DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
This Office Action is responsive to the amendment filed March 17, 2026. As directed by the amendment: Claims 10-15 have been amended. Claims 1-20 are presently pending in this application.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 10 and 12-15 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lang et al. (US 2007/0100462), herein referred to as Lang, and in view of Kang et al. (US 2007/0270685), herein referred to as Kang.
Regarding claim 10, Lang discloses a surgical system (¶6), a first bone segment (figure 2Q), a first bone mating structure (figure 2Q), wherein the first bone mating structure (figure 2Q) is curved along its length (figures 2N1 and 2Q) to engage a first portion of a structure (220) (figures 2P and 2Q).
Yet, Lang lacks a detailed description on a robotic device configured to assist modification of a bone, and a control system programmed to perform operations comprising controlling the robotic device to guide a cutting tool to sculpt a first bone segment of the bone.
However, Kang teaches a robotic device (10, 30) (¶37) configured to (i.e. capable of) assist modification of a bone (¶36), and a control system (CAS, ¶37) programmed to perform operations comprising controlling the robotic device (10, 30) to guide a cutting tool (50) to sculpt a first bone segment of the bone (considered as a first portion of the bone) (¶36).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide Lang’s surgical system with a robotic device configured to assist modification of a bone, and a control system programmed to perform operations comprising controlling the robotic device to guide a cutting tool to sculpt a first bone segment of the bone as taught by Kang, since such guidance from a haptic device coupled with computer aided surgery enables a surgeon to actively and accurately control surgical actions, such as bone cutting (¶37).
Regarding claim 12, the modified Lang’s surgical system has wherein the first bone mating structure (figure 2Q of Lang) is positioned at (defined as “in, on, or near” by Dicitonary.com) an edge of a bone (figure 2Q of Lang).
Regarding claim 13, the modified Lang’s surgical system has wherein the first bone mating structure (figure 2Q of Lang) includes a u-shaped curved channel (figures 2N1 and 2Q of Lang).
Regarding claim 14, the modified Lang’s surgical system has wherein the first portion of the structure (220 of Lang) is a first projection (figures 2P and 2Q of Lang).
Regarding claim 15, the modified Lang’s surgical system has wherein the operations further comprise guiding alignment of the structure (220 of Lang) with the first bone segment (figure 2Q of Lang) by guiding alignment of a first structure mating surface (220 of Lang) with the first bone mating structure (figure 2Q of Lang).
Claim 11 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lang and Kang as applied to claim 10 above, and further in view of Rhodes et al. (US 2007/0299532), herein referred to as Rhodes.
Regarding claim 11, the modified Lang’s surgical system discloses all the features/elements as claimed including wherein the first bone mating structure is a first curved channel (figures 2N1 and 2Q of Lang). Yet, the modified Lang’s surgical system lacks wherein the first curved channel is separated from a second curved channel by a region comprising a bone material.
However, Rhodes teaches a first curved channel (850) (figure 16) is separated from a second curved channel (880) (figure 16) by a region comprising a bone material (22) (figure 16).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the modified Lang’s surgical system with wherein the first curved channel is separated from a second curved channel by a region comprising a bone material as taught by Rhodes, since such a modification would provide an additional channel to receive a second portion of a structure. Furthermore, it is known that a mere duplication of the essential working parts of a device involves only routine skill in the art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,193,767 in view of Kang et al. (US 2007/0270685). USP '767 discloses all the features/elements as claimed but lacks providing the second bone segment with a second bone mating surface by sculpting the second bone segment. However, Kang teaches providing a second bone segment (considered as a second portion of the bone) with a second bone mating surface by sculpting the second bone segment (136). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the USP with the second bone segment with a second bone mating surface by sculpting the second bone segment as taught by Kang, since such a modification would allow additional bone segments to be sculpted.
Response to Arguments
Applicant's arguments filed March 17, 2026 have been fully considered.
Applicant’s arguments, see Remarks, filed March 17, 2026, with respect to the rejection(s) of claim(s) 1 and 16 under 35 U.S.C. 103(a) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, the double patenting rejection has been maintained.
Applicant’s arguments with respect to claims 10-15 are directed to the amended claims. Thus, the Examiner has relied upon the combination of references to teach applicant’s amended features, see Office Action above.
Conclusion
THIS ACTION IS MADE FINAL. 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 SI MING KU whose telephone number is (571)270-5450. The examiner can normally be reached Monday-Friday, 9:30am-6pm.
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/SI MING KU/Primary Examiner, Art Unit 3775
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