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 species B, figs. 4-7 in the reply filed on 15 December 2025 is acknowledged.
Applicant contends claims 1-7, 11, 13, 15-16,18-19 and 21-27 are directed to species B. However, claim 2 recites “a battery location within the external housing, wherein one or more additional elastomeric dampers have a durometer between Shore A 40-100 in the battery location,” wherein such feature is disclosed in paragraph [0150] in regard to elastomeric dampers 108, which are drawn to non-elected species A, figs. 1-3. Claim 11 recites “a counterbalance weight within the external housing to balance the weight of the modular system in a user’s hand,” wherein such feature is disclosed in paragraph [0155] in regard to counterbalance weight 122, which is drawn to non-elected species A, figs. 1-3. Lastly, claim 26 recites multiple limitations (i.e. first and third shaft axes are not colinear with each and are not parallel with each other) introducing new matter that was not disclosed in the originally filed specification and drawings and is not part of elected species B, thus making the limitations drawn to an optional embodiment not elected by applicant. For such reasons, claims 2, 11 and 26 are not drawn to elected species B.
Claims 2, 11 and 26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 15 December 2025.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 19: --a-- should be added between “of” and “drive”.
Claim 1, line 25: --and-- should be added after “;”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1, 3-7, 13, 15, 16, 18, 19 and 27 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, line 19 recites “about an exterior of drive motor.” It is unclear if the “drive motor” of line 19 is the same as or different than the “motor” previously recited in line 4 of claim 1. Looking to applicant’s disclosure for elected species B, figs. 4-7, it appears there is only one motor 202; therefore, the claim will be interpreted in that the drive motor of line 19 and the motor of line 4 are the same. A further clarifying amendment is required.
Claim 16 recites “further comprising an attachment receiver coupled to the second drive shaft for receiving and capturing modular attachments used for performing surgical procedures.” It is unclear if the “attachment receiver” of claim 16 is the same as or different than the “attachment receiver” previously recited in claim 6 (from which claim 16 depends). Looking to applicant’s disclosure for elected species B, figs. 4-7, it appears there is only one attachment receiver 215; therefore, the “attachment receiver” of claim 16 will be interpreted to be the same as the “attachment receiver” in claim 6. A further clarifying amendment is required.
Based upon the withdrawal of claim 26 above, claim 27 currently depends from a withdrawn claim. For examination purposes, claim 27 will be interpreted as depending from claim 21.
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.
Claim(s) 1, 3, 6, 13, 15, 16, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stritch, U.S. PG-Pub 2019/0298404 in view of Kraenzler et al., U.S. Patent 6,810,970.
Regarding claim 1, Stritch discloses a modular system comprising: a limited-use battery-operated orthopedic hand tool (30) having modular internal components, said modular internal components comprising: a motor (60) providing rotational output; an internal drive mechanism comprising: a first motor output drive shaft (68); a motor shaft coupling (120); a second output shaft (112); and at least one drive shaft bearing (bearing 70 surrounding 68); a support of the second output shaft (bearing 70 surrounding 112); support bearings (bearings 70 surrounding 104); a handle grip (portion of housing 44 between trigger 56 and battery 54); a trigger mechanism (56) to control the motor; a control processor; and a battery (54) (Figs. 2, 4 and 5 and paragraph [0104]).
Stritch does not disclose one or more elastomeric dampers selected from the group consisting of: a damper fitted: about a support of the second output shaft; around a support bearing or bearings; about sides of the support bearing or bearings; around the support bearing and motor; anywhere around an exterior of the support bearings and motor and within an external housing of the battery-operated orthopedic hand tool; about an exterior body of a drive motor; about or near an end of the drive motor; and anywhere about a drive motor housing that includes the drive motor.
Kraenzler et al. discloses a powered hand tool having a support bearing (32) with an elastomeric damper (rubber ring 38) around/about a side of the bearing and about output shaft (14) (Fig. 1 and Col. 4, lines 23-24) as such advantageously dampens the drive shaft to compensate for vibrations or impacts and to compensate for tolerances (Col. 1, lines 50-57).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the support bearings of Stritch to have an elastomeric damper fitted about/around sides of the support bearings and the second output shaft in view of Kraenzler et al. to permit dampening to compensate for vibrations or impacts to the tool and to compensate for tolerances within the tool.
Regarding claim 3, Stritch further comprises a drive mechanism shroud (88) surrounding to internal drive mechanism (Fig. 4).
Regarding claims 6 and 16, Stritch further comprises a second drive shaft (104) configured at a different orientation to the first motor output drive shaft (68) (104 is orthogonal to 68); at least one bearing (70) on the second drive shaft (104); and an attachment receiver (46) coupled to the second drive shaft for receiving and capturing modular attachments used for performing surgical procedures (Fig. 4).
Stritch does not disclose wherein the second drive shaft and the at least one bearing on the second drive shaft further comprise elastomeric damping features.
Kraenzler et al. discloses a powered hand tool having a support bearing (32) with an elastomeric damper (rubber ring 38) around/about a side of the bearing and about output shaft (14) (Fig. 1 and Col. 4, lines 23-24) as such advantageously dampens the drive shaft to compensate for vibrations or impacts and to compensate for tolerances (Col. 1, lines 50-57).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the at least one bearing on the second drive shaft of Stritch to have an elastomeric damping feature in view of Kraenzler et al. to permit dampening to compensate for vibrations or impacts to the tool and to compensate for tolerances within the tool.
Regarding claim 13, Stritch discloses wherein the battery-operated orthopedic hand tool is a reciprocating saw (paragraph [0058]); or an oscillating saw (paragraph [0042]).
Regarding claim 15, Stritch discloses wherein the second output shaft (112) is an offset shaft (axis of 112 is offset from axis of 68) (Figs. 4-5).
Regarding claim 18, Stritch discloses wherein the attachment receiver (46) is configured to receive cutting attachments (38) (Fig. 4).
Regarding claim 19, Stritch further comprises a drive mechanism shroud (88) surrounding the internal drive mechanism, wherein the motor (60), the internal drive mechanism, the shroud (88); an external housing (44) comprising the handle grip (portion of housing 44 between trigger 56 and battery 54); the trigger mechanism (56) and the attachment receiver (46) are configurable as modular components (Figs. 2 and 4).
Claim(s) 4, 5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stritch, U.S. PG-Pub 2019/0298404 in view of Kraenzler et al., U.S. Patent 6,810,970 as applied above, and further in view of Haider et al., U.S. PG-Pub 2016/0022374.
Regarding claims 4, 5, and 7, Stritch as modified in view of Kraenzler et al., see claim 1 above, discloses wherein the drive mechanism shroud (88) and the drive mechanism internally and externally to various components (i.e. shafts 68, 112 with support bearings 70) has one or more elastomeric dampers.
Stritch in view of Kraenzler et al. does not explicitly disclose the elastomeric dampers having a durometer between Shore A 0-60 or 60-100.
Haider et al. discloses elastomer dampers made of materials for vibration damping, such as silicone, neoprene and nitrile (paragraph [1288]) which are same materials disclosed by applicant’s paragraph [0135]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the elastomeric dampers of Stritch in view of Kraenzler et al. to be made of silicone, neoprene, or nitrile such that the elastomeric dampers have a durometer between Shore A 0-60 or 60-100 further in view of Haider et al. as such materials are well-known for use as vibration dampers.
Claim(s) 21, 25 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carusillo et al., U.S. PG-Pub 2006/0009796 in view of Kraenzler et al., U.S. Patent 6,810,970 and Viola et al., U.S. PG-Pub 2022/0273315.
Regarding claim 21, Carusillo et al. discloses an oscillating saw comprising: a first housing (24); a motor (30) within the first housing; a linkage (72); a first shaft (48) coupling the motor to the linkage, the first shaft including a central first axis that intersects the motor; a second shaft (50) coupled to the linkage, the second shaft having a central axis that is orthogonal to the first axis (50 is orthogonal to 48); a first bearing (68), wherein the second axis passes through the first bearing (Figs. 1-3).
Carusillo et al. does not disclose an elastomeric first ring surrounding the first bearing and directly contacting the first bearing.
Kraenzler et al. discloses a powered hand tool having a bearing (32) with an elastomeric damper ring (rubber ring 38), wherein an axis of shaft 14 passes through the first bearing and wherein the elastomeric damper ring surrounds the bearing and directly contacts the bearing (Fig. 1 and Col. 4, lines 23-24) as such advantageously dampens the drive shaft to compensate for vibrations or impacts and to compensate for tolerances (Col. 1, lines 50-57).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the first bearing of Carusillo et al. to have an elastomeric damper ring surrounding the first bearing and directly contacting the first bearing in view of Kraenzler et al. to permit dampening to compensate for vibrations or impacts to the tool and to compensate for tolerances within the tool.
Carusillo et al. also does not explicitly disclose the oscillating saw being sterile.
Viola et al. discloses an orthopedic saw must be sterile (paragraph [0005]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the oscillating saw of Carusillo et al. to be sterile in view of Viola et al. to permit avoiding an infection within a patient during surgery.
Regarding claim 25, Carusillo et al. discloses wherein the linkage (72) is forked and includes opposing first and second tines (end of 72 which engages the outside of 80) (Fig. 2).
Regarding claim 27, Carusillo et al. discloses wherein the motor is configurable to drive the second shaft between 7,000-14,000 oscillations per minute (OPM) (paragraph [0104]).
Claim(s) 22-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carusillo et al., U.S. PG-Pub 2006/0009796 in view of Kraenzler et al., U.S. Patent 6,810,970 and Viola et al., U.S. PG-Pub 2022/0273315 as applied above, and further in view of Klinzing et al., U.S. Patent 5,697,158.
Regarding claims 22-24, Carusillo et al. discloses a second housing (38), wherein a first plane (imaginary plane that cuts housings 38 and 24 into equal, symmetrical halves) is orthogonal to the first axis; the first plane intersects the first and second housings; and wherein the first and second housings are separable from one another (Figs. 1-2).
Carusillo et al. does not disclose an elastomeric second ring directly contacting the second housing, and the second ring is inside the first housing but outside the second housing and an elastomeric third ring surrounding the linkage and inside the second housing.
Klinzing et al. discloses an oscillating saw having elastomeric rings (e.g. 211 and 213) inside and outside of various housing portions and surrounding various internal parts (Fig. 8) the elastomeric rings providing fluid isolation and vibration dampening (Col. 11 lines 48-49).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second housings of Carusillo et al. to have second and third elastomeric rings further in view of Klinzing et al. to permit providing fluid isolation and vibration dampening.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric Gibson whose telephone number is (571)270-5274. The examiner can normally be reached Monday-Thursday ~6:00 A.M. to 4:00 P.M. (CST).
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571) 272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC S GIBSON/ Primary Examiner, Art Unit 3775