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 .
Drawings
The drawings were received on 04/06/2026. These drawings are acceptable.
Specification
Amendment to the specification filed 04/06/2026 has been entered.
Claim Objections
Claim 3 is objected to because of the following informalities: Claim 3, line 1 “a first rotatable” should be “the first rotatable” since this feature was already recited in claim 1. Appropriate correction is required.
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 1-3, 5-14, 16-20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Independent claims 1 and 14 have been amended to recite “a second rotatable shaft fixedly coupled to and extending proximally from the distal nail component, the second rotatable shaft being slidably disposed within the second coaxial channel and the third coaxial channel, the second rotatable shaft being rotatable about the second longitudinal axis relative to the proximal nail component” (emphasis added).
This combination of mechanical connections of the second shaft being fixedly coupled to the distal nail component while also being slidably disposed in the second coaxial channel (which is defined by the distal nail component) and rotatable about the second longitudinal axis (which is also defined by the distal nail component) appears to be impossible. The second shaft cannot be both fixedly coupled to and slidable within the distal nail component at these are conflicting terms. It is understood in the art that “fixedly coupled” means fastened securely or not able to be changed or immobile. “Slidable within” conversely requires relative movement between the components. Applicant has not provided any definition or explanation of “fixedly coupled” which otherwise define the term. If the shaft needs to be both immobile or fastened securely to the distal nail component, then it would not have the ability to slide within the channel of the nail.
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Considering the Wands Factors, and the question of Does the specification provide enough information so that one of ordinary skill in the art can make and/or use the full scope of the claimed invention without “undue experimentation”? it would appear impossible to one of ordinary skill to make the second shaft being fixedly coupled to the distal nail component while also being slidably disposed in the second coaxial channel (which is defined by the distal nail component). Therefore the subject matter of claim 1 and 14 is not enabled by the disclosure.
Dependent claims 2-3, 5-13, 16-20 are rejected under 112(a) as they contain all the deficiencies of claim 1 or 14 from which they depend.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 5-14, 16-20 have been considered but are moot in view of the new ground of rejection necessitated by amendment.
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 JACQUELINE T JOHANAS whose telephone number is (571)270-5085. The examiner can normally be reached Mon. - Fri. 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eduardo Robert can be reached at 571-272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACQUELINE T JOHANAS/ Primary Patent Examiner, Art Unit 3773
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