Detailed Action
This office action is for US application number 18/504,511 evaluates the claims as filed on December 11, 2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 26, 2025 and December 11, 2025 has been entered.
Response to Arguments
Applicant's arguments filed December 11, 2025 have been fully considered but they are not persuasive. The rejections in this office action have been amended to address the amended claims. Examiner asserts that Honiball, Siegler, and Chao teach all the newly-amended limitations and are capable of performing the functions as claimed. Examiner directs Applicant to the rejection below for a more in-depth description of the limitations.
With regards to Applicant’s statement that Claims 1-4 and 6-17 stand rejected prior to entry of this response (Remarks p. 6), Examiner notes that this is incorrect. Review of the final office action dated September 11, 2025 shows that claims 4, 10, and 17 were previously objected to as allowable if rewritten in independent form.
With regards to Applicant’s statement that an IDS was previously submitted on November 26, 2025 (Remarks p. 6), Examiner notes that this is the first office action since that filing and thus such has been appropriately reviewed at this time.
With regards to Applicant’s argument that a request for continued examination was filed with an IDS November 26, 2025 and does not believe an additional request is needed for consideration of the current amendments and arguments dated December 11, 2025 in the file wrapper (Remarks p. 6), Examiner notes that an additional request is not required. To be clear, per MPEP 706.07(h)(II) “If a reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of 37 CFR 1.111. See 37 CFR 1.114(c). Thus, an applicant may file a submission under 37 CFR 1.114 containing only an information disclosure statement (37 CFR 1.97 and 1.98 ) in an application subject to a notice of allowance under 35 U.S.C. 151, but not in an application where the last Office action is a final rejection….”. Thus, the request for continued examination in response to the final office action dated September 11, 2025 was not deemed proper until the filing of the amendment/reply December 11, 2025 and was then forwarded to the examiner for consideration of the amendment/reply under 37 CFR 1.111.
With regards to Applicant’s argument that “interface” is a term of art that is well known to mean a physical connection point where two components meet, transmit forces, control movement, etc. and may include mating surfaces, shafts, flanges, etc. to allow for controlled interaction between two components; thus, as used in the specification and claims the various “interfaces” are not generic but are specific features of the guides that allow for controlled interaction that, for example, are contoured to interact with patient-specific anatomy to provide secure, consistent interaction and are not generic but tangible structural features (Remarks p. 7), Examiner notes that there Appears to be some confusion regarding interpretation under 35 USC 112f reflected by this argument. As an initial matter, Examiner notes that it has not been asserted that any of the claimed interfaces are generic or that their disclosure is unclear. Applicant’s own argument asserts that the claimed interfaces may include a physical connection point, mating surfaces, shafts, flanges, etc. to allow for controlled interaction between two components. That is, by Applicant’s own admission interfaces may include many different structures that provide a function; thus, “interfaces” has been appropriately interpreted as a generic placeholder, i.e. has no specific structural meaning. As this appears to be an ongoing point of confusion, Examiner notes that MPEP 2181 provides information on identifying and interpreting a 35 USC 112f limitation. Examiner also notes that if there is a specific structure that Applicant’s intends for “interface to refer to, Applicant may amend to claim that structure or a structural feature thereof in order for the claimed limitation to be interpreted based on a broadest reasonable interpretation, which is described in MPEP 2111.
With regards to Applicant’s argument that Honiball does not disclose that instruments recited in the independent claims as the second instrument/block 20.2 does not contact the patient’s bone and is not a patient specific component but merely defines a cutting slot (Remarks p. 7-8), Examiner notes that claim 13 does not require the second instrument to contact or be able to contact bone as argued. Further, Honiball p. 11 lines 18-26 discloses that there is flexibility in providing differently configured blocks/instruments for 20.2 that each have a differently positioned cutting guide slot/aperture. Thus, Honiball’s second instrument/block 20.2 is patient specific in that the appropriately configured block is selected by the surgeon (p. 11 lines 18-26). That is, the surgeon selects a block that is appropriate to the specific patient.
Information Disclosure Statement
The information disclosure statement filed November 26, 2025 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. That is, page 9 of the IDS indicates that no size fee is required at this time under 37 CFR 1.17(v). However, the November 26, 2025 IDS includes 32 US patents, 22 US PG Publications, 7 foreign patent documents, and 14 non-patent literature documents, which is 75 documents. There were also 84 pages of IDSes dated February 2, 2024, February 16, 2024, January 10, 2025, and August 25, 2025. Thus, the cumulative number of items cited by Applicant is substantially more than the minimum amount at which a fee would be due. For additional information regarding the IDS size fee and assertion, the Office has frequently asked questions available: https://www.uspto.gov/sites/default/files/documents/quick-reference-guide-to-the-information-disclosure-statement-ids.pdf
From the above noted frequently asked questions document:
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The information disclosure statement filed November 26, 2025 fails to comply with the provisions of 37 CFR 1.97(a) because it lacks the appropriate size fee set forth in 37 CFR 1.17(v). It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
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 17, the specification appears to lack proper antecedent basis for “the second surgical instrument remains in contact with a tibia of the patient” of lines 2-3. That is, Applicant has claimed interfaces configured to contact a first bone (claim 13 line 5) and a second bone (claim 13 line 6) and remaining in contact with a tibia (claim 17 lines 2-3), i.e. 3 bones. However, Applicant appears to have only disclosed devices that contact a tibia and a talus, i.e. a total of 2 bones. Thus, the specification fails to provide proper antecedent basis for “the second surgical instrument remains in contact with a tibia of the patient” of claim 17 lines 2-3.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the second surgical instrument that has a third bone contact interface, is patient specific, and comprises an adjustable mechanism of claims 2-4 and 6; the second surgical instrument that has a third bone contact interface, is patient specific, and comprises an adjustable mechanism of claims 11 and 12; and the second surgical instrument that is patient specific and comprises an adjustable mechanism of claim 14 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “a first bone contact interface” in claim 1 line 3, “a second bone contact interface” in claim 1 line 4, “a first connection interface” in claim 1 line 6, “a third bone contact interface” in claim 1 line 8, “second a connection interface” in claim 1 line 9; “an adjustable mechanism” in claim 2 line 2; “at least two adjustable mechanisms” in claim 3 line 2; “external guiding elements” in claim 6 lines 2-3; “a first bone contact interface” in claim 9 line 3, “a second bone contact interface” in claim 9 line 4, “a first connection interface” in claim 9 line 6, “a third bone contact interface” in claim 9 line 9, “second a connection interface” in claim 9 line 11, “a third connection interface” in claim 10 line 3; “an adjustable mechanism” in claim 11 line 2; “at least two adjustable mechanisms” in claim 12 line 2; “a first bone contact interface” in claim 13 line 5, “a second bone contact interface” in claim 13 line 6, “a first connection interface” in claim 13 line 8, “an adjustable mechanism” in claim 14 lines 2-3; “a second connection interface” in claim 15 line 2, and “a third connection interface” in claim 15 line 3.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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) 17 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 17, “the second surgical instrument remains in contact with a tibia of the patient” of lines 2-3 appears to be new matter. That is, Applicant has claimed interfaces configured to contact a first bone (claim 13 line 5) and a second bone (claim 13 line 6) and remaining in contact with a tibia (claim 17 lines 2-3), i.e. 3 bones. However, Applicant appears to have only disclosed devices that contact a tibia and a talus, i.e. a total of 2 bones. Thus, “the second surgical instrument remains in contact with a tibia of the patient” of claim 17 lines 2-3 constitutes new matter.
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) 17 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) 17 is/are unclear with regards to “the second surgical instrument remains in contact with a tibia of the patient” in lines 2-3 and how an instrument that has not been claimed to be in contact with a tibia can be reasonably claimed to remain in contact with a tibia. Examiner is interpreting this broadly and suggests amending to clarify.
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) 13-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Honiball (WO 2014/020561 as provided with the PTO-892 dated March 25, 2025).
As to claim 13, Honiball discloses a method of aligning surgical instruments relative to a patient (Figs. 5-8, p. 7 line 26 – page 8 line 6 and p. 8 lines 8-19), the method comprising: providing a first surgical instrument (20.1) and a second surgical instrument (20.2, Figs. 5 and 8, p. 9 lines 20-22, p. 11 lines 19-26), the first surgical instrument including a first bone contact interface (16) capable of contacting a first bone of a patient (12, Fig. 8, p. 7 line 26 – page 8 line 6), a second bone contact interface (25) capable of contacting a second bone of the patient (14, Fig. 8, p. 8 lines 8-19), and a first connection interface (opening forming dovetail joint 27, Figs. 5 and 8, p. 9 lines 20-22) capable of mechanically linking the first surgical instrument with the second surgical instrument (20.2, Figs. 5 and 8, p. 9 lines 20-22, p. 11 lines 19-26), connecting the first surgical instrument with the second surgical instrument (20.2, Figs. 5 and 8, p. 9 lines 20-22, p. 11 lines 19-26), and arranging the first surgical instrument and the second surgical instrument in contact with the first bone of the patient (Fig. 8, page 10 lines 16-20); and removing the first surgical instrument from the second surgical instrument (p. 11 lines 19-26), wherein the first surgical instrument is patient-specific (at 16 and 25, Fig. 8, p. 7 line 26 – page 8 line 18) and the second surgical instrument is patient specific (Fig. 8; p. 11 lines 18-26 disclose the flexibility of providing differently configured blocks/instruments for 20.2 from which the surgeon can select an appropriate one and mount via the dove tail joint where each blocks/instrument 20.2 has a differently positioned cutting guide slot/aperture, i.e. appropriate to the specific patient).
As to claim 14, Honiball discloses that the second surgical instrument comprises an aperture (46) for guiding a third surgical instrument (Figs. 5 and 8, p. 10 lines 10-12), and an adjustable mechanism (differently configured blocks with different positions of 46 of p. 11 lines 19-25. p. 11 lines 19-25) capable of repositioning the aperture relative to an anatomy of the patient (p. 11 lines 19-25).
As to claim 15, Honiball discloses that the second surgical instrument comprises a second connection interface (protrusion forming dovetail joint 27, Figs. 5 and 8, p. 9 lines 20-22, p. 11 lines 19-26) capable of selectively engaging with both the first connection interface of the first surgical instrument and a third connection interface of a third surgical instrument (if one chooses to use it as such due to the shown structure of the dovetail joint protrusion, Fig. 5 and 8).
As to claim 16, Honiball discloses that the first connection interface is at least partially defined on an outer end surface of the first surgical instrument (Fig. 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) 1-4, 6, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Siegler (US 2020/0085452) in view of Chao (US 2013/0296874).
As to claims 1-4, 6, and 8, Siegler discloses a surgical guide (Figs. 6A, 6B, and 9A-9C, ¶s 103, 104, and 111) comprising: a first surgical instrument (110, 120, Figs. 6A and 6B) comprising: a first bone contact interface (surface of 110 shown with a grid pattern in Fig. 6A, Fig. 6A, abstract) capable of contacting a first bone of a patient (Fig. 6A, ¶104, i.e. as shown in Figs. 4 and 5 and disclosed in ¶102 for an alternate embodiment), and a second bone contact interface (surface of 120 shown with a grid pattern in Fig. 6A, Fig. 6A, abstract) capable of contacting a second bone of the patient (Fig. 6A, ¶103, i.e. as shown in Figs. 4 and 5 and disclosed in ¶102 for an alternate embodiment), and a first connection interface (130 and portion of 120 adjacent 130, Figs. 6A and 6B); and a second surgical instrument (150, Figs. 9A-9C) comprising: a third bone facing surface (rear surface of 150 as best shown in Fig. 9B, Fig. 9B) capable of facing the second bone of the patient (Figs. 9A-9C, ¶103, i.e. as shown in Figs. 4 and 5 and disclosed in ¶102 for an alternate embodiment), a second connection interface (outer perimeter surfaces of 150 as shown in Figs. 9A-9C, Figs. 9A-9C) capable of selectively engaging with the first connection interface (Figs. 9A-9C, ¶111), and an aperture (opening shown in the central portion of 150 in Figs. 9A-9C, Figs. 9A-9C, ¶111 discloses that 150 is a cutting guide used in cutting, sawing, or other procedure) capable of guiding a third surgical instrument (instrument used to perform the cutting, sawing, or other procedure with guide 150 in ¶111, ¶111), wherein the first surgical instrument is patient-specific (Fig. 6A, abstract). As to claim 2, Siegler discloses that the second surgical instrument further comprises an adjustable mechanism capable of repositioning the aperture relative to the first bone of the patient (Figs. 9A-9C, ¶111). As to claim 3, Siegler discloses that the adjustable mechanism includes at least two adjustable mechanisms capable of repositioning the aperture (Figs. 9A-9C, ¶111). As to claim 6, Siegler discloses that the first surgical instrument and the second surgical instrument are capable of being positioned relative to the patient without any external guiding elements (due to the bone contacting interfaces contouring with the bone anatomy, Fig. 6a, ¶111). As to claim 8, Siegler discloses that the first surgical instrument is capable of contacting a tibia and a talus of the patient such that the first surgical instrument is oriented in a predetermined manner (Fig. 6A, ¶103).
Siegler is silent to the third bone facing surface being a third bone contact interface configured to contact the second bone of the patient and that the second surgical instrument is patient specific. As to claim 4, Siegler is silent to the at least two adjustable mechanisms are configured to reposition the aperture in two distinct planes that are oriented 90 degrees relative to each other.
Chao teaches a similar surgical guide (Figs. 1-11, 14-16C, and 18-23) comprising: a first surgical instrument (25, Figs. 1-7, 16A-16C, and 18-23) comprising: a first bone contact interface (70, 190, ¶s 55 and 58) capable of contacting a first bone portion of a patient (Figs. 18-23, ¶s 55 and 58), and a second bone contact interface (120, 190, Figs. 2 and 5, ¶s 55 and 58) capable of contacting a second bone portion of the patient (Figs. 18-23, ¶s 55 and 58), and a first connection interface (130 and the opening 130 is shown positioned within in Figs. 3, 4, and 16A-16C, Figs. 3, 4, and 16A-16C); and a second surgical instrument (guide box of ¶61, Figs. 8A-11, 14-16C, 19, and 22) comprising: a third bone contact interface (surface with 290 label in Fig. 10, i.e. central portion of the rear surface of the guide box as shown in Fig. 14, Figs. 9, 10, and 14, ¶s 58, 62, and 74) capable of contacting the second bone of the patient (Figs. 8A-10, 14-16B, 19, and 22, ¶s 58, 62, and 74), a second connection interface (dovetail slot/groove 260 of Fig. 9, i.e. shown in Figs. 16A-16C receiving 130 and peripheral walls of the guide box, Figs. 8A-11, 14-16C, 19, and 22, ¶62) capable of selectively engaging with the first connection interface (Figs. 16A-16B, 19, and 22, ¶s 56 and 62), and an aperture (cutting guide slot of ¶81, i.e. openings shown in Figs. 8A-8C, ¶s 61 and 81, where ¶61 discloses use to cut the tibia) capable of guiding a third surgical instrument (reciprocating saw or similar cutting device of ¶81, i.e. tool used to cut the tibia, ¶s 61 and 81, where ¶61 discloses cutting the tibia and ¶81 discloses cutting the tibia with a reciprocating saw or similar cutting device fitted through a cutting guide slot of the guide box), wherein the first surgical instrument is patient-specific (Figs. 16A-16B, 19, and 22, ¶s 8, 45, 55, and 58) and the second surgical instrument is patient specific (Figs. 8A-10, 14-16A, 19, and 22, ¶s 9, 46, 58, 62, 65-66, 73, and 74). As to claim 2, Chao teaches that the second surgical instrument further comprises an adjustable mechanism capable of repositioning the aperture relative to the first bone of the patient (Figs. 8A-8C, ¶61). As to claim 3, Chao teaches that the adjustable mechanism includes at least two adjustable mechanisms capable of repositioning the aperture (Figs. 8A-8C, ¶61). As to claim 4, Chao teaches that the at least two adjustable mechanisms are capable of repositioning the aperture in two distinct planes that are oriented 90 degrees relative to each other (¶s 64, 66, and 68).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify/specify the third bone facing surface and the second surgical instrument as disclosed by Siegler to contact the second bone of the patient and be patient specific as taught by Chao in order to easily mate with the surface of the bone (Chao ¶46), to achieve the degree of deformity correction necessary for desired alignment (Chao ¶68), for example with varus/valgus deformities/angles (Chao ¶s 64 and 66), and to fit a cutting device through a cutting guide slot to cut the bone (Chao Figs. 18-23, ¶81) in a known and stable manner.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 9-12 are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY R SIPP whose telephone number is (313)446-6553. The examiner can normally be reached on Mon - Thurs 6-4.
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/AMY R SIPP/Primary Examiner, Art Unit 3775