DETAILED ACTION
This office action is responsive to the amendment filed June 30, 2026. Claims 1, 5-9, 13 and 14, were amended; and claim 3 was canceled. Claims 1, 2, and 4-14 are pending. Claim 14 was previously objected to, but indicated as containing allowable subject matter.
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
Claim 1 was amended to incorporate the subject matter of claim 3.
The outstanding rejection of claims 1-14 under 35 USC 112(b) was overcome by the amendment of June 30, 2026.
Applicant's arguments filed June 30, 2026, regarding the rejection of claims 1-12 under 35 USC 102(a)(1) in view of Mandanis (US 5,485,887), and claim 13 under 35 USC 103 in view of Mandanis, have been fully considered but they are not persuasive.
The arguments have been carefully considered.
The arguments at p. 6 state that Mandanis does not anticipate the configuration required by claim 1, noting that the “fluidic and mechanical operation of Mandanis and the present application is fundamentally different…” Applicant states that the cylinder 10 in Mandanis axially displaces within the housing, such that the rejection is rendered improper.
Examiner wishes to clarify his understanding of the function of Mandanis. This movable nature of the cylinder 10 is not a movement which occurs during fluidic and mechanical operation of Mandanis, as applicant appears to be contending. Rather, Examiner understands that there are two positions between which the cylinder can be placed (as at figs. 1 and 2) which two positions function to provide either a forward or a reverse direction of impact force upon a tool retained at adapter 3 as a result of movement of the piston 15, and which portions of the cylinder 10 the piston 15 impacts:
Cylinder 10 displaced into position of fig. 1 or 2: col. 3, lines 5-9
Cylinder 10 forced into the displaced position of fig. 1: col. 3, lines 37-40
Cylinder 10 forced into the position of fig. 1: col. 3, lines 53-54
Tool generates only forward strikes: col. 4, lines 39-41;
fig. 2 position causes tool to generate only rearward strikes: col. 4, lines 46-48
cylinder 10 ‘moved into’ position of fig. 2: col. 4, lines 60-61
Examiner understands switch 21 is actuated to cause the cylinder to move to the indicated positions one time to cause the motions. While the word ‘displaceable is used in Mandanis, and the word “moveable” in the argument, Examiner would contend that, in context, a more complete understanding would be to say that the cylinder is ‘settable between two distinct positions which are maintained during use.’
Examiner has carefully reviewed the claim. Examiner finds no claim limitation requiring the cylinder to be fixed within the handpiece. As such, Examiner does not find this argument to have basis in the claim language, so is not persuasive. Examiner takes the position that such is simply not excluded by the instant claims. The rejection will be maintained.
The arguments then go on at p. 7 to discuss the subject matter of original claim 3. It is argued that Mandanis does not provide for “a separate pulse transmitter arranged between the piston element and the chisel tool”, the pulse transmitter both transmitting the pulse “when the pulse transmitter axially moves with the piston element within the cylinder” and seals the end face on the side of the cylinder facing the chisel.
Initially, examiner takes issue with this argument – the claim does not require the pulse transmitter to “axially move with the piston element within the cylinder”. This is not a fair understanding of the claim limitations. Claim 1 requires
Pulse transmitter associated with the cylinder (line 3)
Pulse transmitter associated with an end face of the cylinder, arranged between the piston and chisel (lines 13-15)
Pulse transmitter transmits a pulse from piston to chisel (line 16-17)
Pulse transmitter seals end face of cylinder (line 18)
No movement of the pulse transmitter is required.
The argument further states that the pulse transmitter does not seal the end face on the side of the cylinder facing the chisel. Examiner disagrees. Mandanis’ pulse transmitter 2, along with the piston 15, seal an end of the cylinder 10, at least in the position of fig. 1. This is evidenced by need for openings 45 which provide an outlet to ambient pressure “so that the piston is not braked by compression in this chamber” (col. 4, lines 41-45). Were this portion not sealed by the piston and pulse transmitter 2, there would be no need for openings 45.
At p. 8 of the remarks, it is once again stated that the cylinder 3 is ‘axially fixed within the handpiece 2 and the pulse transmitter 9 (with piston element 4) is axially moveable within the cylinder”. Neither the axially fixed nature of the cylinder nor the axially moveable nature of the pulse transmitter is claimed, so is not required to be part of the prior art.
The rejection of record is maintained.
The rejection under 35 USC 103 is not further argued, except to state that a prima facie case of obviousness has not been established. Examiner does not agree, and does not find any further particular arguments to respond to regarding this rejection.
The rejections of record are maintained, below, modified only to correlate to the amendments to the claims.
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, 2, and 4-12 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 at figs. 1 and 2 capable of use in the revision of prostheses, comprising a handpiece 2a in which a cylinder 10 is arranged,
wherein a piston element 15 and a pulse transmitter 2 are 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 2a at adapter 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),
wherein the piston element 15 is configured to induce a pulse directed opposite to the chisel tool connected to 3 for driving out the chisel tool from the prosthesis stem interspace (as when 15 impacts surface 8 of 7 as in fig. 2);
wherein the pulse transmitter 2 is associated with the end face of the cylinder 10 (downward facing face) associated with the chisel tool (2 couples to 3, which couples to the chisel; all retained within (e.g. associated with) the cylinder), 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, and
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 2 wherein the piston element 15 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 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
THIS ACTION IS MADE FINAL. 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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/DAVID W BATES/Primary Examiner, Art Unit 3799
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