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 II, claims 11-20 in the reply filed on 08 July 2025 is acknowledged.
Claims 1-10 and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group I, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08 July 2025.
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) 11-15, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shalayev et al., U.S. PG-Pub 2017/0258532 in view of Zhou et al., U.S. PG-Pub 2018/0185052.
Regarding claim 11, Shalayev et al. discloses a surgical computing device comprising a non-transitory computer-readable medium comprising programmed instructions stored thereon for facilitating resection during a surgical procedure and one or more processors coupled to the non-transitory computer-readable medium and configured to execute the stored programmed instructions to: determine a resection plane for resecting patient anatomy based on a preoperative surgical plane (paragraphs [0031] and [0034]-[0035]; track a position and orientation of a surgical resection device (101) during a surgical procedure, wherein the surgical resection device comprises a resection tool (103 is disclosed as alternatively being a saw), a motor configured to rotate the resection tool about a first axis (longitudinal axis of 103), and at least two linear actuators (106 including portions housed within 105) independently drivable to translate the resection tool within a second axis (longitudinal axes of actuators 106) and rotate the resection tool about a third axis (pivot axis of 107); drive one or more of the motor or one or more of the at least two linear actuators to align a portion of the resection tool with the resection plane based on the tracked position and orientation; and control a position of the portion of the resection tool in a direction of the first axis, or a speed of the portion of the resection tool, based on the tracked position and orientation during resection of the patient anatomy (Figs. 3-4 and paragraphs [0030] and [0033]-[0035]).
Shalayev et al. does not disclose the resection tool rotated about the axis such that an element of the resection tool is movable to a fixed position around the first axis to allow a plurality of cut angles with respect to rotation of the motor.
Zhou et al. discloses an oscillating saw with a motor that causes oscillation tangentially to the longitudinal axis, wherein the oscillation may be moved between different ranges of degrees to alter the oscillation angle of the device (which appears to be the same way applicant is achieving the plurality of cut angles in applicant’s paragraph [0092]) in order to provide more device control (paragraphs [0011]-[0012]).
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 motor and resection tool of Shalayev et al. such that the resection tool is rotated about the axis such that an element of the resection tool is movable to a fixed position around the first axis to allow a plurality of cut angles with respect to rotation of the motor in view of Zhou et al. to permit providing more device control during use in a surgery.
Regarding claim 12, Shalayev et al. discloses wherein the resection tool (103) comprises a surgical saw, wherein the portion of the surgical saw comprises a saw blade (Fig. 3 and paragraphs [0030], [0033]).
Regarding claims 13-15, Shalayev et al. discloses wherein the one or more processors are further configured to execute the stored programmed instructions to initiate oscillation of the saw blade when an alignment of the saw blade with the resection plane is determined to be achieved based on the tracked position and orientation, to enable or disable oscillation of the saw blade to control the position of the saw blade in the direction of the first axis, and to extend or limit oscillation of the saw blade to control the position of the saw blade in the direction of the first axis (paragraphs [0034]-[0035] and [0064]).
Regarding claim 18, Shalayev et al. discloses wherein the one or more processors are further configured to execute the stored programmed instructions to track the position and orientation relative to the patient anatomy based on a first optical tracking device (104) coupled to the surgical resection device and a second optical tracking device coupled to the patient anatomy, wherein each of the first and second optical tracking devices comprises a plurality of fiducials (Fig. 3 and paragraphs [0036]-[0037]).
Regarding claim 19, Shalayev et al. wherein the resection tool (103) comprises a burr, wherein the processors are further configured to execute the stored programmed instructions to initiate rotation of the burr when an alignment of the burr with the resection plane is determined to be achieved based on the tracked position and orientation (Fig. 3 and paragraphs [0030], [0034], [0035], [0064]).
Claim(s) 16 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shalayev et al., U.S. PG-Pub 2017/0258532 in view of Zhou et al., U.S. PG-Pub 2018/0185052 as applied above, and further in view of Nikou, WO 2011/133927.
Regarding claims 16 and 20, Shalayev et al. discloses the invention essentially as claimed except for wherein the one or more processors are configured to retract the saw blade/burr into, or extend the saw blade/burr from, a sleeve disposed within a static housing of the surgical resection device to control the position of the saw blade/burr in the direction of the first axis to control an exposure of saw blade/burr.
Nikou discloses a surgical computing device having processors to retract/extend a resection tool (22) from a sleeve (26, 52) within a static housing to control a position of the resection tool in a direction of a longitudinal axis of the resection device and to control an exposure (Figs. 2 and 6-7) in order to control exposure of the resection device relative to bone being cut (paragraph [0054]).
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 processor of Shalayev et al. to be further configured to execute programmed instructions to extend or retract the saw blade/burr form a sleeve within a static housing in the direction of the first axis further in view of Nikou to permit controlling exposure of the saw blade/burr relative to bone being cut.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shalayev et al., U.S. PG-Pub 2017/0258532 in view of Zhou et al., U.S. PG-Pub 2018/0185052 and Nikou, WO 2011/133927 as applied above, and further in view of Torrie et al., U.S. PG-Pub 2016/0199072.
Regarding claim 17, Shalayev et al. discloses wherein the resection tool (103) and the motor are disposed proximate opposing ends of the static housing (102) and interface within the static housing and the processors are configured to drive the motor to rotate the resection tool about the first axis (Fig. 3).
Shalayev et al. does not disclose the interface within the housing being an annular gear of the resection tool and a pinion gear of the motor.
Torrie et al. discloses a resection device having a motor (84) with a pinion gear (86) and a cutting tool with an annular gear (88) that engage to cause rotation (Fig. 21a) as such is well-known for causing rotation between a motor and a cutting tool (paragraph [0071]).
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 resection tool and motor of Shalayev et al. such that the resection tool has an annular gear and the motor has a pinion gear further in view of Torrie et al. as such is a well-known means for causing rotation of a resection tool by a motor.
Response to Arguments
Applicant’s arguments, see Remarks, filed 27 January 2026, with respect to the rejection(s) of claim(s) 11 under 35 U.S.C. 102(a)(1) and 102(a)(2) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103 to Shalayev et al., U.S. PG-Pub 2017/0258532 in view of Zhou et al., U.S. PG-Pub 2018/0185052.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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