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 . This action is in response to the response to election/restriction filed on December 08, 2025. Claims 1-22 are currently pending.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-15, Species A (Figures: 1A-6C, 7-10B, 13-16C, 20-30B, and 31F-31G and Species F: Figures 18A-18C)) in the reply filed on December 08, 2025 is acknowledged.
Claims 16-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 08, 2025.
Claim Objections
Claim 1 is objected to because of the following informalities: In line 5, “an attachment” should read --the attachment--. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: In line 1, “a drill cannula” should read --the drill cannula--. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: In lines 3 and 4, “the distal end of the rigid arm” should read --the distal portion of the rigid arm--. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: In lines 1 and 2, “the distal end of the rigid arm” should read --the distal portion of the rigid arm--. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: In line 2, “an attachment” should read --the attachment--. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: In line 3, “the distal end of the rigid arm” should read --the distal portion of the rigid arm--. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: In line 4, “the distal end of the rigid arm” should read --the distal portion of the rigid arm--. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: In line 1, “an attachment” should read --the attachment--. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: In line 2, “the distal end of the rigid arm” should read --the distal portion of the rigid arm--. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: In line 3, “a plane” should read --the plane--. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: In line 4, “a drill cannula” should read --the drill cannula --. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: In line 4, “a plane” should read --the plane--. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: In line 6, “a drill cannula” should read --the drill cannula --. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: In line 5, “a bone preparation” should read --the bone preparation--. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: In line 2, “the capture plate” should read --the biased capture plate--. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: In line 3, “the capture plate” should read --the biased capture plate--. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: In line 4, “the capture plate” should read --the biased capture plate--. Appropriate correction is required.
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 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 11 recites the limitation "the receiving arm" 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)(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 1-7, 9-12, and 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fitzpatrick (US Publication 2015/0313616).
Regarding claim 1, Fitzpatrick discloses a surgical guide, comprising: a rigid arm (21, Figure 11) having a proximal portion (24, Figure 11) and a distal portion (23, Figure 11), the distal portion capable of having to an attachment coupled thereto (i.e. the attachment is 26, Figure 8), and the proximal portion having a cannula-receiving opening (25, Figure 8) formed therein such that a plane defined by a primary surface of a distal end of the attachment coupled to the distal portion of the rigid arm is substantially orthogonal with a longitudinal axis extending through the cannula-receiving opening that defines a path of travel for a drill cannula (i.e. see the pin and dotted line (15, Figure 7) that demonstrates a portion of the rigid arm that is substantially orthogonal with a longitudinal axis (16, Figure 7) through the cannula-receiving opening); at least one support rod (22, Figure 8) configured to be coupled to the rigid arm; and at least one bone pin clamp (26, Figure 8) coupled to the at least one support rod, the at least one bone pin clamp being capable of providing multiple degrees of freedom such that a bone pin coupled to the at least one bone pin clamp can be manipulated across multiple degrees of freedom, wherein the surgical guide is capable of being used with one or more bones (bones in the shoulder, Figure 1) at or proximate to a surgical site.
Regarding claim 2, Fitzpatrick discloses further comprising a hub (33, paragraph 0037 )associated with the proximal portion of the rigid arm, the hub having the cannula-receiving opening formed therein (i.e., the cannula receiving opening 25 is secured perpendicularly to the third rod with 33 [paragraph 0037]).
Regarding claim 3, Fitzpatrick discloses further comprising the b drill cannula (25, Figure 8), the drill cannula capable of being pass into and through the cannula-receiving opening to engage an opposed surface of a bone of the one or more bones at which the distal portion of the attachment coupled to the distal end of the rigid arm is located.
Regarding claim 4, Fitzpatrick discloses wherein the at least one bone pin clamp comprises: a guide-coupling portion capable of being coupled to the at least one support rod (see the diagram below); and a pin-engaging portion (for receiving pins 13 and 14, respectively Figure 8) capable of selectively unlocking and locking the bone pin such that each of a location of entry of the bone pin into bone and an angle of entry of the bone pin into bone can be adjusted.
Regarding claim 5, Fitzpatrick discloses further comprising an adapter (37, Figure 11) disposed on the distal portion of the rigid arm (i.e. 37 can be secured to any part of the guide according to paragraph 0041), the adapter capable of being slidable to selectively engage an attachment to selectively couple and decouple the attachment from the distal end of the rigid arm.
Regarding claim 6, Fitzpatrick discloses wherein the surgical guide capable of being positioned at or proximate to the surgical site such that the path of travel defined by the drill cannula received through the cannula-receiving opening can be traversed by a tool-operating shaft to allow the tool-operating shaft to engage one or more tools associated with the distal portion of the rigid arm (i.e. the path of travel establishes a working place corresponding to the base of the head of the humerus and centered on the central axis of the humeral head paragraph 0039).
Regarding claim 7, Fitzpatrick discloses further comprising the attachment (36b, Figure 11) capable of being coupled to the distal portion of the rigid arm, the attachment having a distal end with a primary surface that defines the plane that is substantially orthogonal to the longitudinal axis extending through the cannula-receiving opening that defines the path of travel for the drill cannula [paragraph 0041].
Regarding claim 9, Fitzpatrick discloses wherein the attachment comprises a handle assembly (36, Figure 11) having a humeral bone preparation instrument (i.e. locator 38) coupled to a distal end thereof and capable of positioning the humeral bone preparation instrument proximate to a bone of the one or more bones at the surgical site such that the plane defined by a primary surface of the humeral bone preparation instrument is substantially orthogonal to the longitudinal axis extending through the cannula-receiving opening that defines the path of travel for the drill cannula (see Figure 11 and paragraph 410.
Regarding claim 10, Fitzpatrick discloses wherein the handle assembly comprises an attachment portion (36c, Figure 11) disposed at the distal end thereof and capable of receiving the humeral bone preparation instrument.
Regarding claim 11, Fitzpatrick discloses wherein the handle assembly further comprises a guide-receiving opening (i.e. receiving channel described in paragraph 0041) capable of being coupled to the distal end of the receiving arm to fixedly couple the handle assembly to the guide assembly for operating of the humeral bone preparation instrument.
Regarding claim 12, Fitzpatrick discloses a handle assembly (36, Figure 11) for use in positioning a bone preparation instrument proximate to a location where bone is to be treated, comprising: an arm having a proximal portion and a distal portion (36a and 36b, Figure 11); an attachment portion (36c, Figure 11) disposed at the distal portion of the arm, the attachment portion capable of receiving the bone preparation instrument (i.e. locator 38) for use at the location where the bone is to be treated; and a receiving portion (i.e. receiving channel described in paragraph 0041) disposed on the proximal portion of the arm, the receiving portion capable of allowing the handle assembly to be selectively coupled to a guide (via that provides proper positioning for the handle assembly to position a distal end of the attachment portion proximate to the location where the bone is to be treated.
Regarding claim 15, Fitzpatrick discloses wherein the bone comprises a humerus [paragraph 0039], and wherein the attachment portion, and the bone preparation instrument received by the attachment portion, is capable of being disposed at the humerus while a subscapularis tendon proximate to the humerus is intact [paragraph 0041].
Allowable Subject Matter
Claims 8, 13 and 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANA S JONES whose telephone number is (571)270-5963. The examiner can normally be reached Monday to Friday (8am to 4pm EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached 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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/Diana Jones/Examiner, Art Unit 3775
/KEVIN T TRUONG/Supervisory Patent Examiner, Art Unit 3775