Detailed Action
This is the first office action on the merits for US application number 18/760,783.
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 Objections
Claim(s) 1 and 13 is/are objected to because of the following informalities:
Claim 1 lines 12-13 should read “wherein the engagement member is moveable distally to urge the engagement”.
Claim 13 lines 4-5 should read “end of the neck part[[,]] for locking the engagement surface”.
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.
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: locking mechanism in claim 1 line 9, locking members in claim 13 lines 1-2, and locking mechanism in claim 22 lines 1-2.
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 1 is anticipated by U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332, claim 1 as identified in the below table; where the differences in claim language are shown in bold.
Instant claim 1
U.S. Patent No. 12,023,050 claim 1
An acetabular reamer handle comprising:
An acetabular reamer handle comprising:
a hollow shaft having a distal end;
a hollow shaft having a distal end and a wall with pair of holes extending therethrough;
a hollow neck part having a longitudinal axis;
a hollow neck part having a longitudinal axis;
a driveline extending through the shaft and the neck part, wherein a distally located head part of the driveline is mounted for rotation about the longitudinal axis of the neck part and is connectable to an acetabular reamer, and wherein the distal end of the shaft and a proximal end of the neck part are pivotally attached to allow the shaft to be tilted relative to the longitudinal axis of the neck part; and
a driveline extending through the shaft and the neck part, wherein a distally located head part of the driveline is mounted for rotation about the longitudinal axis of the neck part and is connectable to an acetabular reamer, and wherein the distal end of the shaft and a proximal end of the neck part are pivotally attached to allow the shaft to be tilted relative to the longitudinal axis of the neck part; and
a locking mechanism comprising an engagement member having an engagement surface located at the distal end of the shaft, wherein the engagement surface is substantially perimetric to a longitudinal axis of the hollow shaft at the distal end of the shaft, and wherein the engagement member is moveable distally to urge the engagement surface against the proximal end of the neck part to resist said tilting of the shaft relative to the longitudinal axis of the neck part.
a locking mechanism having a proximal and distal end, the locking mechanism comprising: an engagement member having an engagement surface located at the distal end of the locking mechanism, wherein the engagement surface is positioned at the distal end of the hollow shaft and is ring-shaped and substantially perimetric to a longitudinal axis of the hollow shaft at the distal end of the shaft, wherein the engagement member is slideably mounted inside the hollow shaft and is configured to protrude from the distal end of the hollow shaft to urge the engagement surface against the proximal end of the neck part; a spring mounted proximally with respect to the engagement member, the spring being mounted inside the hollow shaft; a handle mounted at the proximal end of the locking mechanism, the handle being mounted outside the hollow shaft; a pair of arms extending from the proximal end to the distal end of the of locking mechanism such that the pair of arms are substantially parallel to the distal end of the hollow shaft, the pair of arms being mounted to the engagement member at the distal end of the locking mechanism and the handle at the proximal end of the locking mechanism, and the pair of arms extending through a respective hole of the pair of holes in the hollow shaft at the proximal end of the locking mechanism so that the handle is mounted outside the hollow shaft; and wherein the engagement member moveable distally to urge the engagement surface against the proximal end of the neck part to resist said tilting of the shaft relative to the longitudinal axis of the neck part, wherein the proximal end of the neck part includes a surface for engagement with the engagement surface of the engagement member, wherein said surface of the proximal end of the neck part is contained in a plane and said plane is oriented at a non-zero angle α with respect to the longitudinal axis of the neck part, where α<90°.
Claims 2, 3, 8, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims 2, 3, 8, and 17 are anticipated by U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332, claim 1 as identified in the below table; where the differences in claim language are shown in bold.
Instant claims 2, 3, 8, and 17 (with claim 1)
U.S. Patent No. 12,023,050 claim 1
An acetabular reamer handle comprising:
An acetabular reamer handle comprising:
a hollow shaft having a distal end;
a hollow shaft having a distal end and a wall with pair of holes extending therethrough;
a hollow neck part having a longitudinal axis;
a hollow neck part having a longitudinal axis;
a driveline extending through the shaft and the neck part, wherein a distally located head part of the driveline is mounted for rotation about the longitudinal axis of the neck part and is connectable to an acetabular reamer, and wherein the distal end of the shaft and a proximal end of the neck part are pivotally attached to allow the shaft to be tilted relative to the longitudinal axis of the neck part; and
a driveline extending through the shaft and the neck part, wherein a distally located head part of the driveline is mounted for rotation about the longitudinal axis of the neck part and is connectable to an acetabular reamer, and wherein the distal end of the shaft and a proximal end of the neck part are pivotally attached to allow the shaft to be tilted relative to the longitudinal axis of the neck part; and
a locking mechanism comprising an engagement member having an engagement surface located at the distal end of the shaft, wherein the engagement surface is substantially perimetric to a longitudinal axis of the hollow shaft at the distal end of the shaft, and wherein the engagement member is moveable distally to urge the engagement surface against the proximal end of the neck part to resist said tilting of the shaft relative to the longitudinal axis of the neck part.
8. The acetabular reamer handle of any preceding claim, wherein the engagement member is slideably mounted inside the hollow shaft and is configured to protrude from the distal end of the hollow shaft to urge the engagement surface against the proximal end of the neck part.
17. The acetabular reamer handle of any preceding claim, wherein the engagement surface is substantially ring shaped.
a locking mechanism having a proximal and distal end, the locking mechanism comprising: an engagement member having an engagement surface located at the distal end of the locking mechanism, wherein the engagement surface is positioned at the distal end of the hollow shaft and is ring-shaped and substantially perimetric to a longitudinal axis of the hollow shaft at the distal end of the shaft, wherein the engagement member is slideably mounted inside the hollow shaft and is configured to protrude from the distal end of the hollow shaft to urge the engagement surface against the proximal end of the neck part; a spring mounted proximally with respect to the engagement member, the spring being mounted inside the hollow shaft; a handle mounted at the proximal end of the locking mechanism, the handle being mounted outside the hollow shaft; a pair of arms extending from the proximal end to the distal end of the of locking mechanism such that the pair of arms are substantially parallel to the distal end of the hollow shaft, the pair of arms being mounted to the engagement member at the distal end of the locking mechanism and the handle at the proximal end of the locking mechanism, and the pair of arms extending through a respective hole of the pair of holes in the hollow shaft at the proximal end of the locking mechanism so that the handle is mounted outside the hollow shaft; and wherein the engagement member moveable distally to urge the engagement surface against the proximal end of the neck part to resist said tilting of the shaft relative to the longitudinal axis of the neck part,
2. The acetabular reamer handle of claim 1, wherein the proximal end of the neck part includes a surface for engagement with the engagement surface of the engagement member, wherein said surface of the proximal end of the neck part is contained in a plane.
wherein the proximal end of the neck part includes a surface for engagement with the engagement surface of the engagement member, wherein said surface of the proximal end of the neck part is contained in a plane
3. The acetabular reamer handle of claim 1, wherein a surface of the proximal end of the neck part is oriented at a non-zero angle α with respect to the longitudinal axis of the neck part, where α <90[Symbol font/0xB0].
and said plane is oriented at a non-zero angle α with respect to the longitudinal axis of the neck part, where α<90°.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 9 is anticipated by U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332, claim 2 as identified in the below table; where the differences in claim language are shown in bold.
Instant claim 9
U.S. Patent No. 12,023,050 claim 2
The acetabular reamer handle of any preceding claim, wherein the engagement member is resiliently biased distally to urge the engagement surface against the proximal end of the neck part.
The acetabular reamer handle of claim 1, wherein the engagement member is resiliently biased distally to urge the engagement surface against the proximal end of the neck part.
Claims 10 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims 10 and 11 are anticipated by U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332, claim 3 as identified in the below table; where the differences in claim language are shown in bold.
Instant claim 10
U.S. Patent No. 12,023,050 claim 3
10. The acetabular reamer handle of claim 9, wherein the locking mechanism comprises a helical spring mounted coaxially with respect to the distal end of the hollow shaft and proximally with respect to the engagement member.
From claim 1: …the locking mechanism comprising: …a spring mounted proximally with respect to the engagement member …
3. The acetabular reamer handle of claim 2, wherein the spring comprises a helical spring further mounted coaxially with respect to the distal end of the hollow shaft.
11. The acetabular reamer handle of claim 10, wherein the helical spring is mounted inside the hollow shaft.
From claim 1:…the spring being mounted inside the hollow shaft;…
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 12 is anticipated by U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332, claim 4 as identified in the below table; where the differences in claim language are shown in bold.
Instant claim 12
U.S. Patent No. 12,023,050 claim 4
12. The acetabular reamer handle of any preceding claim, wherein the engagement member includes a handle part for manually retracting the engagement member in a proximal direction to release the engagement surface from the proximal end of the neck part.
From claim 1: …
the locking mechanism comprising: … a handle mounted at the proximal end of the locking mechanism, the handle being mounted outside the hollow shaft;…
4. The acetabular reamer handle of claim 1, wherein the handle is configured for manually retracting the engagement member in a proximal direction to release the engagement surface from the proximal end of the neck part.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 13 is anticipated by U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332, claim 5 as identified in the below table; where the differences in claim language are shown in bold.
Instant claim 13
U.S. Patent No. 12,023,050 claim 5
13. The acetabular reamer handle of any preceding claim, comprising one or more locking members extending from the engagement surface to be received within one or more corresponding openings in the proximal end of the neck part, for locking the engagement surface against the proximal end of the neck part to resist said tilting of the shaft relative to the longitudinal axis of the neck part.
5. The acetabular reamer handle of claim 1, comprising one or more locking members extending from the engagement surface to be received within one or more corresponding openings in the proximal end of the neck part for locking the engagement surface against the proximal end of the neck part to resist said tilting of the shaft relative to the longitudinal axis of the neck part.
Claims 15 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 7 of U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 15 and 16 are anticipated by U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332, claims 6 and 7 as identified in the below table; where the differences in claim language are shown in bold.
Instant claims 15 and 16
U.S. Patent No. 12,023,050 claims 6 and 7
15. The acetabular reamer handle of any preceding claim, wherein the acetabular reamer handle is an offset acetabular reamer handle in which the hollow shaft includes a proximal shaft section and a distal shaft section, in which the shaft has a bend located at an interface between the proximal shaft section and the distal shaft section.
6. The acetabular reamer handle of claim 1, wherein the acetabular reamer handle is an offset acetabular reamer handle in which the hollow shaft includes a proximal shaft section and a distal shaft section, in which the shaft has a bend located at an interface between the proximal shaft section and the distal shaft section.
16. The acetabular reamer handle of claim 15, wherein the proximal shaft section and the distal shaft section are rigidly formed whereby the angle between the longitudinal axis of the distal shaft section and a longitudinal axis of the proximal shaft section is fixed.
7. The acetabular reamer handle of claim 6, wherein the proximal shaft section and the distal shaft section are rigidly formed whereby the angle between the longitudinal axis of the distal shaft section and a longitudinal axis of the proximal shaft section is fixed.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 18 is anticipated by U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332, claim 8 as identified in the below table; where the differences in claim language are shown in bold.
Instant claim 18
U.S. Patent No. 12,023,050 claim 8
18. A surgical kit comprising the acetabular reamer handle of any preceding claim and one or more differently sized acetabular reamers connectable to the head part of the acetabular reamer handle.
8. A surgical kit comprising the acetabular reamer handle of claim 1 and one or more differently sized acetabular reamers connectable to the head part of the acetabular reamer handle.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 19 is anticipated by U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332, claim 9 as identified in the below table; where the differences in claim language are shown in bold.
Instant claim 19
U.S. Patent No. 12,023,050 claim 9
A method of reaming an acetabulum of a patient using a reamer connected to a reamer handle, the reamer handle comprising:
A method of reaming an acetabulum of a patient using a reamer connected to a reamer handle, the reamer handle comprising:
a hollow shaft having a distal end; a hollow neck part having a longitudinal axis;
a hollow shaft having a distal end and a wall with pair of holes extending therethrough; a hollow neck part having a longitudinal axis;
a driveline extending through the shaft and the neck part, wherein a distally located head part of the driveline is mounted for rotation about the longitudinal axis of the neck part and is connected to the reamer, and wherein the distal end of the shaft and a proximal end of the neck part are pivotally attached to allow the shaft to be tilted relative to the longitudinal axis of the neck part;.
a driveline extending through the shaft and the neck part, wherein a distally located head part of the driveline is mounted for rotation about the longitudinal axis of the neck part and is connected to the reamer, and wherein the distal end of the shaft and a proximal end of the neck part are pivotally attached to allow the shaft to be tilted relative to the longitudinal axis of the neck part; and a locking mechanism having a proximal and distal end, the locking mechanism comprising: an engagement member having an engagement surface located at the distal end of the locking mechanism, wherein the engagement surface is positioned at the distal end of the hollow shaft and is ring-shaped and substantially perimetric to a longitudinal axis of the hollow shaft at the distal end of the shaft, wherein the engagement member is slideably mounted inside the hollow shaft and is configured to protrude from the distal end of the hollow shaft to urge the engagement surface against the proximal end of the neck part; a spring mounted proximally with respect to the engagement member, the spring being mounted inside the hollow shaft; a handle mounted at the proximal end of the locking mechanism, the handle being mounted outside the hollow shaft; a pair of arms extending from the proximal end to the distal end of the of locking mechanism such that the pair of arms are substantially parallel to the distal end of the hollow shaft, the pair of arms being mounted to the engagement member at the distal end of the locking mechanism and the handle at the proximal end of the locking mechanism, and the pair of arms extending through a respective hole of the pair of holes in the hollow shaft at the proximal end of the locking mechanism so that the handle is mounted outside the hollow shaft; and wherein the engagement member moveable distally to urge the engagement surface against the proximal end of the neck part to resist said tilting of the shaft relative to the longitudinal axis of the neck part, wherein the proximal end of the neck part includes a surface for engagement with the engagement surface of the engagement member, wherein said surface of the proximal end of the neck part is contained in a plane and said plane is oriented at a non-zero angle α with respect to the longitudinal axis of the neck part, where α<90°,
the method comprising: inserting the reamer into the acetabulum; operating the reamer to remove bone from a surface of the acetabulum; and with the reamer located in the acetabulum, tilting the shaft relative to the longitudinal axis of the neck part to view a part of the acetabulum and/or reamer otherwise obscured by the reamer handle.
the method comprising: inserting the reamer into the acetabulum; operating the reamer to remove bone from a surface of the acetabulum; and with the reamer located in the acetabulum, tilting the shaft relative to the longitudinal axis of the neck part to view a part of the acetabulum and/or reamer otherwise obscured by the reamer handle.
Claim 22 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 22 is anticipated by U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332, claim 10 as identified in the below table; where the differences in claim language are shown in bold.
Instant claim 22
U.S. Patent No. 12,023,050 claim 10
The method of any of claims 19 to 21, further comprising operating a locking mechanism of the reamer handle to disengage an engagement member of the locking mechanism from the proximal end of the head part to allow said tilting of the shaft relative to the longitudinal axis of the neck part.
The method of claim 9, further comprising operating the locking mechanism of the reamer handle to disengage the engagement member of the locking mechanism from the proximal end of the neck part to allow said tilting of the shaft relative to the longitudinal axis of the neck part.
Claims 23 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 23 is anticipated by U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332, claims 23 and 27 are as identified in the below table; where the differences in claim language are shown in bold.
Instant claim 23 (with claim 19)
U.S. Patent No. 12,023,050 claim 9
A method of reaming an acetabulum of a patient using a reamer connected to a reamer handle, the reamer handle comprising:
A method of reaming an acetabulum of a patient using a reamer connected to a reamer handle, the reamer handle comprising:
a hollow shaft having a distal end; a hollow neck part having a longitudinal axis;
a hollow shaft having a distal end and a wall with pair of holes extending therethrough; a hollow neck part having a longitudinal axis;
a driveline extending through the shaft and the neck part, wherein a distally located head part of the driveline is mounted for rotation about the longitudinal axis of the neck part and is connected to the reamer, and wherein the distal end of the shaft and a proximal end of the neck part are pivotally attached to allow the shaft to be tilted relative to the longitudinal axis of the neck part;.
a driveline extending through the shaft and the neck part, wherein a distally located head part of the driveline is mounted for rotation about the longitudinal axis of the neck part and is connected to the reamer, and wherein the distal end of the shaft and a proximal end of the neck part are pivotally attached to allow the shaft to be tilted relative to the longitudinal axis of the neck part;
27. The method of claim 26, wherein the engagement surface is substantially ring shaped.
and a locking mechanism having a proximal and distal end, the locking mechanism comprising: an engagement member having an engagement surface located at the distal end of the locking mechanism, wherein the engagement surface is positioned at the distal end of the hollow shaft and is ring-shaped and substantially perimetric to a longitudinal axis of the hollow shaft at the distal end of the shaft, wherein the engagement member is slideably mounted inside the hollow shaft and is configured to protrude from the distal end of the hollow shaft to urge the engagement surface against the proximal end of the neck part; a spring mounted proximally with respect to the engagement member, the spring being mounted inside the hollow shaft; a handle mounted at the proximal end of the locking mechanism, the handle being mounted outside the hollow shaft; a pair of arms extending from the proximal end to the distal end of the of locking mechanism such that the pair of arms are substantially parallel to the distal end of the hollow shaft, the pair of arms being mounted to the engagement member at the distal end of the locking mechanism and the handle at the proximal end of the locking mechanism, and the pair of arms extending through a respective hole of the pair of holes in the hollow shaft at the proximal end of the locking mechanism so that the handle is mounted outside the hollow shaft; and
23. The method of claim 22, wherein the engagement member is moveable distally to urge the engagement surface against the proximal end of the neck part to resist said tilting of the shaft relative to the longitudinal axis of the neck part
wherein the engagement member moveable distally to urge the engagement surface against the proximal end of the neck part to resist said tilting of the shaft relative to the longitudinal axis of the neck part, wherein the proximal end of the neck part includes a surface for engagement with the engagement surface of the engagement member, wherein said surface of the proximal end of the neck part is contained in a plane and said plane is oriented at a non-zero angle α with respect to the longitudinal axis of the neck part, where α<90°,
the method comprising: inserting the reamer into the acetabulum; operating the reamer to remove bone from a surface of the acetabulum; and with the reamer located in the acetabulum, tilting the shaft relative to the longitudinal axis of the neck part to view a part of the acetabulum and/or reamer otherwise obscured by the reamer handle.
the method comprising: inserting the reamer into the acetabulum; operating the reamer to remove bone from a surface of the acetabulum; and with the reamer located in the acetabulum, tilting the shaft relative to the longitudinal axis of the neck part to view a part of the acetabulum and/or reamer otherwise obscured by the reamer handle.
Claim 24 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 24 is anticipated by U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332, claim 11 as identified in the below table; where the differences in claim language are shown in bold.
Instant claim 24
U.S. Patent No. 12,023,050 claim 11
24. The method of claim 23, wherein the engagement member is resiliently biased toward the proximal end of the head part.
11. The method of claim 9, wherein the engagement member is resiliently biased toward the proximal end of the head part.
Claim 28 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 28 is anticipated by U.S. Patent No. 12,023,050, i.e. Application No. 16/969,332, claim 12 as identified in the below table; where the differences in claim language are shown in bold.
Instant claim 28
U.S. Patent No. 12,023,050 claim 12
The method of any of claims 19 to 27, wherein the reamer handle is an offset reamer handle in which the hollow shaft includes a proximal shaft section and a distal shaft section, in which the shaft has a bend located at an interface between the proximal shaft section and the distal shaft section.
The method of claim 9, wherein the reamer handle is an offset reamer handle in which the hollow shaft includes a proximal shaft section and a distal shaft section, in which the shaft has a bend located at an interface between the proximal shaft section and the distal shaft section.
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) 3-7, 14-16, and 22-28 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 pre-AIA the applicant regards as the invention.
Claim(s) 3 recites/recite the limitation "the surface" in line 1. There is insufficient antecedent basis for this limitation in the claim. Examiner is interpreting this as referring to, and suggests amending as, “wherein [[said]]a surface of the proximal end of the neck part”.
Claim(s) 3 is/are unclear with regards to the surface “contained in a plane having a surface normal that is oriented at a non-zero angle α with respect to the longitudinal axis of the neck part, where α <90[Symbol font/0xB0]”. That is, it is unclear how a plane can have a surface, how a surface can be “normal” and have α <90[Symbol font/0xB0] when “normal” typically means that items are 90[Symbol font/0xB0] in relation to one another. Consequently, the intended scope of claim 3 is unclear. Examiner is interpreting this as referring to, and suggests amending as, “wherein [[said]]a surface of the proximal end of the neck part
Claim(s) 7 is/are unclear with regards to the surface “contained in a plane having a surface normal that is oriented parallel to the longitudinal axis of the neck part”. That is, it is unclear if the “a plane” of claim 7 is in addition to that of claim 2, how a plane can have a surface, if the “a surface” of claim 7 is intended to refer to or be in addition to that of claim 2, how a surface can be “normal” and be parallel when “normal” typically means that items are 90[Symbol font/0xB0] in relation to one another. Consequently, the intended scope of claim 7 appears to be that the plane is oriented parallel to the longitudinal axis of the neck part; however, such does not appear to be shown or supported and is thus further unclear. Examiner is interpreting this as referring to, and suggests amending as, “wherein said to a second plane that is normal to the longitudinal axis of the neck part.”.
Claim(s) 14 is/are unclear with regards to “a universal joint” in lines 1-2 and the scope of “universal” with regards to describing a joint. Further, such has not been defined in the specification. Examiner is interpreting this as referring to, and suggests amending as, “a
Claim(s) 15 is/are unclear with regards to “a distal shaft section, in which the shaft has a bend” in line 3 and the scope of “in which” relative to the distal shaft section if one interprets “in which” in the same manner as that of cline 2. Examiner is interpreting this as referring to, and suggests amending as, “the acetabular reamer handle is an offset acetabular reamer handle; wherein the hollow shaft includes a proximal shaft section and a distal shaft section; wherein the hollow shaft has a bend located at an interface between the proximal shaft section and the distal shalt section”.
Claim(s) 16 recites/recite the limitation "the angle between the longitudinal axis of the distal shaft section" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. Examiner is interpreting this as referring to, and suggests amending as, “[[the]]an angle between [[the]]a longitudinal axis of the distal shaft section”.
Claim(s) 22 is/are unclear with regards to “to disengage an engagement member of the locking mechanism from the proximal end of the head part” in lines 2-3 and how one would reasonably disengage the engagement member from the head part when the engagement member is not disclosed to be capable of engaging the head part. Examiner is interpreting this as referring to, and suggests amending as, “to disengage an engagement member of the locking mechanism from the proximal end of the [[head]]neck part”.
Claim(s) 23 recites/recite the limitation "the engagement surface" in line 2. There is insufficient antecedent basis for this limitation in the claim. Examiner is interpreting this as referring to, and suggests amending as, “wherein the engagement member is moveable distally to urge [[the]]an engagement surface against”.
Claim(s) 28 is/are unclear with regards to “a distal shaft section, in which the shaft has a bend” in line 3 and the scope of “in which” relative to the distal shaft section if one interprets “in which” in the same manner as that of cline 2. Examiner is interpreting this as referring to, and suggests amending as, “the reamer handle is an offset reamer handle; wherein the hollow shaft includes a proximal shaft section and a distal shaft section; wherein the hollow shaft has a bend located at an interface between the proximal shaft section and the distal shalt section”.
Claim(s) 4-6 and 24-27 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for its/their dependence on one or more rejected base claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-14, 17, 19-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berthusen et al. (US 2005/0159751, hereinafter “Berthusen”).
As to claim 1, Berthusen discloses a handle (1, Figs. 1-8) capable for use with acetabular reamer (14, Fig. 1, ¶25) comprising: a hollow shaft (32, 30, 22) having a distal end (right end as shown in Fig. 4); a hollow neck part (20, 42, 40) having a longitudinal axis (horizontal as shown in Figs. 4 and 5); a driveline (26, 24, 28, 50, 46, 48, 54, 52) extending through the shaft and the neck part (Figs. 3 and 4), wherein a distally located head part of the driveline (52) is mounted capable of use for rotation about the longitudinal axis of the neck part (as defined, ¶s 28, 29, and 32) and capable of connecting to an acetabular reamer (14, Figs. 2-6), and wherein the distal end of the shaft and a proximal end of the neck part (left end as shown in Fig. 4) are pivotally attached (Figs. 5 and 6) capable of allowing the shaft to be tilted relative to the longitudinal axis of the neck part (Figs. 5 and 6); and a locking mechanism (36, 38) comprising an engagement member (36, 38) having an engagement surface (right-facing surface of 36 and 56s as shown in Figs. 3 and 5, Figs. 3 and 5) located at the distal end of the shaft (Figs. 3 and 5), wherein the engagement surface is substantially perimetric (Figs. 2-6) to a longitudinal axis (horizontal as shown in Fig. 4) of the hollow shaft at the distal end of the shaft (Figs. 2-6), and wherein the engagement member is capable of moving distally (Figs. 3-6, ¶s 27, 30, and 31) capable of urging the engagement surface against the proximal end of the neck part (Figs. 3 and 4, ¶s 27, 30, and 31) capable of resisting said tilting of the shaft relative to the longitudinal axis of the neck part (Figs. 3 and 4, ¶s 27, 30, and 31).
As to claim 2, Berthusen discloses that the proximal end of the neck part includes a surface (left-facing surface of 42 and surfaces of 58s of 60s as shown in Fig. 3 and 5, Figs. 3 and 5) capable of engaging with the engagement surface of the engagement member (Figs. 5 and 6, ¶s 30 and 31), wherein said surface of the proximal end of the neck part is contained in a plane (Figs. 3 and 5 show that each surface at the proximal end of the neck part is contained in a plane, Figs. 3 and 5).
As to claim 3, Berthusen discloses that a surface of the proximal end of the neck part is oriented at a non-zero angle α with respect to the longitudinal axis of the neck part, where α <90[Symbol font/0xB0] (Fig. 5 shows that the surfaces of the 58s are at a non-zero angles less than 90[Symbol font/0xB0] relative to the longitudinal axis of the neck part).
As to claim 4, Berthusen discloses that 30[Symbol font/0xB0]≤ α ≤ 60[Symbol font/0xB0] (Fig. 5 shows the surfaces of the 58s relative the longitudinal axis of the neck part).
As to claim 5, Berthusen discloses that α is about 30[Symbol font/0xB0] (Fig. 5 shows the surfaces of the 58s relative the longitudinal axis of the neck part).
As to claim 6, Berthusen discloses that α is about 45[Symbol font/0xB0] (Fig. 5 shows the surfaces of the 58s relative the longitudinal axis of the neck part).
As to claim 7, Berthusen discloses that said plane is oriented parallel to a second plane that is normal to the longitudinal axis of the neck part (Fig. 5 shows that the plane of the left-facing surface of 42 is parallel to a second plane that is normal relative to the longitudinal axis of the neck part).”.
As to claim 8, Berthusen discloses that the engagement member is slideably mounted inside the hollow shaft (Fig. 4 shows that the left portion of engagement member portion 38 is in shaft portion 32, Figs. 3 and 4) and is capable of protruding from the distal end of the hollow shaft (Fig. 4 shows that engagement member portion 38 protrudes from the distal end of shaft portion 32, Figs. 3 and 4 ) capable of urging the engagement surface against the proximal end of the neck part (Figs. 2-6, ¶s 27, 30, and 31).
As to claim 9, Berthusen discloses that the engagement member is resiliently biased distally (by engagement member portion 38, Figs. 3 and 4, ¶27) capable of urging the engagement surface against the proximal end of the neck part (Figs. 3 and 4, ¶s 27, 30, and 31).
As to claim 10, Berthusen discloses that the locking mechanism comprises a helical spring (engagement member portion 38) mounted coaxially with respect to the distal end of the hollow shaft (Fig. 4) and proximally with respect to the engagement member (as defined, Figs. 3 and 5).
As to claim 11, Berthusen discloses that the helical spring is mounted inside the hollow shaft (shown in Fig. 4 inside shaft portion 32, Figs. 3 and 4, ¶27).
As to claim 12, Berthusen discloses that the engagement member includes a handle part (gripping surface shown on the exterior of right portion of 36 as shown in Fig. 3) capable of manually retracting the engagement member in a proximal direction (Figs. 2-6, ¶s 27, 30, and 31) capable of releasing the engagement surface from the proximal end of the neck part (Figs. 2-6, ¶s 27, 30, and 31).
As to claim 13, Berthusen discloses that one or more locking members (58s) extending from the engagement surface (shown in Fig. 3 and 5 to extend from the right-facing surface of 36, Figs. 3 and 5) capable of being received within one or more corresponding openings (58s, Figs. 3, 5, and 6) in the proximal end of the neck part (Figs. 3, 5, and 6, ¶s 30 and 31) capable of locking the engagement surface against the proximal end of the neck part (Figs. 3, 5, and 6, ¶s 30 and 31) capable of resisting said tilting of the shaft relative to the longitudinal axis of the neck part (Figs. 3, 5, and 6, ¶s 30 and 31).
As to claim 14, Berthusen discloses that the driveline includes a joint (48, Figs. and 4, ¶28) located at the pivot point between the distal end of the shaft and the proximal end of the neck part (Figs. and 4, ¶s 28-31).
As to claim 17, Berthusen discloses that the engagement surface is substantially ring shaped (see annotated Figs. 2 and 3, Figs. 3 and 5).
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As to claim 19, Berthusen discloses a method of reaming an acetabulum of a patient (Fig. 1, ¶6) using a reamer (14) connected to a reamer handle (Figs. 1-6), the reamer handle comprising: a hollow shaft (32, 30, 22) having a distal end (right end as shown in Fig. 4); a hollow neck part (20,