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 Arguments
Applicant’s arguments with respect to claim(s) 1 and claims depending therefrom 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.
Response to Amendment
The amendment to the claims filed on 05/12/2026 does not comply with the requirements of 37 CFR 1.121(c) because Applicant didn’t specify which paragraphs have been amended and what limitations have been added or omitted. Amendments to the claims filed on or after July 30, 2003 must comply with 37 CFR 1.121(c) which states:
(b) Specification. Amendments to the specification, other than the claims, “Large Tables” (§ 1.58(c)), a “Computer Program Listing Appendix” (§ 1.96(c)(5) and (7)), a “Sequence Listing” (§ 1.825), or a “Sequence Listing XML” (§ 1.835), must be made by adding, deleting, or replacing a paragraph; by replacing a section; or by providing a substitute specification, in the manner specified in this section.
(1) Amendment to delete, replace, or add a paragraph. Amendments to the specification, including amendment to a section heading or the title of the invention which are considered for amendment purposes to be an amendment of a paragraph, must be made by submitting:
(i) An instruction, which unambiguously identifies the location, to delete one or more paragraphs of the specification, replace a paragraph with one or more replacement paragraphs, or add one or more paragraphs;
(ii) The full text of any replacement paragraph with markings to show all the changes relative to the previous version of the paragraph. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived;
(iii) The full text of any added paragraphs without any underlining; and
(iv) The text of a paragraph to be deleted must not be presented with strike-through or placed within double brackets. The instruction to delete may identify a paragraph by its paragraph number or include a few words from the beginning, and end, of the paragraph, if needed for paragraph identification purposes.
(2) Amendment by replacement section. If the sections of the specification contain section headings as provided in § 1.77(b), § 1.154(b), or § 1.163(c), amendments to the specification, other than the claims, may be made by submitting:
(i) A reference to the section heading along with an instruction, which unambiguously identifies the location, to delete that section of the specification and to replace such deleted section with a replacement section; and
(ii) A replacement section with markings to show all changes relative to the previous version of the section. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived.
(3) Amendment by substitute specification. The specification, other than the claims, may also be amended by submitting:
(i) An instruction to replace the specification; and
(ii) A substitute specification in compliance with §§ 1.125(b) and (c).
(4) Reinstatement of previously deleted paragraph or section. A previously deleted paragraph or section may be reinstated only by a subsequent amendment adding the previously deleted paragraph or section.
(5) Presentation in subsequent amendment document. Once a paragraph or section is amended in a first amendment document, the paragraph or section shall not be represented in a subsequent amendment document unless it is amended again or a substitute specification is provided.
(6) Amendments to "Large Tables," a "Computer Program Listing Appendix," a "Sequence Listing", or a “Sequence Listing XML”. Changes to “Large Tables,” a “Computer Program Listing Appendix,” a “Sequence Listing,” or a “Sequence Listing XML” must be made in accordance with § 1.58(g) for "Large Tables," § 1.96(c)(5) for a "Computer Program Listing Appendix," § 1.825 for a "Sequence Listing," or § 1.835 for a “Sequence Listing XML.”
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 1 – 5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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.
In claim 1, the recitation of “upper clamp portion hingeably coupled to a lower portion” is found to have no support in the original disclosure. Applicant may provide support for such limitation or amend the claim omitting the newly introduced limitation to overcome this rejection.
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.
Claim(s) 1 – 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schipper et al. (US Pub. 2022/0331971 A1) in view of Pohl et al. (US Pat. 5454810).
Claims 1 and 4 – 5, Schipper discloses a tracking system for an offset reamer [abstract, Figs. 1 – 13], comprising:
a clamp [206] to couple with a reamer sleeve of the offset reamer [¶62];
a coupling [at least a portion of 220 coupled to at least a portion of 222, defines a coupling] coupled with the clamp via a shaft [at least a portion of 220 defines a shaft, Figs.2],
a tracking array [at least a portion of 222 and 224] coupled with the coupling [Figs.2], the tracking array comprising target mounts to couple targets with the tracking array [at least a portion of 222 defines target mount to couple targets 224], the shaft to fix a distance between the tracking array and an axis of rotation of a reamer element coupled with a driveshaft of the offset reamer; and the targets coupled with the tracking array via the target mounts [Figs.2].
Schipper does not disclose wherein the claim comprising an upper clamp portion hingeably coupled to a lower clamp portion to clamp a shaft of a reamer.
Pohl teaches an analogous surgical device [abstract, Figs. 1 – 3] comprising a clamp [15 or 16] intended to couple to a shaft portion [11], the clamp comprising upper and lower clamp portions [28 and 29] hingeable coupled to one another [col.7/II.55 – 58]; and a nut to fasten the upper and lower clamp portions to the shaft portion [defined by the threaded hole corresponding to clamping screw 33, col.6/II.39 – 53].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to combine the teachings of Schipper and Pohl, and construct the clamp of Schipper from upper and lower clamp portions hingeably coupled to one another and to be fastened to via a nut in view of Pohl. One would have been motivated to do so in order to provide the system of Schipper with a functionally equivalent clamp that can make it easier for assembling to and disassembling from the reamer [Pohl, col.7/II.55 – 58].
The combination of Schipper and Pohl discloses the limitations of claim 1, as above, and further, Schipper discloses:
Claim 2, the offset reamer [Figs.2, ¶73 - ¶74].
Claim 3, wherein offset reamer comprises an off-the-shelf (OTS) offset reamer [since the reamer of Schipper exhibits substantially identical structure to that claimed, then can be referred to as OTS].
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 SAMUEL S. HANNA whose telephone number is (571)270-3248. The examiner can normally be reached 8-5 M-F.
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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/SAMUEL S HANNA/Primary Examiner, Art Unit 3775
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