Detailed Action
This office action is for US application number 18/480,105 evaluates the claims as filed on January 2, 2026.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 2, 2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim 1, 2, 6, 8-11, 13-19 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
With regards to the claimed “horizontal dimension” of claims 1 and 17, Examiner notes that each of claims 1 and 17 are clear; however, it can be confusing to have a ‘horizontal dimension’ be distinctly different features in different claims such as the ‘horizontal dimension’ between medial-lateral edges in claim 1, i.e. a medial-lateral dimension, that has a depth in claim 1, and then a ‘horizontal dimension’ be extending from the rear toward the front in claim 17, i.e. a depth dimension, that then has lateral and vertical dimensions in claim 18. Examiner suggests using consistent terminology between independent claims to aid in a consistent interpretation of phrases/limitations.
With regards to the claimed “through hole” of claims 6, 8, and 19, Examiner notes that each of claims 6, 8, and 19 are clear; however, it can be confusing to have a ‘through hole’ be distinctly different features in different claims such as the ‘through hole’ of claims 6 and 8 that is in the lobe, and then a ‘through hole’ that is part of the slots in claim 19. Examiner suggests using consistent terminology between claims to aid in a consistent interpretation of phrases/limitations.
With regards to the claimed “aperture” of claims 9 and “through hole” of claim 19, Examiner notes that each of claims 9 and 19 are clear; however, it can be confusing to have distinct claim terms referring to the same structure such as the ‘aperture’ of claim 9 that is in the slot, and then a ‘through hole’ that is part of the slots in claim 19. Examiner suggests using consistent terminology between claims to aid in a consistent interpretation of phrases/limitations.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
As to claim 15, the specification appears to lack proper antecedent basis for a portion of the depth of the first cut slot that “does not include the medial edge or the lateral edge” of claim 15 lines 3-5. This is a negative limitation, i.e. the claim is requiring that a portion of the depth of the first cut slot does not include the medial edge or the lateral edge. Negative limitations are not per se improper, but they must be supported by the originally filed disclosure. As provided by MPEP 2173.05(i), any negative limitation or exclusionary proviso must have basis in the original disclosure; if alternative elements are positively recited in the specification, they may be explicitly excluded in the claims; and the mere absence of a positive recitation is not basis for an exclusion. The specification is silent regarding a portion of the depth of the first cut slot not including the medial edge or the lateral edge. As noted above, the absence of a positive recitation is not a proper basis of support for a negative limitation. Additionally, since the specification is silent on the matter of a portion of the depth of the first cut slot including the medial edge or the lateral edge, then the “alternative elements” rationale discussed above in the MPEP is not applicable. Thus, the specification fails to provide proper antecedent basis for a portion of the depth of the first cut slot that “does not include the medial edge or the lateral edge” of claim 15 lines 3-5. Examiner suggests amending with a positive limitation such as defining a depth of the medial edge, a depth of the lateral edge, wherein the depth of the first slot is greater than the depth of the medial edge and the depth of the first slot is greater than the depth of the lateral edge or claiming that the first slot extends beyond each of the medal and lateral edges or the like.
As to claim 16, the specification appears to lack proper antecedent basis for a portion of the depth of the second cut slot that “does not include the medial edge or the lateral edge” of claim 16 lines 3-5. This is a negative limitation, i.e. the claim is requiring that a portion of the depth of the second cut slot does not include the medial edge or the lateral edge. Negative limitations are not per se improper, but they must be supported by the originally filed disclosure. As provided by MPEP 2173.05(i), any negative limitation or exclusionary proviso must have basis in the original disclosure; if alternative elements are positively recited in the specification, they may be explicitly excluded in the claims; and the mere absence of a positive recitation is not basis for an exclusion. The specification is silent regarding a portion of the depth of the second cut slot not including the medial edge or the lateral edge. As noted above, the absence of a positive recitation is not a proper basis of support for a negative limitation. Additionally, since the specification is silent on the matter of a portion of the depth of the second cut slot including the medial edge or the lateral edge, then the “alternative elements” rationale discussed above in the MPEP is not applicable. Thus, the specification fails to provide proper antecedent basis for a portion of the depth of the second cut slot that “does not include the medial edge or the lateral edge” of claim 16 lines 3-5. Examiner suggests amending with a positive limitation such as defining a depth of the medial edge, a depth of the lateral edge, wherein the depth of the second slot is greater than the depth of the medial edge and the depth of the second slot is greater than the depth of the lateral edge or claiming that the second slot extends beyond each of the medal and lateral edges or the like.
As to claims 17 and 18, the specification appears to lack proper antecedent basis for a portion of the at least one cut slot that extends from the rear portion toward the front portion “without the medial edge and the lateral edge” of claim 17 lines 11-12. This is a negative limitation, i.e. the claim is requiring that the at least one cut slot that extends without the medial edge and the lateral edge. Negative limitations are not per se improper, but they must be supported by the originally filed disclosure. As provided by MPEP 2173.05(i), any negative limitation or exclusionary proviso must have basis in the original disclosure; if alternative elements are positively recited in the specification, they may be explicitly excluded in the claims; and the mere absence of a positive recitation is not basis for an exclusion. The specification is silent regarding a portion of the at least one cut slot that extending without the medial edge and the lateral edge. As noted above, the absence of a positive recitation is not a proper basis of support for a negative limitation. Additionally, since the specification is silent on the matter of a portion of the at least one cut slot that extends with the medial edge and the lateral edge, then the “alternative elements” rationale discussed above in the MPEP is not applicable. Thus, the specification fails to provide proper antecedent basis for a portion of at least one cut slot that extends “without the medial edge and the lateral edge” of claim 17 lines 11-12. Examiner suggests amending with a positive limitation such as reciting that the at least one cut slot comprises a horizontal dimension in a portion of the at least one cut slot that extends from the rear portion toward the front portion and is beyond the medial and lateral edges or the like.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 15-18 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 15, a portion of the depth of the first cut slot that “does not include the medial edge or the lateral edge” of claim 15 lines 3-5 appears to be new matter. This is a negative limitation, i.e. the claim is requiring that a portion of the depth of the first cut slot does not include the medial edge or the lateral edge. Negative limitations are not per se improper, but they must be supported by the originally filed disclosure. As provided by MPEP 2173.05(i), any negative limitation or exclusionary proviso must have basis in the original disclosure; if alternative elements are positively recited in the specification, they may be explicitly excluded in the claims; and the mere absence of a positive recitation is not basis for an exclusion. The specification is silent regarding a portion of the depth of the first cut slot not including the medial edge or the lateral edge. As noted above, the absence of a positive recitation is not a proper basis of support for a negative limitation. Additionally, since the specification is silent on the matter of a portion of the depth of the first cut slot including the medial edge or the lateral edge, then the “alternative elements” rationale discussed above in the MPEP is not applicable. Thus, a portion of the depth of the first cut slot that “does not include the medial edge or the lateral edge” of claim 15 lines 3-5 constitutes new matter. Examiner suggests amending with a positive limitation such as defining a depth of the medial edge, a depth of the lateral edge, wherein the depth of the first slot is greater than the depth of the medial edge and the depth of the first slot is greater than the depth of the lateral edge or claiming that the first slot extends beyond each of the medal and lateral edges or the like.
As to claim 16, a portion of the depth of the second cut slot that “does not include the medial edge or the lateral edge” of claim 16 lines 3-5 appears to be new matter. This is a negative limitation, i.e. the claim is requiring that a portion of the depth of the second cut slot does not include the medial edge or the lateral edge. Negative limitations are not per se improper, but they must be supported by the originally filed disclosure. As provided by MPEP 2173.05(i), any negative limitation or exclusionary proviso must have basis in the original disclosure; if alternative elements are positively recited in the specification, they may be explicitly excluded in the claims; and the mere absence of a positive recitation is not basis for an exclusion. The specification is silent regarding a portion of the depth of the second cut slot not including the medial edge or the lateral edge. As noted above, the absence of a positive recitation is not a proper basis of support for a negative limitation. Additionally, since the specification is silent on the matter of a portion of the depth of the second cut slot including the medial edge or the lateral edge, then the “alternative elements” rationale discussed above in the MPEP is not applicable. Thus, a portion of the depth of the second cut slot that “does not include the medial edge or the lateral edge” of claim 16 lines 3-5 constitutes new matter. Examiner suggests amending with a positive limitation such as defining a depth of the medial edge, a depth of the lateral edge, wherein the depth of the second slot is greater than the depth of the medial edge and the depth of the second slot is greater than the depth of the lateral edge or claiming that the second slot extends beyond each of the medal and lateral edges or the like.
As to claims 17 and 18, a portion of the at least one cut slot that extends from the rear portion toward the front portion “without the medial edge and the lateral edge” of claim 17 lines 11-12 appears to be new matter. This is a negative limitation, i.e. the claim is requiring that the at least one cut slot that extends without the medial edge and the lateral edge. Negative limitations are not per se improper, but they must be supported by the originally filed disclosure. As provided by MPEP 2173.05(i), any negative limitation or exclusionary proviso must have basis in the original disclosure; if alternative elements are positively recited in the specification, they may be explicitly excluded in the claims; and the mere absence of a positive recitation is not basis for an exclusion. The specification is silent regarding a portion of the at least one cut slot that extending without the medial edge and the lateral edge. As noted above, the absence of a positive recitation is not a proper basis of support for a negative limitation. Additionally, since the specification is silent on the matter of a portion of the at least one cut slot that extends with the medial edge and the lateral edge, then the “alternative elements” rationale discussed above in the MPEP is not applicable. Thus, a portion of at least one cut slot that extends “without the medial edge and the lateral edge” of claim 17 lines 11-12 constitutes new matter. Examiner suggests amending with a positive limitation such as reciting that the at least one cut slot comprises a horizontal dimension in a portion of the at least one cut slot that extends from the rear portion toward the front portion and is beyond the medial and lateral edges or the like.
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.
Claim(s) 1, 2, 6, 8-11, 13-19 is/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 pre-AIA the applicant regards as the invention.
Claim(s) 1 is/are unclear with regards to “each cut slot of the at least two cut slots has a different depth” in line 13 that is in addition to “wherein the at least two cut slots each include a depth extending between the front portion and the rear portion” of lines 4-5 and if this is intended to construe that each cut slot has multiple depths or that the depth of a first cut slot differs from a depth of a second cut slot or be a reference to the depths of lines 4-5. Examiner is interpreting this broadly and suggests amending to clarify.
Claim(s) 1 is/are unclear with regards to “a pair of projections extending laterally from the surgical guide on opposite ends of the at least two cut slots” in line 17 and how the projections can be reasonably construed to be a part of the guide and extend from the guide. Examiner is interpreting this as referring to, and suggests amending as, “a pair of projections extending laterally from the front portion on opposite ends of the at least two cut slots”.
Claim(s) 1 is/are unclear with regards to “wherein the at least two cut slots extend entirely between the two projections of the pair of projections” in lines 18-19 and how the slots can be reasonably construed to be entirely between the projections when the projections are clearly shown to be less than a depth of the guide in, e.g. Figs. 3 and 4, while the slots are shown to extend through the guide in order to accommodate passage of a saw blade, e.g. see 104 in Fig. 4. Further, there is insufficient antecedent basis for “the two projections of the pair of projections” in the claim. Examiner is interpreting this as referring to medial-laterally and suggests amending to clarify as well as “between [[the]] two projections of the pair of projections”.
Claim(s) 1 recites/recite the limitation "the depth of a central portion" in lines 19-20. There is insufficient antecedent basis for this limitation in the claim. Examiner is interpreting this as referring to, and suggests amending as, “wherein the depth of the pair of projections is smaller than [[the]]a depth of a central portion of the surgical guide where the at least two cut slots are positioned”.
Claim(s) 10 and 11 is/are unclear with regards to a “first lateral dimension” and a “second lateral dimension” in claim 10 lines 2 and 3 and claim 11 lines 1 and 2 and the intended dimension with a consistent interpretation of ‘lateral’ relative to the usage in claim 1 lines 6-11 and the horizontal and vertical dimensions of claim 1 lines 10-11 and the depth of claims 1 line 5 and 13. Examiner is interpreting this as referring to, and suggests amending as, “the at least two cut slots comprises a first cut slot comprising a first horizontal dimension and a second cut slot comprising a second horizontal dimension, wherein the first cut slot is disposed above the second cut slot” in claim 10 and “wherein the first horizontal dimension is equal to the second horizontal dimension”.
Claim(s) 14-16 is/are unclear with regards to “the depth” in claim 14 line 2 and 3, claim 15 lines3-4, and claim 15 line 3 and if this is intended to refer to the “a depth” of claim 1 line 5 or the “a different depth” of claim 1 line 13. Examiner is interpreting this broadly and suggests amending to clarify.
Claim(s) 17 is/are unclear with regards to “a pair of projections extending laterally from the surgical guide on opposite ends of the at least one cut slots” in lines 14-15 and how the projections can be reasonably construed to be a part of the guide and extend from the guide. Examiner is interpreting this as referring to, and suggests amending as, “a pair of projections extending laterally from the front portion on opposite ends of the at least one cut slot”.
Claim(s) 17 is/are unclear with regards to “wherein the at least one cut slot extends entirely between the two projections of the pair of projections” in lines 15-16 and how the slots can be reasonably construed to be entirely between the projections when the projections are clearly shown to be less than a depth of the guide in, e.g. Figs. 3 and 4, while the slots are shown to extend through the guide in order to accommodate passage of a saw blade, e.g. see 104 in Fig. 4. Further, there is insufficient antecedent basis for “the two projections of the pair of projections” in the claim. Examiner is interpreting this as referring to medial-laterally and suggests amending to clarify as well as “between [[the]] two projections of the pair of projections”.
Claim(s) 17 recites/recite the limitation "the depth of a central portion" in line 17. There is insufficient antecedent basis for this limitation in the claim. Examiner is interpreting this as referring to, and suggests amending as, “wherein the depth of the pair of projections is smaller than [[the]]a depth of a central portion of the surgical guide where the at least two cut slots are positioned”.
Claim(s) 19 is/are unclear with regards to “a pair of projections extending laterally from the surgical guide on opposite ends of the at least one cut slots” in lines 17-18 and how the projections can be reasonably construed to be a part of the guide and extend from the guide. Examiner is interpreting this as referring to, and suggests amending as, “a pair of projections extending laterally from the front portion on opposite ends of the at least one cut slot”.
Claim(s) 19 is/are unclear with regards to “wherein first and second cut slots extend entirely between the two projections of the pair of projections” in lines 18-19 and how the slots can be reasonably construed to be entirely between the projections when the projections are clearly shown to be less than a depth of the guide in, e.g. Figs. 3 and 4, while the slots are shown to extend through the guide in order to accommodate passage of a saw blade, e.g. see 104 in Fig. 4. Further, there is insufficient antecedent basis for “the two projections of the pair of projections” in the claim. Examiner is interpreting this as referring to medial-laterally and suggests amending to clarify as well as “between [[the]] two projections of the pair of projections”.
Claim(s) 19 recites/recite the limitation "the depth of a central portion" in line 20. There is insufficient antecedent basis for this limitation in the claim. Examiner is interpreting this as referring to, and suggests amending as, “wherein the depth of the pair of projections is smaller than [[the]]a depth of a central portion of the surgical guide where the at least two cut slots are positioned”.
Claim(s) 2, 6, 8, 9, 13 and 18 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for its/their dependence on one or more rejected base claims.
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.
(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.
Claim(s) 1, 2, 6-10, 13, 17, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Utz et al. (US 2006/0288837, hereinafter “Utz”).
As to claim 1, Utz discloses a surgical guide (Figs. 4-6; where ¶27 discloses that similar features are shown with like numbering in Fig. 1-3 and described therewith) comprising: a front portion (upper portion as shown in Fig. 4, i.e. lower portion as shown in Fig. 5, Figs. 4 and 5); a rear portion (lower portion as shown in Fig. 4, i.e. upper portion as shown in Fig. 5, Figs. 4 and 5) opposite the front portion (as defined, Fig. 4); at least two cut slots (11s) extending from the front portion to the rear portion (Figs. 4-6), wherein the at least two cut slots each include a depth extending between the front portion and the rear portion (Figs. 4-6), wherein the at least two cut slots are each defined by a medial edge (left 12 in Fig. 6, i.e. lower-left edge as shown in Fig. 4, Figs. 4-6), a lateral edge (right 12 in Fig. 6, i.e. upper-right edge as shown in Fig. 4, Figs. 4-6), an inferior edge (generally linear right edge of 11s as shown in Fig. 4, Figs. 4 and 5) connecting the medial edge and the lateral edge on a first end (right end as shown in Fig. 4, Figs. 4 and 5), and a superior edge (generally linear left edge of 11s as shown in Fig. 4, Figs. 4 and 5) connecting the medial edge and the lateral edge on a second end (left end as shown in Fig. 4, Figs. 4 and 5), wherein the at least two cut slots include a horizontal dimension extending between the medial edge and the lateral edge (Figs. 4-6), wherein the at least two cut slots include a vertical dimension extending between the inferior edge and the superior edge (Figs. 4 and 5), and wherein each cut slot of the at least two cut slots has a different depth (due to the projection shown with slants 18 on the front portion in Fig. 5, due to the central projection on the rear portion shown in Figs. 4 and 5, Figs. 4 and 5), wherein the front portion comprises a front surface (Fig. 4) and the rear portion comprises a rear surface (Fig. 5), and each of the at least two cut slots provide fluid communication between the front surface and the rear surface of the surgical guide (Figs. 4-6, ¶s 21 and 27); and a pair of projections (see “Projection” on illustration of Fig. 4 and the similar structure on the opposite side/end, Fig. 4) extending laterally from the front portion on opposite ends of the at least two cut slots (Figs. 4 and 5), wherein the at least two cut slots extend entirely between two projections of the pair of projections (as defined, medially-laterally as shown in Fig. 4, Fig. 4 and 5), wherein the pair of projections have a depth (generally vertical as shown in Figs. 4 and 5, Figs. 5 and 5), and wherein the depth of the pair of projections is smaller than a depth of a central portion of the surgical guide where the at least two cut slots are positioned (Figs. 4-6, where Figs. 4-6 show two peg-like structures extending from the central portion of the rear portion that have a greater depth than the projections), wherein each of the pair of projections comprises at least one lobe (see “Lobe” on illustration of Fig. 4 and the similar structure on the opposite side/end, Fig. 4) extending from each projection of the pair of projections (as defined), and wherein the at least one lobe protrudes from a lower portion of each projection of the pair of projections (as defined, Fig. 4).
As to claim 2, Utz discloses that the front portion is integral with the rear portion of the surgical guide (Figs. 4-6).
As to claim 6, Utz discloses that each of the pair of projections comprises at least one through hole (see “Throughhole” on illustration of Fig. 4 and the similar structure on the opposite side/end, Figs. 4 and 5).
As to claim 8, Utz discloses that each of the at least one through hole is disposed at least partially within the at least one lobe of each of the pair of projections (as defined, Fig. 4).
As to claim 9, Utz discloses that each of the at least two cut slots comprise at least a portion of a perimeter of an aperture (see “Aperture” on illustration of Fig. 4 and the similar structure on the opposite side/end, Figs. 4 and 5) that overlaps with a perimeter of the cut slots (Figs. 4 and 5), and at least a portion of the perimeter of the aperture does not overlap with the perimeter of the cut slots (Figs. 4 and 5).
As to claim 10, Utz discloses that the at least two cut slots comprises a first cut slot (left most 11 as shown in Fig. 4, Fig. 4) comprising a first horizontal dimension (Fig. 4) and a second cut slot (central 11 as shown in Fig. 4, Fig. 4) comprising a second horizontal dimension (Fig. 4), wherein the first cut slot is disposed above the second cut slot (as defined, Fig. 4).
As to claim 13, Utz discloses that the at least one aperture comprises a pair of apertures such that the guide comprises two apertures (shown in each slot in Fig. 4, Fig. 4).
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As to claim 17, Utz discloses a surgical guide (Figs. 4-6; where ¶27 discloses that similar features are shown with like numbering in Fig. 1-3 and described therewith) comprising: a front portion (upper portion as shown in Fig. 4, i.e. lower portion as shown in Fig. 5, Figs. 4 and 5) comprising a front surface (Fig. 4); a rear portion (lower portion as shown in Fig. 4, i.e. upper portion as shown in Fig. 5, Figs. 4 and 5) opposite the front portion (as defined, Fig. 4) and comprising a rear surface (Fig. 5) opposite the front surface (as defined, Figs. 4 and 5); at least one cut slot (11s) extending from the front surface to the rear surface (Figs. 4-6) and providing fluid communication therebetween (Figs. 4-6, ¶s 21 and 27), wherein the at least one cut slot comprises a medial edge (left 12 in Fig. 6, i.e. lower-left edge as shown in Fig. 4, Figs. 4-6), a lateral edge (right 12 in Fig. 6, i.e. upper-right edge as shown in Fig. 4, Figs. 4-6) opposite the medial edge (as defined, Figs. 4-6), an inferior edge (generally linear right edge of 11s as shown in Fig. 4, Figs. 4 and 5) connecting the medial edge and the lateral edge on a first end (right end as shown in Fig. 4, Figs. 4 and 5), and a superior edge (generally linear left edge of 11s as shown in Fig. 4, Figs. 4 and 5) opposite the inferior edge (as defined, Figs. 4 and 5) and connecting the medial edge and the lateral edge on a second end (left end as shown in Fig. 4, Figs. 4 and 5), and wherein the at least one cut slot comprises a horizontal dimension in a portion of the at least one cut slot that extends from the rear portion toward the front portion without the medial edge and the lateral edge (in as much as Applicant’s, due to 14a, Figs. 5 and 6, ¶s 26 and 29); and a pair of projections (see “Projection” on illustration of Fig. 4 and the similar structure on the opposite side/end, Fig. 4) extending laterally from the front portion on opposite ends of the at least one cut slot (Figs. 4 and 5), wherein the at least one cut slot extends entirely between two projections of the pair of projections (as defined, medially-laterally as shown in Fig. 4, Fig. 4 and 5), wherein the pair of projections have a depth (generally vertical as shown in Figs. 4 and 5, Figs. 5 and 5), and wherein the depth of the pair of projections is smaller than a depth of a central portion of the surgical guide where the at least one cut slot is positioned (Figs. 4-6, where Figs. 4-6 show two peg-like structures extending from the central portion of the rear portion that have a greater depth than the projections), wherein each of the pair of projections comprises at least one lobe (see “Lobe” on illustration of Fig. 4 and the similar structure on the opposite side/end, Fig. 4) extending from each projection of the pair of projections (as defined) and wherein the at least one lobe protrudes from a lower portion of each projection of the pair of projections (as defined, Fig. 4).
As to claim 18, Utz discloses that the at least one cut slot comprises: a first cut slot (left most 11 as shown in Fig. 4, Fig. 4) comprising: a first lateral dimension (Figs. 4-6) extending between the medial edge and the lateral edge of the first cut slot (as defined, Figs. 4-6); a first vertical dimension (Figs. 4 and 5) extending between the superior edge and the inferior edge of the first cut slot (as defined, Figs. 4 and 5); and a second cut slot (central 11 as shown in Fig. 4, Fig. 4) disposed below the first cut slot (as defined, Fig. 4) and comprising: a second lateral dimension (Figs. 4-6) extending between the medial edge and the lateral edge of the second cut slot (as defined, Figs. 4-6); a second vertical dimension (Figs. 4 and 5) extending between the superior edge and the inferior edge of the second cut slot (as defined, Figs. 4 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 of this title, 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) 11, 14-16, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Utz.
As to claims 11 and 14-16, Utz discloses the invention of claim 10 and appears to shown that that the first horizontal dimension is equal to the second horizontal dimension (Figs. 4 and 5). As to claim 14, Utz discloses that the depth of the first cut slot is greater than the depth of the second cut slot (due to the projection shown with slants 18 on the front portion in Fig. 5 that define the first slot, due to the central projection on the rear portion shown in Figs. 4 and 5 that defines the second slot, Figs. 4 and 5). As to claim 15, Utz discloses that a portion of the depth of the first cut slot extending from the rear portion towards the front portion does not include the medial edge or the lateral edge (in as much as Applicant’s, due to 14a, Figs. 5 and 6, ¶s 26 and 29). As to claim 16, Utz discloses that a portion of the depth of the second cut slot extending from the rear portion towards the front portion does not include the medial edge or the lateral edge (in as much as Applicant’s, due to 14a, Figs. 5 and 6, ¶s 26 and 29).
Utz is silent to an explicit description that the first horizontal dimension is equal to the second horizontal dimension.
It would have been an obvious matter of design choice to one skilled in the art before the effective filing date of the claimed invention to specify that the horizontal dimension of each of the first and second slots of Utz is equal/the same, since Applicant has not disclosed that such is anything more than one of numerous shapes or configurations a person ordinary skill in the art would find obvious for the purpose of providing a guide for a saw blade (Fig. 6, ¶s 23, 27, and 29).
As to claim 19, Utz discloses a surgical guide (Figs. 4-6; where ¶27 discloses that similar features are shown with like numbering in Fig. 1-3 and described therewith) comprising: a front portion (upper portion as shown in Fig. 4, i.e. lower portion as shown in Fig. 5, Figs. 4 and 5) having a front surface (Fig. 4); a rear portion (lower portion as shown in Fig. 4, i.e. upper portion as shown in Fig. 5, Figs. 4 and 5) opposite the front portion (as defined, Fig. 4) and comprising a rear surface (Fig. 5) opposite the front surface (as defined, Figs. 4 and 5); a first cut slot (left most 11 as shown in Fig. 4, Fig. 4) providing fluid communication between the front surface and the rear surface (Figs. 4-6, ¶s 21 and 27), the first cut slot comprising: a first depth (Figs. 4-6) extending between the front portion and the rear portion (as defined, Figs. 4-6); and a first lateral dimension (Figs. 4-6) extending between a medial edge (left 12 in Fig. 6, i.e. lower-left edge as shown in Fig. 4, Figs. 4-6) and a lateral edge (right 12 in Fig. 6, i.e. upper-right edge as shown in Fig. 4, Figs. 4-6) of the first cut slot (as defined, Figs. 4-6); a second cut slot (central 11 as shown in Fig. 4, Fig. 4) providing fluid communication between the front surface and the rear surface (Figs. 4-6, ¶s 21 and 27), the second cut slot comprising: a second depth (Figs. 4-6) extending between the front portion and the rear portion (as defined, Figs. 4-6); and a second lateral dimension (Figs. 4-6) extending between a medial edge (left 12 in Fig. 6, i.e. lower-left edge as shown in Fig. 4, Figs. 4-6) and a lateral edge (right 12 in Fig. 6, i.e. upper-right edge as shown in Fig. 4, Figs. 4-6) of the second cut slot (as defined, Figs. 4-6); wherein the first depth is greater than the second depth (due to the projection shown with slants 18 on the front portion in Fig. 5 that define the first slot, due to the central projection on the rear portion shown in Figs. 4 and 5 that defines the second slot, Figs. 4 and 5) and the first lateral dimension appears to be equal to the second lateral dimension (Figs. 4 and 5), and a pair of projections (see “Projection” on illustration of Fig. 4 and the similar structure on the opposite side/end, Fig. 4) extending laterally from the front portion on opposite ends of the first and second cut slots (Figs. 4 and 5), wherein the first and second cut slots extend entirely between two projections of the pair of projections (as defined, medially-laterally as shown in Fig. 4, Fig. 4 and 5), wherein the pair of projections have a depth (generally vertical as shown in Figs. 4 and 5, Figs. 5 and 5), and wherein the depth of the pair of projections is smaller than a depth of a central portion of the surgical guide where the first and second cut slots are positioned (Figs. 4-6, where Figs. 4-6 show two peg-like structures extending from the central portion of the rear portion that have a greater depth than the projections), wherein each of the pair of projections comprises at least one lobe (see “Lobe” on illustration of Fig. 4 and the similar structure on the opposite side/end, Fig. 4) extending from a lower portion of each projection of the pair of projections (as defined, Fig. 4);wherein the first cut slot comprises a through hole (see “Aperture” on illustration of Fig. 4 and the similar structure on the opposite side/end, Figs. 4 and 5) extending from the front surface to the rear surface (Figs. 4 and 5), and wherein the second cut slot comprises at least one through hole (see structure shown similar to that labeled “Aperture” on the illustration of Fig. 4 and the similar structure on the opposite side/end, Figs. 4 and 5) extending from the front surface to the rear surface (Figs. 4 and 5).
Utz is silent to an explicit description that the first lateral dimension is equal to the second lateral dimension.
It would have been an obvious matter of design choice to one skilled in the art before the effective filing date of the claimed invention to specify that the first lateral dimension and the second lateral dimension of Utz are equal/the same, since Applicant has not disclosed that such is anything more than one of numerous shapes or configurations a person ordinary skill in the art would find obvious for the purpose of providing a guide for a saw blade (Fig. 6, ¶s 23, 27, and 29).
Conclusion
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/AMY R SIPP/Primary Examiner, Art Unit 3775