DETAILED ACTION
This office action is responsive to the amendment filed December 30, 2025. By that amendment, claims 1, 17 and 18 were amended. Claims 1-19 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 December 30, 2025, have been fully considered but they are not persuasive, even in combination with the amendment.
Regarding the rejection under 35 USC 103 of claim 1 in view of Saegesser (US 2010/0000100 A1), Quinn (US 2005/0199117 A1) and teaching reference Wanstrath (US 2012/0299254 A1), the argument is reviewed. Claim 1 is amended to require “a gap between portions of the locking assembly” which gap widens upon movement of the adapter into the gap. The arguments state that this feature is not present in the Saegesser reference (p.7 of the remarks). Rather, the argument states that the insertion of the adapter of 15 into the insertion slot 26 merely causes a spacer block to translate, “not cause the insertion slot 26 to widen”.
Examiner respectfully disagrees. It is examiner’s understanding of the reference, in agreement with applicant, that insertion of the adapter 15 into the slot 26 causes compression of 221 upwardly to overcome the force of spring 23 [0023]. However, as 15 is further inserted, such causes rotation of sleeve 20 in a direction opposite to 29 as a result of overcoming the force of rotary spring 21 [0023]. Doing so causes clamp elements 19 to ride up camming curves 28 to increase a width of a gap 26 as can be observed in fig. 5. The with of gap 26 changes as a result of elements 19 moving apart or closer to one another due to the insertion of 15 causing 20 to rotate. [0024]
Therefore, examiner disagrees that claim 1, even as amended, is not rendered obvious by the rejection of record. The rejection is maintained, below, as modified only to correlate to the claim amendment.
Regarding the rejection of claims 17 under 35 USC 103 in view of Cannon (US 2021/0128174 A1) in view of Marinkovich (US 2022/0240947 A1), the arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The newly presented rejection was necessitated by the amendment to the claims of December 30, 2025.
The dependent claims were not addressed separately.
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 18 is 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 18 refers to “the lock ring” at line 10, which limitation lacks antecedent basis. As best understood, this will be treated as “the locking assembly”. Correction is required.
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) 17 and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoffman (US 4,441,255). A teaching reference to Wanstrath (US 2012/0299254 A1) is referenced.
Regarding claim 17, Hoffman teaches a surgical system as at figs. 2 and 2A, discussed at col. 3, lines 17-49) comprising:
an adapter 71 including a first portion (left of groove in fig. 2), a second portion (in the groove 72 in fig. 2) rearward of the first portion, and a third portion (right of the groove 72) rearward of the second portion 72, wherein the second portion 72 of the adapter is narrower than the first portion and the third portion; and
an orthopedic impacting tool (not shown in its entirety– drive member 82 and holder 50 are portions, thereof) configured to releasably couple to the adapter 71 at the holder 50 with the first, second, and third portions of the adapter 71 located within the orthopedic impacting tool holder 50, the orthopedic impacting tool comprising:
a handpiece (considered inherently present on a saber saw; the saw will inherently include portions capable of being handled), and
a locking assembly 50 movably coupled to the handpiece, wherein the first, second, and third portions of the adapter 71 are configured to move into a central opening 68 of the locking assembly 50 to lock the adapter 71 to the orthopedic impacting tool, wherein the locking assembly 50 is configured to rotate at portions 66/78/80 (see fig. 2A), about a longitudinal axis defined by the central opening 68, relative to the handpiece between a locked configuration, in which the adapter 71 coupled to the orthopedic impacting tool is locked relative to the handpiece via engagement between the second portion 72 and the locking assembly 50, and an unlocked configuration, in which the adapter is not locked relative to the handpiece via disengagement between the second portion 72 and the locking assembly 50 (as by manually manipulating 80), and wherein the rotation of the locking assembly relative to the handpiece is configured to move the locking assembly 50 from the locked configuration to the unlocked configuration.
There is no reason that the Hoffman device could not be used in a surgical, or surgically related, procedure; particularly an orthopedic one.
Teaching reference Wanstrath teaches that the axial stroke of a reciprocating tool causes “kickback from impact [as the tool] comes into contact…” with a surface [0004]. It is clear that a reciprocating tool is capable of creating impact forces.
Regarding claim 18, as best understood, the locking assembly 50 is configured to rotate in a first direction (counterclockwise) about the longitudinal axis defined by the central opening 68 to move the locking assembly 50 from the locked configuration to the unlocked configuration (manually rotated counterclockwise by pressing 80 as at col. 3, line 30-45);
the locking assembly is configured to rotate in a second direction (clockwise) about the longitudinal axis defined by the central opening 68 to move the locking assembly 50 from the unlocked configuration to the locked configuration (biased by spring 74);
the second direction is opposite to the first direction;
the first, second, and third portions of the adapter 71 are configured to move along the longitudinal axis into the central opening 68 of the locking assembly 50; and
the locking assembly 50 is configured to be rotated in the second direction by a user to move the lock ring from the unlocked configuration to the locked configuration – there is no reason a user could not apply force in the second direction to 80.
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) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saegesser (US 2010/0000100 A1) in view of Quinn (US 2005/0199117 A1). A teaching reference to Wanstrath (US 2012/0299254 A1) is referenced.
Regarding claim 1, Saegesser teaches a system, comprising:
an adapter 153/154; and
an impacting tool 11 configured to releasably couple to the adapter, the orthopedic impacting tool comprising:
a handpiece (11 being formed for use by hand),
a locking assembly 14 including a lock ring 20 movably coupled to the handpiece 11 (on rod 13) and a gap 26 between portions 19 of the locking assembly 14, wherein the adapter 153/154 is configured to widen the gap 26 upon movement of the adapter 153/154 into the gap 26 [0024], wherein the lock ring 20 is configured to move relative to the handpiece 11 between a locked configuration [0023-0024], in which the adapter 153/154 coupled to the impacting tool 11 is locked relative to the handpiece, and an unlocked configuration [0025], in which the adapter is not locked relative to the handpiece, and wherein the movement of the lock ring 20 relative to the handpiece 11 is configured to move the lock ring 20 from the locked configuration to the unlocked configuration [0023-0025].
There is no reason that the Saegesser device could not be used in a surgical, or surgically related, procedure; particularly an orthopedic one.
Teaching reference Wanstrath teaches that the axial stroke of a reciprocating tool causes “kickback from impact [as the tool] comes into contact…” with a surface [0004]. It is clear that a reciprocating tool is capable of creating impact forces.
Saegesser fails to teach a trigger coupled to the handpiece and configured to be actuated by a user, wherein the actuation of the trigger is configured to, with the orthopedic impacting tool coupled to the adapter, cause the orthopedic impacting tool to provide a force to the adapter to be capable of moving the adapter relative to a bone in which an implant is configured to be implanted.
Quinn teaches a similar reciprocating tool including a trigger for actuating the tool, as at fig. 8.
It would have been obvious to one with ordinary skill in the art at the time of the invention to provide the Saegesser device with a trigger located in an easily accessible location as suggested by Quinn in order to permit a user to easily actuate the tool and improved ergonomics as compared to Saegesser.
Regarding claim 2, the lock ring 20 extends around an opening 31 at a forward end of the orthopedic impacting tool; and the lock ring 20 is configured to rotate about a longitudinal axis defined by the opening to move the lock ring from the locked configuration to the unlocked configuration [0023-0025] (axis along 13).
Regarding claim 3, the force is provided to the adapter substantially along the longitudinal axis (reciprocating motion of 13).
Regarding claim 4, the adapter 153/154 is configured to move into the opening 31 substantially along the longitudinal axis of 13.
Regarding claim 5, the adapter moving into the opening is configured to move the lock ring 20 from the locked configuration to the unlocked configuration [0023-0024].
Regarding claim 6, the lock ring 20 is configured to rotate about the longitudinal axis of 13 defined by the opening 31 to move the lock ring 20 from the unlocked configuration to the locked configuration (there is no reason that 20 cannot be rotated in this manner).
Regarding claim 7, the lock ring 20 is configured to be manually moved by the user to move the lock ring from the unlocked configuration to the locked configuration (there is no reason that 20 cannot be rotated in this manner).
Regarding claim 8, the lock ring 20 is biased to the locked configuration with spring 21 [0021] and is configured move automatically from the unlocked configuration to the locked configuration in response to the adapter 152/153 being de-coupled from the orthopedic impacting tool as seen in fig. 5 and discussed at [0023] and [0025].
Regarding claim 9, the lock ring 20 is capable of being rotated in a first direction configured to move the lock ring from the locked configuration to the unlocked configuration; and the lock ring is configured to be rotated in a second, opposite direction configured to move the lock ring from the unlocked configuration to the locked configuration. [0023-0025]
Regarding claim 10, the lock ring 20 is configured to be manually rotated by a user to move the lock ring from the unlocked configuration to the locked configuration. [0023-0025]
Regarding claim 11, the lock ring 20 is biased to the locked configuration by 21 and 23 and is configured move automatically from the unlocked configuration to the locked configuration in response to the adapter 152/153 being de-coupled from the orthopedic impacting tool (returning to position of fig. 5). [0025]
Regarding claim 12, the adapter 152/153 moving into the opening 31 is configured to cause the lock ring 20 to move automatically from the locked configuration to the unlocked configuration [0023-0024].
Regarding claim 13, with the orthopedic impacting tool 11 coupled to the adapter 152/153, the adapter 152/153 extends in a forward direction (fig. 7); and the force is configured to move the adapter in the forward direction relative to the bone (by reciprocating movement of 13).
Regarding claim 14, the actuation of the trigger of the combination is configured move the adapter 152/153 cyclically in the forward direction relative to the bone and in a rearward direction relative to the bone (reciprocating movement of 13 and thereby 152/153 is actuated when the trigger is pressed).
Regarding claim 15, with the orthopedic impacting tool 11 coupled to the adapter 152/153, the adapter extends in a forward direction as in fig. 7; and the force is configured to move the adapter in a rearward direction relative to the bone (one part of the reciprocating stroke).
Regarding claim 16, the orthopedic impacting tool 11 further comprises: a first pawl 19 operably coupled to the lock ring 20, and a second pawl 19 operably coupled to the lock ring 20; wherein the movement of the lock ring 20 is configured to move the first and second pawls 19 relative to the handpiece (see fig. 6 – ramped surfaces 28 of 20 actuate the pawls 19); and with the orthopedic impacting tool 11 releasably coupled to the adapter 152/153, the first and second pawls 19 are each seated against a surface of the adapter 152/153 (see fig. 7).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoffman (US 4,441,255) in view of Quinn (US 2005/0199117 A1). A teaching reference to Wanstrath (US 2012/0299254 A1) was referenced.
Regarding claim 19, Hoffman teaches the limitations of claim 17 as above, but fails to teach particulars of the tool, such as inclusion of a trigger as claimed. Examiner will take the position that a trigger on an impact tool is essentially inherently required to be present, but will identify where such is known in the art to prove obviousness.
Quinn teaches a reciprocating tool including a trigger for actuating the tool, as at fig. 8.
It would have been obvious to one with ordinary skill in the art at the time of the invention to provide the Hoffman device with a trigger located in an easily accessible location as suggested by Quinn in order to permit a user to easily actuate the tool and improved ergonomics as compared to a device without a trigger.
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
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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.
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/DAVID W BATES/Primary Examiner, Art Unit 3799
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