Detailed Action
This is the final office action for US application number 18/688,599. Claims are evaluated as filed on July 21, 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 filed July 21, 2026 have been fully considered but they are not persuasive. The rejections in this office action have been amended to address the amended claims. Examiner asserts that Bowling and Beck teaches all the newly-amended limitations and is capable of performing the functions as claimed. Examiner directs Applicant to the rejection below for a more in-depth description of the limitations.
With regards to Applicant’s argument that the “protruding jaws” of paragraphs 56 and 57 are shown as elements 133 in Fig. 5, which are adjacent recesses 131 (Remarks p. 6 and 6), Examiner notes that as shown in Figs. 5 and 6, element 133 is a flange, lip, circumferential protrusion, or the like and does not appear to represent “jaws” in the ordinary usage of the term and it does not appear that an alternate definition has been provided. That is, element 133 is not shown to be “the parts constituting the walls of the mouth and serving to open and close it” or “either of two or more opposable parts that open and close for holding or crushing something between them” or “one of the sides of a narrow pass or channel” (https://www.merriam-webster.com/dictionary/jaw).
With regards to Applicant’s argument that the coverage is shown as element 157 in Fig. 5 and is shown surrounding knob 155 in Fig. 3, where coupling part 13 projects from coverage 157 (Remarks p. 7), Examiner notes that as shown in Figs. 5 and 6, element 157 appears to be a broadly ring-shaped portion of the anchor 15 or the coupling part 13 as shown in Fig. 4 and does not appear to represent a “coverage” in the ordinary usage of the term and it does not appear that an alternate definition has been provided. That is, element 157 is not shown to be “something that covers” or “inclusion within the scope of discussion or reporting” or “the act or fact of covering” (https://www.merriam-webster.com/dictionary/coverage).
With regards to Applicant’s argument that the office action interprets shaft 286 as the claimed “coupling portion” and limiter “300” as one of the claimed “grips” (Remarks p. 8-10), Examiner notes that there is no “coupling portion” claimed, but there is a “coupling part” claimed which has been mapped to element 288 (see claim 1 rejection below) while element 286 has been mapped as the shaft of the anchor (see claim 6 rejection below). That is, Bowling discloses 288 as the surface of shaft 286 (¶148) and therefore more accurately is the part of the shaft used for coupling to the coupling mechanism.
With regards to Applicant’s argument that the office action asserts one would be motivated to modify Bowling to incorporate grooves on shaft 286 and incorporate a tooth on limiter/grip 300 that engages one of the grooves as taught by Beck (Remarks p. 10-12), Examiner notes that this is incorrect. As detailed below and on pages 18 and 19 of the non-final office action dated January 22, 2026, it is asserted that it would be obvious to modify the coupling part/surface 288 by substituting a surface with recesses for a smooth surface as Beck shows that such are known alternates. In doing so, it would be obvious to modify the shape of the first portion of Bowling so that the first portion is received in a recess to provide known benefits such as improving the locking of the angular position.
With regards to Applicant’s argument that neither Bowling nor Beck discloses or suggests adding a tooth one a pivoting limiter that engages with a groove on a shaft (Remarks p. 12), Examiner notes that adding a tooth has not been proposed. Nonetheless, Beck specifically discloses construction of resilient materials (¶58) that would necessarily flex/hinge about point 210 on Fig. 9 in order to perform the disclosed engagement/disengagement of teeth 202, 204 (Figs. 9-11, ¶s 58-63).
With regards to Applicant’s argument that the objective of Beck is to provide an inexpensive and lightweight guide and therefore one would be motivated to modify the u-shaped surface 298 of Bowling to incorporate the teeth as taught by Beck and eliminate limiter 300 (Remarks p. 12-13), Examiner notes that modifications based on non-analogous structures that perform non-analogous functions are not supported. That is, the u-shaped surface 298 as shown in Bowling Figs. 12 and 13 engages the coupling part in a stationary manner to help promote coaxial alignment (¶149); whereas the surfaces of Beck are comprised of resilient material (¶58) that necessarily flex/pivot in order to engage/disengage the teeth from the grooves (Figs. 9-11, ¶s 58-63) which is analogous to surfaces of 300 that engage the coupling part when gripping in pivotal engagement. As Beck only discloses grips 18, 20 that function in an analogous manner to the limiter 300 of Bowling, there are no logical grounds on which to assert that such teaches eliminating such a feature or providing a device that does not grip in place of two disclosures that grip. Further, as no modifications have been proposed to Beck, the argued objectives appear to be irrelevant to the combination.
With regards to Applicant’s argument that modifying Bowling to include a pair or grips would not be obvious as such would make the system more expensive, less lightweight, and more complicated to adjust which is the antithesis of Beck (Remarks p. 13), Examiner notes that it has not been proposed to modify Beck in any manner; thus, this argument is moot. Further, as detailed in the rejection below and that of pages 18-19 of the non-final office action dated January 22, 2026, a mere duplication of parts involves only routine skill in the and would provide additional stability of the achieved coupling, e.g. by having a tooth shaped first portion on opposing sides engaging corresponding recesses, such would be a more secure/stable coupling.
With regards to Applicant’s argument that even if Bowling was modified as in the office action, such does not produce the invention of claim 1 as Bowling engages the shaft at a single location and so the combination would not produce the claimed pressing part that is capable of moving so that the first portion of the gripping part is received in a recess and the second portion is against the coupling part (Remarks p. 13-14), Examiner notes that the relevance of Bowling engaging the shaft at a single location is unclear and does not appear to be logically linked to the argument. Further, Bowling specifically shows a pressing part and that the second portion, which has not been proposed to be modified, is against the coupling part in Fig. 12B. Even so, Beck specifically teaches that the first portion has a tooth shape engaged in a recess where the second section is against the coupling part (¶62).
Priority
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) because they fail to show the “protruding jaws” of paragraphs 56 and 57as provided in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “133” has been used to designate both a portion of the coupling part 13 adjacent the recesses 131 that is shown as a flange, lip, circumferential protrusion, or the like in Figs. 5 and 6 and “protruding jaws” in paragraphs 56 and 57.
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the “coverage” in paragraphs 58-60 as described in the specification that is part of the anchor in paragraph 59 and surrounds the knob in paragraph 60. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “157” has been used to designate both a portion of coupling part 13 as shown in Figs. 5 and 6 and a “coverage” in paragraphs 58-60 that is part of the anchor in paragraph 59 and surrounds the knob in paragraph 60.
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 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.
Claim(s) 1, 3, 5-7, and 16 is/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 pre-AIA the applicant regards as the invention.
Claim(s) 1 is/are unclear with regards to “the second portion of the gripping part is retracted away from the gripping part” in lines 37-38 and how one can reasonably construe there to be a position where the gripping part is retracted away from the gripping part. Examiner is interpreting this as referring to, and suggests amending as, “the gripping part is retracted away from the coupling part”.
Claim(s) 3, 5-7, and 16 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for its/their dependence on one or more rejected base claims.
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 of this title, 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) 1, 3, 5-7, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bowling et al. (US 2019/0231446, hereinafter “Bowling”) in view of Beck et al. (US 2021/0169661, hereinafter “Beck”).
The claimed phrases “forming”, “formed”, and “forms” are being treated as product by process limitations; that is the product reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim. As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 USC 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. MPEP 2113.
As to claims 1, 3, and 16, Bowling discloses a surgical instrument (Figs. 10-15C) comprising: an impactor (302, Figs. 10-12A and 15A-15C, ¶148) comprising: a body (306, 312, 286, 284, Figs. 10-12A and 15A-15C) provided capable of applying force to an acetabular cup (44, Fig. 10, ¶81) at a first end of the body (284, Fig. 10, ¶224); and a coupling part (288) disposed toward a second end of the body (Figs. 10, 12A, 12B, and 15A-15C, ¶148) that is opposite to the first end (as defined, Figs. 10, 12A, 12B, and 15A-15C); and an anteversion guide (304, ¶s 115 and 131 disclose use to control the position and orientation of the end effector 40/tool 42, ¶s 119-122, 131-135, 151, and 225 disclose use to rotate the impactor while maintaining the trajectory) comprising: an alignment guide (290); and a coupling mechanism (left portion of 304 as shown in Fig. 12B, 300, 364, 366, 298, 292, Figs. 12A-14) detachably coupled to the coupling part (Figs. 15A-15C) extending a predetermined distance from the alignment guide of the impactor (Figs. 12B-14) and extending a predetermined distance from the alignment guide (Figs. 12B-14), and a direction of force applied by the coupling mechanism to the coupling part forming a predetermined angle with an extension direction of the impactor (Fig. 12A); the coupling part disposed along at least a portion of a circumference of the impactor (Fig. 12B); the coupling mechanism comprising: a coupling frame (292, 366, Figs. 13 and 14) comprising a leg (366s) capable of surrounding at least a portion of an outer circumference of the coupling part (portions 294A, 294B of legs 366s, Figs. 12B-14, ¶s 150 and 152); and a grip (300) that grips the coupling part by applying force from a side of the coupling part (Fig. 12B), the grip being hinge coupled to the coupling frame (Figs. 12A, 12B, 15B, and 15C, ¶153 discloses that 374 rotatably supports 364 relative to 292), the grip comprising: a gripping part (‘First portion’ and ‘Second portion’ as labeled on the illustration of Fig. 12B, Fig. 12B) that grips the coupling part (Figs. 12A, 12B, and 15C), the gripping part comprising: a first portion (see illustration of Fig. 12B) protruding inward and being engaged with the coupling part (Figs. 12A, 12B, and 15C); and a second portion (see illustration of Fig. 12B, Figs. 12B-14) having an inner surface extending from the first portion (Figs. 12B-14); and a pressing part (see illustration of Fig. 12B) capable of moving between a first position (Figs. 12B and 15C) and a second position (Fig. 15B), wherein when in the first position the first portion of the gripping part engages with the coupling part (Figs. 12B and 15C) and the second portion of the gripping part grips against the coupling part (Figs. 12B and 15C), and wherein when in the second position the first portion of the gripping part is retracted outward from the coupling part (Fig. 15B) and the second portion of the gripping part is retracted away from the coupling part (Fig. 15B); wherein each of the grips is elastically biased into the first position (via 380, Figs. 13 and 14, ¶153). As to claim 3, Bowling discloses an elastic member (380, Figs. 13 and 14, ¶153) is provided between a second side of the grip and the coupling frame (Figs. 13 and 14, ¶153), the elastic member elastically urging each of the grips into the first position (Figs. 13 and 14, ¶153). As to claim 16, Bowling discloses that when the pressing part is in the first position (Fig. 12B) , the second portion of the gripping part grips against the coupling part outside of a plurality of recesses (Fig. 12B).
Bowling is silent to the coupling part comprising a plurality of recesses; the grip being a pair of grips; a first portion received within a corresponding one of the plurality of recesses, wherein when in the first position the first portion of the gripping part is received within the corresponding one of the plurality of recesses of the coupling part and wherein when in the second position the first portion of the gripping part is retracted outward from the corresponding one of the plurality of recesses.
Beck teaches a similar surgical instrument (200, 244, Figs. 9-13, ¶64 discloses use of 200/244 in Fig. 13) comprising: an impactor (244) comprising: a body (246) provided capable of applying force to an acetabular cup (70, Fig. 13, ¶s 43 and 64) at a first end of the body (Figs. 10, 11, and 13, ¶64); and a coupling part (254, Figs. 10 and 11, ¶61) disposed toward a second end of the body (Figs. 10 and 11) that is opposite to the first end (as defined, Figs. 10 and 11); and an anteversion guide (200) comprising: an alignment guide (16); and a coupling mechanism (12) detachably coupled to the coupling part of the impactor (Figs. 9-13) and extending a predetermined distance from the alignment guide (14, Figs. 9-13, ¶39), and a direction of force applied by the coupling mechanism to the coupling part forming a predetermined angle with an extension direction of the impactor (Figs. 10-12, ¶63); the coupling part comprising a plurality of recesses (208, Fig. 10, ¶61) disposed along at least a portion of a circumference of the impactor (Figs. 10-12, ¶s 61 and 63); the coupling mechanism comprising: a coupling frame (upper portion of 12 as shown in Fig. 9, Figs. 9-12); and a pair of grips (18, 20, Fig. 9, ¶37) that grip the coupling part by applying force from a side of the coupling part (Figs. 9-11, ¶38), the pair of grips being hinge coupled to the coupling frame (¶58 discloses construction of resilient polymers or metals), each of the grips comprising: a gripping part (18, 20) that grips the coupling part (Fig. 10, ¶s 62 and 63), the gripping part comprising: a first portion (202, 204) protruding inward (Fig. 9) and being received within a corresponding one of the plurality of recesses (Fig. 10, ¶s 62 and 63); and a second portion (portion of 18, 20 shown above 202, 204 in Fig. 9 and defining surface 26, Fig. 9) having an inner surface (26) extending from the first portion (Fig. 9); and the gripping part capable of moving between a first position (Fig. 11, ¶s 62 and 63) and a second position (Figs. 9 and 10), wherein when in the first position the first portion of the gripping part is received within the corresponding one of the plurality of recesses of the coupling part (¶s 62 and 63) and the second portion of the gripping part grips against the coupling part (¶62), and wherein when in the second position the first portion of the gripping part is retracted outward from the corresponding one of the plurality of recesses (Figs. 9 and 10)and the second portion of the gripping part is retracted away from the coupling part (Figs. 9 and 10); wherein each of the grips is elastically biased into the first position (¶58 discloses construction of resilient polymers or metals). As to claim 16, Beck teaches that when the pressing part is in the first position (Fig. 10), the second portion of the gripping part grips against the coupling part outside of the plurality of recesses (¶62).
Bowling discloses the claimed invention except that the coupling part and the first portion are smoothly contoured instead of comprising recesses and a first portion shaped to be received in one of the plurality of recesses. Beck shows that the coupling part and the first portion being smoothly contoured or comprising recesses and a first portion shaped to be received in one of the plurality of recesses are an equivalent structures known in the art, see Figs. 1-8 and 9-12. Therefore, because these two engagement structures were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute recesses and a first portion shaped to be received in one of the plurality of recesses for smoothly contoured surfaces. That is, one of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify the coupling part and the first portion as disclosed by Bowling by providing the coupling part with a plurality of recesses and modifying the first portion to be received in one of the plurality of recesses as taught by Beck in order to lock the guide to the impactor with an interference fit (Beck ¶52) as well as provide an index of rotation of the guide (Beck Fig 12, ¶63) the surgeon may use to select the angle based on individual preference, to adjust to patient anatomy, or for other reasons and thereafter have the guide remain positively locked to the impactor (Beck ¶63).
Further, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to modify the grip and corresponding frame and supporting structures as disclosed by Bowling to be a pair of grips and support/accommodate a pair of grips as taught by Beck, since mere duplication of the essential working parts of a device involves only routine skill in the art and one would be motivated to do so in order to provide additional stability in a known configuration (Beck Figs. 9-12). That is, one of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify the grip and corresponding frame and supporting structures as disclosed by Bowling to be a pair of grips and support/accommodate a pair of grips as taught by Beck in order to provide additional stability in a known configuration (Beck Figs. 9-12).
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As to claim 5, the combination of Bowling and Beck discloses the invention of claim 3 as well as the coupling frame comprises a stop (wall of 292 that defines the side of the pocket 378 as shown in Fig. 13, e.g. the wall shown in Fig. 12B that 386 could potentially abut when rotated, Fig. 13) that extends a predetermined distance from the part where each grip is hinge coupled (Fig. 13), and each grip further comprises a stopper (wall of recess shown including aperture 372 in Fig. 14, Fig. 14) provided to surround at least a portion of the stop to limit the rotation of each grip (Fig. 14).
The combination of Bowling and Beck is silent to the stop comprising a stop rod.
It would have been an obvious matter of design choice to one skilled in the art before the effective filing date of the claimed invention to construct the stop of Bowling as a stop rod, since Applicant has not disclosed that such solve any stated problem or is anything more than one of numerous shapes or configurations a person ordinary skill in the art would find obvious for the purpose of limiting movement of the grip (Bowling Figs. 12B-14) while predicably containing the elastic member (Bowling Figs. 13 and 14, ¶153).
As to claims 6 and 7, the combination of Bowling and Beck discloses the invention of claim 1 as well as the body of the impactor (306, 312, 286, 284, Figs. 10-12A and 15A-15C) comprises an anchor (286, 284, Figs. 10-12A, ¶224) having an end (Fig. 12A) capable of engaging with the acetabular cup (284, Figs. 10-12A, ¶224), wherein the anchor comprises: a shaft (286); a tip end portion (right end of 284 as shown in Fig. 12A, Fig. 12A, ¶224) capable of coupling to the acetabular cup at an end of the shaft (Fig. 12A, ¶224); and a knob (306) capable of rotating the shaft and the tip end portion (Fig. 12A).
The combination of Bowling and Beck is silent to the body of the impactor extends forming a hollow, the anchor at least partially extending through an interior of the body, the shaft extending within the body. As to claim 7, the combination of Bowling and Beck is silent to a plurality of through holes are formed along a circumference of the body.
Bowling, in an alternate embodiment, teaches a similar surgical instrument (Figs. 16A-28B) comprising: an impactor (502) comprising: a body (486, 596, 508, 510, 506, Figs. 16A and 16B, ¶159 and 160) provided capable of applying force to an acetabular cup (¶159) and having an end (596) thereof extending toward a first side of the acetabular cup (Fig. 17); and a coupling part (512) provided at a side of the body (Figs. 16A-17); and an anteversion guide (504, Fig. 17, ¶161) comprising: a coupling mechanism (right portion of 504 as shown in Fig. 18A, Fig. 18A) detachably coupled to the coupling part extending a predetermined distance from the alignment guide (Figs. 16A-28B); the coupling mechanism comprising: a coupling frame (Fig. 18A) provided capable of surrounding at least a portion of the coupling part (Fig. 17); and the coupling frame comprising a leg (494A, 494B/500) provided to partially enclose an outer circumference of the coupling part (Fig. 17); and a grip (630); wherein the body of the impactor extends forming a hollow (Figs. 16A and 16B, ¶159), and the impactor further comprises an anchor (588, 602) at least partially extending through an interior of the body (Figs. 16A and 16B, ¶s 159 and 160) and having an end (524) capable of engaging with the acetabular cup (Figs. 16A and 16B, ¶160), wherein the anchor comprises: a shaft (588) extending within the body (Figs. 16A and 16B, ¶s 159 and 160); a tip end portion (end of 524) coupled to the acetabular cup at an end of the shaft (Fig. 17, ¶160); and a knob (602) capable of rotating the shaft and the tip end portion (Figs. 16A and 16B, ¶160). As to claim 7, Bowling, in an alternate embodiment, teaches that a plurality of through holes (Figs. 16A and 16B) are formed along a circumference of the body (Figs. 16A and 16B, ¶159).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify body and anchor as disclosed by the combination of Bowling and Beck to be separate components as a body with through holes and an anchor extending within the body as taught by Bowling, in an alternate embodiment, in order to permit the acetabular cup to be indexed relative to the body which is advantageous when the acetabular cup has features that need to be aligned relative to the surgical site (Bowling ¶160) and facilitate releasable attachment between the acetabular cup and the impactor in that rotation and translation of the anchor relative to the body can be used to disengage the threaded engagement to the acetabular cup without also rotating the body (Bowling ¶160).
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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