to Cao et al; discloses an exposure apparatus for posterior spinal minimally invasive screw placement surgery.
US 11,832,864 to Kolovich et al; discloses orthopedic implants and tools.
US 12,295,616 to Preiss-Bloom et al; discloses cannulated implant delivery device with adjustable insertion depth.
WO 2010/108166 to Petersen; discloses surgical methods and tools.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J EISEMAN whose telephone number is (571)270-3818. The examiner can normally be reached Monday - Friday (7:00 AM - 4:00 PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jacqueline Cheng can be reached at 571-272-5596. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM J EISEMAN/ Primary Examiner, Art Unit 3791