Detailed Action
This is the final office action for US application number 18/643,547. Claims are evaluated as filed on May 26, 2026.
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 .
Response to Arguments
Applicant’s arguments with respect to claims 1-3 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
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 1, the specification appears to lack proper antecedent basis for a set of inserter threads … “positioned circumferentially around the bolt passageway” in lines 5-6. That is, the specification is silent to such a disclosure, such is not shown, and such was not originally claimed. Thus, the specification fails to provide proper antecedent basis for a set of inserter threads … “positioned circumferentially around the bolt passageway” in lines 5-6. Examiner suggests cancelling this limitation.
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 set of inserter threads … “positioned circumferentially around the bolt passageway” in claim lines 5-6 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 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.
Claims 1-3 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 1, a set of inserter threads … “positioned circumferentially around the bolt passageway” in lines 5-6 appears to be new matter. That is, the specification is silent to such a disclosure, such is not shown, and such was not originally claimed. Thus, a set of inserter threads … “positioned circumferentially around the bolt passageway” in lines 5-6 constitutes new matter. Examiner suggests cancelling this limitation.
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) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beaty et al. (US 5,692,904, hereinafter “Beaty”).
As to claim 1, Beaty discloses an orthopaedic surgical instrument (200, 204, 210, 212, Figs. 10-12) capable of use for inserting an orthopaedic prosthesis (203) into a bone of a patient (col. 6 lines 4 and 10-11), the orthopaedic surgical instrument comprising: an orthopaedic prosthesis inserter (200, 210, 212, Figs. 10-12) having (i) a body (200), (ii) a bolt passageway (see illustration of enlarged portion of Fig. 10, Fig. 10) defined through the body (Fig. 10), and (iii) a set of inserter threads (threads of threaded section 205, Fig. 10, col. 6 line 1) defined in the body (Fig. 10, col. 6 lines 1-2) and positioned circumferentially around the bolt passageway (in as much as Applicant’s, Fig. 10); and a surgical instrument bolt (204, Figs. 10-12) capable of being received in the bolt passageway of the body of the orthopaedic prosthesis inserter (Fig. 10), wherein the surgical instrument bolt comprises a bolt head (see illustration of enlarged portion of Fig. 10, Fig. 10) and a bolt shaft (see illustration of enlarged portion of Fig. 10, Fig. 10) extending away from a bottom side of the bolt head(see illustration of enlarged portion of Fig. 10, Fig. 10), wherein the bolt shaft comprises a (i) a threaded end (see illustration of enlarged portion of Fig. 10, Fig. 10) extending out of a distal end of the orthopaedic prosthesis inserter (Fig. 10), the threaded end comprising a set of bolt threads (threads of threaded end, Fig. 10, col. 5 line 63 – col. 6 line 3) that is sized to threadingly engage the inserter threads of the orthopaedic prosthesis inserter (col. 5 line 63 – col. 6 line 3), (ii) a shank (see illustration of enlarged portion of Fig. 10, Fig. 10) located between the bolt head and the threaded end (as defined, Fig. 10), and (iii) an inner surface (see illustration of enlarged portion of Fig. 10, Fig. 10) defining an axial passageway (Fig. 10) that extends through at least a portion of the bolt shaft (Fig. 10).
As to claim 2, Beaty discloses that the axial passageway has a length that is less than a length of the bolt shaft (Fig. 10).
As to claim 3, Beaty discloses that the inner surface further defines an aperture (see illustration of enlarged portion of Fig. 10, Fig. 10) on a top end of the bolt head (see illustration of enlarged portion of Fig. 10, Fig. 10), wherein the axial passageway comprises a blind passageway (see illustration of enlarged portion of Fig. 10, Fig. 10) that extends from the aperture (Fig. 10), through the bolt head (Fig. 10), and into the shank of the bolt shaft (Fig. 10).
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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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY SIPP whose telephone number is (313)446-6553. The examiner can normally be reached on Monday through Thursday, 6:30am-4pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached on 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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/AMY R SIPP/Primary Examiner, Art Unit 3775
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