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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 14 August 2026 has been entered.
Claim Objections
Claim 14 is objected to because of the following informalities: In line 4, “a” (after “from”) should be changed to --the--. Appropriate correction is required.
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: engagement feature in claims 9 and 12.
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.
(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.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Arlettaz et al., U.S. PG-Pub 2014/0236156.
Regarding claims 11-13, Arlettaz et al. discloses a burr instrument, comprising: a shaft (100) having a first end (end extending from portion 110) opposite a second end (140), wherein the first end is configured to comprise at least one geometry that facilitates being releasably coupled to a tool (Fig. 3 and paragraph [0034]), wherein the second end comprises an engagement feature (10) and wherein the engagement feature comprises: a substantially cylindrical geometry that is greater in at least one lateral dimension of the first end such that the engagement feature is configured to function as a mechanical stop, wherein an end of the engagement feature that coupled with the second end of the shaft is configured as the mechanical stop; and five members (26a-26e) protruding from an outer surface of the engagement feature and spaced apart substantially equidistantly form one another about a circumference of the engagement feature and extending along a length thereof, wherein the five members extend in an outward direction from the outer surface at an angle that is oblique relative to the outer surface (Figs. 1c, 1d, 3 and paragraph [0035]).
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.
Claim(s) 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hollis et al., U.S. PG-Pub 2021/0038260 in view of Wong et al., U.S. PG-Pub 2022/0265288.
Regarding claim 14, Hollis et al. discloses a burr guide, comprising: a body, comprising: an elongated opening (210a) extending form a top surface through to a bottom surface of the body and extending laterally across a majority of a lateral direction of the body from the top surface toward the bottom surface of the body (in as much as applicant’s elongated opening formed from portions 154, 156 and 158 in applicant’s Figs. 9-10); and a circular opening (via 210b and 210c) extending from the top surface through to the bottom surface of the body; and a pair of lobes extending laterally from the body, wherein each lobe of the pair of lobes comprises: a slot (212a, 214a) extending through each of the lobes from a top surface through to a bottom surface (examiner annotated 14E below).
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Hollis et al. does not disclose wherein each slot extends along each lobe perpendicular to the elongated opening of the body.
Wong et al. discloses a guide (12) have a slot (40) extending from a top surface to a bottom surface and extends along a lateral portion of the guide perpendicular to an opening (26) (Figs. 1-2) as such accommodates a plurality of positions for a wire to pass through (paragraph [0029]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the slots of the lobes of Hollies et al. such that each slot extends along each lobe perpendicular to the elongated opening of the body in view of Wong et al. to permit accommodating a plurality of positions for a k-wire to pass through.
Regarding claim 15, Hollis et al. discloses wherein the elongated opening (210a) and the circular opening (210b, 210c) are in fluid communication with one another (Fig. 14E).
Regarding claim 16, Hollis et al. discloses wherein the circular opening (210b, 210c) comprises a lateral dimension that is greater than a lateral dimension of the elongated opening (210b, 210c is wider than 210a) (Fig. 14E).
Hollis et al. does not disclose the circular opening being positioned at a terminal end of the elongated opening.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to position the circular opening at a terminal end of the elongated opening since it has been held that rearranging part of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claims 17 and 18, Hollis et al. discloses wherein each slot (212a, 214a) of the respective lobe is positioned to align with the circular opening (210b, 210c) of the body; and wherein each of the lobes comprises a substantially curved geometry (each lobe has rounded ends) (examiner annotated Fig. 14E above).
Regarding claim 19, Hollis et al. discloses wherein the burr guide is symmetrical about a plane that overlaps with a longitudinal axis extending along a length of the elongated opening (210a) (examiner annotated Fig. 14E below).
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Regarding claim 20, Hollis et al. discloses wherein the elongated opening (210a) comprises a depression extending along at least a portion of a length of the elongated opening, wherein the depression is positioned adjacent the top surface of the body; and wherein the circular opening (210b, 210c) is positioned adjacent the depression (examiner annotated Figs. 14A and 14E below and paragraph [0077] discloses 200a is similar to 200; therefore, fig. 14A is being used to show the depression from a different angle).
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Response to Arguments
Applicant’s arguments, see Remarks, filed 14 August 2026, with respect to the objection of claims 15-20 have been fully considered and are persuasive. The objection of claims 15-20 has been withdrawn.
Applicant's arguments filed 14 August 2026, regarding claim 11 have been fully considered but they are not persuasive. Applicant contends the rear side of the reaming head of Arlettaz et al. is not configured as a mechanical stop because the rear side is not intended to contact anything and that Arlettaz et al. does not disclose the five members extending in an outward direction from the outer surface at an angle that is at least one of orthogonal or oblique.
In response to applicant's argument that the rear side of the reaming head of Arlettaz et al. is not configured as a mechanical stop because the rear side is not intended to contact anything, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the rear side of the reaming head (10) is fully capable of contacting a surface and functioning as a mechanical stop.
In response to applicant’s argument that Arlettaz et al. does not disclose the five members extending in an outward direction from the outer surface at an angle that is at least one of orthogonal or oblique, Arlettaz et al. does disclose the five members (26a-26e) extending in an outward direction from the outer surface at an angle that is oblique (i.e. non-parallel or non-perpendicular).
For such reasons, claim 11 is still rejection under 35 U.S.C. 102(a)(1) and 102(a)(2) to Arlettaz et al.
Applicant’s arguments, see Remarks, filed 14 August 2026, with respect to the rejection of claim 1 under 35 U.S.C. 103 have been fully considered and are persuasive. The rejection of claim 1 under 35 U.S.C. 103 has been withdrawn.
Applicant's arguments filed 14 August 2026, regarding claim 14, have been fully considered but they are not persuasive. Applicant contends Hollis et al. in view of Wong fails to disclose the elongated opening extending laterally across a majority of a lateral direction of the body from the top surface to the bottom surface of the body.
However, Hollis et al. does disclose elongated opening (210a) extending laterally across a majority of a lateral direction of the body from the top surface to the bottom surface of the body (in as much as applicant’s elongated opening formed from portions 154, 156 and 158 in applicant’s Figs. 9-10) as can be seen in the examiner annotated Fig. 14E under the rejection of claim 14 above.
For such reason, claim 14 still stands rejection under 35 U.S.C. 103 to Hollis et al. in view of Wong.
Allowable Subject Matter
Claims 1, 3-8, 10 and 21 are allowed.
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).
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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/ERIC S GIBSON/ Primary Examiner, Art Unit 3775
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