DETAILED ACTION
This office action is responsive to the amendment of June 3, 2026. By that amendment, claims 1, 3-5, and 12 were amended; and claims 2, 6-10, and 13-16 were canceled. Claims 1, 3-5, 11 and 12 are pending.
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
The outstanding objection to claim 3 was obviated by amendment to the claim of June 3, 2026.
The outstanding rejection of all claims under 35 USC 112(b) was overcome by the amendments to the claim of June 3, 2026.
Applicant’s arguments with respect to the rejection of claim(s) 1, 3-5, 11 and 12 under 35 USC 102(a)(1) in view of Biedermann et al. (US 2017/0056194 A1) have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. All features argued in the remarks of June 3, 2026, are related to claim amendments of that date and are identified in a secondary reference in a new rejection under 35 USC 103, below.
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, 3-5, 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Biedermann et al. (US 2017/0056194 A1) in view of Maness et al. (US 2009/0099566 A1).
Regarding claim 1, Biedermann teaches a surgical instrument inserter device 50, the inserter device comprising:
a shaft 51/54;
a first mounting location provided at the proximal end of the shaft 51/54 (at the location where a retaining nut 60 is retained), the first mounting location being capable of securing the surgical instrument inserter device to an inferred impactor device, wherein the first mounting location at 60 is formed in a linear section of the shaft that has a first longitudinal axis (aligned with the handle in fig. 1);
a second mounting location 53 provided at the distal end of the shaft 51/54, the second mounting location being capable of securing the surgical instrument inserter device 50 to an inferred orthopaedic surgical instrument;
wherein the second mounting location 53 includes a contact element having (i) one or more part spherical surface sections 57 and (ii) a pair of opposing side flats 61.
Biedermann does not teach the second mounting location 53 is formed in a curved section of the shaft that has a second longitudinal axis that is parallel to, but offset from, the first longitudinal axis; or the opposing side flats 61 extending parallel to the second longitudinal axis and offset from the first longitudinal axis.
Maness at fig. 7 teaches an impacting tool kit at fig. 7 which includes straight and curved shafts for inserting implants. The curved arrangements include a tip portion which is in a curved section of the shaft and has a second longitudinal axis that is parallel to but offset from the first longitudinal axis. Maness teaches use of these different shaft designs “based upon surgical approach, the surgeon’s personal preference, and patient anatomy” [0031].
It would have been obvious to one with ordinary skill in the art at the time of the invention to form Biedermann’s device with a curved shaft in view of the Maness teaching that doing so can make the device useful for particular patient anatomies and improve ergonomics of the device based on user preferences. One would have done so by modifying portion 51/54 or Biedermann to include the shape of one of the curved shafts of Maness at fig. 7. Such modification would have resulted in the opposing side flats 61 of modified Biedermann extending parallel to the second longitudinal axis and offset from the first longitudinal axis.
Regarding claim 3, the one or more part spherical surface sections 57 are curved contact surfaces.
Regarding claim 4, the one or more part spherical surface sections 57 are articulation surfaces (e.g. capable of permitting articulation about that surface).
Regarding claim 5, the one or more part spherical surface sections 57 define a deformed partial sphere.
Regarding claim 11, the contact element at 53 has a first extent and a second extent, wherein the first extent is between a first pair of points on opposite sides of the contact element and wherein the second extent is between a second different pair of points on different opposite sides of the contact element, wherein the first extent is greater than the second extent as can be seen clearly in fig. 3E.
Regarding claim 12, the shaft 51/54 includes a body portion and includes an elongate portion, together with a transition portion that connects the body portion to the elongate portion – choosing various portions of the shaft 51/54. These sections are given no structure, and can be mentally designated portions of the shaft.
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 David Bates whose telephone number is (571)270-7034. The examiner can normally be reached Monday through Friday, 10AM-6PM
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If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, 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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/DAVID W BATES/Primary Examiner, Art Unit 3799
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