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 .
Claim Objections
Claim 93 is objected to because of the following informalities: In Line 5, the word --patient’s-- should be added before the word “body”. In Line 13, the word “encompass” should be replaced with the word --comprises--. Appropriate correction is required.
Claim 95 is objected to because of the following informalities: In Line 5, the words “the acetabulum” should be replaced with the word --an acetabulum--. In Line 6, the words “the caput femur” should be replaced with the word --a caput femur--. Appropriate correction is required.
Claim 97 is objected to because of the following informalities: In Line 4, the limitation “a pelvic bone” should be replaced with the limitation --the pelvic bone--. Appropriate correction is required.
Claim 98 is objected to because of the following informalities: In Line 4, the words “the abdominal wall” should be replaced with the word --an abdominal wall--. Appropriate correction is required.
Claim 99 is objected to because of the following informalities: In Line 2, the word --of-- should be added after the word “one”. In Line 3, the word “the” should be replaced with the word --an--. In Lines 3-5, the letters “d.”, “e.”, and “f.” should be replaced with the letters --a.--, --b.-- and --c.-- respectively. Appropriate correction is required.
Claim 100 is objected to because of the following informalities: In Line 5, a comma should be added at the end of the line. Appropriate correction is required.
Claim 102 is objected to because of the following informalities and should be amended as follows: “further comprising connecting an operation device providing a force to said driving member from outside of the patient’s body, lateral [[on]] to the patient’s opposite side pelvic bone
Claim 103 is objected to because of the following informalities: In Line 2, the word --patient’s-- should be added before the word “abdomen”. In Line 3, the word --patient’s-- should be added before the word “body”. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 90, 92-95, & 97-103 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 90 at Lines 4-5 recites the limitation “placing a mold inside of the hip joint from the abdominal side of the pelvic bone through said hole in the pelvic bone of the human patient, and”. There is insufficient antecedent basis for the “the abdominal side of the pelvic bone” and “said hole in the pelvic bone” limitations in the claim. For purposes of examination, Lines 3-5 are being interpreted as follows: “
creating a hole in a pelvic bone passing into the hip joint of the human patient,
placing a mold inside of the hip joint from an abdominal side of the pelvic bone through said hole in the pelvic bone of the human patient, and”
Appropriate correction is required.
Claim 92 at Line 1 recites “The method according to claim 91”. Since Claim 91 has been cancelled, Claim 92 depends from a cancelled claim and thus is considered to be incomplete. See MPEP 608.01(n)V. As such, Claim 92 has not been further treated on the merits thereof.
Claim 93 at Line 11 recites the limitation “dissecting an area of a pelvic bone on the opposite side from an acetabulum” which renders the claim indefinite as it is unclear if the recited “pelvic bone” is the same pelvic bone recited in independent Claim 90 from which Claim 93 depends, or a different pelvic bone, since a human patient would naturally have multiple pelvic bones. Thus, it is unclear which pelvic bone is being recited. For purposes of examination, the limitation is being interpreted as “dissecting an area of the pelvic bone on the opposite side from an acetabulum of the hip joint”. Appropriate correction is required.
Claim 94 at Line 2 recites the limitation “wherein said hole passing into the hip joint is made in a pelvic bone,” which renders the claim indefinite as it is unclear if the recited “pelvic bone” is the same pelvic bone recited in independent Claim 90 from which Claim 94 depends, or a different pelvic bone, since a human patient would naturally have multiple pelvic bones. Thus, it is unclear which pelvic bone is being recited. (See interpretation of Claim 90 above. If the same pelvic bone is being recited, this limitation is redundant based on newly amended claim 90 and should be deleted.) Appropriate correction is required.
Claim 95 at Lines 4-5 recites “placing at least one sealing member from the abdominal side of the pelvic bone through said hole in the pelvic bone of the human patient between the acetabulum and the caput femur, and”. There is insufficient antecedent basis for the “the abdominal side of the pelvic bone” and “said hole in the pelvic bone” limitations in the claim. For purposes of examination, Lines 3-5 are being interpreted as follows: “
creating a hole in a pelvic bone passing into the hip joint of the human patient,
placing at least one sealing member from an abdominal side of the pelvic bone through said hole in the pelvic bone of the human patient between an acetabulum and a caput femur of the hip joint, thus creating a sealed area between the acetabulum and the caput femur, and”
Appropriate correction is required.
Claim 97 at Line 1 recites “The method according to claim 91”. Since Claim 91 has been cancelled, Claim 97 now depends from a cancelled claim and thus is considered to be incomplete. See MPEP 608.01(n)V. As such, Claim 97 has not been further treated on the merits thereof.
Claim 99 at Line 1 recites “The method according to claim 91”. Since Claim 91 has been cancelled, Claim 99 now depends from a cancelled claim and thus is considered to be incomplete. See MPEP 608.01(n)V. As such, Claim 99 has not been further treated on the merits thereof.
Claim 100 at Lines 1-2 recites “wherein the step of dissecting an area of the pelvic bone comprises dissecting” and Line 6 further recites “c. an area of the pelvic bone” which renders the claim indefinite as the Line 6 limitation is redundant and does not further limit the preamble. It is suggested that “c.” be deleted or further amended to recite a more specific area of the pelvic bone or another location. Appropriate correction is required.
Claim 101 at Lines 4-6 recites the limitation “so as to achieve a first supporting point for the bone contacting member in a femoral bone and a second supporting point in a pelvic bone.” which renders the claim indefinite as it is unclear if the recited “pelvic bone” is the same pelvic bone recited in independent Claim 90 from which Claim 101 depends, or a different pelvic bone, since a human patient would naturally have multiple pelvic bones. Thus, it is unclear which pelvic bone is being recited. (See interpretation of Claim 90 above.) For purposes of examination, the limitation is being interpreted as “so as to achieve a first supporting point for the bone contacting member in a femoral bone of the hip joint and a second supporting point in the pelvic bone.” Appropriate correction is required.
Claim 103 at Line 3 recites the limitation “lateral of a proximal femoral bone.” Which renders the claim indefinite as it is unclear is the recited proximal femoral bone is the femur of the recited hip joint or associated with the opposite side pelvic bone of the patient as previously recited in claim 102. For purposes of examination, the limitation is being interpreted as “lateral of a proximal femoral bone of the opposite side hip joint”. Appropriate correction is required.
Allowable Subject Matter
Claims 90, 92-95, & 97-103 would be allowable if rewritten to properly overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. (Also, see claim objections above).
Response to Arguments
Applicant’s amendments, filed 11/28/25, have overcome the objections to claims 90-94 & 96-103.
Applicant’s amendments, filed 11/28/25, have overcome the 112(b) rejections for claims 91, 93, 94, 96-99, & 101-103. The rejection for Claim 100 at Line 6 does not appear to have been addressed and thus it upheld as seen above. Furthermore, it is noted that the newly amended claims have brought about new 112(b) rejections as seen in the final action above.
In regards to Applicant’s arguments, filed 11/28/25, with respect to the 102 rejection of Claims 90 & 95 as anticipated by Bonutti: The Applicant’s arguments have been fully considered and based on the addition of Claim 91 into independent Claims 90 & 95, the Bonutti rejection of record has been overcome and the Claims have been indicated as being allowable if amended to properly overcome all of the 112(b) rejections throughout.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 JESSICA WEISS whose telephone number is (571) 270-5597. The examiner can normally be reached Monday through Friday, 8:00 am to 4:00 pm EST. If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, KEVIN T. TRUONG, at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JESSICA WEISS/Primary Examiner, Art Unit 3775