DETAILED ACTION
This office action is responsive to the amendment filed April 14, 2026. Claims 5, 6, and 8 were amended. Claims 1-16 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 .
Response to Arguments
Applicant's arguments filed April 14, 2026, related to the rejection of claims 1, 2, and 5-16 under 35 USC 102(a)(1) in view of Petersen (US 5,129,908); and claims 3 and 4 under 35 USC 103 in view of Petersen; have been fully considered but they are not persuasive.
Regarding claim 1, the arguments presented have been carefully considered and examiner understands the point being made related to the pivotable limitation. Examiner however believes Petersen continues to read on all claimed limitations.
At p. 5 of the remarks, it is stated that Peterson’s reamer guide is not ‘pivotally movable with respect to the ‘main body’”. At p. 6, the Petersen mechanism is explained and distinctions between the instant invention and prior art are identified. While examiner agrees with the distinctions noted, Examiner respectfully disagrees that the claims require all of what is argued.
The particular language in question at claim 1 is
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Examiner understands this limitation to be met as follows:
the second clamping section 70 is pivotable with respect to the main body 11/12 about a pivot point at 57 by an actuating mechanism 14.
It is examiner’s position that all structures distal of 57 which are ultimately coupled thereto (e.g. 53, 60, 63 and 70) are pivotably moveable with respect to the main body 11/12.
Examiner takes the position that he could alternatively make the same point about the pivot point at 15 – where actuation of 14 causes 70 (and all structures distal of 15 on arm 14, being 53, 56, etc.) to move pivotably relative to main body portions 11 and 12.
As such, this argument is respectfully found not to be persuasive, and the argument is maintained.
The argument related to claim 8 at pages 6-7 is based on amended language of that claim. It is agreed that the rejection of record is overcome based on the amendment to the claim. A new rejection under 35 USC 103 in view of Petersen and Brown et al. (US 2008/0097450 A1) will be made, below.
The argument related to claim 9 at page 7 states that pivot bearing 23 is a threaded opening that defines the axis between handles 11 and 13. Applicant describes this as a single pivot bearing at a single axis, as opposed to a second bearing at a second axis.
Generally, examiner agrees with applicant’s description of the portions identified at 17 and 23. Examiner now sees that referring to element 23 – the threaded wall – was a typographical error in the rejection. However, Examiner disagrees that two bearings which define two axes are not present at this location, and that such is not apparent to one studying at least figure 2.
Examiner understands the formation of Petersen, as best seen in fig. 2, to be a threaded hole 23 for receiving a threaded end 21 of a bolt 17. The bolt is received in a hole 19 to permit pivoting of the arms of the tool. The bolt is formed as a ‘shoulder bolt’ with the unthreaded, enlarged shoulder portion of the bolt riding within 19 as two bearing portions - the shoulder, and the hole. It was this enlarged shoulder portion of 17 which examiner was intending to identify as the first bearing portion in rejecting claim 1; and the hole at 19 which was intended as the second bearing for rejecting claim 9. The first bearing on 17 is mounted to the main body as in the figures, and defines a pivot axis of the second clamping section 70. The second bearing at the hole 19 is a second bearing defining a pivot axis of the lever 13. Axes are mental constructs, and there is no reason the two claimed axes cannot be coincident, as presently claimed. Therefore, the rejection of record is maintained, as modified to correct the typographical error. Examiner apologizes for the mistake, but believes even with the error made, the elements were clearly visible in the figures for applicant to consider.
Regarding the arguments related to the rejection of claim 15, the arguments are persuasive. The rejection is withdrawn and claims 15 and 16 are now indicated as containing allowable subject matter.
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, 5, 7, and 9-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Petersen (US 5,129,908).
Regarding claim 1, Petersen teaches a patella clamping device as at fig. 1 comprising:
a first clamping section 45;
a second clamping section 70; and
a main body 11/12,
the main body 11/12 having a distal end which constitutes the first clamping section 45 and having a proximal end which includes a gripping section to be gripped by a surgeon (the proximal portion of 11 is formed as a handle),
the main body 11/12 further having a pivot bearing at a shoulder portion of 17 defining a pivot axis (through 17, see fig. 2) of the second clamping section 70,
the second clamping section 70 being pivotably movable with respect to the main body 11/12 by an actuating mechanism 14 (everything distal 57, including 70, is considered to be pivotably moveable relative to 11/12; alternatively, everything distal of 17, including 70, is considered to be pivotably moveable relative to 11/12),
the actuating mechanism 14 comprising a lever 13 to be activated by the surgeon such that clamping of a patella involves an initial engagement of the first clamping section 45 with the patella 110 and a subsequent movement of the second clamping section 70 relative to the main body 11/12 until the second clamping section 70 engages with the patella as in fig. 1.
Regarding claim 2, the first clamping section 45 extends along an arc covering a clamping angle of at least 120° as in fig. 1.
Regarding claim 5, the second clamping section 70 extends along a straight axis from the pivot axis at 17 – there is no reason an imaginary axis from 17 to 70 cannot be said to exist.
Regarding claim 7, the first clamping section and the second clamping section define a clamping plane that is parallel with or coincides with a resection plane defined by the resection slot (the resection to be performed by 100 will be parallel to a surface between 70 and 47).
Regarding claim 9, the main body 11/12 comprises an additional pivot bearing 19 defining a pivot axis of the lever 13. There is no reason, as claimed, the two axes cannot be coincident.
Regarding claim 10, the lever 13 and the second clamping section 70 are coupled to each other via at least one transmission element 56.
Regarding claim 11, the at least one transmission element 56 comprises a rotary sliding joint 57.
Regarding claim 12, the actuating mechanism 14 comprises a biasing element 35 biasing the second clamping section 70 in an open position and against a clamping position as seen in fig. 1.
Regarding claim 13, the biasing element 35 is a leaf spring.
Regarding claim 14, the main body 11/12 comprises an attachment mechanism 63/72 for attaching an abutment element 53 defining an abutment plane (distal plane of 53, to which 70 is attached) that is parallel to a resection plane of the patella (the plane reamed by 100).
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) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Petersen.
Regarding claims 3 and 4, wherein the first clamping section 45 extends along an arc but the amount of the arc is not specified and not taught being at least 140 or at least 160 degrees.
The instant specification has been explored for reasons for this clamping angle. The relevant discussion appears to be at p. 2, lines 25-30. The disclosure indicates that greater than 120 is one of the options which is considered a “wide clamping angle” for providing “a shell-like structure surrounding a portion of the patella”. Examiner’s interpretation of this disclosure is that all three variants are functionally equivalent for the purpose of surrounding a patella with a wide clamping angle and providing a shell-like structure therearound. It appears that this disclosure is stating that all three arc angles are functionally equivalent for the purpose of doing so.
It is examiner’s position that selection of a particular arc angle of 45 is a matter of design choice, which can be modified for purposes of particular patient anatomy, size and structure. Further, it is examiner’s position that modification of the shape of 45 to any of the claimed shapes is a matter of selection between different functionally equivalent designs. Examiner is of the position that modification of the arc of 45 to any of various angles would have been an obvious modification for the purposes of forming the Petersen device in order to accommodate particular patient anatomies.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Petersen in view of Brown et al. (US 2008/0097450 A1).
Regarding claim 8, Petersen teaches the first clamping section includes at least one row of clamping teeth 51, but does not teach the teeth extending through an arcuate path that is concave in a direction facing the patella.
Brown teaches a patella clamping device as at fig. 2. Two clamping sections are shown at 64 and 44. Both clamping sections include teeth facing the patella at 49 and 66. The teeth 66 are on an arcuate concave path facing the patella.
It would have been obvious to one with ordinary skill in the art at the time of the invention to place teeth on both Petersen clamping sections. Teeth placed on the section 70 would have been in an arcuate concave path facing the patella, in the same way as teeth 66 are formed on the Brown device. One would have done so in order to prevent the patella slipping from both clamping sections and maintain the orientation of the patella relative to the clamp faces (Brown, [0039]).
Allowable Subject Matter
Claims 6, 15 and 16 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
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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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.
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/DAVID W BATES/Primary Examiner, Art Unit 3799
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