DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is responsive to the set of claims received on 29 April 2024. Claims 1-15 are currently pending.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 “machine” as recited in/required by claim 13 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.
Specification
The disclosure is objected to because of the following informalities:
On page 1, line 10, it appears that the phrase “FIELD OF THEINVENTION” should read “FIELD OF THE INVENTION.”
Throughout the specification, there are instances where words and reference numbers run together (i.e. do not include spaces). Examples are present in paragraphs 0065-0070, 0072-0075. Applicant' s cooperation is requested in correcting these errors.
Appropriate correction is required.
Arrangement of the Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
Claim Objections
Claim 5 is objected to because of the following informality:
In line 3, it appears that the space should be removed after the phrase “press-out unit.”
In line 4, it appears that the phrase “press- out unit” should read “press-out unit.”
Claim 7 is objected to because of the following informality:
In line 2, it appears that the phrase “the outside” should read “an outside.”
Claim 11 is objected to because of the following informality:
In line 2, it appears that the phrase “electricaldrive” should read “electrical drive.”
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.
Claims 5, 9 and 14-15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor the applicant), regards as the invention.
Regarding claim 5, the phrases "preferably" and “particularly preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention (see MPEP § 2173.05(d)).
Note: It appears that amending lines 3-4 of claim 5 to read “wherein the marking is a colored component of the press-out unit, or a sealing ring of a plunger” would overcome this rejection. For examination purposes, claim 5 will be treated as such.
Regarding claim 9, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention (see MPEP § 2173.05(d)).
Note: It appears that amending lines 2-3 of claim 9 to read “wherein the pressurized medium is compressed air, a vacuum source or a hydraulic medium” would overcome this rejection. For examination purposes, claim 9 will be treated as such.
Claim 14 recites the limitation "the sensor" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Note: It appears that amending line 1 of claim 14 to read “the device according to claim 3” would overcome this rejection (see line 1 of claim 3 for antecedent basis). For examination purposes, claim 14 will be treated as such.
Regarding claim 15, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention (see MPEP § 2173.05(d)).
Note: It appears that amending line 2 of claim 15 to read “wherein the container is configured for mixing bone cement” would overcome this rejection. For examination purposes, claim 15 will be treated as such.
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.
Claims 1-2, 8 and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bodduluri et al. (U.S. Patent 7,922,688).
Bodduluri et al. disclose (as to claim 1) a device (see Figures 1 and 3) (regarding the phrase “for dispensing bone cement by means of a machine,” see Note below regarding the effect of the preamble and functional language), comprising a connection unit (i.e. unit defined by 40 and 42) capable of being connected to (i.e. via 20) a surgical robot (25), a press-out unit (30b) (regarding the phrase “configured for dispensing bone cement,” see Note below regarding functional language), a receiving unit (64) capable of (i.e. receiving 67 therewithin) receiving a container (regarding the phrase “configured for receiving a container containing bone cement,” see Note below regarding functional language), and an interface (62) capable of being connected to a control unit (i.e. unit defined by 25) (regarding the phrase “configured for connection to a control unit, in order to dispense a predefined amount of bone cement from the container by means of the press-out unit,” see Note below regarding functional language), wherein (as to claim 2) the interface is capable of conveying the amount of bone cement dispensed by means of the press-out unit and stopping further dispensing of the bone cement when the predefined amount is reached (see column 16, lines 50-57, column 17, lines 24-29 and Note below regarding functional language), wherein (as to claim 8) the connection unit comprises an electrical connection point (i.e. not shown or discussed, however necessary given the use of 25 and activation of 46/62) which is configured to supply power to the device and/or to receive a control signal (see Note below regarding functional language), wherein (as to claim 10) the press-out unit comprises a drive (60) (regarding the phrase “which is configured for dispensing bone cement by means of the press-out unit,” see Note below regarding functional language), wherein (as to claim 11) the drive is a hydraulic, pneumatic or electrical drive (i.e. not shown or discussed, however necessary given the use of 25 and activation of 46/62), and wherein (as to claim 12) the interface is capable of controlling the drive (see column 16, lines 50-57, and column 17, lines 24-29) (see Figures 1 and 3, and column 12, line 53 – column 20, line 55).
Note: Regarding the effect of the preamble, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. Furthermore, a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention (see MPEP 2111.02(II)). Regarding functional language, "[a]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (see MPEP 2114(II)).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3-4, 6 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Bodduluri et al. (U.S. Patent 7,922,688), as applied to claim 1 above, in view of Pacifico (U.S. Patent 9,931,468).
Bodduluri et al. disclose wherein (as to claim 14) the device is controlled by a computer program, wherein the computer program is capable of operating the press-out unit (see column 14, line 56 – column 15, line 23, column 16, line 58 – column 17, line 10, and column 17, line 51 – column 18, line 12) and, in the embodiment of Figure 4, teach the use of a sensor (79) to determine the amount of a substance (81) dispensed by a press-out unit (30c) (see column 17, lines 47-60); however, fail to explicitly disclose wherein (as to claim 3) the device also comprises a sensor which is operatively connected to the interface (regarding the phrase “in order to determine the amount of bone cement dispensed by means of the press-out unit”, see Note above regarding functional language), wherein (as to claim 4) the sensor is an optical sensor, a mechanical sensor or a magnetic sensor, wherein (as to claim 6) the sensor and/or the interface is/are configured to determine an inner volume of the press-out unit and/or of the container.
Pacifico teaches the use of a device (100) capable of dispensing surgical materials (e.g. bone cement) comprising one or more optical sensors (120) capable of determining an amount of surgical material dispensed by means of the device and determining an inner volume of surgical material of the device (see Figure 1A, and column 4, lines 33-54).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the invention of Bodduluri et al. with wherein the device also comprises a sensor which is operatively connected to the interface, wherein the sensor is an optical sensor, a mechanical sensor or a magnetic sensor, wherein the sensor and/or the interface is/are configured to determine an inner volume of the press-out unit and/or of the container in view of Pacifico in order to provide a well-known, obvious means for detecting a variety of characteristics related to either the material within and/or dispensed form the device to yield predictable results. Furthermore, it has been held that rearranging parts of an invention (i.e. to place the sensor in a desired position) involves only routine skill in the art (In re Japikse, 86 USPQ 70).
Allowable Subject Matter
Claims 5, 9 and 15 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 7 and 13 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.
The following is a statement of reasons for the indication of allowable subject matter. Claims 5, 7, 9, 13 and 15 in the instant application have not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose, or suggest, the following:
Regarding claim 5, in combination with the limitations required by claims 1 and 3, no prior art reference could be found disclosing or making obvious wherein the sensor is configured to detect a spatial position of a marking in order to thereby determine the amount of bone cement dispensed by means of the press-out unit, wherein the marking is a colored component of the press-out unit, or a sealing ring of a plunger.
Regarding claim 7, in combination with the limitations required by claims 1 and 3, no prior art reference could be found disclosing or making obvious wherein the sensor is arranged on a sensor strip which extends along the receiving unit on the outside of the device.
Regarding claim 9, in combination with the limitations required by claim 1, no prior art reference could be found disclosing or making obvious wherein the connection unit comprises a connection point for connection to a pressurized medium, wherein the pressurized medium is compressed air, a vacuum source or a hydraulic medium.
Regarding claim 13, in combination with the limitations required by claim 1, no prior art reference could be found disclosing or making obvious wherein the device is also configured for mixing bone cement by means of a machine in the container.
Regarding claim 15, in combination with the limitations required by claim 1, no prior art reference could be found disclosing or making obvious wherein the device is part of a kit comprising a container containing bone cement, wherein the container is configured for mixing bone cement.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sahin et al. (U.S. Patent 12,053,218) disclose a device capable of mixing and dispensing bone cement via use of a surgical robot.
Chaligne et al. (U.S. Patent 11,234,749) disclose a device capable of mixing and dispensing bone cement via use of a surgical robot.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY E WAGGLE, JR whose telephone number is (571)270-7110. The examiner can normally be reached TEAP: Monday - Friday (7:45am - 3:45pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached 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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/LARRY E WAGGLE, JR/Primary Examiner, Art Unit 3775
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