DETAILED ACTION
This is the first office action on the merits in this application. The claims as amended on December 20, 2024, are under consideration. Claims 6-8, 12, 14, 17, 18, and 40 were amended; claims 10, 11, 13, 15, 16, 19-21, 23-36, and 41-139 were canceled; and claims 140 and 141 were newly presented. Claims 1-9, 12, 14, 17, 18, 22, 37-40, 140, and 141 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 Objections
Claim 1 is objected to because of the following informalities: It appears that the word “and” should be added to the end of line 7, to clarify at what point in the claim the “comprising:” portion of the guide bar limitation is intended to end. Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim1 of U.S. Patent No. 12,582,410 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are so similar in scope as to be covering essentially the same subject matter.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a mount indicia” in claim 38.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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)(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) 1, 2, 4, 6-9, 12, 14, 17, 18, 22, 37, 39 and 40 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Gilhooley et al. (US 12,582,410 B2).
The Gilhooley reference is considered properly prior art: It is noted that some inventors are shared between the instant application and Gilhooley, and it is also noted that that Gilhooley reference and instant application are co-assigned. However, the instant application and Gilhooley are in different patent families. Gilhooley further has relation to a provisional application 63/127727 with filing date December 18, 2020. Due to this date, and all elements being identified in anticipating the claims being present in that provisional application, this reference is properly considered prior art.
Regarding claim 1, Gilhooley teaches a saw blade cartridge 10 as at fig. 9 for use with a surgical device as at fig. 28, the saw blade cartridge 10 comprising:
a guide bar comprising:
a first plate 12 and a second plate 14, each of the first plate and the second plate having a distal portion (right in fig. 9) and a proximal portion (left in fig. 9);
an inner plate 16 at least partially disposed between the first and the second plates 12/14, the inner plate defining a pivot surface inside 50A/B; and
a blade 70/62 at least partially disposed between the first and the second plates 12/14, the blade comprising:
a blade body 62A/B including a proximal end 64 and a distal end 68; and
a blade head 70 disposed on the distal end 64 of the blade body 62A/B, the blade head 70 formed with teeth 76/78, wherein the proximal end of the blade body 64 abuts the pivot surface within 50A/B;
wherein the proximal portion of each of the first and second plates 12/14 each define a perimeter edge,
wherein a portion of the inner plate 16 extends beyond the perimeter edge defined by the proximal portion of at least one of the first and second plates 12/14 as seen in fig. 1.
Regarding claim 2, the perimeter edge defined by the proximal portion of at least one of the first and second plates 12/14 is disposed over the portion of the inner plate 16 that extends beyond the proximal portion of the at least one of the first and second plates 12/14 to define a shelf to assist in mounting and alignment of the saw blade cartridge with the surgical device.
Regarding claim 4, the perimeter edge defined by the proximal portion of at least one of the first and second plates 12/14 comprises a recess (the cutouts at the proximal end are considered to be recesses) to expose the portion of the inner plate 16 to define a shelf to assist in mounting and alignment of the saw blade cartridge with the surgical device.
Regarding claim 6, the shape of the proximal end of the first plate 12 is considered a keyhole shape for mounting of the blade, and wherein the inner plate 16 extends beyond the perimeter edge defined by the second plate 14.
Regarding claim 7, the inner plate 16 defines a recess in a side surface of the inner plate 16 that faces away from a longitudinal axis of the cartridge, and wherein the first plate 12 defines a recess that aligns with the recess of the inner plate (recesses at proximal end, near markings 18A/B).
Regarding claim 8, the inner plate 16 further comprises a tine 48 extending from a proximal end of the guide bar 12/14/16, the tine defining the pivot surface 50A/B.
Regarding claim 9, the tine 48 is an inner tine, and the inner plate 16 further including a first outer tine 46A and a second outer tine 46B, the inner tine 48 being disposed between the first and second outer tines 46A/B.
Regarding claim 12, the first and second outer tines 46A/B each comprises a distal end 60A/B; wherein the guide bar 12/14/16 is configured such that the distal end 60A/B of each of the first and second outer tines 46A/B is proximal to a distal end of the first and the second plates 12/14 (as seen at fig.8); and wherein a side defined by the first and the second plates 12/14 defines an aperture 98 proximal to the distal end of the first and the second plates 12/14and distal to the distal end of each of the first and second outer tines 60A/B, the aperture provides for debris exit.
Regarding claim 14, the pivot surface is an arcuate surface (at the proximal end of 50A/B); and wherein the proximal end of the blade body 12/14/16 defining a recess 88/22 that abuts the pivot surface of 50A/B, such that the blade body 12/14/16 is configured to pivot about the pivot surface defined by the inner plate when the blade body 62/70 is actuated.
Regarding claim 17, at least one of the plates 16 defines a reference feature 56 configured to facilitate determination of a position of the surgical blade 62/70 with a navigation system.
Regarding claim 18, the reference feature 56 is selected an optical marking as in fig. 9.
Regarding claim 22, Gilhooley teaches a saw blade cartridge as at fig. 9, of a surgical device as at fig. 28, the saw blade cartridge comprising:
a guide bar 12/14/16 comprising:
a first plate 12 and a second plate 14, each of the first plate 12 and the second plate 14 having a distal portion (right in fig. 9) and a proximal portion (left in fig. 9);
an inner plate 16 disposed partially between the first and the second plates 12/14;
wherein the guide bar defines a pivot surface on 50A/B;
a blade 62/70 at least partially disposed between the first and the second plates 12/14, the blade comprising:
a blade body 62A/B including a proximal end 64 and a distal end 68; and
a blade head 70 disposed on the distal end of the blade body, the blade head formed with teeth 76/78, wherein the proximal end 64 of the blade body 62 abuts the pivot surface of 50A/B;
wherein the proximal portion of each of the first and second plates 12/14 each define a perimeter edge,
wherein a portion of the inner plate 16 extends beyond the perimeter edge defined by the proximal portion of at least one of the first and second plates 12/14 as seen at fig. 1.
Regarding claim 37, Gilhooley teaches a surgical saw system as at fig. 32, the system comprising:
a surgical device 301 including a mount 303, the mount 303 defining a mount surface 315, and the mount comprising:
a first wall and a second wall 325 extending above the mounting surface 315, the first and second wall 325 positioned on opposing sides of a longitudinal axis of the mount as seen at fig. 27;
the first and second wall 325 are tapered relative to the longitudinal axis of the mount as seen at fig. 26; at least one tab 319A/B disposed on each of the first and second walls 325, each of the at least one tabs positioned above and extending over the mounting surface 315;
a saw blade cartridge 10 removably couplable to the mount 33 of the surgical device as at fig. 28, the saw blade cartridge 10 (seen at fig. 9) comprising:
a guide bar 12/14/16 including a distal portion (right in fig. 9) and a proximal portion (left in fig. 9), the guide bar comprising:
a first plate 12;
a second plate 14; and
an inner plate 16 disposed partially between the first and the second plates 12/14,
wherein the proximal portion of each of the first and second plates 12/14 each define a perimeter edge,
wherein a portion of the proximal portion of the inner plate 16 extends beyond the perimeter edge defined by the proximal portion of at least one of the first and second plates 12/14 (see fig.1);
wherein each of the first and second walls 325 engage the perimeter edge of at least one of the first plate or the second plate 12/14 as in fig. 28 to facilitate alignment of the saw blade cartridge 10 along the longitudinal axis and each of the at least one tabs 319A/B engages a surface of the portion of the proximal portion of the inner plate 16 that extends beyond the perimeter edge defined by the proximal portion of at least one of the first and second plates 12/14 as in fig. 28.
Regarding claim 39, at least one of the plates defines a reference feature 56 configured to facilitate determination of a position and/or orientation of the saw blade cartridge with a navigation system.
Regarding claim 40, the reference feature 56 is an optical marking.
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) 1-9, 14, 22, 140 and 141 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mac an Tuile et al. (US 2018/0064448 A1) in view of Walen et al. (US 2009/0182338 A1).
Regarding claim 1, Mac an Tuile teaches a saw blade cartridge as at fig. 2 for use with a surgical device as demonstrated in fig. 1, the saw blade cartridge comprising:
a guide bar comprising:
a first plate 64 and a second plate 102, each of the first plate and the second plate having a distal portion (down in fig. 2) and a proximal portion (up in fig. 2);
an inner plate 76 at least partially disposed between the first and the second plates 64/102, the inner plate 76 defining a pivot surface 98;
a blade 112/142 at least partially disposed between the first and the second plates 64/102, the blade 112/142 comprising:
a blade body 112 including a proximal end 114/116 and a distal end 118/120; and
a blade head 146 disposed on the distal end of the blade body 112, the blade head 146 formed with teeth 148, wherein the proximal end 114/116 of the blade body abuts the pivot surface 98;
wherein the proximal portion of each of the first and second plates 64/102 each define a perimeter edge.
Mac an Tuile fails to teach a portion of the inner plate 76 extends beyond the perimeter edge defined by the proximal portion of at least one of the first and second plates 64/102.
Walen teaches a blade cartridge as at fig. 2. The cartridge includes an upper and lower plate 54/58 and a blade 50/126 similar to that of Mac an Tuile. Walen teaches the first and second plates 56/54 including a proximal perimeter edge. The first plate 56 includes a cut out 92 in the proximal perimeter edge, such that any component beneath the 92 of the first plate would be exposed by the cut out, and would be considered to extend beyond the perimeter edge (in that the edge didn’t’ extend over 92). The cut out 92 appears to relate to a structure of a mount of the surgical tool, as arranged in fig. 1.
Examiner takes the position that an edge region of the plate, including portion 92, reads on the claimed “perimeter edge”.
It would have been obvious to one with ordinary skill in the art at the time of the invention to form the Mac an Tuile cartridge to include a cutout 92 in the location taught by Walen. One would have done so in order to permit use of the Mac an Tuile cartridge in a cutting tool having a coupling mechanism other than the mechanism demonstrated in the Mac an Tuile disclosure, such as the Walen surgical instrument.
Regarding claims 2-5 and 141, the perimeter edge defined by the proximal portion of at least one of the first and second plates, as modified in this proposal to include the cutout 92 as positioned in Walen, is disposed over the portion of the inner plate that extends beyond the proximal portion (the part under 92) of the first plate 54 to define a shelf to assist in mounting and alignment of the saw blade cartridge with the surgical device. The part of the inner plate of Mac an Tuile which is exposed through 92 reads on this limitation. Only a single one of the plates in Walen includes the cutout 92.
Regarding claim 6, the first plate defines a keyhole shape (at the shape of proximal end, thereof) for mounting of the blade, and wherein the inner plate extends beyond the perimeter edge defined by the second plate as in the proposed modification.
Regarding claim 7, the inner plate 76 defines a recess in a side surface of the inner plate that faces away from a longitudinal axis of the cartridge, and wherein the first plate defines a recess 106 that aligns with the recess of the inner plate.
Regarding claim 8, the inner plate 76 further comprises a tine 86 extending from a proximal end of the guide bar, the tine defining the pivot surface 98.
Regarding claim 9, the tine 86 is an inner tine, and the inner plate further including a first outer tine and a second outer tine 82/84, the inner tine being disposed between the first and second outer tines 82/84.
Regarding claim 14, the pivot surface 98 is an arcuate surface; and the proximal end of the blade body 114/116 defines a recess through 114/116 that abuts the pivot surface 98, such that the blade body is configured to pivot about the pivot surface 98 defined by the inner plate 76 when the blade body 112 is actuated.
Regarding claims 22 and 140, Mac an Tuile teaches a saw blade cartridge of a surgical device as at fig. 1, the saw blade cartridge comprising:
a guide bar as at fig. 2 comprising:
a first plate 102 and a second plate 64, each of the first plate and the second plate having a distal portion and a proximal portion;
an inner plate 76 disposed partially between the first and the second plates 64/102;
wherein the guide bar defines a pivot surface 98;
a blade 112/142 at least partially disposed between the first and the second plates, the blade comprising:
a blade body 112 including a proximal end 114/116 and a distal end 118/120; and
a blade head 146 disposed on the distal end of the blade body, the blade head formed with teeth 148, wherein the proximal end 114/116 of the blade body 112 abuts the pivot surface 98;
wherein the proximal portion of each of the first and second plates 64/102 each define a perimeter edge (some amount of a perimeter region, thereof).
Mac an Tuile fails to teach a portion of the inner plate 76 extends beyond the perimeter edge defined by the proximal portion of at least one of the first and second plates 64/102.
Walen teaches a blade cartridge as at fig. 2. The cartridge includes an upper and lower plate 54/58 and a blade 50/126 similar to that of Mac an Tuile. Walen teaches the first and second plates 56/54 including a proximal perimeter edge. The first plate 56 includes a cut out 92 in the proximal perimeter edge, such that any component beneath the 92 of the first plate would be exposed by the cut out, and would be considered to extend beyond the perimeter edge (in that the edge didn’t extend over 92). The cut out 92 appears to relate to a structure of a mount of the surgical tool, as arranged in fig. 1. The cut out 92 is on only one of the first and second plates.
Examiner takes the position that an edge region of the plate, including portion 92, reads on the claimed “perimeter edge”.
It would have been obvious to one with ordinary skill in the art at the time of the invention to form the Mac an Tuile cartridge to include a cutout 92 in the location taught by Walen. One would have done so in order to permit use of the Mac an Tuile cartridge in a cutting tool having a coupling mechanism other than the mechanism demonstrated in the Mac an Tuile disclosure, such as the Walen surgical instrument.
Allowable Subject Matter
Claim 38 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
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
/DAVID W BATES/Primary Examiner, Art Unit 3799
Prosecution Insights