DETAILED ACTION
This action is in response to Applicant’s amendment filed December 23, 2025.
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 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.
Claim(s) 1-8, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Parmigiani (U.S. Publication No. 2007/0055264).
Parmigiani discloses a hand instrument having a handpiece (10) and a scraping blade (30) arranged distally of the handpiece and a chip chamber (20), of which the scraping blade is designed for scraping in particular bones and is arranged in such a way that chips scraped by means of the scraping blade enter the chip chamber (Figure 4) and the scraping blade extends in a plane inclined with respect to a longitudinal axis of the handpiece (Figure3, angle A), wherein the handpiece is designed as a handle with three finger rests (See arrows in figure below) and a proximal support rest and whereby a first finger rest and a second finger rest are arranged so as to allow exertion of a force on the scraping blade for bone scraping with two fingers (This is a functional statement and thus it is considered that a user would be capable of applying force with just two fingers using a first and a second finger rest, i.e using a thumb and index finger two pinch the two finger rests on the sides).
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Parmigiani fails to disclose that the three finger rests being inclined to one another in such a way that the three finger rests extend at an angle of less than 90° to one another in a cross-section through the handpiece. It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the three finger rests of Parmigiani to extend at an angle of less than 90° to one another in a cross-section through the handpiece, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 2, the three finger rests are designed as depressions having a concave shape in the longitudinal direction of the handpiece. It is noted that the figure above shows the concave nature of the finger rests. Element 16 is a shaped portion with teeth (paragraph 53), it is considered that the shaped portion from which the teeth extend is concave.
Regarding claim 3, the support rest (shown above) is formed by a spherical surface (considered circular) at the proximal end of the handpiece, which is oriented in a radial direction of the handpiece in which an outer flat side of the scraping blade is oriented (Figure 1A, it is noted that a radial direction has no directional vector, it can be any direction that is in a line away from the center of blade).
Regarding claim 4 it is not specifically stated that the support rest extends in the longitudinal direction of the hand instrument at an obtuse angle of between 0° and 10° with respect to the outer flat side of the scraping blade. However, It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the support rest extends in the longitudinal direction of the hand instrument at an obtuse angle with respect to the flat outer side of the scraping blade, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 5, it is not specifically stated that the width of the handpiece in a region of the finger rests is between 11 mm and 16 mm. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the support rest extends in the longitudinal direction of the hand instrument at an obtuse angle with respect to the flat outer side of the scraping blade, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 6 that the width of the handpiece in a region of the support rest (see figure)
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initially decreases in the distal direction and increases again in the a region of the finger rests. It is not disclosed that the width is 20 mm and 25 mm.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the width of the handpiece in the region of the support rest to be between 20 mm and 25 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 7, it is not specifically stated that the chip chamber (20) has a volume of more than 3.5 cubic cm and preferably more than 4 cubic cm. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the chip chamber to be greater than 4 cubic cm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 8, the scraping blade extends substantially, in particular with the exception of a cutting edge, in a blade plane which is inclined (Figure 4). It is not specifically disclosed that the incline is by at least 50° with respect to the longitudinal axis of the handpiece. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to construct incline to be by at least 50 degrees with respect to the longitudinal axis of the handpiece, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 18, a third finger rest for a middle finger of a user is located on a same side of the handpiece as the scraping blade and wherein the first finger rest and the second finger rest are located on another side of the handpiece for respective use by an index finger and by a thumb of the user (see below). The figure below and the first figure provided above for Claim 1 indicate the three finger rests.
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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.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Parmigiani (U.S. Publication No. 2007/0055264) Prado et al. (U.S. Publication No. 2015/0157469).
Parmigiani discloses the claimed invention except for the handpiece is made of thermoplastic material, preferably of polycarbonate Makrolon 2458 or polyamide ixef 1022 approved for medical use. Prado et al. teaches a medical instrument that uses thermoplastic, such as Ixef (paragraph 59). It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the device of Parmigiani in view of Prado et al., since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim(s) 1, 10, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Parmigiani (U.S. Publication No. 2007/0208348) in view of Parmigiani (U.S. Publication No. 2007/0055264).
Parmigiani (‘348) discloses a hand instrument having a handpiece (10) and a scraping blade (20) arranged distally of the handpiece and a chip chamber (R), of which the scraping blade (20) is designed for scraping in particular bones and is arranged in such a way that chips scraped by means of the scraping blade enter the chip chamber (Figure 6) and the scraping blade extends in a plane inclined with respect to a longitudinal axis of the handpiece (Figure 6). Parmigiani (‘348) fails to disclose the handpiece is designed as a handle with three finger rests and a proximal support rest, whereby a first finger rest and a second finger rest are arranged so as to allow exertion of a force on the scraping blade for bone scraping with two fingers.
Parmigiani (‘264) teaches a hand instrument having a handle with a three-finger rest and a proximal support rest to form an ergonomic form for the hand (paragraph 53) whereby a first finger rest and a second finger rest are arranged so as to allow exertion of a force on the scraping blade for bone scraping with two fingers (This is a functional statement and thus it is considered that a user would be capable of applying force with just two fingers using a first and a second finger rest, i.e using a thumb and index finger two pinch the two finger rests on the sides).
It would have been obvious to construct the device of Parmigiani (‘348) with a handle having a three-finger rest and a proximal support rest in view of Pamigiani (‘264) to form an ergonomic handle. The combination fails to disclose that the three finger rests being inclined to one another in such a way that the three finger rests extend at an angle of less than 90° to one another in a cross-section through the handpiece. It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the three finger rests of the combination to extend at an angle of less than 90° to one another in a cross-section through the handpiece, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 10, Parmigiani (‘348) discloses that the chip chamber (portion part of 11) and the handpiece (10) are formed in one piece and are part of a one-piece base body to which the scraping blade and a chip chamber closure in the form of a removable cover are attached (Figure 2A).
Claim(s) 1, 11-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Parmigiani (U.S. Publication No. 2004/0068265) in view of Parmigiani (U.S. Publication No. 2007/0055264).
Parmigiani (‘265) discloses a hand instrument having a handpiece (10) and a scraping blade (50) arranged distally of the handpiece and a chip chamber (R), of which the scraping blade (50) is designed for scraping in particular bones and is arranged in such a way that chips scraped by means of the scraping blade enter the chip chamber (Figure 4) and the scraping blade extends in a plane inclined with respect to a longitudinal axis of the handpiece (Figure 4, the blade has a conical surface, thus the blade has a surface that extends in a plane included with respect to the longitudinal axis). Parmigiani (‘265) fails to disclose the handpiece is designed as a handle with three finger rests and a proximal support rest, whereby a first finger rest and a second finger rest are arranged so as to allow exertion of a force on the scraping blade for bone scraping with two fingers
Parmigiani (‘264) teaches a hand instrument having a handle with a three-finger rest and a proximal support rest to form an ergonomic form for the hand (paragraph 53) whereby a first finger rest and a second finger rest are arranged so as to allow exertion of a force on the scraping blade for bone scraping with two fingers (This is a functional statement and thus it is considered that a user would be capable of applying force with just two fingers using a first and a second finger rest, i.e using a thumb and index finger two pinch the two finger rests on the sides).
It would have been obvious to construct the device of Parmigiani (‘265) with a handle having a three-finger rest and a proximal support rest in view of Pamigiani (‘264) to form an ergonomic handle. The combination fails to disclose that the three finger rests being inclined to one another in such a way that the three finger rests extend at an angle of less than 90° to one another in a cross-section through the handpiece. It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the three finger rests of the combination to extend at an angle of less than 90° to one another in a cross-section through the handpiece, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 11, Parmigiani (‘265) discloses the scraping blade (50) is designed as a conical disc (Figure 4) and is attached to a shaft (22) which is arranged in the handpiece so as to be longitudinally displaceable (Figure 2, 2A).
Regarding claim 12, Parmigiani (‘265) discloses that the chip chamber (R) is formed as a cylindrical cavity concentrically surrounding the shaft, which is open at the distal end of the handpiece (Figure 2).
Regarding claim 13, Parmigiani (‘265) discloses an ejector (20), which is longitudinally displaceable together with the scraping blade and the shaft and has an axial distance from the scraping blade, the chip chamber extending in the axial direction between the scraping blade and an end wall of the ejector (Figure 2, 2A).
Regarding claim 14, Parmigiani (‘265) discloses that the shaft can be locked with the scraping blade in such a way that the shaft and the scraping blade can no longer be longitudinally displaced with respect to the handpiece in the locked state (using lock 11) and the scraping blade is locked in a working position serving for scraping in such a way that tensile forces can be introduced into the shaft by means of the handpiece and transmitted to the scraping blade (Figure 4).
Regarding claim 15, Parmigiani (‘265) discloses that the shaft (22) is at least indirectly connected to a handle (via element 22) which serves for longitudinally displacing the shaft and the scraping blade with respect to the handpiece.
Regarding claim 16, Parmigiani (‘265) discloses that the handpiece has a longitudinal groove (39) for guiding the handle.
Regarding claim 17, Parmigiani (‘265) discloses that the handle of the handpiece has a recess (12) at the proximal end of the longitudinal groove into which the handle (handle portion 11) can be pivoted by means of a rotary movement around the longitudinal axis of the shaft in order to lock the shaft and the scraping blade in a working position.
Response to Arguments
Applicant’s argument regarding Parmigiani (U.S. Publication No. 2007/0055264) are directed to use and elements described in the specification. The elements as claimed are obvious over Parmigiani. The arguments regarding how the instrument is held are not given patentable weight. The device of Parmigiani is capable of being used with two fingers as described above. There is not structural limitation that defines over the prior art. With regard to the angles of the fingers in relation to one another it appears from the figures that they are less than 90 degrees, but because the angles are not specifically disclosed, the Examiner provided case law for deeming the angles obvious. Since the fingers rests/grip are designed for ergonomics, it would take simple trial and error testing for one skilled in the art to determine the best angles.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANDREW YANG whose telephone number is (571)272-3472. The examiner can normally be reached 9:00 - 9:00 M-F.
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/ANDREW YANG/Primary Examiner, Art Unit 3775