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 I, Claims 1-12 and Species A, Figs. 2-3, in the reply filed on 02/13/26 is acknowledged.
Claims 6, 8 & 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 02/13/26.
Claim Objections
Claim 1 is objected to because of the following informalities:
In Line 3, the word “and” should be deleted and a colon should be added immediately following the word “comprises”.
In Lines 4, 5 & 7, the dashes should be removed from the beginning of the lines.
In Line 5, the word --wherein-- should be added at the beginning of the line before the words “the sound”.
Appropriate correction is required.
Claim 2 is objected to because of the following informalities and should be amended as follows: “2. (Original) The sound and vibration generator according to claim 1, wherein the sound and vibration generator is at least partially incorporated into of the processing means.” Appropriate correction is required.
Claim 3 is objected to because of the following informalities and should be amended as follows: “3. (Currently Amended) The sound and vibration generator according to claim 1, wherein the sound and vibration generator is at least partially incorporated into of the processing means.” Appropriate correction is required.
Claim 5 is objected to because of the following informalities: In Line 2, the word “is” should be replaced with the word --are--. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: In Line 2, the word “is” should be replaced with the word --are--. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: In Line 2, the words --one or more-- should be added before the second instance of the word “mechanical”. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: In Line 2, the words “may move” should be replaced with the limitation --is moveable--. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: In Line 2, the word “is” should be replaced with the word --are--. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: In Line 2, the limitation “the one or more vibratory element is” should be replaced with the limitation --the one or more mechanical vibratory elements are--. Appropriate correction is required.
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 1-5, 7, & 9-12 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 1 recites the limitation "the signal of sound and vibration" in Line 7. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the limitation is being interpreted as “the sound and vibration”. Appropriate correction is required.
Claim 10 recites the limitation "the cutting edge” in Line 2. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the limitation is being interpreted as “a cutting edge of the processing means”. Appropriate correction is required.
Claim 12 recites the limitations “the material surface” and “the processing means surface” at Line 3. There is insufficient antecedent basis for these limitations in the claim. For purposes of examination, the limitations are being interpreted as “a surface of the material” and “a surface of the processing means”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim limitations in this application that are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph are as follows: “vibratory elements”, (Claim 1) and “processing means” (Claim 1).
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) 1-5, 7 & 9-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sippola et al. (WIPO Pub No. 2018/069579).
Regarding Claim 1 as best understood, Sippola et al. discloses a sound and vibration generator (Figs. 1-7, Pg. 26, Line 11 – Pg. 28, Line 2), comprising one or more mechanical vibratory elements (112 & 204, Fig. 2) capable of vibrating (Page 8), wherein the sound and vibration generator is at least partially incorporated into a processing means (rotating drill bit 102, Fig. 1) of a surgical device (cutting burr 100, Figs. 1-7), and wherein the sound and vibration generator is capable of amplifying sound and vibration (during rotation of the drill bit 102, depending on the speed in revolutions per minute, (for example 1,000- 4,000,000), the sound and vibration level of 102 would be amplified by 112 & 204 as recited in the functional language of the claim in the same manner as the Applicants due to their identical structure and material, Page 14) generated during processing of a material (bone, cartilage, calcified tissue, foreign object in a patent, Page 7) by the processing means.
Regarding Claim 2, Sippola et al. discloses wherein the sound and vibration generator is at least partially incorporated into a grinding surface (104, Fig. 3, Page 26 & Abstract) of the processing means.
Regarding Claim 3, Sippola et al. discloses wherein the sound and vibration generator is at least partially incorporated into (via indentation 202) one or more cutting edges (105, Fig. 3, Page 27) of the processing means.
Regarding Claim 4, Sippola et al. discloses wherein the sound and vibration generator is incorporated into (via indentation 202) a cutting edge (105, Fig. 3, Page 27) of the processing means.
Regarding Claim 5, Sippola et al. discloses wherein the one or more mechanical vibratory elements are capable of generating sound and vibration by periodically hitting a surface of the material or by periodically hitting a surface of the surgical device (during rotation of the drill bit 102, 112 & 204 are fully and structurally capable of generating sound and vibration by periodically hitting a surface of the material it’s in contact with or a surface within 202 as recited in the functional language of the claim in the same manner as the Applicants due to their identical structure and material, Page 23.).
Regarding Claim 7, Sippola et al. discloses wherein the one or more mechanical vibratory elements are movable in relation to the processing means (204 is an elastomeric ring which radially compresses within the indentation 202 of 102 and 112 radially compresses and retracts back and forth into the indentation 202 of 102 during use, Figs. 6-7, Pages 22-23, 27-28).
Regarding Claim 9 as best understood, Sippola et al. discloses wherein the one or more mechanical vibratory elements are installed so that the one or more mechanical vibratory elements are capable of reaching a surface of the material prior to a surface of the processing means (112 and 204 are engaged within the indentation 202 of 102 such that 112 protrudes circumferentially from the outermost surface of 102 as past the cutting edges 105 in a first position as seen in Figs. 3 & 6-7, Pages 7-10).
Regarding Claim 10 as best understood, Sippola et al. discloses wherein the sound and vibration generator is moveable (204 is an elastomeric ring which radially compresses within the indentation 202 of 102 adjacent to cutting edges 105 and 112 radially compresses and retracts back and forth into the indentation 202 of 102 adjacent to cutting edges 105 during use, Figs. 6-7, Pages 22-23, 27-28) in relation to a cutting edge of the processing means (105, Fig. 3, Page 27).
Regarding Claim 11, Sippola et al. discloses wherein the one or more mechanical vibratory elements are capable of generating the sound and vibration when the processing means is adjacent to the material (during rotation of the drill bit 102, 112 & 204 are fully and structurally capable of generating sound and vibration by periodically hitting a surface of the material it’s in contact with as recited in the functional language of the claim in the same manner as the Applicants due to their identical structure and material, Page 23.).
Regarding Claim 12, Sippola et al. discloses wherein the one or more mechanical vibratory elements are capable of generating the sound and vibration when the material is being processed (during rotation of the drill bit 102, 112 & 204 are fully and structurally capable of generating sound and vibration by periodically hitting a surface of the material it’s in contact with or a surface within 202 as recited in the functional language of the claim in the same manner as the Applicants due to their identical structure and material, Page 23.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WEISS whose telephone number is (571) 270-5597. The examiner can normally be reached Monday through Friday, 8:00 am to 4:00 pm EST. If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, KEVIN T. TRUONG, at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JESSICA WEISS/Primary Examiner, Art Unit 3775