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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 7-10, 14-18 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “the handle portion and the surgical instrument body comprise complementary teeth configured to allow the surgical instrument body to be rotated about the common coaxial axis relative to the handle portion.” There is lack of written description as to how this rotational motion is provided by the complimentary teeth. With respect to Figs 9, applicant recites is spec. ¶0165,
“the body can include a set of teeth 703 (FIG. 9B) that are configured to engage with a complementary set of teeth 741 (FIG. 9B) disposed on the handle portion 740. In this embodiment, the body 702 (and thus the tracking array 708 affixed thereto) may be rotated to different orientations, and the corresponding sets of teeth 703, 741 may be engaged together to hold the body 702 in place relative to the handle portion 740.”,
That is, is the teeth are configured to hold the body 702 in place relative to the handle portion 740, in contrast to allowing rotation, as claimed. It is not described with respect to the claimed embodiment, as to how the teeth are configured to allow /permit rotation, and how the body is rotated using the complementary teeth. Further, complementary teeth are interlocking and hence rotating in the handle /body, will rotate the other as well.
Claims 2-4, 7-10, 14-18 recite similar limitations or depend on claim 1 and are rejected for same reasons as above.
Prior Art Made Of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hilton [US 20220192681 A1], Thorne [US 20060259055 A1], Aman [US 10993729 B1] are directed to configurable instruments comprising different modules that are interconnected. Beale [US 20090264940 A1] discloses a handheld instrument with a tracking array with a rotatable member. Douglas [US 3827470 A] discloses complementary teeth for engaging a handle and body. However, in view of the 112 rejection above, none of these references are currently applicable for anticipation or obviousness rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OOMMEN JACOB whose telephone number is (571)270-5166. The examiner can normally be reached 8:00-4:00.
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/Oommen Jacob/Primary Examiner, Art Unit 3797
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