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 and Species 1A in the reply filed on July 24, 2026 is acknowledged.
Information Disclosure Statement
The listing of references in the specification (see e.g. Pages 1-2 of the specification under the heading “PRIOR ART”) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claim 3 is objected to because of the following informalities: Claim 3 recites “the transcondylar pin” prior to “a transcondylar pin” which is in improper antecedent form.
Appropriate correction is required.
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.
Claims 1-3 and 6 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 1 recites “an interface” and then “the interface,” but then recites “an interface” once again (see third-to-last line). It is unclear whether claim 1 requires two interfaces or only one. As such, the scope of the claim is indefinite.
Claim 1 recites the phrase “suitable for [some action or outcome]” in a number of contexts without specifying what is actually required by the claim to meet these recited actions or outcomes. For example, the claim recites “the interface on which software runs, suitable for reading out the torque exerted by the coupling element and the executed rotation angle of the coupling element …” It is unclear whether this requires an interface having a processor and memory with stored instructions that, when executed by the processor, cause the interface to read out those values, or if the claim merely requires a more generic interface that could theoretically display/read out those values if instructed (i.e. including virtually any possible modern display). As such, the scope of the claim is indefinite. If the claim is intended to recite specific functionalities being programmed to be performed by the system, it must clearly delineate what is actually required by the claim to provide a definite scope.
This same issue is present in the other recitations of “suitable for” in claim 1. For another example, in the second-to-last line, for the limitation “… which is suitable for determining an optimal zone, wherein the ligament is balanced” it is unclear whether the claim requires that this be determined by the system (e.g. by a processor), or if the system could just theoretically be used for that purpose without being specifically programmed for or configured for it.
The list of indefinite phrases is as follows (see emphasized portions):
Claim 1
a screwdriver suitable for determining stress and strain,
a coupling element, suitable for placing the screwdriver on an element to be measured
a motor suitable for driving the coupling element;
the interface on which software runs, suitable for reading out the torque exerted by the coupling element and the executed rotation angle of the coupling element, and interpreting and forwarding it to
an interface suitable for visually displaying a stress value and strain value in an SS curve, which is suitable for determining an optimal zone,wherein the ligament is balanced.
Claim 3
a condylar nut suitable for attaching to an end of the femur and suitable for receiving the transcondylar pin;
a transcondylar pin with a screw thread that is connected via the screw thread to a condylar nut, which transcondylar pin is suitable for exerting a force on the tibial plate;
a tibial plate suitable for protecting the tibia from the force exerted by the transcondylar pin and suitable for receiving the transcondylar pin.
Furthermore, claims 2 and 6 are rendered indefinite because they claims both an apparatus and the method steps of using the apparatus. See MPEP § 2173.05(p)(II). Claim 2 recites “and the optimal balance point is determined” and claim 6 recites “… wherein the optimal zone is determined by identifying …” These appear to be positive recitations of determining steps that must be carried out, in which case the claim is an apparatus claim with method steps. If these are not positively recited method steps, the claim should be amended to clearly reflect how the structure of the apparatus relates to that function.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2019/0209079 A1 to Delport: see e.g. the abstract, FIG. 1.
US 2020/0275976 A1 to McKinnon et al.: see e.g. the abstract, Paras. 72, 337.
US 2024/0307075 A1 to Leveille et al.: see e.g. the abstract, Paras. 4, 8, 37, 58, 64 and claims 4 and 10.
US 2024/0398585 A1 to Otto: see e.g. the abstract and FIG. 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN R DOWNEY whose telephone number is (571)270-7247. The examiner can normally be reached Monday-Friday 8:30am-5:00pm ET.
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/JOHN R DOWNEY/Primary Examiner, Art Unit 3792
