DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/09/2025 has been considered by the examiner.
Election/Restrictions
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group I, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/24/2025.
The traversal is on the ground(s) that the inventions are not independent and distinct. This is not found persuasive because the process as claimed can be practiced by another and materially different apparatus, such as a different type of cutting tool, and the apparatus as claimed can be used to practice another and materially different process such as without the “providing” process limitation and the inventions listed in the restriction would be a serious search and/or examination burden if restriction were not required, as noted by the differences in search requirements for the Groups. The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-3 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haneda (U.S. Patent Pub. No. 2008/0016704).
Regarding claim 1, Haneda teaches a cutting instrument (300) comprising:
a cutting wedge (306) comprising a leading edge (334); and one or more cutting fasciae (X1,X2) terminating at the leading edge, wherein the one or more cutting fasciae (338,340) comprise an approximately concave recess (308) (Figures 3-3B; Paragraphs 0035-0039).
Regarding claim 2, Haneda teaches the cutting instrument of claim 1, wherein: the one or more cutting fasciae further comprise: a lower surface and an upper surface (X1, X2); and the approximately concave recess is located between the lower surface and the upper surface (See annotated Figure 3A).
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Regarding claim 3, Haneda teaches the cutting instrument of claim 2, wherein: the cutting wedge comprises an upper edge (332) at an opposite end of the cutting wedge from the leading edge of the cutting wedge (Figure 3A);
the upper surface comprises a length that extends from an upper end of the approximately concave recess to the upper edge of the cutting wedge (See annotated Figure 3A above);
the lower surface comprises a length that extends from the leading edge to a lower end of the approximately concave recess, wherein the upper end of the approximately concave recess is located at an opposite end of the approximately concave recess from the lower end of the approximately concave recess and the length of the upper surface is different from the length of the lower surface (See annotated Figure 3A above noting the upper surface as longer than the lower surface).
Regarding claim 3, Haneda teaches the cutting instrument of claim 1, wherein: the one or more cutting fasciae comprise two cutting fasciae (338, 340) located at opposing faces of the cutting wedge (Figure 3B); a first one of the two cutting fasciae comprise: a first lower surface (X2) terminating at the leading edge; a first upper surface (X1) and a first approximately concave recess located between the first lower surface and the first upper surface, wherein the approximately concave recess comprises the first approximately concave recess; and a second one of the two cutting fasciae comprise: a second lower surface (X2) terminating at the leading edge; a second upper surface (X1); and a second approximately concave recess located between the second lower surface and the second upper surface (See annotated Figure 3A above noting the left and right side of the blade to be symmetrical; Paragraph 0036 noting the recess on both sides of blade 306).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Haneda (U.S. Patent Pub. No. 2008/0016704).
Regarding claims 4 and 5: Haneda discloses the invention essentially as claimed as discussed above. Haneda further discloses the blade having a length, depth and thickness that may be varied; and shows the lower surface extends from the leading edge an end of the approximately concave recess (See annotated Figure 3A above and Figure 3B).
However, Haneda does not expressly disclose the length of the lower surface is no less than 30 microns; or wherein the lower surface is no less than 30 microns in length.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Haneda to have a length of the lower surface is no less than 30 microns since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984).
In the instant case, the device of Haneda would not operate differently with the claimed length and since the lower surface of the cutting tool is below the concaved recess, the device would function appropriately having the claimed length. Further, applicant places no criticality on the range claimed, indicating simply that the length can range from 30 microns (micrometers) to 4,000 microns. (specification pp. [0101]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Haneda (U.S. Patent Pub. No. 2008/0016704) in view of Uemura (U.S. Patent No. 2015/0096423).
Regarding claim 10, Haneda teaches all of the elements of the current invention including a cutting tool capable of performing surgical cuts, buts does not specifically provide the cutting instrument comprises a surgical scalpel.
Uemura teaches it is known in the art of edged cutting tools to incorporate a surgical blade scalpel, and razor (Paragraph 0002, 0039; Figure 5).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the device of Haneda to incorporate the teachings of Uemura to provide the cutting tool as a surgical scalpel. In doing so, it allows for the device to be appropriately sharped to be utilized for a variety of situations (paragraph 0002).
Related Prior Art
Below is an analysis of the relevance of references cited but not used
- "892 cited references A-B on page 1 establish the state of the art with a variety of different cutting instruments/scalpels.
Allowable Subject Matter
Claims 6,7 and 9 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to anticipate or make obvious the scalpel of claims 6,7 and 9 including “a surface roughness comprising: a measured arithmetic mean height (Sa) of 150 nm or less with a standard deviation of 30 nm or less across a measurement area of 16,641 square microns on at least a portion of the lower surface” of claim 6; a measured arithmetic mean height (Sa) of 150 nm or less with a standard deviation of 30 nm or less across a measurement area of 16,641 square microns on at least a portion of the one or more cutting fasciae” of claim 7; and “a first measured arithmetic mean height (Sa) of 150 nm or less with a first standard deviation of 30nm or less across a first measurement area of 16,641 square microns on at least a portion of the first lower surface; and the second lower surface comprises a second surface roughness comprising: a second measured arithmetic mean height (Sa) of 150 nm or less with a second standard deviation of 30 nm or less across a second measurement area of 16,641 square microns on at least a portion of the second lower surface” of claim 9.
Conclusion
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/RICHARD D CROSBY JR/ 01/09/2026Examiner, Art Unit 3724