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 .
Response to Arguments
Applicant's arguments filed 04/13/2026 have been fully considered but they are not persuasive.
Applicant argues: Kang fails to teach cutting instructions that direct a CAS to form no more than a first number of cut surfaces that are less than the total number of contact surfaces of an implant.
Response: the office is of the position that it has been held that in product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. In In re Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997), the court affirmed a finding that a prior patent to a conical spout used primarily to dispense oil from an oil can inherently performed the functions recited in applicant’s claim to a conical container top for dispensing popped popcorn. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Moreover, it has been held that "[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)." {MPEP 2114 (II)}.
In this case, the device disclosed by Kang exhibits substantially identical structure to that claimed and therefore inherently capable of performing the claimed functions if one desire to do so.
The examined claim requires “to form no more than a first number of cut surfaces …” , that first number can be one or more surfaces. In this case, the instructions of Kang exhibits at least two cut surfaces which should be done in a time frame, and no more than these cut surfaces are done within that time frame. Accordingly, a PHOSITA considering the entirety of Kang would understand that Kang discloses all the claimed limitations, the fact that Kang includes additional structure not required by Applicant's invention are irrelevant.
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, 36 and 38 – 39 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 computer assisted surgery (CAS) device to form no more than 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 no more than a first number of cut surfaces on a femur “F”, since the first number of cut surfaces does not specify a specific number, 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 a 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”], the cutting instructions stored on a computing system operatively coupled to the CAS device for directing the CAS device to form the first number of cut surfaces on the bone [¶42, ¶51, ¶57, ¶69, ¶78, ¶82 - ¶84, ¶92 - ¶93, ¶105, ¶110 - ¶111 and Figs. 5].
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 hand-held surgical robot, a semi-active surgical robot, or a haptic surgical robot [guide 38 and/or instrument 42, or robotic system 10].
Claim 38, wherein the computing system comprises one or more computers and the CAS device comprises the computing system [¶42].
Claim 39, wherein the implant is unsupported by the CAS [Fig. 66 and ¶66].
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 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 SAMUEL S. HANNA whose telephone number is (571)270-3248. The examiner can normally be reached 8-5 M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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