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 Species B (FIGS. 8-11) in the reply filed on 22 May 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Claims 8-10, 18, and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 22 May 2026.
Priority
The priority date is 11 February 2022.
Claim Objections
Claim 20 is objected to because of the following informalities: improper antecedence. Appropriate correction is required. The following amendments are suggested:
Claim 20 / line 1: “wherein the limiting of the transfer”
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 1-7 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.
The term “sufficient” in claims 1, 4, and 5 is a relative term which renders the claim indefinite. The term “sufficient” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The limitation “axial force” has been rendered indefinite by the use of the term “sufficient.”
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 1-5, 11, 12, and 20 are rejected under 35 U.S.C. 102(a)(1)/(2) as anticipated by U.S. Patent No. US 11,123,088 to Tyndall et al. (hereinafter, “Tyndall”).
As to claim 1, Tyndall discloses a surgical method, comprising: during a surgical procedure, limiting a transfer of a rotational force from a powered surgical instrument (38) to a surgical device (32) until a sufficient axial force (A) is applied to an impact driver adaptor (42, 62) from the powered surgical instrument (col. 8 / line 28 – col. 9 / line 2).
As to claim 2, Tyndall discloses the surgical method as recited in claim 1, wherein the powered surgical instrument is a surgical drill (col. 7 / lines 50-52).
As to claim 3, Tyndall discloses the surgical method as recited in claim 1, wherein the surgical device is a surgical drill bit (32) (col. 8 / lines 50-61) or a surgical implant inserter.
As to claim 4, Tyndall discloses the surgical method as recited in claim 1, wherein the impact driver adaptor includes an engagement assembly (44, 60, 46) that is configured to limit the transfer of the rotational force until the sufficient axial force is applied (col. 8 / lines 50-61).
As to claim 5, Tyndall discloses the surgical method as recited in claim 4, wherein the engagement assembly includes a hammer feature (44), an anvil feature (60), and a disengagement spring (46) that biases the hammer feature and the anvil feature apart until the sufficient axial force is applied (col. 8 / lines 28-61).
As to claim 11, Tyndall discloses a surgical method, comprising: driving a surgical device (32) with a powered surgical instrument (38) to prepare a hole in a bone (col. 8 / lines 50-61), FIGS. 13-18, or to implant a surgical implant into the bone; while driving the surgical device (which includes providing pushing force, even below the threshold), limiting a transfer of a rotational force from the powered surgical instrument to the surgical device with an impact driver adaptor (42, 62) that is connected between the surgical device and the powered surgical instrument (col. 8 / lines 40-49, col. 8 / line 62 – col. 9 / line 2); and transferring the rotational force to the surgical device when an axial force (A) applied by the powered surgical instrument exceeds a predefined threshold (of the spring 46) (col. 8 / lines 28-39 and 50-61).
As to claim 12, Tyndall discloses the surgical method as recited in claim 11, wherein the surgical device is a surgical drill bit (32) for preparing the hole in the bone (col. 8 / lines 50-61).
As to claim 20, Tyndall discloses the surgical method as recited in claim 11, wherein limiting the transfer of the rotational force from the powered surgical instrument to the surgical device with the impact driver adaptor includes: biasing an anvil coupling (60) away from a hammer feature (44) of an engagement assembly (44, 60) of the impact driver adaptor when the axial force is less than the predefined threshold (col. 8 / lines 40-49).
Claims 1-7, 11, 12, and 20 are rejected under 35 U.S.C. 102(a)(1)/(2) as anticipated by U.S. Patent Application Publication No. US 2013/0171585 to Huang et al. (hereinafter, “Huang”).
As to claim 1, Huang discloses a surgical method, comprising: during a surgical procedure, limiting a transfer of a rotational force from a powered surgical instrument (520) to a surgical device (510) until a sufficient axial force (to compress spring 530) is applied to an impact driver adaptor (521, 512, 530) from the powered surgical instrument (par. [0027]), FIGS. 5-9(d).
As to claim 2, Huang discloses the surgical method as recited in claim 1, wherein the powered surgical instrument is a surgical drill (511) (par. [0027]), FIGS. 9(c)-9(d).
As to claim 3, Huang discloses the surgical method as recited in claim 1, wherein the surgical device is a surgical drill bit (511) (par. [0027]), FIGS. 9(c)-9(d), or a surgical implant inserter.
As to claim 4, Huang discloses the surgical method as recited in claim 1, wherein the impact driver adaptor includes an engagement assembly (521, 512, 530) that is configured to limit the transfer of the rotational force until the sufficient axial force is applied (par. [0027]).
As to claim 5, Huang discloses the surgical method as recited in claim 4, wherein the engagement assembly includes a hammer feature (521), an anvil feature (512), and a disengagement spring (530) that biases the hammer feature and the anvil feature apart until the sufficient axial force is applied (par. [0027]).
As to claim 6, Huang discloses the surgical method as recited in claim 5, wherein the hammer feature (521) includes a first set of teeth (525), FIG. 8, that is configured to engage and mesh with a second set of teeth (515) of the anvil feature (512) (par. [0027]), FIGS. 7 and 9(c).
As to claim 7, Huang discloses the surgical method as recited in claim 6, wherein a ramp (along sides of teeth 525/515) is established at each location where the first set of teeth engage the second set of teeth, and further wherein the ramp extends at an angle relative to an axis that is substantially parallel to a longitudinal axis of the impact driver adaptor, FIG. 9(c).
As to claim 11, Huang discloses a surgical method, comprising: driving a surgical device (510) with a powered surgical instrument (520) to prepare a hole in a bone (par. [0027]) or to implant a surgical implant into the bone; while driving the surgical device, limiting a transfer of a rotational force from the powered surgical instrument to the surgical device with an impact driver adaptor (521, 512, 530) that is connected between the surgical device and the powered surgical instrument (par. [0027]), FIG. 5; and transferring the rotational force to the surgical device when an axial force applied by the powered surgical instrument exceeds a predefined threshold (of the spring 530) (par. [0027]).
As to claim 12, Huang discloses the surgical method as recited in claim 11, wherein the surgical device is a surgical drill bit (511) for preparing the hole in the bone (par. [0027]).
As to claim 20, Huang discloses the surgical method as recited in claim 11, wherein limiting the transfer of the rotational force from the powered surgical instrument to the surgical device with the impact driver adaptor includes: biasing an anvil coupling (512) away from a hammer feature (521) of an engagement assembly of the impact driver adaptor when the axial force is less than the predefined threshold (spring not compressed) (par. [0027]).
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.
Claims 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Tyndall.
Although Tyndall discloses the axial force is between about 1 pound to about 20 pounds (col. 8 / lines 51-53), Tyndall is silent as to wherein the axial force is between about 2 pounds and about 40 pounds (claim 14); wherein the axial force is about 2 pounds when the surgical device is a drill bit (claim 15).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the axial force in Tyndall of about 2 pounds, since where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, and since 2 pounds is within the range disclosed by Tyndall. The spring (46) in Tyndall would be provided with an expansive force or spring constant such that the axial force of about 2 pounds would be required to compress the spring, engage the anvil coupling and the hammer feature of the impact driver adaptor, and transfer the rotational force to the surgical device. The axial force of about 2 pounds would be when the surgical device is a drill bit as disclosed by Tyndall.
Claims 16 and 17 recite an axial force required when the surgical device is an implant inserter. Since Tyndall discloses the surgical device is a drill bit, the limitations regarding an implant inserter need not be met, i.e. Tyndall meets the claims.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Tyndall in view of U.S. Patent No. US 9,102,046 to Mattson et al. (hereinafter, “Mattson”).
As to claim 13, Tyndall is silent as to wherein the surgical device is an implant inserter for implanting the surgical implant into the bone.
Mattson teaches that a powered instrument can be used to drive a device comprising a drill bit, or to drive a device comprising an inserter (col. 4 / lines 38-42).
Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the powered surgical instrument of Tyndall to drive an implant inserter for implanting the surgical implant into the bone, by replacing the drill bit disclosed in Tyndall with an implant inserter, e.g. a screwdriver, since Mattson teaches that a powered instrument can be used to drive a device comprising a drill bit, or to drive a device comprising an inserter. The impact driver adaptor as disclosed in Tyndall would remain unchanged, by providing the implant inserter with the complementary part of the engagement assembly (rod 60) to limit the transfer of a rotational force from the powered surgical instrument to the implant inserter until an axial force applied by the powered surgical instrument exceeds a predefined threshold of the spring. In other words, only the working tip of the surgical device would be changed from a drill bit tip to a driver tip. Modular devices are well known in the surgical art, so that the same powered surgical instrument can be used for multiple functions, including preparing a hole in a bone when the connected surgical device is a drill bit, and implanting an implant when the connected surgical device is an implant inserter. This would reduce operational costs by using the same powered surgical instrument for multiple functions.
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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/TRACY L KAMIKAWA/Examiner, Art Unit 3775
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