DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is responsive to the amendments received after a Non-Final Rejection on 22 April 2026. Claims 1-7, 11, 13-16, 18-26 and 29-35 are currently pending.
Claim Objections
Applicant is advised that should claim 29 be found allowable, claim 33 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Note: It appears that line 1 of claim 33 should read “striking apparatus of claim 32.” For examination purposes, claim 33 will be treated as such.
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.
Claims 34 and 35 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 34 recites the limitation "the annular distal end" in line 2. There is insufficient antecedent basis for this limitation in the claim. Since claim 35 depends upon claim 34, it contains the same issue.
Note: It appears that amending line 1 of claim 34 to read “striking apparatus of claim 32” would overcome this rejection. For examination purposes, claim 34 will be treated as such.
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.
Claims 1-5, 13-15, 18-19, 29 and 32-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hagen (U.S. Patent 6,298,512).
Regarding claims 1-5, 13-15, 18-19 and 29, Hagen discloses (as to claim 1) a striking apparatus (303) (see Note below regarding the effect of the preamble and functional language as directed toward the phrase “for a medical extraction tool”, where a “medical extraction tool” is not being treated as a positively claimed limitation) comprising an elongated body (see annotated Figure below); a polygonal neck (see annotated Figure below) extending from the elongated body; and a fastener (i.e. threaded end of 303 coupling with 221) extending from the neck, wherein (as to claim 2) the elongated body comprises an annular distal end (i.e. top-most end of 303 as best seen in Figure 11) and the neck extends proximally from (i.e. toward 220) the elongate body, wherein (as to claim 3) the elongated body further comprises a first tapering portion (see annotated Figure below) extending proximally from the annular distal end and a second tapering portion (see annotated Figure below) extending proximally from the first tapering portion, wherein (as to claim 4) the first tapering portion is an annular first tapering portion (i.e. due to circular cross-sectional shapes defined along the portion), wherein (as to claim 5) the first tapering portion is frustum shaped (see annotated Figure below), wherein (as to claim 13) the neck is hex-shaped (see Figure 11), wherein (as to claim 14) the neck is capable of manipulating the striking apparatus about a longitudinal axis (i.e. an axis defined along and through center of 303) of the elongated body (i.e. via rotation about the axis to couple with 221), wherein (as to claim 15) the neck further includes protrusions (i.e. protrusions defined at ends of intersecting flat sides, see Figure 11), and wherein the fastener comprises threads (see column 3, lines 34-38), wherein (as to claim 18) the elongated body, the neck and the fastener are a unitary part (i.e. there is nothing disclosed indicating that the body, neck and fastener are separate parts), wherein (as to claim 19) the apparatus has a longitudinal midplane (see annotated Figure below) and a weight of the striking apparatus is substantially balanced about the midplane (i.e. due to the symmetrical shape of the apparatus, it is the examiner’s position that the weight is substantially balanced thereabout), wherein (as to claim 29) the elongated body, the neck and the fastener are axisymmetric (see Figure 11) (see annotated Figure below, Figure 11, and column 2, line 15 – column 3, line 43).
Regarding claims 32 and 33, Hagen discloses (as to claim 32) a striking apparatus (303) (see Note below regarding the effect of the preamble and functional language as directed toward the phrase “for a medical extraction tool”, where a “medical extraction tool” is not being treated as a positively claimed limitation) comprising an elongated body (see annotated Figure below) having an annular distal end (i.e. top-most end of 303 as best seen in Figure 11); a neck (see annotated Figure below) extending proximally from the elongated body and including a flat side surface (i.e. surface defined by one side of the hex shape); and a fastener (i.e. threaded end of 303 coupling with 221) extending from the neck, wherein (as to claim 33) the elongated body, the neck and the fastener are axisymmetric (see Figure 11) (see annotated Figure below, Figure 11, and column 2, line 15 – column 3, line 43).
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Note: Regarding the effect of the preamble, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. Furthermore, a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention (see MPEP 2111.02(II)). Regarding functional language, "[a]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (see MPEP 2114(II)).
Claims 1 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stephens et al. (U.S. Patent Application Publication 2014/0259592).
Stephens et al. disclose (as to claim 1) a striking apparatus (100) (see Note above regarding the effect of the preamble and functional language as directed toward the phrase “for a medical extraction tool”, where a “medical extraction tool” is not being treated as a positively claimed limitation) comprising an elongated body (i.e. body defined by 100); a polygonal neck (705) extending from the elongated body (i.e. via the connection of 705 to 120); and a fastener (i.e. fastener defined by right-most portion of 705 extending from polygonal center as best seen in Figure 7) extending from the neck, wherein (as to claim 16) the fastener comprises a proximally facing flat end (i.e. right-most end of 705 as best seen in Figure 7) having a female socket (i.e. socket defined by right-most end of 705 as best seen in Figure 7) (see Figures 1-7, and paragraphs 0021-0027).
Claims 1 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maier (U.S. Patent 5,075,948).
Maier discloses (as to claim 1) a striking apparatus (10) (see Note above regarding the effect of the preamble and functional language as directed toward the phrase “for a medical extraction tool”, where a “medical extraction tool” is not being treated as a positively claimed limitation) comprising an elongated body (12); a polygonal neck (30) extending from the elongated body (i.e. via the connection of 28 to 16); and a fastener (28) extending from the neck, wherein (as to claim 21) the elongated body is substantially hollow (i.e. due to presence of 16, see Figure 2) (see Figures 1-5, and column 2, lines 13-68).
Claims 22-24 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gosik-Wolfe (U.S. Patent Application Publication 2021/0290411).
Gosik-Wolfe discloses (as to claim 22) a medical extraction tool (100’) comprising an extractor body (see Figure 22C) having an attachment mechanism (300); and a striking apparatus (i.e. apparatus defined by 112’, 140’, 310 and 312) comprising an elongated body (i.e. body defined by 312, see annotated Figure below showing comparable body from Figure 5), a neck (310) extending from the elongated body (i.e. when connected as best seen in Figure 22B, at least 141’, 314 and 316 extend from the body, see annotated Figure below showing comparable neck from Figure 5) (see Note above regarding functional language as directed toward the phrase “configured to receive a tool facilitating manipulation of the striking apparatus about a longitudinal axis of the elongated body”, where a “tool” is not being treated as a positively claimed limitation), and a fastener (314) extending from the neck, wherein the fastener extending from the neck of the striking apparatus is capable of detachably coupling with the attachment mechanism (i.e. via the interaction between 300 and 314), wherein (as to claim 23) the elongated body comprises an annular distal end (i.e. end of 312 coupling with 112’) and the neck extends proximally from the elongated body (see annotated Figure below), wherein (as to claim 24) the medical extraction tool further comprises a first arm (108) extending from the extractor body and comprising a first jaw (116); and a second arm (102) pivotally connected to (i.e. via 132 and 134, see Figure 1) the first arm and comprising a second jaw (138), and wherein (as to claim 30) the elongated body, the neck and the fastener of the striking apparatus are capable of being axisymmetric (see Figures 22A and 23, and paragraphs 0059) (see annotated Figure below, Figures 1, 4A, 5 and 22A-23, and paragraphs 0080-0082).
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Allowable Subject Matter
Claims 6-7, 11, 20, 25-26 and 31 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.
Claims 34 and 35 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 6-7, 11, 20, 25-26, 31 and 34-35 in the instant application have not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose, or suggest, the following:
Regarding claim 6, in combination with the limitations required by claims 1-3, no prior art reference could be found disclosing or making obvious wherein the first tapering portion spans over a midpoint of an overall length of the striking apparatus.
Regarding claim 7, in combination with the limitations required by claims 1-3, no prior art reference could be found disclosing or making obvious wherein the second tapering portion has an overall diameter less than the first tapering portion.
Regarding claim 11, in combination with the limitations required by claims 1-3, no prior art reference could be found disclosing or making obvious wherein an outer surface profile of the first tapering portion and the second tapering portion includes a point of inflection.
Regarding claim 20, in combination with the limitations required by claims 1 and 2, no prior art reference could be found disclosing or making obvious wherein the annular distal end of the elongated body comprises an aperture having a constant diameter along an entirety of a length thereof.
Regarding at least claim 25, in combination with the limitations required by claims 22 and 23, no prior art reference could be found disclosing or making obvious wherein the elongated body further comprises a first tapering portion extending proximally from the annular distal end and a second tapering portion extending proximally from the first tapering portion, wherein an outer surface profile of the first tapering portion and the second tapering portion includes a point of inflection.
Regarding at least claim 34, in combination with the limitations required by claim 32, no prior art reference could be found disclosing or making obvious wherein the elongated body further comprises a first tapering portion extending proximally from the annular distal end and a second tapering portion extending proximally from the first tapering portion, wherein an outer surface profile of the first tapering portion and the second tapering portion includes a point of inflection.
Response to Arguments
The applicant’s arguments with respect to claims 1-5, 13-16, 18-19, 21, 29 and 32-33 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The applicant's arguments with respect to claims 22-24 and 30 have been fully considered but they are not persuasive.
The applicant’s arguments point out multiple incorrect statements as to the interpreted “elongated body.” On numbered page 8, the remarks state “body defined by 112’/312.” On numbered page 9, the remarks state “the connector member 310 disclosed by Gosik-Wolfe is not “an elongated body”.” As initially stated in the Non-Final Rejection mailed on 23 December 2025, the examiner interpreted the body as being defined by 312. The remarks also state that “a typical understanding of an elongated body is a body or shape being long and slender, possessing much more length than width. The examiner has provided an updated annotated Figure in the body of the rejection above for further clarity. The annotated Figure shows that the body is in fact longer than it is wide.
The applicant argues that the examiner’s interpretation improperly combines separate, distinct structures that do not form a single striking apparatus. The examiner respectfully disagrees. There is nothing in the claims that would prevent the striking apparatus from being made of multiple components. In a broad but reasonable interpretation, the term “apparatus” is defined as a collection of instruments, machines, tools, parts, or other equipment used for a particular purpose (definition retrieved from https://www.thefreedictionary.com/apparatus). Given this, it is the examiner’s position that the striking apparatus as disclosed by Gosik-Wolfe discloses the claimed apparatus. Regarding the argued proximal and distal ends, and in view of the claim amendments changing the scope of the claims, the examiner has revised the interpreted “annular distal end” (see rejections above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mehalik (U.S. Patent 10,213,824) discloses a striking apparatus comprising an elongated body, a polygonal neck, and a fastener.
Kiska et al. (U.S. Patent Application Publication 2023/0000644) disclose an apparatus comprising an elongated body, a polygonal neck, and a fastener.
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 LARRY E WAGGLE, JR whose telephone number is (571)270-7110. The examiner can normally be reached TEAP: Monday - Friday (7:45am - 3:45pm).
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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/LARRY E WAGGLE, JR/Primary Examiner, Art Unit 3775
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