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 I in the reply filed on 22 June 2026 is acknowledged.
Claims 11 and 17 – 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim.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 22 June 2026.
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.
Claim(s) 1 – 10 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson et al. (US PGPUB 2019/0038366 – in IDS).
Regarding claim 1, Johnson discloses a surgical device comprising: a shaft (e.g. 1014 in Fig. 15) defining a longitudinal axis (e.g. 1016), the shaft having a first shaft portion configured to be inserted into a patient (e.g. distal portion of shaft 1014) and a second shaft portion configured to be located outside the patient when the first shaft portion is inserted in the patient (e.g. proximal portion of shaft 1014); an actuation member actuatable relative to the first shaft portion (e.g. 608 proximal end); an operation member operable relative to the second shaft portion (e.g. 608 distal end), the operation member being configured to actuate the actuation member when being operated (e.g. Fig. 15C and corresponding text); and an optical tracker (e.g. 118) coupled with the operation member so that operation of the operation member causes the optical tracker to rotate relative to the shaft (e.g. Fig. 8, 13B), wherein the optical tracker comprises a plurality of markers arranged in a pattern that defines, from a given viewing direction, distinctive arrangements of the markers in different rotational states of the optical tracker relative to a longitudinal axis of the optical tracker (e.g. ¶ 54, 74).
Regarding claim 2, Johnson discloses the optical tracker is coupled to the surgical device in a detachable manner (e.g. ¶ 154).
Regarding claim 3, Johnson discloses operation of the operation member is configured to cause the optical tracker to rotate relative to the longitudinal axis (e.g. Fig. 13, 15, ¶ 53-54).
Regarding claim 4, Johnson discloses there exists a predefined relationship between (i) a movement of the optical tracker and (ii) an actuation movement of one of the actuation member and an actuatable implant detachably coupled to the actuation member (¶ 97, 132 – 139).
Regarding claim 5, Johnson discloses the predefined relationship associates a change of a position of the optical tracker resulting from its movement with a change of a dimension or state of one of the actuation member and the actuatable implant detachably coupled to the actuation member resulting from the actuation movement (e.g. ¶ 53, 54, 154).
Regarding claim 6, Johnson discloses the operation member is rotatable around the longitudinal axis (e.g. Fig. 13, 15).
Regarding claim 7, Johnson discloses the optical tracker is rigidly coupled or configured to be rigidly coupled to the operation member (e.g. Fig. 15B, 17A,B).
Regarding claim 8, Johnson discloses the optical tracker is arranged or configured to be arranged co-axially to the longitudinal axis of the shaft (e.g. Fig. 15B, 17A,B).
Regarding claim 9, Johnson discloses the surgical device as described in the claims above. Johnson further discloses the tracker is configured to provide information to a computerized tracking system describing a state of the actuation member within the patient (e.g. Figs. 3 – 5 and ¶ 58 – 60).
Regarding claim 10¸ Johnson discloses a distal tip of the actuation member is configured to engage an actuatable implant, and wherein rotational movement of the optical tracker has a predefined relationship with an actuation movement of the actuatable implant (e.g. Fig. 17A,B, ¶ 134).
Regardign claim 12, Johnson discloses the first device part further comprises: an inner driver coupled to the operation member; an outer driver coaxially disposed over the inner driver; and a drive member coupled to the inner drive and configured to be actuated to move the actuation member between one of multiple different actuation modes (e.g. Figs. 17A,B).
Allowable Subject Matter
Claims 13 – 16 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. Van der Walt et al. (US PGPUB 2018/0193171 discloses an implant navigation system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH M DIETRICH whose telephone number is (571)270-1895. The examiner can normally be reached Mon - Fri 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer McDonald can be reached at 571-270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH M DIETRICH/Primary Examiner, Art Unit 3796
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