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 .
DETAILED ACTION
Response to Amendment
The Amendment accompanying the Request for Continued Examination filed 25 August 2026 has been entered. Claims 1-5 are pending. Applicant's amendments have overcome each and every objection and rejection under 35 USC 112 previously set forth in the Final Office Action mailed 26 May 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Presently, it is not clear that the fixing groove being “formed on a contacting surface of each of the first and second cutting parts” is illustrated in the present drawings because no contacting surface is indicated with a reference character in the drawings. Therefore, the “contacting surface of each of the first and second cutting parts” must be shown or the feature(s) canceled from the claim(s); if the contacting surfaces are already shown, the contacting surfaces should be indicated with reference characters (and the reference characters added to the written description). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the specification should be amended to provide an antecedent basis for “a V-shaped blade edge” of each of the first oblique cutting blade and the second oblique cutting blade, including indicating these blade edges with reference characters in the drawings.
Claim Objections
The claims are objected to because of the following informalities:
Claim 1 at line 7 recites, “the first and second cutting parts”. The word – the – should be deleted in this recitation because no cutting parts are previously introduced.
Claim 1 at line 31 recites, “the amplified gripping force”. This recitation should read – the gripping force – since ‘amplified’ is not in the name of the gripping force as initially introduced.
Claim 2 at line 6 recites, “a circular shape”. This recitation should read – the circular shape – in view of claim 1 already introducing the same circular shape.
Appropriate correction is required.
Claim Interpretation
Claim 1 recites, “the fixing groove having a same curve as an outer shape of the fixing plate”. Although the fixing plate is not part of the claimed structure, the examiner does not interpret the comparison between the curve of the fixing groove and the outer shape of the fixing plate to render claim 1 indefinite. The examiner interprets claim 1 as claiming a device that is intended for use with a bone fixing plate having a particular geometry, such that the geometry of the bone fixing plate with which the claimed device is used would be known by a user of the claimed device. Since the geometry of the bone fixing plate would be known, the claimed fixing groove can be compared to the known geometry of the fixing plate to determine whether or not the curve of the fixing groove is the same as the outer shape of the fixing plate.
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.
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.
Claim(s) 1-5 is/are 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 at lines 24-27 recites that the fixing groove comes into close contact with left and right side surfaces of the fixing plate “such that the fixing plate is not separated from the first and second cutting parts during cutting or bending”. This recitation 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. First, this recitation is newly added to the claims and was not present in the claims as originally filed. Second, in paragraph 74 of the present specification, the specification discloses, “The fixing groove 126 have the same shape as the left and right side surfaces of the fixing plate 10, and come into close contact with the side surface of the fixing plate 10 in a state in which the first bite 118 and the second bite 120 are in contact with each other. When the first bite 118 and the second bite 120 are engaged with each other in a state in which the plane of the plate 10 is erected to face the left and right directions, the fixing plate 10 is seated at the fixing groove 126 on the side surfaces thereof, and thus, even when the fixing plate 10 is pulled in the outer longitudinal direction of the bite, the fixing plate 10 is not separated due to the fixing groove 126 in close contact with the curved surfaces of the left and right sides of the fixing plate 10.” (Emphasis added.) This passage does not disclose an ability for the fixing groove to be in contact with the fixing plate “during cutting or bending” as required by lines 24-27. Instead, paragraph 74 explicitly specifies that the fixing groove 126 engages the fixing plate when the plane of the fixing plate is oriented to face in left and right direction, which is orthogonal to a plane of the fixing plate when the fixing plate is being cut. That is, in Fig. 15 of the present drawings, which illustrates the fixing plate in an orientation to be engaged by the fixing grooves, the fixing plate is not positioned to be cut, as can be seen by a comparison of Fig. 15 with Figs. 11 and 12. Thus, as disclosed in the present specification and drawings, the fixing groove is in contact with the fixing plate such that the fixing plate is not separated from the cutting parts at a time distinct from “during cutting”. As such, the recitation that the fixing groove avoids separation “during cutting” introduces new matter because, as disclosed in the present specification, the fixing groove does not engage the fixing plate “during cutting” (and instead only engages the fixing plate at a time during which no cutting is taking place, since the orientation of the fixing plate to engage the fixing groove is an orientation of the fixing plate in which cutting does not occur).
Claim(s) 1-5 is/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 at lines 24-26 recites, “the fixing groove having a same curve as an outer shape of the fixing plate so as to come into close contact with left and right side surfaces of the fixing plate”. This recitation is indefinite for multiple reasons. First, claim 1 at lines 23-24 introduces more than one fixing groove, since lines 23-24 require “a fixing groove formed on a contacting surface of each of the first and second cutting parts” (emphasis added). Claim 1 at lines 24-26 is indefinite because it is unclear whether line 24 is describing one of the fixing grooves or each of the fixing grooves. Line 24 refers to the fixing groove in the singular despite plural fixing grooves being previously introduced, such that line 24 arguably is only referring to one of the fixing grooves. However, if only one fixing groove is being described, it is unclear how the fixing groove can come into close contact with “left and right side surfaces of the fixing plate”. As disclosed in the present specification, two fixing grooves are required to come into contact with two opposing side surfaces of the fixing plate. Thus, the fact that claim 1 requires the fixing groove to come into contact with “left and right side surfaces of the fixing plate” suggests that the recitation is describing each of the fixing grooves. Still, even if claim 1 at line 24 is interpreted as referring to each of the fixing grooves, the recitation at lines 24-26 is regardless indefinite because it is unclear how to interpret the requirement that the fixing groove comes into close contact “with left and right side surfaces of the fixing plate”. As disclosed in the present specification, each fixing groove only comes into contact with one of the left and right side surfaces of the fixing plate at a single moment in time. Thus, it is unclear whether “come into close contact with left and right side surfaces” is describing the fixing grooves jointly, or one of the fixing grooves. Interpreting the recitation in view of the present specification suggests the former; however, the plane language of the claim suggests the latter. Thus, the recitation at lines 24-26 of claim 1 is indefinite. The examiner suggests amending claim 1 to require that each of the fixing grooves has a same curve as a respective outer shape of the fixing plate so that the fixing grooves come into contact with left and right side surfaces, respectively, of the fixing plate.
Claim 1 at lines 24-26 recites, “the fixing groove having a same curve as an outer shape of the fixing plate so as to come into close contact with left and right side surfaces of the fixing plate”. This recitation is further indefinite because the term “close” in the phrase “close contact” is a relative term that renders the claim indefinite. The term “close” in the context of “close contact” in claim 1 is a relative term which renders the claim indefinite. The term “close” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention, especially in view of “close” modifying the term “contact”, where “contact” already requires no space between two structures. How is “close contact” different than “contact”? Is “close contact” somehow closer than normal contact, or does “close contact” require significant portions of the fixing groove and fixing plate to contact one another? Alternatively, does “close” somehow broaden “contact” such that “close contact” can be satisfied even if there is no actual contact? As such, the recitation “close contact” is indefinite. (Note also that merely because the Applicant uses the term “close contact” in the specification does not render the recitation definite; even in view of the uses of “close contact” in the specification, the above described uncertainty about the metes and bounds of “close contact” remains.)
Claim 2 is indefinite because the relationship between the “first bite” and the “first cutting part” is unclear, and also because if the “first bite” is interpreted as a distinct part in relation to the “first cutting part” as suggested by the plain language of claim 2 then the structure required by claim 2 is unclear. Claim 2 at line 2 recites, “a first bite detachably installed on the first cutting part”. This recitation suggests that the first bite is in addition to the first cutting part because the first bite is introduced as distinct from (and in fact detachable from) the first cutting part. However, claim 2 later requires that the first curved surface cutting blade and the first oblique cutting blade are formed on a body of the first bite. Claim 1, though, requires that the first cutting part comprises the first curved surface cutting blade and the first oblique cutting blade. The plain meaning of claim 2 requires that the first bite is detachable from a structure (i.e., the first cutting part) that includes the first curved surface cutting blade and the first oblique cutting blade. How can the first curved surface cutting blade and the first oblique cutting blade be comprised by the first cutting part and formed on a body of the first bite, if the first bite is in addition to the first cutting part? The two cutting blades appear to be required to be comprised by two different structures. As disclosed in the present specification, the first bite is not detachable from a structure that comprises the first curved surface cutting blade and the first oblique cutting blade. Can the first bite be interpreted as being a subset of the first cutting part, even though the first bite is required to be detachable from the first cutting part? Or, does claim 2 remove the requirement from claim 1 that the first cutting part comprises the first curved surface cutting blade and the first oblique cutting blade, since claim 2 requires that these blades are formed by the bite that is detachable from the first cutting part? As one option for resolving this issue, the examiner suggests amending claim 1 to require the first bite, with the first bite (rather than the first cutting part) being described as the structure that includes the first cutting blades. As another option for resolving this issue, the examiner suggests amending claim 2 to recite that the first cutting part comprises the first bite, with the first bite being detachable from a bite-holding portion (or some other subset) of the first cutting part. (Note that the examiner is not suggesting any particular claim language, but is instead suggesting a conceptual solution to the indefiniteness issue; as a reminder, all claim language must have a specification antecedent basis so any new language added to claim 2 should find antecedent basis in the specification).
Claim 3 is indefinite because the relationship between the “second bite” and the “second cutting part” is unclear, and also because if the “second bite” is interpreted as a distinct part in relation to the “second cutting part” as suggested by the plain language of claim 3 then the structure required by claim 3 is unclear. Claim 3 at line 2 recites, “a second bite detachably installed on the second cutting part”. This recitation suggests that the second bite is in addition to the second cutting part because the second bite is introduced as distinct from (and in fact detachable from) the second cutting part. However, claim 3 later requires that the second curved surface cutting blade and the second oblique cutting blade are formed on a body of the second bite. Claim 1, though, requires that the second cutting part comprises the second curved surface cutting blade and the second oblique cutting blade. The two cutting blades cannot be comprised by the second cutting part and formed by the second bite if the second bite is distinct from the second cutting part. Thus claim 3 is indefinite for the same reasons discussed above with respect to claim 2. Like the examiner’s suggestion for claim 2 above, as one option for resolving this issue the examiner suggests amending claim 1 to require the second bite, with the second bite (rather than the second cutting part) being described as the structure that includes the second cutting blades. As another option for resolving this issue, the examiner suggests amending claim 3 to clarify that the second bite is a subset of the second cutting part, with the second bite being detachable from some remaining portion of the second cutting part.
Allowable Subject Matter
Claim(s) 1-5 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. The following is a statement of reasons for the indication of allowable subject matter: Claim 1 requires, “wherein each of the first oblique cutting blade and the second oblique cutting blade has a V-shaped blade edge, and the first oblique cutting blade and the second oblique cutting blade are configured to engage with each other to cut a distal end portion of the fixing plate in a V-shape such that a hook is formed at a distal end of the fixing plate; a fixing groove formed on a contacting surface of each of the first and second cutting parts, the fixing groove having a same curve as an outer shape of the fixing plate so as to come into close contact with left and right side surfaces of the fixing plate such that the fixing plate is not separated from the first and second cutting parts during cutting or bending”. No known reference or combination of references teaches or suggests the above quoted features, in combination with the remainder of features required by claim 1.
The best known prior art is US Pub. No. 2010/0313428 A1 to Mocanu. As shown in the annotated Fig. on page 9 of the Final Office Action mailed 26 May 2026, Mocanu teaches first and second cutting parts having first and second oblique cutting blades. However, the oblique cutting blades of Mocanu do not each have a “V-shaped blade edge” and are not “configured to engage with each other to cut a distal portion of the fixing plate in a V-shape such that a hook is formed at a distal end of the fixing plate” as required by claim 1. Moreover, Mocanu also fails to disclose that each of the first and second cutting parts has a fixing groove, where the fixing groove has “a same curve as an outer shape of the fixing plate so as to come into close contact with left and right side surfaces of the fixing plate” also as required by claim 1. Finally, there is no known motivation to modify Mocanu to include each feature discussed above. As such, claim 1 distinguishes over Mocanu.
Other relevant cutting devices include:
US Pub. No. 2021/0265919 A1 to Beyersdorf et al., which teaches a cutting device having V-shaped cutting edges 66 (see Fig. 15). However, even if Mocanu were modified in view of Beyersdorf by providing cutting blades “150” of Mocanu with V-shaped cutting edges as disclosed by Beyersdorf, Mocanu as thus modified would still fail to disclose the features of the fixing groove required by claim 1.
US Pat. No. 5,822,865 to Bosch et al., which teaches a bite 31 having a groove (the groove shown in Fig. 6 and including bays 38 and bulges 39), and another bite 51 also having a groove (the groove shown in Fig. 10 and including bays 53 and bulges 54). However, each of the grooves has a respective cutting edge 35 and 47 that interact in a shearing operation. As such, the grooves of Bosch are unable to come into contact with left and right side surfaces of the fixing plate such that the fixing plate is not separated from the first and second cutting parts in the manner required by claim 1. That is, rather than fixing grooves acting as clamps in the manner of the fixing grooves of claim 1, the grooves of Bosch engage in a shearing action.
DE 202 08 332 U1 to Karl Leibinger Medizintechnik GmbH, which teaches a device with a bending prism 22 and a bending support 23. Although the bending prism has a V-shape, the prism 22 and support 23 perform a bending, rather than a cutting, operation. As such, the prims 22 and support 23 do not disclose the features of the first and second oblique cutting blades as recited in claim 1, which are configured to cut a distal end portion of the fixing plate in a V-shape such that a hook is formed at a distal end of the fixing plate. Thus, even if Mocanu were provided with a bending prism and bending support as taught by Karl Leibinger Medizintechnik GmbH, the resulting device would still not include the features of the first and second oblique cutting blades as required by claim 1.
EP 2 204 130 A1 to Langer fails to disclose the features of the first and second oblique cutting blades and the fixing grooves as required by claim 1.
DE 43 08 319 C1 to Muehling fails to disclose the features of the first and second oblique cutting blades and the fixing grooves as required by claim 1.
Response to Arguments
Regarding the rejection of claim 1 under 35 USC 102 as being anticipated by Mocanu, Applicant’s arguments at paragraphs A and B on pages 6-7 of the Remarks of 25 August 2026 that Mocanu fails to disclose the V-shaped blade edge geometry recited in claim 1 and Applicant’s argument that Mocanu fails to disclose the fixing groove as recited in claim 1 are persuasive. Therefore, the rejection of claim 1 as being anticipated by Mocanu has been overcome. As a result, Applicant’s argument with respect to the force amplification at paragraph C. on pages 7-8 of the Remarks is moot.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EVAN H MACFARLANE whose telephone number is (303)297-4242. The examiner can normally be reached Monday-Friday, 7:30AM to 4:00PM MT.
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/EVAN H MACFARLANE/Examiner, Art Unit 3724
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