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 .
Election/Restrictions
Applicant’s election of Species 39 (Claims 5 and 8-10) in the reply filed on 12/1/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Objections
Claims 5 objected to because of the following informalities: the claim recites the limitation “a cutting platform a first side and a second side;” in line 2-4 which is believed should recite “a cutting platform having a first side, and a second side;”. Appropriate correction is required.
Claims 12 objected to because of the following informalities: the claim recites the limitation “the positioning platform” in lines 2 which is believed should recite “positioning aperture”. Appropriate correction is required.
Claims 19 objected to because of the following informalities: the claim recites the limitation “the positioning platform” in line 3 of claim 19 which is believed should recite “positioning aperture”. Appropriate correction is required.
Claims 19 objected to because of the following informalities: the claim recites the limitation “wherein the multi-cut guide” in line 5 which is believed should recite “wherein the first multi-cut guide”. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 17-18 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). In claim 17 and 18 at line 2 the limitation recites “guide that is perpendicular to the cuneiform/metatarsal”. This limitation cannot be satisfied without the inclusion of the human organism, or the cuneiform/metatarsal, therefore, applicant is claiming the sternum as part of the invention. Instead, applicant should use “adapted to” or “configured to” language to overcome the 101 rejection.
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 11, 14-15, 17-18 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 11 recites the limitation "the second multi-cut guide" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 14-15 are rejected as indefinite for depending upon an indefinite claim.
Claims 17-18 recite the limitation "the cuneiform/metatarsal" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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) 5, 8-10, 12, and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Luby (US Patent Pub. 20180256257A1).
Luby recites a surgical cutting block. Specifically in regards to claim 5, Luby recites a cutting platform (10) having a first side (side with 12) and a second side (side with 14/18/20); and a first multi-cut guide (12) formed on the first side, wherein the multi-cut guide (12) includes a plurality of guides that share an end and are angled relative to each other (Fig. 1; and Para. [0040]-[0041]).
In regards to claim 8, Luby recites a second multi-cut guide (cut guides on 14/18) formed on the second side (Fig. 1).
In regards to claim 9, Luby recites wherein at least one of the first multi-cut guide (12) and the second multi-cut guide (cut guides on 14/18) includes three or more cut guides (Fig. 1).
In regards to claim 10, Luby recites wherein the first multi-cut guide (12) includes three or more cut guides (Fig. 1).
In regards to claim 12, Luby recites a positioning aperture (see Fig. 1 below) formed on the cutting platform (10), the positioning aperture dividing the cutting platform (10) into a first side and a second side (Fig. 1 and Fig. 1 below).
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Figure 1: Luby demonstrating the positioning aperture.
In regards to claim 17-18, Luby recites wherein the first multi-cut guide (cut guide on 18/14) includes a guide that is perpendicular to the cuneiform, and wherein the second multi-cut guide (cut guide on 18/14) includes a guide that is perpendicular to the metatarsal (The placement of the guide on the cuneiform/metatarsal is being interpreted as intended use therefore the guide ‘s first or second multi-cut guide is dependent upon which direct the platform 10 is placed therefore the guides on sections 14/18 can be perpendicular to either bone as desired by the user.) (Fig. 1).
In regards to claim 19, Luby recites a surgical cutting block. Specifically, a cutting platform (10) including a positioning aperture (see Fig. 1 above) formed on the cutting platform (10), the positioning aperture dividing the cutting platform (10) into a first side (side with 12) and a second side (side with 14/18); and a first multi-cut guide (guide on 12) formed on the first side, wherein the multi-cut guide includes a plurality of slots that share an end and are angled relative to each other; and a second multi-cut guide (guide on 14/18) formed on the second side (Fig. 1 and Fig. 1 above; and Para. [0040]-[0041]).
In regards to claim 20, Luby recites wherein the first multi-cut guide (guide on 12) comprises at least three cut guides (Fig. 1).
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) 11, 13-15, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luby.
Luby in regards to claim 11 and 21 discloses a surgical cutting block having first and second sides with the first side having a first multi-cut guide including a plurality of guides that share an end and are angled relative to each other. However, the reference is silent as to a second multi-cut guide with three or more cut guides. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the platform (10) of Luby by adding a second multi-cut guide with three cut guides on the second side since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art.
Luby in regards to claim 13-14 discloses a surgical cutting block having first and second sides with the first side having a first multi-cut guide including a plurality of guides that share an end and are angled relative to each other. Luby further discloses a multi-cut guide whose guides are all angled in the same direction (guides on 14/18) (Fig. 1). However, the reference is silent as to a three guide multi-cut guide whose guides are all angled in same direction. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the platform (10) of Luby by adding another guide angled in the same direction to either guide in section 14/18 since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art.
In regards to claim 15, Luby recites wherein the guides of the first multi-cut guide (guide on 12) are angled away from the second multi-cut guide (guides on 14/18) (Fig. 1).
Claim(s) 16 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luby in view of Bays et al (US Patent Pub. 20170079669A1).
Luby discloses a surgical cutting block having first and second sides with the first side having a first multi-cut guide including a plurality of guides that share an end and are angled relative to each other and a second multi-cut guide on the second side separated by a positioning aperture. However, the reference is silent as to a positioning fin.
Bays discloses a surgical cutting block. Specifically in regards to claims 16 and 22, Bays recites a cutting platform (12) having first and second sides (40/42), and further comprising a positioning a fin (14) (Fig. 1; and Para. [0031]-[0034],[0036]-[0040]). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the platform (10) of Luby by adding a positioning fin as taught in Bays to help guide the platform into the proper position (Para. [0037]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent Pub. 20140094811A1 to Davison et al; US Patent Pub. 20180289423A1 to Singh et al; and US Patent Pub. 20180368860A1 to Wodajo were all considered in regards to the claims since they recite cutting platforms demonstrating multi-cut guides.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELA I SHIRSAT whose telephone number is (571)270-5269. The examiner can normally be reached M-F 9:00am-5:30pm MST.
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/MARCELA I. SHIRSAT/ Primary Examiner, Art Unit 3775