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 without traverse of Group I (device claims 1-12) in the reply filed on November 12, 2025 is acknowledged.
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.
Claim(s) 1-2, 5-8, and 10-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goldberg et al. (US 2015/0119891; “Goldberg”).
Claim 1, Goldberg discloses an apparatus (Figs. 8-11) for removing bone during an orthopedic procedure (Figs. 8-11; abstract), comprising: a first component (Fig. 10; 2102) having one or more cutting features (Fig. 9; 2182) configured to remove a fossa of a scapula (Figs. 8-11; paragraph [0080]); and a second component (Fig. 10; 2104) having one or more cutting features (Fig. 9; 2194) configured to remove at least a vault of the scapula (Fig. 9; paragraphs [0083]-[0085]), wherein the second component is selectively moveable relative to the first component to remove at least a portion of the vault (Figs. 8-11; paragraphs [0083]-[0085] and is configured to engage the first component to drive the first component for removing the fossa (Figs. 8-11; paragraphs [0083]-[0085]).
Claim 2, Goldberg discloses the apparatus of claim 1, further comprising a retention assembly (Figs. 10-11; paragraphs [0083]-[0086]) configured to couple the first component with the second component but allow the second component to be selectively moveable relative to the first component while the second component is in a retracted state relative to the first component (Figs. 10-11; paragraphs [0083]-[0086]).
Claim 5, Goldberg discloses the apparatus of claim 1, further comprising: a first plurality of engagement features (Fig. 10; 2188) positioned along the first component (fig. 10); and a second plurality of engagement features (2186) positioned along the second component (Fig. 10), wherein rotation of the second component brings the second plurality of engagement features into contact with the first plurality of engagement features to engage the second component with the first component for removing the fossa and the vault simultaneously (Figs. 8-11; paragraphs [0082]-[0086]).
Claim 6, Goldberg discloses the apparatus of claim 5, further comprising one or more ramps (Figs. 8-11; the helical threads act as ramps) that pass the second plurality of engagement features to the first plurality of engagement features (Figs. 8-11; paragraphs [0082]-[0086]).
Claim 7, Goldberg discloses the apparatus of claim 1, wherein the one or more cutting features of the second component substantially align with the one or more cutting features of the first component when the second component is in a deployed state and engaged with the first component for removing the scapula (Fig. 9).
Claim 8, Goldberg discloses an apparatus (Figs. 8-11) for removing part of a scapula during an orthopedic shoulder procedure (Figs. 8-11; abstract), comprising: a first component (Fig. 10; 2102) having one or more cutting features (Fig. 9; 2182) configured to remove a fossa of a scapula (Figs. 8-11; paragraph [0080]); and a second component (Fig. 10; 2104) having one or more cutting features (Fig. 9; 2194) configured to remove at least a vault of the scapula (Fig. 9; paragraphs [0083]-[0085]), wherein the second component is selectively moveable relative to the first component between a retracted position and a deployed position (Figs. 8-11; paragraphs [0082]-[0086]), wherein the second component and the first component are coupled together for rotation when the second component is in the deployed position (Figs. 8-11; paragraphs [0082]-[0086]).
Claim 10, Goldberg discloses the apparatus of claim 8, further comprising: a first plurality of engagement features (Fig. 10; 2188) positioned along the first component (fig. 10); and a second plurality of engagement features (2186) positioned along the second component (Fig. 10), wherein rotation of the second component brings the second plurality of engagement features into contact with the first plurality of engagement features to engage the second component with the first component for removing the fossa and the vault simultaneously (Figs. 8-11; paragraphs [0082]-[0086]).
Claim 11, Goldberg discloses the apparatus of claim 10, further comprising one or more ramps (Figs. 8-11; the helical threads act as ramps) that pass the second plurality of engagement features to the first plurality of engagement features (Figs. 8-11; paragraphs [0082]-[0086]).
Claim 12, Goldberg discloses the apparatus of claim 8, wherein the one or more cutting features of the second component substantially align with the one or more cutting features of the first component when the second component is in a deployed state and engaged with the first component for removing the scapula (Fig. 9).
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 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goldberg et al. (US 2015/0119891; “Goldberg”).
Claim 3, Goldberg discloses the apparatus of claim 2 and mentions the device can be held together by a variety of elements (paragraph [0085]) and the retention assembly includes a spring (paragraph [0083]) configured to bias the second component to the retracted state relative to the first component (paragraph [0083]).
However, this embodiment does not include bushings.
In an alternate embodiment Goldberg teaches wherein the retention assembly includes: at least one bushing (Fig. 15; 2212 and 2215) coupled to one or both of the first component and the second component (Fig. 15); and a spring configured to bias the second component to the retracted state relative to the first component.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to include the bushings, as shown in Fig. 15, to the embodiment of Fig. 10, since Goldberg mentions these embodiments can be combined (paragraphs [0082]-[0100]) and this can reduce the friction between the parts and protect certain parts from one another (Figs 12-15).
Claim 9, Goldberg discloses the apparatus of claim 8, further comprising a retention assembly (Figs. 10-11; paragraphs [0083]-[0086]) configured to couple the first component with the second component (Figs. 8-11), a spring (paragraph [0083]), wherein the spring is configured to bias the second component to the retracted position relative to the first component (paragraph [0083]).
However, this embodiment does not include the bushings.
In an alternate embodiment (Figs. 12-15) the retention assembly including: a first bushing (2212) coupled to the first component (Figs. 12-15); a second bushing (2214) coupled to the second component (Figs. 12-15).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to include the bushings, as shown in Fig. 15, to the embodiment of Fig. 10, since Goldberg mentions these embodiments can be combined (paragraphs [0082]-[0100]) and this can reduce the friction between the parts and protect certain parts from one another (Figs 12-15).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goldberg et al. (US 2015/0119891; “Goldberg”), in view of Goodwin et al. (US 2007/0142840; “Goodwin”).
Claim 4, Goldberg discloses the apparatus of claim 3, wherein the at least one bushing is fit to at least the second component (Figs. 15-17).
However, Goldberg does not show where the spring is located.
Goodwin teaches a biasing spring mechanism (Fig. 2; 70, 68, 72, 58) on a bone removing device (Fig. 2), wherein the spring is coiled around the second component and engages at least one bushing at a first end thereof (Fig. 2; paragraph [0038]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to put the spring of Goldberg in a similar design as taught by Goodwin, since this is a known configuration that will bias components towards or away from one another (Fig. 2; paragraph [0038]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zade Coley whose telephone number is (571)270-1931. The examiner can normally be reached M-F (9-5) PT.
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/Zade Coley/Primary Examiner, Art Unit 3775