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 .
Election/Restrictions
Applicant’s election without traverse of group II, claims 20 – 22, 24, 24, 33 and 36 in the reply filed on 12/08/2025 is acknowledged.
Claims 1 – 3, 5 – 7, 9, 12, 13, 16 – 17 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/08/2025.
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 20 – 22, 24, 26, 33 and 36 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 20 recites the limitation "the total number of contact surfaces of an implant" in lines 2 – 3. There is insufficient antecedent basis for this limitation in the claim.
For the sake of examination, the preceding limitation is interpreted as referring to “a total number of contact surfaces of an implant”.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 20 – 22, 24, 26, 33 and 36 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) cutting instructions. This judicial exception is not integrated into a practical application because such instructions can be directed to mental processes. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because where are these instructions being stored or how such instructions being communicated to the CAS device for directing the device.
The office recommends specifying where such instructions being stored, and how such instructions being executed to direct a CAS device, to overcome this rejection.
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.
Claim(s) 20 – 22, 24, 26, 33 and 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kang et al. (US Pub. 2020/0323540 A1).
Claim 20, Kang discloses a system [abstract, Figs. 1 – 19] comprising:
cutting instructions to direct a CAS device to form a first number of cut surfaces on a bone [¶66 - ¶85, i.e. instructions to direct guide 38 and/or cutting tool 40, or robotic system 10 to form number of cut surfaces on a femur “F”, since the first number of cut surfaces, the office takes the interpretations that the number of cut surfaces can refer to at least a distal cut surface of a medial condyle, a distal cut surface of a lateral condyle, an anterior cut surface and/or a posterior cut surface, Fig.3 PH], wherein the first number of cut surfaces is less than the total number of contact surfaces of an implant [Fig.3, wherein at least two of the identified cut surfaces above, are less that a total number of contact surfaces of implant 66, being surface portions facing the femur “F”].
Kang discloses the limitations of claim 20, as above, and further, Kang discloses:
Claim 21, a CAS device directed by the cutting instructions during the formation of the first number of cut surfaces on the bone [guide 38 and/or instrument 42, or robotic system 10].
Claim 22, a mechanism to instruct a user to form additional cut surfaces on the bone without the CAS device, or to complete additional cuts surfaces on the bone with manual instrumentation [instructions on display 20].
Claim 24, wherein the mechanism comprises at least one of: text on a display monitor [i.e. Fig.5A, “INS1”].
Claim 26, planning software to plan a position for the first number of cut surfaces relative to pre-operative bone data [¶42 and ¶51 - ¶52, controller 34 loaded with software capable of carrying out described functions].
Claim 33, wherein the cutting instructions comprises at least one of a cut-file, one or more virtual boundaries, or one or more virtual paths, one or more cut paths situated along a single plane, along a single line, or in three-dimensions, or a cut volume with a general shape [i.e. Fig.3, “PH”].
Claim 36, wherein the CAS device is at least one of an active surgical robot, a semi-active surgical robot, or a haptic surgical robot [guide 38 and/or instrument 42, or robotic system 10].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL S. HANNA whose telephone number is (571)270-3248. The examiner can normally be reached 8-5 M-F.
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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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/SAMUEL S HANNA/Primary Examiner, Art Unit 3775