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 .
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 9-15 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 9 is rejected as indefinite for the recitation of “the cutting surface being spaced apart from the window” in line 8. It is unclear if the window recited in the limitation is the cutting element window or the housing window. In the interest in compact prosecution the window will be interpreted as the housing window.
Claims 10-15 are rejected as indefinite for depending upon an indefinite claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends. Claim 13 recites rotating the tool in a first direction to cause a first cutting action and rotating in a second direction to cause a second cutting action wherein the first cutting action cuts tissue of a different hardness that the second cutting action in lines 1-4 which is the same as what is recited in claim 9 at lines 2-3, 6-7, and 9-11. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 35 U.S.C. 102 which forms the basis for all obviousness rejections set forth in this Office action:
(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) 2-6, 9-13, 16-20 is/are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Dierck (US Patent Pub. 20100298855A1).
Dierck recites a method of treating tissue at a surgical site. Specifically in regards to claim 2, Dierck recites operating a surgical cutting tool (12, Fig. 3-4) including a cutting element (33) rotatably disposed in a housing (32) such that the cutting element (33) rotates in a first direction (Oscillating action movement in arrow F and R in Fig. 6) within the housing (32), the rotation in the first direction (oscillate) generating a first cutting action (interaction of 94 and 70, Fig. 5) and a second cutting action (interaction of 95 and 71, Fig. 5), the first cutting action (interaction of 94/70) including a scissoring action between a first surface portion (surface of 94) of the cutting element (33) and an edge (edge with 70) of a housing window (67) of the housing (32) to cut tissue, and the second cutting action (interaction of 95/71) being through contact of a second surface portion (portion 95) of the cutting element (33) with tissue when the second surface portion (95) is exposed through the housing window (67), wherein the first cutting action is configured to cut tissue having a first hardness (aggressive cutting) and the second cutting action is configured to cut tissue having a second hardness (fine detail cutting) different from the first hardness (Fig. 3-6; and Para. [0030]-[0037]).
In regards to claim 3, Dierck recites operating the surgical cutting tool such that the cutting element rotates in a second direction (movement either forward F or reverse R, Fig. 6) opposite the first direction (oscillating) within the housing (32), the rotation in the second direction generating a third cutting action(action between 94 and 70 or 95 and 71) between a third surface portion of the cutting element (32) and the edge of the housing window (67) (Fig. 5-69; and Para. [0037]).
In regards to claim 4, Dierck recites wherein operating the surgical cutting tool (12) such that the cutting element (33) rotates in the second direction causes a singular cutting action in the form of the third cutting action (The tool can move either in the forward F or reverse R direction wherein the teeth 94 and 70 cause aggressive cutting or 95 and 71 to cause detailed fine cutting.) (Fig. 5-6; and Para. [0037]).
In regards to claim 5, Dierck recites wherein the cutting element includes a window (93 in Fig. 5) and the first surface portion (portion with 94) includes a plurality of teeth (94) along an edge of the window (93), the plurality of teeth (94) passing the edge of the housing window (67) to cause scissoring action between the plurality of teeth (94) and the edge (edge with 70) of the housing window (67 (Fig. 5; and Para. [0037]).
In regards to claim 6, Dierck recites wherein operating the surgical cutting tool (12) such that the cutting element (33) rotates in the first direction causes a window (93) of the cutting element (33) to pass across the edge of the housing window (67) separate from the second surface portion (portion with 95), the cutting element (33) including a smooth surface portion in between the second surface portion (portion with 95) and the window (93) in a circumferential direction (Fig. 5).
In regards to claim 9 and 13, Dierck recites a method of treating tissue at a surgical site. Specifically, Dierck recites operating a surgical cutting tool (12) such that a cutting element (33) of the surgical cutting tool rotates in a first direction (forward direction F, Fig. 6) within a housing (32) of the surgical cutting tool to cause a first cutting action (action between 94 and 70) between a cutting edge of a window (93) of the cutting element (33) and an edge of a housing window (67) of the housing (32); and operating the surgical cutting tool (12) such that the cutting element rotates in a second direction (reverse R, Fig. 6) opposite the first direction (F) to cause a second cutting action (action of 95 and 71) by a cutting surface (95) of the cutting element (33), the cutting surface being spaced apart from the window (67), wherein the first cutting action (action of 94 and 70) is configured to cut tissue having a first hardness (aggressive cutting action) and the second cutting action (95 and 71) is configured to cut tissue having a second hardness (fine detailed cutting) different from the first hardness (Fig. 3-6; and Para. [0030]-[0037]).
In regards to claim 10, Dierck recites wherein the cutting edge (edge of 94) of the window (93) includes a plurality of teeth (94) such that when the surgical cutting tool (12) rotates in the first direction (F), the plurality of teeth (94) pass across the edge of the housing window (67) in a scissoring action configured to cut tissue (Fig. 5-6; and Para. [0037]).
In regards to claim 11, Dierck recites wherein the cutting edge (edge with 94) is a first cutting edge and the method further comprises, when the cutting element (33) rotates in the second direction (oscillating direction), a third cutting action (both aggressive and fine detail by action of 94/70 and 95/71) between a second cutting edge (edge with 95) of the window (93) opposite the first cutting edge (edge with 94) and the edge of the housing window (32) (Fig. 5-6; and Para. [0037]).
In regards to claim 12, Dierck recites wherein operating the surgical cutting tool (12) such that the cutting element (33) rotates in the first direction (F) causes the first cutting action (action of 94/70) and operating the surgical cutting tool (12) such that the cutting element (33) rotates in the second direction (oscillate) causes the third cutting action (action of both 94/70 and 95/71), the first cutting action (action of 94/70) being configured to cut tissue of a different hardness than the third cutting action (Fig. 5-6; and Para. [0037]).
In regards to claim 16, Dierck recites a method of treating tissue at a surgical site. Specifically, Dierck recites operating a cutting element (33) of a surgical cutting tool (12) in a first mode (forward F, Fig. 6) within a housing (32) of the surgical cutting tool (12), the operation in the first mode (F) causing a cutting surface (94) defined in part by a cylindrical profile of the cutting element (33) to cut tissue when exposed through a housing window (67) of the housing (32); and operating the cutting element (33) in a second mode (oscillate mode) within the housing (32) to cause a cutting edge (moves to cause both actions of 95/71 and 94/70) defined in part by the cylindrical profile of the cutting element (33) to cut tissue when the cutting edge passes an edge of the housing window (67), the cutting edge being part of a periphery of a window (93) of the cutting element (33), wherein the first mode (F) is configured to cut tissue having a first hardness (aggressive cutting) and the second mode (oscillate) is configured to cut tissue having a second hardness (fine detailed cutting) different from the first hardness (Fig. 3-6; and Para. [0030]-[0037]).
In regards to claim 17, Dierck recites wherein the first mode (F) includes a continuous rotation of the cutting element (33) in a first direction within the housing (32) about a central longitudinal axis of the cutting element (33) (Fig. 5-6; and Para. [0037]).
In regards to claim 18, Dierck recites wherein the second mode (oscillate) includes oscillating of the cutting element (33) within the housing (32) (Fig. 5-6; and Para. [0037]).
In regards to claim 19, Dierck recites wherein oscillating of the cutting element (33) includes a first plurality of rotations of the cutting element (33) within the housing (32) in a first direction (F) that are performed sequentially followed by a second plurality of rotations of the cutting element (33) within the housing (32) in a second direction (reverse R, Fig. 6) that are performed sequentially, the second direction being opposite the first direction (Fig. 5-6; and Para. [0037]).
In regards to claim 20, Dierck recites wherein operating the cutting element (33) in the second mode (oscillating) causes at least one tooth (94) on the cutting edge to cut tissue proximate to the cutting element (33) when the at least one tooth passes (94) the edge of the housing window (67) (Fig. 5-6; and Para. [0037]).
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) 7-8, 14-15, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dierck in view of Zalenski et al (US Patent Pub. 20070010822A1).
Dierck recites a method of treating tissue with a surgical cutting tool comprising a cutting element housing within a housing element, operating the tool by rotating the cutting element in the housing in a first direction to generate a first cutting action and a second cutting action, the first action being a scissoring action, the second action being through the contact of a second surface of the cutting element when exposed in a window in the housing, and wherein the first action cuts tissue having a first hardness and the second action cuts tissue having a second hardness that is different. In regards to claim 7-8 and 14-15, Dierck recites wherein the cutting element (33) rotates in a first or second direction (F or R) to cause a cutting element to pass across the housing window (67) (Fig. 5-6). However, the reference is silent as to the cutting element having cutting flutes.
Zalenski discloses a surgical accessory (10) in regards to claim 7-8 and 14-15, comprising a cutting head (50) having an cutting region (54) comprising a fluted region including a cutting surface and a flute extending longitudinally along said outer peripheral area of said cutting head (50); and wherein the plurality of flutes are separated by a plurality of lands, each land of the plurality of lands and an outer surface of the cutting element at the cutting edge having a first radius of curvature such that the plurality of lands and the cutting edge maintain a uniform maximal radius of curvature as the cutting element rotates and minimum distance (As can be seen in Fig. 1 and 4A, the tip 50 of instrument 10 has an abrading element in the form of longitudinal flutes 58. The lands between the flutes 58 would allow for a minimum distance when the flutes rotate past a housing opening of Dierck.) (Fig. 1 and 3-4A; and Page 2 Para. [0031]-[0034]). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the cutting area (95 or 94) of Dierck to have longitudinal cutting flutes as taught in Zalenski since it would allow the use of the tool in only a single direction to abrade the surface of a site (Zalenski Page 2 Para. [0032]).
In regards to claim 21, Dierck recites a method as recited above. Dierck recites the cutting element (33) operating in the first mode (F) causes the cutting edge of the cutting surface to cut tissue when exposed through the housing window of the housing (Fig. 5-6; and Para. [0037]). However, the reference is silent as to the cutting edge comprising flutes. Zalenski discloses a surgical accessory (10), comprising a cutting head (50) having an cutting region (54) comprising a fluted region including a cutting surface and a flute extending longitudinally along said outer peripheral area of said cutting head (50) (As can be seen in Fig. 1 and 4A, the tip 50 of instrument 10 has an abrading element in the form of longitudinal flutes 58. The lands between the flutes 58 would allow for a minimum distance when the flutes rotate past a housing opening of Dierck.) (Fig. 1 and 3-4A; and Page 2 Para. [0031]-[0034]). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the cutting area (95 or 94) of Dierck to have longitudinal cutting flutes as taught in Zalenski since it would allow the use of the tool in only a single direction to abrade the surface of a site (Zalenski Page 2 Para. [0032]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The US Patent Pub. 20120101513A1 to Shadeck et al was considered in regards to the claims since the reference discloses a cutting tool having cutting teeth on one surface and an abrading element on a second opposite surface.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELA I SHIRSAT whose telephone number is (571)270-5269. The examiner can normally be reached M-F 9:00am-5:30pm MST.
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/MARCELA I. SHIRSAT/ Primary Examiner, Art Unit 3775
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