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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-12, and Species A, FIGS. 2A-3C, in the reply filed on 28 January 2026, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Claims 7-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species B, there being no allowable generic or linking claim.
Priority
The priority date is 11 December 2023.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the interference fit between the portion of increased diameter and the retainer (claim 1) must be shown or the feature(s) canceled from the claim(s). The drawings, e.g. FIG. 3B, show the portion of increased diameter 440’ spaced from the retainer 413 by the seal 525a, and do not show an interference fit between the portion of increased diameter and the retainer. Similarly, the retainer is not shown directly secured to the portion of increased diameter; claim 6 will be interpreted as components of the tool being mechanically secured together as parts of the assembled whole.
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-6 are objected to because of the following informalities: improper antecedence. Appropriate correction is required. The following amendments are suggested:
Claim 1 / line 7: “the inner tube”
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 1, the limitation “the interference fit” renders the claims indefinite because it lacks proper antecedent basis in the claims. For examination purposes, the limitation will be interpreted as an interference fit. Note the relevant drawing objection above.
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.
Claims 1, 3, 4, and 6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by U.S. Patent No. US 8,109,956 to Shadeck.
As to claim 1, Shadeck discloses a disposable cutting tool (interpreted as language of intended use; any tool is capable of disposal) configured for use with a cutting device for removing tissue or bone, comprising: an outer shaft (52) (col. 4 / line 63 – col. 5 / line 5) including a cutting head (66; cutting edge at 84) at a distal end thereof configured to cut tissue or bone (col. 5 / lines 49-52; col. 6 / lines 6-7), FIGS. 3A and 4A; a shaft assembly (33) configured to secure a proximal end of the outer shaft therein, FIGS. 3A and 5; an inner tube (56 and 140) concentrically disposed within the outer shaft (distal portion of 56 is disposed within 52) and extending proximally therethrough, FIGS. 3A and 5, the inner shaft supporting a proximal hub connector (100) at a proximal end thereof (col. 6 / lines 33-39); a retainer (144) disposed atop the inner tube proximate a distal end of the proximal hub connector, FIG. 5, the retainer configured to cooperate with a locking flange (proximal end 108 of hub 60) disposed on a proximal end of the shaft assembly to secure the inner tube therein (col. 7 / lines 63-67), FIG. 6; and a seal (142 and washer) disposed between the locking flange and the retainer configured to prevent fluid from leaking from the shaft assembly (col. 7 / lines 63-67), FIGS. 3A and 6, wherein the inner tube defines a portion of increased diameter (140) between the retainer and the proximal end of the outer shaft, FIG. 6, wherein, once assembled, the interference fit between the portion of increased diameter and the retainer (the portion of increased diameter would interferingly fit against the retainer if pushed against it, at least as much as the instant invention) prevents the inner tube from becoming unintentionally dislodged from the proximal hub connector during removal (interpreted as language of intended use; the snug interfitting of all of the components would prevent the inner tube from becoming unintentionally dislodged from the proximal hub connector).
As to claim 3, Shadeck discloses the disposable cutting tool according to claim 1, wherein the distal end of the proximal hub connector is tapered, FIG. 6, and cooperates with the portion of increased diameter to capture the retainer (since the retainer is between the proximal hub connector and the portion of increased diameter), FIG. 6.
As to claim 4, Shadeck discloses the disposable cutting tool according to claim 1, wherein a proximal end of the proximal hub connector includes a universal mechanical interface (mechanical interface that is universal to the cutting device disclosed and all others of complementary form) which is adapted to connect to a locking collar disposed within the cutting device to secure the cutting tool therein (interpreted as language of intended use; fully capable of connecting to a complementary locking collar disposed within the cutting device), FIG. 7B.
As to claim 6, Shadeck discloses the disposable cutting tool according to claim 1, wherein the retainer is mechanically secured to the portion of increased diameter after the retainer is engaged with the locking flange (the components, including the retainer and the portion of increased diameter, are mechanically secured to each other as parts of the assembled whole, FIG. 5).
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Shadeck in view of U.S. Patent No. US 9,737,322 to Oliver et al. (hereinafter, “Oliver”).
Shadeck is silent as to wherein an inner diameter of the retainer is smaller than an outer diameter of the portion of increased diameter when sealed atop the inner tube.
Oliver teaches cutting tool, FIG. 3B, comprising an outer shaft (40); a shaft assembly (56) configured to secure a proximal end of the outer shaft therein; an inner tube (36) concentrically disposed within the outer shaft and extending proximally therethrough, the inner shaft supporting a proximal hub connector (42) at a proximal end thereof (col. 5 / lines 42-46); a retainer (54) disposed atop the inner tube proximate a distal end of the proximal hub connector, FIG. 3B, the retainer configured to cooperate with a locking flange (proximal end of 56) disposed on a proximal end of the shaft assembly to secure the inner tube therein; and a seal (88) disposed between the locking flange and the retainer configured to prevent fluid from leaking from the shaft assembly, FIG. 3B.
Accordingly, 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 retainer in Shadeck to have a distal opening therethrough that closely fits around a portion of the inner tube that passes therethrough, as taught by Oliver, to contribute to the seal around the inner tube (as disclosed by Shadeck’s seals 142) and to stabilize the inner tube through the retainer so that the inner tube does not inadvertently extend off-axis through the retainer. Then, with the distal opening through the retainer closely fitting around the proximal portion of the inner tube that passes therethrough, an inner diameter of the retainer at its distal opening is the same as or only slightly larger than the outer diameter of the proximal portion of the inner tube. Then, because an outer diameter of the portion of increased diameter is greater than the outer diameter of the proximal portion of the inner tube that extends through the retainer, the outer diameter of the portion of increased diameter would also be greater than the inner diameter of the retainer at its distal opening, i.e. the inner diameter of the retainer is smaller than the outer diameter of the portion of increased diameter when sealed atop the inner tube.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Shadeck in view of U.S. Patent No. US 10,527,230 to Stachulla et al. (hereinafter, “Stachulla”).
Shadeck is silent as to wherein the portion of increased diameter includes at least one of a shrink wrap, curable adhesive, or swage.
Stachulla teaches that a cylinder can be formed by swaging (col. 10 / lines 65-67).
Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the cylindrical portion of increased diameter in Shadeck by swaging, so that the portion of increased diameter includes swage since it is formed by swaging, since Stachulla teaches that a cylinder can be formed by swaging and swaging a blank into a cylindrical shape would allow for the use of a universal blank and therefore reduce production costs.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRACY L KAMIKAWA whose telephone number is (571)270-7276. The examiner can normally be reached M-F 10:00-6:30 PM.
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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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/TRACY L KAMIKAWA/Examiner, Art Unit 3775