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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2 June 2026 has been entered.
Claim Objections
Claims 28, 32 and 33 are objected to because of the following informalities:
Claim 28, line 3: --cylindrical-- should be added before “body”.
Claim 32 should be rewritten as: “The cutting tool of claim 31, wherein the space between any two adjacent posts defines a cylindrical exterior surface.”
Claim 33 should be rewritten as: “The cutting tool of claim 21, wherein the space between any two adjacent posts defines a cylindrical exterior surface.”
Appropriate 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.
(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) 21-29, and 33 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Sharkey et al., U.S. Patent 6,464,727.
Regarding claim 21, Sharkey et al. discloses a tool fully capable of cutting bone, cartilage and disc removal comprising: a cylindrical body (12) configured to be mounted to a shaft of a power source; and a plurality of cutting teeth extending radially outwardly and circumferentially from an exterior surface of the cylindrical body, wherein each of the plurality of cutting teeth has a post (14 or 92) connected to the exterior surface of the cylindrical body and a cutter head (16 or 96, 98) disposed at a distal end of each post fully capable of effecting bi-directional cutting during oscillating motion of the cutting tool, wherein any two adjacent posts of the cutting teeth defines a space having a convex bottom (the bottom of the spaces between adjacent posts is the outer surface of the cylindrical body, which is convex) (Figs. 1A, 2, 6 and examiner annotated 1B below).
PNG
media_image1.png
229
246
media_image1.png
Greyscale
Regarding claims 22-25, Sharkey et al. discloses wherein each cutter head (16) is wider than each post (14); wherein each cutter head (16) is circular; wherein the plurality of cutting teeth are arranged in longitudinal columns and circumferential rows; and wherein the longitudinal columns and the circumferential rows are helically arrayed (Figs. 1A and 2 and Col. 6 lines 50-55).
Regarding claim 26, Sharkey et al. discloses wherein each cutter head is shaped frustoconically (examiner annotated Fig. 1B above).
Regarding claims 27-29, Sharkey et al. discloses wherein the cylindrical body (12) is configured to be removably mounted to the shaft (via recess 32); wherein the cutter heads (16) are wider than the respective posts (14) forming disc material collection spaces between the cutter head and the cylindrical body (Figs. 1A and 2); and wherein each cutting head is triangular (cross-section of 98 is triangular) (Figs. 6).
Regarding claim 33, Sharkey et al. discloses wherein the space between the any two adjacent posts (14) defines a cylindrical exterior surface (via outer surface of cylindrical body 12) (Fig. 2).
Claim(s) 21, 31 and 32 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Victor et al., U.S. PG-Pub 2018/0042618.
Regarding claims 21, 31 and 32, Victor et al. discloses a cutting tool for bone, cartilage and disc removal comprising: a cylindrical body (104) configured to be mounted to a shaft of a power source; and a plurality of cutting teeth extending radially outwardly and circumferentially from an exterior surface of the cylindrical body, wherein each of the plurality of cutting teeth has a post connected to the exterior surface of the cylindrical body and a cutter head disposed at a distal end of each post fully capable of effecting bi-directional cutting during oscillating motion of the cutting tool, wherein any two adjacent posts of the cutting teeth defines a space having a convex bottom; wherein the cylindrical body includes a convex distal end; and wherein the space between the any two adjacent posts defines a cylindrical exterior surface (via outer surface of cylindrical body 104) (Fig. 4 and examiner annotated Figs. 5 and 5B below).
PNG
media_image2.png
328
485
media_image2.png
Greyscale
PNG
media_image3.png
371
477
media_image3.png
Greyscale
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sharkey et al., U.S. Patent 6,464,727.
Regarding claim 30, Sharkey et al. discloses the invention essentially as claimed except for wherein each cutter head is hexagonal.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the cutter head of Sharkey et al. to be hexagonal since such a modification would have involved a mere change in the shape of component as an obvious matter of design choice. A change in shape is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Response to Arguments
Applicant’s arguments, see Remarks, filed 26 May 2026, with respect to the objection to the drawings have been fully considered and are persuasive. The objection of the drawings has been withdrawn.
Applicant’s arguments, see Remarks, filed 26 May 2026, with respect to the objection of claims 21, 24 and 27 have been fully considered and are persuasive. The objection of claims 21, 24 and 27 has been withdrawn.
Applicant’s arguments, see Remarks, filed 26 May 2026, with respect to rejections of claims 21-33 under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejections of claims 21-33 under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) has been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric Gibson whose telephone number is (571)270-5274. The examiner can normally be reached Monday-Thursday ~6:00 A.M. to 4:00 P.M. (CST).
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.
/ERIC S GIBSON/ Primary Examiner, Art Unit 3775
Prosecution Insights