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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-11 in the reply filed on 11 July 2026 is acknowledged.
Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11 July 2026.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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: rotation mechanism in claim 1, operating element in claim 3, self-lock mechanism in claim 5 and receiving element in claim 8.
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)(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) 1-3 and 7-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang et al., CN 107233148 (IDS filed 10/16/2024), as evidenced by the accompanying English language translation.
Regarding claim 1, Huang et al. discloses a spacer instrument for use in a knee arthroplasty procedure, the spacer instrument comprising: a spacer carrier device (2, 3 and 4); and a rotative tibia component (1), the spacer carrier device comprising at least a first spacer component (one of spacers 2) having a first thickness (2 mm) and a second spacer component (one of spacers 3) having a second thickness (3 mm), the first thickness being different than the second thickness (Fig. 2 and paragraphs [0037]-[0038]), each of the first spacer component and the second spacer component configured to be temporarily positioned on top of a resected proximal portion of a tibia during knee arthroplasty, the rotative tibia component being rotatively attached to the spacer carrier device via rotation mechanism (27, 28, 29 and 30), the rotative tibia component being movable in at least a first position and a second position, the first spacer component being aligned above the rotative tibia component when the rotative tibia component is in the first position (when only one of spacers 2 is positioned above tibia component 1), the second spacer component being aligned above the rotative tibia component when the rotative tibia component is in the second position (when spacers 2 and 3 are stacked above tibia component 1), each of the first spacer component and the second spacer component being temporarily positionable on top of the resected proximal portion of the tibia with or without the rotative tibia component (Figs. 1-4).
Regarding claims 2 and 3, Huang et al. discloses wherein each of the first spacer component (2) and the second spacer component (3) is a plate-type component having a planar distal surface and a planar proximal surface (Fig. 1, 2 and 4); and wherein the rotation mechanism (27, 28, 29 and 30) comprises an operating element (30) that is manually operable and that allows unlocking of the rotative tibia element (30 is removable, thus permitting separation of tibia component 1 from any of spacer components 2 and 3) (Fig. 2 and paragraph [0033]).
Regarding claim 7, Huang et al. discloses wherein the spacer instrument comprises a connection (any of 13 and 14) configured to releasably connect to a femur cut compensation component (Figs. 1 and 3).
Regarding claims 8 and 9, Huang et al. discloses wherein the spacer instrument comprises through holes (13 and 14) configured to releasably receive an alignment rod (16) (Figs. 1, 3 and 4).
Regarding claims 10 and 11, Huang et al. discloses a set of spacer instrument comprises at least two spacer instruments according the claim 1, the at least two spacer instruments comprising a first spacer instrument (having one of spacers 2 and 3) and a second spacer instrument (having one of spacers 3 and spacer 4), the first spacer component (2, 3) and the second spacer component (3, 4) of each of the first and second spacer instruments having pairs of thicknesses (2 mm, 3 mm for the first spacer instrument and 3 mm, 5mm for the second spacer instrument ) that are different (Figs. 2-3 and paragraphs [0037]-[0038]).
Allowable Subject Matter
Claims 4-6 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric Gibson whose telephone number is (571)270-5274. The examiner can normally be reached Monday-Thursday ~6:00 A.M. to 4:00 P.M. (CST).
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/ERIC S GIBSON/ Primary Examiner, Art Unit 3775
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