DETAILED ACTION
This is the first office action on the merits in this application. The amendment of December 17, 2024, is under consideration. Claims 1-14 were amended. Claims 1-14 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 .
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.
Claims 1-14 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 1 teaches the limitation “loss-proof manner”, which is a term not known to the examiner. Is this to prevent loss of the tool? Prevent loss of motion between the surgical instrument and chisel? If the first, it is unclear which types of fastening mechanism are to be considered loss-proof. If the second, the term “loss-proof” is considered to be a relative term, in that it is unclear how much loss of motion is permitted or excluded from the scope of the claim. The metes and bounds of the claim are considered indefinite.
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) 1-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mandanis (US 5,485,887).
Regarding claim 1, Mandanis teaches a surgical instrument capable of use in the revision of prostheses, comprising a handpiece 2a in which a cylinder 10 is arranged, wherein a piston element 15 is associated with the cylinder 10, as well as a switching element 21 and a chisel tool (an adapter 3 is taught being coupled to a bone working tool such as a bone rasp or the like; examiner takes the position that a bone rasp can be used as a chisel; or that alternatively ‘or the like’ would comprise other types of tools, including chisels; and further that a chisel is a type of bone working tool), wherein the chisel tool coupled to 3 is arranged axially movably mounted at one end of the handpiece 2a, wherein the chisel tool is fastened to the handpiece in a loss-proof manner (some sort of coupling which prevents unintended detachment of the tool from 3), wherein the piston element 15 is axially movably arranged in the cylinder 10, wherein the piston element 15 can be set in motion by means of a fluid (pneumatic – air, being a fluid), wherein the piston element 15 is configured to induce a pulse directed in the direction of the chisel tool at 3 for driving the chisel tool into a prosthesis stem interspace associated with the prosthesis (as when 15 impacts surface 9 of 7 in fig. 1), characterized in that the piston element is configured to induce a pulse directed opposite to the chisel tool for driving out the chisel tool from the prosthesis stem interspace (as when 15 impacts surface 8 of 7 as in fig. 2).
Regarding claim 2 wherein the piston element is selectively configurable by means of the switching element for driving in or driving out the chisel tool (partial depression of 21; col. 4, lines 46-53).
Regarding claim 3, a pulse transmitter 2 is associated with the cylinder 10, wherein the pulse transmitter is associated with the end face associated with the chisel tool (2 couples to 3, which couples to the chisel), so that the pulse transmitter 2 is arranged between the piston element 15 and the chisel tool on 3, wherein the pulse transmitter 2 is configured to transmit a pulse from the piston element 15 to the chisel tool on 3, wherein the pulse transmitter 2 seals the end face of the cylinder 10 on the side facing the chisel tool on 3 as seen in figs. 1 and 2 (the piston 15 and transmitter tool 2, together, seal the end face {down in figs. 1 and 2} of cylinder 10).
Regarding claim 4, the cylinder 10 is a tubular element which is inserted into the handpiece as seen in figs. 1 and 2.
Regarding claim 5, a first dynamic pressure chamber 28 and a second dynamic pressure chamber 40 are associated with the cylinder 10, wherein the dynamic pressure chambers 28/40 can be connected to the cylinder 10 in a flow-conducting manner as through openings 38/39, wherein a fluid source at 33 is associated with the cylinder 10.
Regarding claim 6, the cylinder 10 comprises a first channel 39 on the side facing away from the chisel tool at 3, wherein the cylinder 10 is flow-connectable to the fluid source 33 through the first channel 39.
Regarding claim 7, the cylinder 10 comprises a second channel 38 on the side facing the chisel tool at 3, wherein the cylinder 10 is flow-connectable to the first dynamic pressure chamber 28 through the second channel 38 (by passing through 46).
Regarding claim 8, the first dynamic pressure chamber 28 comprises a third channel 46, wherein the first dynamic pressure chamber 28 is flow-connectable to the fluid source 33 through the third channel 46.
Regarding claim 9, wherein the cylinder 10 comprises a fourth channel on the side facing away from the chisel tool at 3, wherein the cylinder is flow-connectable to the second dynamic pressure chamber through the fourth channel (note presence of additional channels 38/39).
Regarding claim 10, the first, third and fourth channels are selectively closable (the openings open as a result of oscillation of piston 15 {col. 4, lines 10-25}).
Regarding claim 11, for driving the chisel tool into the prosthesis stem interspace, the first and second channels are in an open state and the third and fourth channels are in a closed state.
Regarding claim 12, for driving out the chisel tool from the prosthesis stem interspace, the first channel is in a closed state and the second, third and fourth channels are in an open state.
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) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mandanis.
Regarding claim 13, the limitations of claim 5 were taught by Mandanis, above. No particular teaching of rate of compressed air bursts was taught by Mandanis. Mandanis teaches providing air supply at 7 bar (col. 3, line 33), suggesting that Mandanis has contemplated different levels of air supply volume/pressure during the optimization of his device.
It would have been obvious to one with ordinary skill in the art at the time of the invention to provide air to the device at a rate such that 33 interacts with passages 38/39 at such a volume wherein the fluid source at 33 generates pulsed compressed air bursts for moving the piston at a frequency is in the range between 1 and 40 Hz. One would have been able to arrive at an appropriate supply volume/pressure in order to achieve a desired rate/strike force on the working tool.
Allowable Subject Matter
Claim 14 is 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 David Bates whose telephone number is (571)270-7034. The examiner can normally be reached Monday through Friday, 10AM-6PM
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/DAVID W BATES/Primary Examiner, Art Unit 3799
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