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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a force-limiting element in claims 2 and 21 which is disclosed as a connector including a latch and a spring.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 2-3, 11-14, and 16-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2010/0298831 (Browne).
2. An implant device (tool 10) comprising:
a suture tube (stylet 19) including a proximal end portion (FIG. 1; P0084-P0085);
a first movable element (bone stop 22); and
a second movable element (driving member 12), wherein:
the first movable element and the second movable element are slidably coupled to one another via the suture tube (e.g., deformation of force-limiting coupling 16 at P0087-P0089 allows excess force applied by distal movement of handle to deform the coupling 16 thereby allowing proximal relative movement of the driving member 12 when the driving member 12 and bone stop 22 is driven into a bone or at a force greater than the predetermined amount the top end portion of force-limiting coupling 16 remains connected to the top portion of the driving member 12 in FIG. 1)(FIG. 1; P0077-P0078 and P0087-P0089 which is the same as or at least equivalent to that disclosed in this application at the embodiment of FIG. 6),
the second movable element includes a force-limiting element (force-limiting coupling 16 ) that at least partially resists the slidable motion of the first movable element with respect to the second movable element (FIG. 1; P0077-P0078 and P0087-P0089).
3. The force limiting element comprises a connector (e.g., distal end of force-limiting coupling 16) including a latch at an end thereof (FIG. 1; P0077-P0078 and P0087-P0089).
11. The force limiting element comprises a spring (P0087).
12. At least a portion of the suture tube is received within a boundary defined by the spring (e.g., within longitudinal cross-section as shown in FIG. 1).
13. The implant device has a friction element (e.g., proximal connection of stylet 19 with driving member 1) coupled to, or formed with, the suture tube (FIG. 1).
14. The first movable element includes a connection block (e.g., proximal end of bone stop 22) including a passage therethrough that receives a portion of the suture tube to provide the slidable coupling of the first movable element and the second movable element (FIG. 1; P0087-P0089); and
the friction element conditionally prevents the suture tube from moving proximally through the passage and engaging the spring (FIG. 1; P0087-P0089).
16. The conditional prevention of the suture tube from moving proximally through the passage is configured to be overcome by a minimum force applied to the suture tube sufficient to push the friction element through the passage (FIG. 1; P0087-P0089).
17. The minimum force is generated by a portion of the implant device striking a non-target tissue (FIG. 1; P0076-P0077 and P0087-P0089).
18. The implant device has a needle assembly (pointed tip 19A) slidably coupled to at least one of the first movable element or the second movable element (FIG. 1; P0087-P0089).
19. The first movable element, the second movable element, and the needle assembly cooperate to place an implant (bone-penetrating portion 21) in a tissue of a patient (FIG. 1; P0002 and P0070-P0071).
20. An implant device (tool 10) comprising:
a suture tube (stylet 19) including a proximal end portion (FIG. 1; P0084-P0085);
a needle assembly (pointed tip 19A);
a first movable element (bone stop 22); and
a second movable element (driving member 12), wherein:
the first movable element and the second movable element are slidably coupled to one another via the suture tube (FIG. 1; P0087-P0089), and
the second movable element includes a connector (e.g., distal end of force-limiting coupling 16) including a latch at an end thereof that at least partially resists the slidable motion of the first movable element with respect to the second movable element (FIG. 1; P0077-P0078 and P0087-P0089),
the needle assembly is slidably coupled to at least one of the first movable element or the second movable element (FIG. 1; P0087-P0089), and the first movable element, the second movable element, and the needle assembly cooperate to place an implant (bone-penetrating portion 21) in a tissue of a patient (FIG. 1; P0002 and P0070-P0071).
21. An implant device (tool 10) comprising:
a suture tube (stylet 19) including a proximal end portion (FIG. 1; P0084-P0085);
a friction element (e.g., proximal connection of stylet 19 with driving member 1) coupled to, or formed with, the suture tube (FIG. 1);
a first movable element (bone stop 22); and
a second movable element (driving member 12), wherein:
the first movable element and the second movable element are slidably coupled to one another via the suture tube (FIG. 1; P0087-P0089),
the second movable element includes a force limiting spring (e.g., deformation of force-limiting coupling 16 at P0087-P0089 allows excess force applied by distal movement of handle to deform the coupling 16 thereby allowing proximal relative movement of the driving member 12 when the driving member 12 and bone stop 22 is driven into a bone or at a force greater than the predetermined amount the top end portion of force-limiting coupling 16 remains connected to the top portion of the driving member 12 in FIG. 1)(FIG. 1; P0077-P0078 and P0087-P0089 which is the same as or at least equivalent to that disclosed in this application at the embodiment of FIG. 6),
and the friction element conditionally prevents the suture tube from moving proximally with respect to the second movable element (FIG. 1; P0087-P0089).
Allowable Subject Matter
Claims 4-10 and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TODD J SCHERBEL whose telephone number is (571)270-7085. The examiner can normally be reached Mon - Fri 9:00-6:00.
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, Jackie Ho can be reached at 571-272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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TJ SCHERBEL
Primary Examiner
Art Unit 3771
/TODD J SCHERBEL/Primary Examiner, Art Unit 3771
Prosecution Insights