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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/488,464, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Provisional application 63/488,464 does not disclose:
(claim 1) an angled edge portion extending at an angle between the first side edge portion and the bottom edge section
(claim 17) a transition edge portion between the top edge section and the side edge portion, wherein the first profile includes a curved portion, a flat portion, and a transition portion, wherein the curved portion of the first profile defines a convex outer surface of the body, wherein the transition portion of the first profile defines a concave outer surface of the body, and wherein the second profile defines a continuously convex outer surface of the body;
(claim 18) making a first incision on a medial side of an ankle area of a patient and inserting a retractor device into the patient via the [medial] first incision and inserting via a second incision on an anterior side of the ankle a surgical instrument
Accordingly, the effective filing date for claims 1-20 is 3/4/2024.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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) 17 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ozaki (US Publication No. 2024/0164764 A1).
Regarding Claim 17, Ozaki discloses a surgical retractor device (R6, Fig. 26A-D) comprising: a body (601 which has the same shape as R5, Fig. 25A-E) defining:
a first profile within a first plane (A-A shown in Fig. 25E);
a second profile within a second plane perpendicular to the first plane (B-B shown in Fig. 25D);
a top edge section (see figure below);
a side edge portion substantially perpendicular to the top edge section (see figure below); and
a transition edge portion between the top edge section and the side edge portion (see figure below),
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wherein the first profile (A-A shown in Fig. 25E) includes a curved portion, a flat portion, and a transition portion, wherein the curved portion of the first profile defines a convex outer surface of the body, wherein the transition portion of the first profile defines a concave outer surface of the body (see figure below), and
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wherein the second profile (B-B shown in Fig. 25D) defines a continuously convex outer surface of the body; and
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a handle extending from at least one of the top edge section, the transition edge portion, or the side edge portion (as shown in R6 (which is R5 with a handle), the hole 501 in the retractor is replaced with a handle 602A/602B9 which is extending from the top edge section, Fig. 26D, [0082]).
Claim(s) 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stoops et al. (“Posteromedial Accessory Incision for Posterior Capsular Release and Retractor Placement in a Total Ankle Replacement”, published 2/9/2022).
Regarding Claim 18, Stoops discloses a method of performing a total ankle replacement surgery comprising:
making a first incision on a medial side of an ankle area of a patient (shown in Fig. 3 and 5);
inserting a retractor device into the patient via the first incision (fig. 5), the retractor device including a handle (part that is gripped) and a body (remainder of retractor) having an outer convex surface (shown in Fig. 5, can also be seen in radiograph of Fig. 6);
adjusting a position of the retractor device towards a posterior side of a talus of the patient (“PTT is then retracted posteriorly” Page 734); and
inserting via a second incision on an anterior side of the ankle area of the patient a surgical instrument to perform a surgical procedure involving at least one of a calcaneus or the talus of the patient (page 734, see discussion of “attention is then turned back to the anterior ankle”, further, the second anterior incision can be seen in Fig. 3 and 5).
Claim(s) 1- 7, 11-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Greiwe (US Publication No. 2018/0064547 A1).
Regarding Claim 1, Greiwe discloses a surgical retractor device (Fig. 12) [0120], comprising: a body (shown in Figure below) having one or more curved profiles with an outer convex surface and including a peripheral edge, wherein the peripheral edge of the body includes: a top edge section of the peripheral edge including a first top edge portion and a second top edge portion; a first side edge portion substantially perpendicular to the first top edge portion; a first transition edge portion between the first top edge portion and the first side edge portion, the first transition edge portion defining a first radius; a bottom edge section; an angled edge portion extending at an angle between the first side edge portion and the bottom edge section; a second side edge portion opposite the first side edge portion and substantially perpendicular to the second top edge portion; and a second transition edge portion between the second top edge portion and the second side edge portion, the second transition edge portion defining a second radius, wherein the second radius of the second transition edge portion is larger than the first radius of the first transition edge portion (see figure below) ; and
a handle (410+418) having a proximal end (free end) and a distal end (end attached to body shown below), the distal end of the handle extending from the top edge section (at location shown in figure below shown in Fig. 12).
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Regarding Claim 2, the handle extends from the at least one of the top edge section, the first transition edge portion, or the first side edge portion at an angle relative to the body (fig. 12, handle portion 418 extends at an angle) [0120].
Regarding Claim 3, the handle includes a first handle portion (410) and a second handle portion (418) extending at an angle from the first handle portion (Fig. 12), the second handle portion (418) extending from the top edge section (see figure above).
Regarding Claim 4, the body is asymmetrical across a central axis, see figure below).
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Regarding Claim 5, the one or more curved profiles defined by the body include a first profile within a first plane and a second profile in a second plane perpendicular to the first plane (see figures below).
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Regarding Claim 6, the first profile includes a curved portion, a flat portion, and a transition portion (see figure below).
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Regarding Claim 7, the curved portion of the first profile defines a convex outer surface of the body (shown above).
Regarding Claim 11, the second profile defines a convex outer surface of the body (see below).
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Regarding Claim 12, the second profile extends within the second plane between (i) the first side edge portion or the angled edge portion and (ii) the second transition edge portion or the second side edge portion of the peripheral edge of the body (see figures below).
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Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greiwe (US Publication No. 2018/0064547 A1) in view of Ghiassi et al. (US Publication No. 2024/0148372 A1).
Greiwe discloses the surgical retractor device of claim 1 as described in the rejection above, but is silent to the material of the body.
Ghiassi discloses a surgical retractor in the analogous art of orthopedic retractor systems which comprises a radiolucent material retractor for the purpose of enabling bone imaging through the retractors during the procedure [0023]. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify use a material for the retractor of Greiwe which is radiolucent as taught by Ghiassi in order to enable bone imaging through the retractors during the procedure.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greiwe (US Publication No. 2018/0064547 A1).
Regarding Claims 14 and 15, Greiwe discloses the surgical retractor device of claim 1 as described in the rejection above, but is silent to the dimensions of the retractor device shown in Fig. 12. Greiwe discloses other embodiments of retractors which are disclosed as having a width (lateral dimension) of approximately 3cm (30mm) [0128] and a length of approximately 3 cm (30mm) [0130] for providing suitable dimensions of the retractor for retracting the intended tissue. 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 width and length of the retractor body of Greiwe disclosed in Fig. 12 to be approximately 3cm (30mm) since these dimensions are suggested by Greiwe to be suitable for the retraction of tissue.
Allowable Subject Matter
Claims 8-10, 13, 19-20 are 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACQUELINE T JOHANAS whose telephone number is (571)270-5085. The examiner can normally be reached Mon. - Fri. 9:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eduardo Robert can be reached at 571-272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACQUELINE T JOHANAS/Primary Patent Examiner, Art Unit 3773