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 .
Response to Amendment
This Office Action is responsive to the amendment filed on 25 May 2026. As directed by the amendment: claims 1-6, 8, and 9 have been amended, claim 10 is cancelled, and claims 14-19 have been newly added. Claims 1-9 and 11-19 currently stand pending in the application.
The amendments to the claims are sufficient to overcome the previous claim objections, which are accordingly withdrawn. The cancellation of claim 10 has rendered moot its relevant claim objection.
The amendments to the claims are sufficient to overcome the previous rejections under 35 U.S.C. 112(b), which are accordingly withdrawn.
Response to Arguments
Applicant's arguments filed 25 May 2026 have been fully considered but they are not persuasive. As to the rejections under 35 U.S.C. 102 as anticipated by Schweitzer (US 2,921,489), Applicant contends that Schweitzer does not disclose “at least some of the second chain links comprise a respective protrusion extending along the holding plane to a pointed end configured to engage with the patella” because Schweitzer shows friction elements 66 as having a planar surface 26. Examiner respectfully submits that Schweitzer does contemplate that the contact surfaces of the protrusions comprise teeth (col. 3 / lines 5-8). A tooth is commonly understood to mean a sharp projection.
As to claims 8, 9, 17, and 18, Applicant contends that the top surfaces of Schweitzer’s links 67 and 68 which together define a support plane for supporting a resection tool are interrupted by the protruding pins 71, and thus Schweitzer does not teach “first outer surfaces that together define a first uninterrupted support plane” (claims 8 and 17) or “second outer surfaces that together define a second uninterrupted support plane” (claims 9 and 18). Examiner respectfully submits that the first/second outer surfaces of the first chain links inward of the pins 71, 72 define a respective uninterrupted support plane which is fully capable of supporting a resection tool which can slide in the support plane along the first/second outer surfaces of the first chain links inward of and between the pins. The first/second outer surfaces define the location of a respective support plane to be coplanar with the first/second outer surfaces, and each plane itself is uninterrupted, at least as much as the instant invention, which also shows that the outer surfaces form part of a plane but do not form an uninterrupted plane themselves since they are separated by gaps (created by the second chain links) from each other.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8, 9, and 17-19 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claims 8 and 17, the limitations “a first uninterrupted support plane” are not supported by the specification as originally filed. The first outer surfaces of the first chain links are not uninterrupted due to spaces between the first chain links (created by the second chain links) and thus spaces between the first outer surfaces of the first chain links, and therefore a plane defined by the first outer surfaces is also not uninterrupted.
Further as to claims 8 and 17, the limitations “supporting a resection tool to move parallel to the holding plane” are not supported by the specification as originally filed. The specification is silent as to the first support plane supporting a resection tool to move parallel to the holding plane.
As to claims 9 and 18, the limitations “a second uninterrupted support plane” are not supported by the specification as originally filed. The second outer surfaces of the first chain links are not uninterrupted due to spaces between the first chain links (created by the second chain links) and thus spaces between the second outer surfaces of the first chain links, and therefore a plane defined by the second outer surfaces is also not uninterrupted.
Further as to claims 9 and 18, the limitations “supporting a resection tool to move parallel to the holding plane” are not supported by the specification as originally filed. The specification is silent as to the second support plane supporting a resection tool to move parallel to the holding plane.
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.
(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.
Claims 17-19 are rejected under 35 U.S.C. 102(a)(1)/(2) as anticipated by U.S. Patent No. 2,921,489 to Schweitzer.
As to claim 17, Schweitzer discloses a patella holding device for holding a patella in a holding plane (interpreted as language of intended use; the holding device is fully capable of being a patella holding device for holding a patella by encircling the patella and holding it in a holding plane interior to the device), the patella holding device comprising: a first gripping element (31 including 36) (col. 2 / lines 17-21); a second gripping element (12) (col. 1 / lines 48-53); and a chain that connects the first gripping element to the second gripping element (the chain connects outer ends of the gripping elements to each other), the chain comprising first chain links (the narrower links shown in FIG. 1, including 42, 67, and 68 and the other unnumbered alternating links between and connecting 56-60) and second chain links (the wider links in FIG. 1, including 43 and 56-60 and the other unnumbered alternating links) that are movable relative to the first chain links about rotation axes (at pivot pins) that are perpendicular to the holding plane (plane of protrusions 62-66 that perform the holding), FIGS. 1 and 4, wherein the first chain links have respective first outer surfaces (top surfaces of 67 and 68 in FIG. 4) that together define a first uninterrupted support plane for supporting a resection tool to move parallel to the holding plane (the first outer surfaces of the first chain links inward of the pins 71, 72 define an uninterrupted support plane which is fully capable of supporting a resection tool which can slide in the support plane along the first outer surfaces of the first chain links inward of and between the pins; the first outer surfaces define the location of a support plane to be coplanar with the first outer surfaces, and the plane itself is uninterrupted, at least as much as the instant invention).
As to claim 18, Schweitzer discloses the patella holding device according to claim 17, wherein the first chain links have respective second outer surfaces (bottom surfaces of 67 and 68 in FIG. 4) that together define a second uninterrupted support plane for supporting a resection tool to move parallel to the holding plane (the second outer surfaces of the first chain links inward of the pins 71, 72 define an uninterrupted second support plane which is fully capable of supporting a resection tool which can slide in the second support plane along the second outer surfaces of the first chain links inward of and between the pins; the second outer surfaces define the location of a second support plane to be coplanar with the second outer surfaces, and the plane itself is uninterrupted, at least as much as the instant invention), the respective second outer surfaces being parallel to the respective first outer surfaces, FIG. 4.
As to claim 19, Schweitzer discloses the patella holding device according to claim 17, wherein: each first chain link comprises a first plate and a second plate, the first plate and the second plate being located on opposite sides of each adjacent second chain link, FIG. 4, and a respective pin (71, 72) connecting the first plate and the second plate to each adjacent second chain link, FIGS. 1 and 4; and the respective first outer surfaces comprise a respective planar surface of each first plate, FIG. 4.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-9 and 11-16 are rejected under 35 U.S.C. 102(a)(1)/(2) as anticipated by U.S. Patent No. 2,921,489 to Schweitzer, or in the alternative, are rejected under 35 U.S.C. 103 as being unpatentable over Schweitzer.
As to claim 1, Schweitzer discloses a patella holding device for holding a patella in a holding plane (interpreted as language of intended use; the holding device is fully capable of being a patella holding device for holding a patella by encircling the patella and holding it in a holding plane interior to the device), the patella holding device comprising: a first gripping element (31 including 36) (col. 2 / lines 17-21); a second gripping element (12) (col. 1 / lines 48-53); and a chain that connects the first gripping element to the second gripping element (the chain connects outer ends of the gripping elements to each other), the chain comprising first chain links (the narrower links shown in FIG. 1, including 42, 67, and 68 and the other unnumbered alternating links between and connecting 56-60) and second chain links (the wider links in FIG. 1, including 43 and 56-60 and the other unnumbered alternating links) that are movable relative to the first chain links about rotation axes (at pivot pins) that are perpendicular to the holding plane (plane of protrusions 62-66 that perform the holding), FIGS. 1 and 4, wherein at least some of the second chain links (56-60) comprise a respective protrusion (62-66) extending along the holding plane to a pointed end (end of one tooth of the teeth on each of 62-66, col. 3 / lines 5-8) configured to engage with the patella (interpreted as language of intended use; the protrusions are fully capable of engaging with the patella held inside the chain in the plane of the protrusions and teeth, which is the holding plane; the protrusions extend along the holding plane to an end of the tooth on the protrusion since the tooth is what holds the interior piece, i.e. the patella, and thus defines the holding plane).
As to claim 2, Schweitzer discloses the patella holding device according to claim 1, wherein the holding plane is configured to be parallel to or coincide with a plane defined by a medio-lateral axis and a proximal-distal axis of the patella (interpreted as language of intended use; the holding plane is fully capable of being parallel or coincides with a plane defined by a medio-lateral axis and a proximal-distal axis of the patella when the patella is held by the chain in such an orientation).
As to claim 3, Schweitzer discloses the patella holding device according to claim 1, wherein the chain comprises at least 8 rotation axes, FIG. 1.
As to claim 4, Schweitzer discloses the patella holding device according to claim 1, wherein the chain comprises at least 12 rotation axes, FIG. 1.
As to claim 5, Schweitzer discloses the patella holding device according to claim 1, wherein the chain comprises at least 16 rotation axes (including the axes of the pins connecting the chain to 31 and 12), FIG. 1.
As to claim 6, Schweitzer discloses the patella holding device according to claim 1, wherein the chain comprises at most 20 rotation axes (comprises less than 20 rotation axes), FIG. 1.
As to claim 7, Schweitzer discloses the patella holding device according to claim 1, wherein: the first chain links are configured as outer links (each first chain link sandwiches an adjacent second chain link, FIG. 4, so that the first chain links are outside the second chain links, i.e. outer links), the second chain links are configured as inner links (as sandwiched by the first chain links), and the outer links and the inner links are arranged in an alternate manner, FIG. 1.
As to claim 8, Schweitzer discloses the patella holding device according to claim 1, wherein the first chain links have respective first outer surfaces (top surfaces of 67 and 68 in FIG. 4) that together define a first uninterrupted support plane for supporting a resection tool to move parallel to the holding plane (the first outer surfaces of the first chain links inward of the pins 71, 72 define an uninterrupted support plane which is fully capable of supporting a resection tool which can slide in the support plane along the first outer surfaces of the first chain links inward of and between the pins; the first outer surfaces define the location of a support plane to be coplanar with the first outer surfaces, and the plane itself is uninterrupted, at least as much as the instant invention).
As to claim 9, Schweitzer discloses the patella holding device according to claim 8, wherein the first chain links have respective second outer surfaces (bottom surfaces of 67 and 68 in FIG. 4) that together define a second uninterrupted support plane for supporting a resection tool to move parallel to the holding plane (the second outer surfaces of the first chain links inward of the pins 71, 72 define an uninterrupted second support plane which is fully capable of supporting a resection tool which can slide in the second support plane along the second outer surfaces of the first chain links inward of and between the pins; the second outer surfaces define the location of a second support plane to be coplanar with the second outer surfaces, and the plane itself is uninterrupted, at least as much as the instant invention), the respective second outer surfaces being parallel to the respective first outer surfaces, FIG. 4.
As to claim 11, Schweitzer discloses the patella holding device according to claim 1, wherein the first gripping element is configured to be manipulated by a thumb of a hand of a surgeon (interpreted as language of intended use; fully capable of being manipulated by a thumb if the hand is so placed) and wherein the second gripping element is configured to be manipulated by an index finger (interpreted as language of intended use; fully capable of being manipulated by an index finger if the hand is so placed, e.g. the first and second gripping elements can be pinched between the thumb and index finger with at least some of the thumb gripping/manipulating the first gripping element and at least some of the index finger gripping/manipulating the second gripping element).
As to claim 12, Schweitzer discloses the patella holding device according to claim 11, wherein the second gripping element is configured to be manipulated by the index finger of the hand of the surgeon (interpreted as language of intended use, as above).
As to claim 13, Schweitzer discloses the patella holding device according to claim 1, wherein the first gripping element and the second gripping element are ring-shaped (at 36 on the first gripping element 31) (col. 2 / lines 20-21) and/or trough-shaped (at 17 on the second gripping element 12) (col. 1 / lines 56-57).
Assuming arguendo, Schweitzer does not disclose a pointed end (claim 1); wherein the pointed end comprises a sharp corner (claim 14); wherein the pointed end comprises a single sharp point (claim 15); wherein the pointed end is configured to penetrate the patella (claim 16).
Schweitzer does contemplate that the contact surfaces of the protrusions comprise teeth (col. 3 / lines 5-8). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the teeth on the contact surface of the protrusions with a pointed end comprising a sharp corner/tip, to better grip the interior piece, i.e. the patella, without slipping. A tooth is commonly understood to mean a sharp projection. The corner/tip of the tooth is at least pointed and sharp compared to the rest of the contact surface of the protrusion. Then, since the tooth is what holds the interior piece, i.e. the patella, it thus defines the holding plane, and each protrusion thus extends along the holding plane to a pointed end of the tooth fully capable of engaging with and penetrating the patella. Each tooth comprises a pointed end which comprises a single sharp point, as above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 TRACY L KAMIKAWA whose telephone number is (571)270-7276. The examiner can normally be reached M-F 10:00-6:30 PM.
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, the examiner’s supervisor, Kevin Truong, can be reached 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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/TRACY L KAMIKAWA/Examiner, Art Unit 3775
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