DETAILED ACTION
This office action is responsive to the amendment filed May 15, 2026. By that amendment, claims 27 and 44 were amended; claim 54 was canceled; and claim 58 was newly presented. Claims 27-40, 44-48, and 58 are pending.
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 .
Response to Arguments
Applicant's arguments filed May 15, 2026, have been fully considered but they are not persuasive. While it is agreed that the amendment adjusts scope of all claims and overcomes the rejection of record in view of the MED reference, a different interpretation of the same reference is now relied upon to make a similar rejection, in view of the presently presented claims. See below.
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) 27-29 and 31-35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Medical Enterprises Distribution IFU (as presented in the July 26, 2024, IDS) (MED hereafter).
Regarding claim 27, MED teaches a surgical system as at fig. 7 (page 11) and fig. 21 (page 22), comprising:
a surgical impacting tool handpiece seen at fig. 21 capable of driving impacting of bone; and
an adapter as at fig. 7 configured to extend distally from the surgical impacting tool handpiece (attachment at the cloverleaf fitting), wherein the adapter includes a mating feature (keyed fitting) configured to releasably couple to an inferred mating element (slot) of an inferred surgical implement (for example, broach as seen at fig. 15) configured to impact bone, the mating feature (keyed fitting) is configured to cooperate with the mating element (slot) to prevent rotation of the surgical implement (broach) relative to the adapter with the surgical implement (broach) releasably attached to the adapter (figs. 16-17), and the mating feature (keyed fitting) is
a distally-extending protrusion (as seen in fig. 7) configured to be seated in a proximal-facing cavity (slot) of the inferred surgical implement and having a cross-sectional shape that is D-shaped (the keyed fitting having a flat side corresponding to flat side of the “D shape” being up as oriented in fig. 7).
Once a single alternative of the provided list is shown to be present in the prior art, no other alternative need be considered to be claim to have been met.
Regarding claim 28, the mating feature (keyed fitting) is configured to cooperate with the inferred mating element (slot) to prevent rotation of the inferred surgical implement (broach) relative to the adapter with the surgical implement releasably attached to the adapter (as at figs. 16-17).
Regarding claim 29, the mating feature (keyed fitting) is integrally formed with the adapter as in fig. 7.
Regarding claim 31, a proximal portion of the adapter at the proximal portion of the cloverleaf fitting is configured to be received within the surgical impacting tool handpiece as seen in fig. 21; and the mating feature (keyed fitting) is on a distal-facing surface of the first adapter as at fig. 7.
Regarding claim 32, the system further comprises the surgical implement (broach of fig. 15).
Regarding claim 33, the adapter is configured to releasably attach to the surgical impacting tool handpiece as at fig. 21.
Regarding claim 34, as seen at the figures on page 27, the system is provided as a kit including additional elements, including at least one additional adapter (of the same or different configuration);
wherein each of the at least one additional adapters is configured to releasably attach to the surgical impacting tool handpiece (each of the demonstrated adapters includes a cloverleaf fitting for the handpiece) such that only one of the adapter and the at least one additional adapter is configured to extend distally from the surgical impacting tool handpiece at a time; and
each of the at least one additional adapters includes a second mating feature (as seen at the figs. of page 27) configured to releasably couple to an inferred second mating element of an inferred second surgical implement configured to impact bone (some hypothetical second implement), the second mating feature is configured to cooperate with the inferred second mating element to prevent rotation of the inferred second surgical implement relative to the additional adapter with the inferred second surgical implement releasably attached to the second adapter.
Regarding claim 35, the adapter is non-releasably attached to the surgical impacting tool handpiece (see figs. 21 and 22; at least when the locking collar is in the locked position).
Claim(s) 58 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Atkin et al. (US 2021/0353430 A1).
Regarding claim 58, Atkin teaches a surgical system (choosing the fig. 14-15 version), comprising:
a surgical impacting tool handpiece 4 configured to drive impacting of a bone (as claimed there is no reason the demonstrated slap hammer, which is hand manipulable, cannot be considered to be a handpiece); and
an adapter (the unlabeled “sleeve” containing a socket and cross-bar 142 in fig. 14) configured to extend distally from the surgical impacting tool handpiece 4 (the sleeve in fig. 14 is understood to be a distal portion of the handpiece 4), wherein the adapter (sleeve) includes a mating feature (socket and cross-bar 142) configured to releasably couple to a mating element 144 of a surgical implement (the demonstrated broach/implant in fig. 14-15) capable of impacting the bone, the mating feature (slot/142) is configured to cooperate with the mating element 144 to prevent rotation of the surgical implement relative to the adapter (due to interaction between 142 and the slot 140 in 144, see fig. 15) with the surgical implement releasably attached to the adapter (releasable from the slot), and the mating feature is:
a distal-facing cavity (slot) having a cross pin 142 extending across a diameter of the cavity.
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.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over MED.
Regarding claim 30, the limitations of claim 27 were taught by MED, as above, but MED does not teach the mating feature (keyed fitting) being configured to releasably attach to the adapter.
It would have been obvious to one with ordinary skill in the art at the time of the invention to form the device to be capable of having parts thereof separated, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. One would have done so in order to improve ability to access portions of the device for purposes of thorough sterilization.
Claim(s) 36-40, and 44-48 is/are rejected under 35 U.S.C. 103 as being unpatentable over MED in view of Muller (US 2019/0374349 A1).
Regarding claims 36-40, MED teaches the limitations of claim 27, as above, but MED fails to teach the mating feature (keyed fitting) of the adapter being configured to releasably couple to a mating element of a second adapter instead of to the mating element of the surgical implement configured to impact bone; the mating feature of the adapter is configured to cooperate with the mating element to prevent rotation of the second adapter relative to the adapter with the second adapter releasably attached to the adapter; and the second adapter is non-releasably coupled to a surgical implement or is configured to releasably couple to a surgical implement.
Muller teaches a system for an impactor e.g. 40 (e.g. impact machine [0053]) driving an implement e.g. 2 using a multi part adapter 12/14/18 with a coupling 56 between the two parts, a coupling present at the proximal end of the first adapter portion 14, and a coupling between the second adapter 12/18 and the implement 2. Connection between the components is ‘non-releasable’ at least when in a locked configuration.
It would have been obvious to one with ordinary skill in the art at the time of the invention to form the MED device to include multiple adapters which work together in order to permit selection of various shapes and sizes of the components which make the adapters useful in particular patient anatomies and sizes. Further, it would have been obvious to utilize the MED connectors types to couple the components as a matter of selection of functionally equivalent connection devices. One would have done so in view of the Muller teaching that providing a multi component adapter is useful in providing a modular system which is useful in various surgical procedures at different joints of a patient, and which would be most capable of being minimally invasive. See various arrangements as at figs. 5A-J.
Regarding claim 44, MED teaches a surgical system, comprising:
a first adapter configured to extend distally from a surgical impacting tool handpiece configured to drive impacting of bone as taught above in rejecting claim 27. The first adapter of fig. 7 includes a first mating feature (keyed fitting) capable of releasably coupling to a second mating element. The first mating feature is a distally-extending protrusion configured to be seated in a proximal-facing cavity of the surgical implement and having a cross-sectional shape that is ovular or rectangular as at fig. 7.
Once a single alternative of the provided list is shown to be present in the prior art, no other alternative need be considered to be claim to have been met.
MED fails to teach a second adapter configured to extend distally from the first adapter.
Muller teaches a system for an impactor e.g. 40 (e.g. impact machine [0053]) driving an implement e.g. 2 using a multi part adapter 12/14/18 with a coupling 56 between the two parts, a coupling present at the proximal end of the first adapter portion 14, and a coupling between the second adapter 12/18 and the implement 2.Connection between the components is ‘non-releasable’ at least when in a locked configuration.
It would have been obvious to one with ordinary skill in the art at the time of the invention to form the MED device to include multiple adapters which work together in order to permit selection of various shapes and sizes of the components which make the adapters useful in particular patient anatomies and sizes. Further, it would have been obvious to utilize the MED connectors types to couple the components as a matter of selection of functionally equivalent connection devices. One would have done so in view of the Muller teaching that providing a multi component adapter is useful in providing a modular system which is useful in various surgical procedures at different joints of a patient, and which would be most capable of being minimally invasive. See various arrangements as at figs. 5A-J.
Regarding claim 45, the second adapter is non-releasably coupled to a surgical implement configured to impact bone (at least when in a locked configuration).
Regarding claim 46, the system includes the surgical implement (broach of fig. 15) configured to impact bone; wherein the second adapter, as proposed, is configured to releasably couple to the surgical implement.
Regarding claim 47, the system further includes a surgical implement (broach of fig. 15) configured to impact bone; wherein the first mating feature of the first adapter is configured to releasably couple to a selected one of the surgical implement and the second adapter (in the proposed modification).
Regarding claim 48, the claim is considered to be further limiting an inferred component. Claim 44 originally teaches ‘a second mating element’ as an inferred component. The first mating feature is configured to cooperate with an inferred second mating element to prevent rotation of the second adapter relative to the first adapter with the first mating feature releasably coupled to the second mating element.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Bates whose telephone number is (571)270-7034. The examiner can normally be reached Monday through Friday, 10AM-6PM
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571)272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID W BATES/Primary Examiner, Art Unit 3799
Prosecution Insights