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
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(a)(1) because various figures of the drawings are not black and white line drawings (see Figs. 2-4, 6-7, 9, and 11-12).
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.
Claim Objections
The claims are objected to because of the following informalities:
Claim 1 at lines 4-6 recites, “a connecting part having a rear end that is hinge-coupled to an upper end of the pair of handles by a second hinge, and having front ends that are hinge-coupled to each other by a first hinge”. This recitation should read – a connecting part having a rear end, the rear end [[that]] is hinge-coupled to an upper end of the pair of handles by a second hinge, and the connecting part having front ends that are hinge-coupled to each other by a first hinge – to reduce the run-on nature of the recitation and more clearly state that it is the rear end, rather than the connecting part, that is required to be hinge-coupled to the upper end, and also to more clearly state that it is the connecting part that has the front ends.
Claim 1 at lines 9-10 recites, “an elastic member extending the pair of handles that urges that pair of handles apart from each other”. This recitation should read -- an elastic member extending between the pair of handles that urges the [[that]] pair of handles apart from each other –.
Claim 2 at line 8 recites, “which is”. This recitation should refer to the first curved surface cutting protrusion by name, rather than using the pronoun “which”.
Appropriate correction is required.
Claim Interpretation
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.
Claim limitations identified below are interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“first and second cutting units” as recited in claim 1 (first, “unit” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “for cutting the fixing plate into a predetermined shape”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “cutting” preceding the generic placeholder describes the function, not the structure, of the units).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
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 the preamble recites, “A device for cutting and/or bending a bone fixing plate”. In view of the body of the claim, however, it is unclear whether the claim encompasses a device for bending, but not cutting, the bone fixing plate. Conventionally, the phrase “and/or” encompasses three options. In this case, the three options are (i) a device for cutting only, (ii) a device for cutting and bending, and (iii) a device for bending only. However, claim 1 at lines 7-8 recites, “first and second cutting units … for cutting the fixing plate into a predetermine shape”. Claim 1 is indefinite because it is unclear whether the claim actually encompasses a device for bending but not cutting, as suggested by the preamble, given that the claim expressly requires cutting units for cutting the fixing plate. In other words, how can a device that includes cutting units for cutting the fixing plate be a device for bending, but not cutting, the fixing plate? Should the preamble be interpreted as – A device for cutting, or for cutting and bending, a bone fixing plate – such that the preamble does not encompass a bending-only option? Since the preamble encompasses a device that bends without cutting, but since the body of the claim requires the ability to cut, the claim is indefinite because it is unclear how to interpret the preamble in a manner consistent with the body of the claim. Does the claim not require the cutting units when the device is for only bending? In the present disclosure, there is no explanation for how the device is able to perform a bending operation without also performing a cutting operation.
Claim 1 recites, “first and second cutting units”. The recitation of ‘cutting units’ is interpreted under 35 USC 112(f) as explained above. The corresponding structure of a single cutting unit in the present specification is two cutting parts ‘114’ and ‘116’. For example, paragraph 45 of the present specification explains, “a cutting unit is provided at an end of the connecting part 104. The cutting unit is composed of the first cutting part 114 and the second cutting part 116.” Similarly, paragraph 57 of the present specification explains, “The cutting unit includes a first cutting part 114 and a second cutting part 116.” Thus, in claim 1, since the corresponding structure for each of the two cutting units includes two cutting parts, claim 1 appears to require four cutting parts. However, this interpretation is inconsistent with the present disclosure, where the device as disclosed does not include four cutting parts. Fig. 6 of the present drawings, for example, shows the device as including two cutting parts ‘114’ and ‘116’. As such, claim 1 is indefinite because it is unclear how to interpret the claim in a manner consistent with the present disclosure. Does the Applicant intend claim 1 to require a single cutting unit, where the corresponding structure of the cutting unit is two cutting parts? Or, does the Applicant intend claim 1 to require that the corresponding structure of each of the first and second cutting units is a single cutting part, such that claim 1 is interpreted as requiring a total of two cutting parts? Or, does the Applicant intend “cutting units” at line 7 to read – cutting parts –? Since claim 1 appears to require four cutting parts due to ‘cutting units’ being interpreted under 35 USC 112(f), and since the present specification suggests that the device is only required to have two cutting parts, claim 1 is indefinite.
Claim 1 at line 7 recite, “the connection parts”. This recitation is indefinite in view of claim 1 at line 4 introducing “a connecting part” in the singular. The recitation at line 7 is indefinite because it is unclear whether the recitation requires the claimed device to include multiple connection parts, or whether line 7 includes a typographical error and instead intends to recite – the connection part – in the singular. Does claim 1 require one connection part, or more than one connection part?
Claim 2 at line 2 recites, “the first cutting part”. There is insufficient antecedent basis for this limitation in the claim, rendering claim 2 indefinite. Does the Applicant intend “the first cutting part” to refer to “the first cutting unit”? Does the Applicant intend “the first cutting part” to introduce a new feature?
Claim 2 recites, “a first V-shaped cutting blade” and “a first V-shaped cutting protrusion”. The recitation of “V-shaped” as used in claim 2 is indefinite in view of the present specification because the first V-shaped cutting blade “118g” and the first V-shaped cutting protrusion “118f” disclosed in the present application do not have what is conventionally referred to as a V-shape. Thus, it appears that Applicant is acting as his or her own lexocigrapher by using the term “V-shaped” contrary to the plain and ordinary meaning of the term. However, where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “V-shaped” in claim 2 is used by the claim to refer to shapes that are not conventionally V-shaped (see the shapes of elements “118g” and “118f” in Fig. 7) while the accepted meaning of V-shaped is shaped like the letter V. The term is indefinite because the specification does not clearly redefine the term. Alternatively, it is unclear whether “V-shaped” is intended not to describe shapes of the cutting blade and cutting protrusion, but instead to describe a shape of a cut produced by the cutting blade and the cutting protrusion. However, if this interpretation were intended, the recitations would be expected to read – a first cutting blade configured to produce a V-shaped cut -– and – a first cutting protrusion configured to produce the V-shaped cut –, respectively, or otherwise make clear that V-shaped is describing a shape of the product cut, rather than shapes of the blade and protrusion.
Claim 3 at line 2 recites, “the second cutting part”. There is insufficient antecedent basis for this limitation in the claim, rendering claim 3 indefinite. Does the Applicant intend “the second cutting part” to refer to “the second cutting unit”? Does the Applicant intend “the second cutting part” to introduce a new feature?
Claim 3 recites, “a second V-shaped cutting blade” and “a second V-shaped cutting protrusion”. The recitation of “V-shaped” as used in claim 3 is indefinite in view of the present specification for the same reasons discussed above in regards to claim 2. For example, it is unclear how the disclosed cutting protrusion ‘120e’ can be considered as V-shaped, unless the Applicant intends V-shaped to have a meaning contrary to the plain and ordinary meaning of shaped like the letter V.
Claim 4 recites, “a cutting surface formed at an upper edge of the first curved cutting blade and an upper edge of the first V-shaped cutting blade”. This recitation is indefinite in view of the present specification. As disclosed in the present specification, upper edges of the first curved cutting blade ‘118e’ and the first V-shaped cutting blade ‘118g’ are spaced apart from one another (see Fig. 7). The upper edges of the first curved cutting blade ‘118e’ and the first V-shaped cutting blade ‘118g’ as disclosed therefore do not form a single cutting surface. As such, claim 4 is indefinite because it is unclear how to interpret the claim in a manner consistent with the present specification. One option is to read claim 4 as if the claim introduces a respective cutting surface at each of the upper edges, such that “a cutting surface” in claim 4 refers to more than one cutting surface. Another option is to read claim 4 as if the claim does not encompass the embodiment illustrated in Fig. 7 of the present drawings.
Claim 5 recites, “the cutting surface is formed at an edge of the second curved cutting blade and the second V-shaped cutting blade”. This recitation is indefinite because it is unclear which cutting surface(s) are referred to in this recitation. Claim 4 introduces “a cutting surface” that is defined by the first bite. Claim 5, though, appears to refer to the cutting surface as being defined by the second bite. A single surface cannot be defined by two different structures that are moveable relative to one another. Is claim 5 introducing one or more new cutting surfaces?
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pub. No. 2010/0313428 A1 to Mocanu.
Regarding claim 1, Mocanu discloses a device 100 for cutting and/or bending a bone fixing plate to be fixed to a bone (see the Abstract and paragraph 2), the device comprising:
a pair of handles 115 rotatably connected to each other by a third hinge (see the annotated Fig. 1 below and paragraph 15);
a connecting part having a rear end that is hinge-coupled to an upper end of the pair of handles by a second hinge (see annotated Fig. 1 below; note that ‘an upper end of the pair of handles’ requires only a single upper end that can be an end of one of the handles, since the upper end is of the pair of handles in the aggregate), and having front ends that are hinge-coupled to each other by a first hinge (see annotated Fig. 1 below, where the ‘first hinge’ defines pivot point 130);
first and second cutting units 120b and 120a, respectively, disposed on the front ends of the connection parts for cutting the fixing plate into a predetermined shape (see Fig. 1; see also paragraph 18); and
an elastic member extending the pair of handles 115 that urges that pair of handles 115 apart from each other (see the annotated Fig. 1 below).
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Regarding claim 2, Mocanu discloses a first bite 140 detachably installed on the first cutting part 120b (see Fig. 1 and paragraph 18), the first bite comprising: a first plane body having at least one first bolt coupling hole (see the annotated Fig. 2B below); a first vertical body extending from one edge of the first plane body (see the annotated Fig. 2B below); a first curved surface cutting blade 210A formed in a circular shape on one side of the first vertical body (see Fig. 2B); a first curved surface cutting protrusion 215A protruding from a center 230A of the first curved surface cutting blade 210A which is adapted to be inserted into a coupling hole of the fixing plate during a cutting operation (see Figs. 2A and paragraph 24); a first V-shaped cutting blade formed at a portion of the first vertical body where the first curved cutting blade 210A is not formed (see the annotated Fig. 2B below, where the indicated blade is V-shaped at least to the same extent as disclosed in the present application because the blade narrows toward one end); and a first V-shaped cutting protrusion formed outside the first V-shaped cutting blade (see the annotated Fig. 2B, where, once again, the protrusion is V-shaped at least to the same extent as disclosed in the present application because the blade narrows toward one end).
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Regarding claim 3, Mocanu discloses a second bite 135 detachably installed on the second cutting part (see Fig. 1 and paragraph 18), the second bite 135 comprising: a second plane body having at least one second bolt coupling hole (see the annotated Fig. 2B above); a second curved surface cutting blade 205A formed on one side surface of the second plane body in a structure corresponding to the first curved surface cutting blade 210A (see Figs. 2A and 2B); a second V-shaped cutting blade formed at a portion of the second plane body where the second curved surface cutting blade 205A is not formed (see the annotated Fig. 2B above, along with the discussion of ‘V-shaped’ in claim 2); and a second V-shaped cutting protrusion formed on a side surface of the second V-shaped cutting blade (see the annotated Fig. 2B above, along with the discussion of ‘V-shaped’ in claim 2).
Regarding claim 4, Mocanu discloses a cutting surface formed at an upper edge of the first curved cutting blade 210A and an upper edge of the first V-shaped cutting blade (see annotated Fig. 2B above; the cutting surface of the first curved cutting blade 210A is an arc-shaped, radially outward facing surface of the blade 210A; the cutting surface of the first V-shaped cutting blade is an arc-shaped surface at a side of the blade – i.e., a surface interacting in a shearing relationship with the second V-shaped cutting blade).
Regarding claim 5, Mocanu discloses that a diameter of the second curved surface cutting blade 205A is larger than a diameter of the first curved surface cutting blade 210A (since the fit shown in Fig. 2C is possible, this feature is satisfied; see also paragraph 27, where the claimed diameters are twice the disclosed radii), and the cutting surface is formed at an edge of the second curved surface cutting blade and the second V-shaped cutting blade (see annotated Fig. 2B above; the cutting surface of the second curved cutting blade 205A is an arc-shaped surface facing toward the blade 210A, where the cutting surface of blade 205A interacts in a shearing relationship with blade 20A; the cutting surface of the second V-shaped cutting blade is an arc-shaped surface at a side of the blade – i.e., a surface interacting in a shearing relationship with the first V-shaped cutting blade).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EVAN H MACFARLANE/Examiner, Art Unit 3724