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.
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: “connection element” in claim 1. A review of Applicant’s specification discloses that the connection element to be a suture, cable and equivalents thereof. See Page 3, lines 21-22.
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 § 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) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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.
Regarding claim 1, Applicant recites “A method of passing a suture through a channel in a bone comprising; providing a suture transfer device…at least once.” The claim in its current construction fails to provide an active steps of passing a suture through a channel in a bone. The only “step” is a step of “providing” which is not an active step of a method of passing a suture through a channel in a bone.
Additionally, Claim 1 recites the limitation "said connection device" in line 19. There is insufficient antecedent basis for this limitation in the claim.
For the purpose of examination, has been interpreted to read “said connection element” as this provides proper antecedence.
Claims 2-6 are rejected under 35 U.S.C. 112(b) as they depend from a rejected base claim and do not rectify the issues at hand.
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)(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 1-4 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Garlock et al. (US 2018/0042631).
Examiner’s Note: The claims as currently constructed only functionally recite the drill bit, bone and connection element and as a result these structures are being treated as such.
Regarding claim 1, Garlock et al. disclose a method of passing a suture through a channel in a bone comprising; providing a suture transfer device (12) adapted for use with a drill bit (e.g. 14 can act as a drill bit) having a drill stem and a bone cutting head comprising, said suture transfer device having a semi-cylindrical portion (figure 2) having a first end (see figure below) and a second end (see figure below), an inner surface (see figure below) and an exterior convex surface (see figure below), and said inner surface being sized to define a trough (figure 2, see figure below) within the semi-cylindrical portion (figures 11-12), and said inner surface being sized to accept said drill bit seated within the semi-cylindrical portion said exterior convex surface sized to match the bore produced by the bone cutting head of the drill bit (figures 9-12), and said suture transfer device having an overall length greater than the length of the channel drilled through a bone (figure 9, if one so chooses), and said inner surface providing a passageway for a connection element when the device is within the channel drilled through a bone (figures 9-10, if one so chooses), and a collar (30) on said first end of the device, said collar having a central bore (35), and said collar further defines an open slot (see figure below) from the central bore to the outer perimeter of the collar, and said second end of the device defining an insertion end (figures 10-12), and said second end adapted to seat against the bone cutting head of the drill bit (figures 11-12, if one so chooses), and said connection device being sized to be able to be passed through the suture transfer device at least once (if one so chooses).
Regarding claim 2, Garlock et al. disclose the first end of the suture transfer device is collinearly fused to the stem of the drill bit (if one so chooses as the stem of the drill bit is only functionally recited and the suture transfer device could be collinearly fused to it) and the semi-cylindrical portion is adapted to accept a drill bit bone cutting head within the semi-cylindrical portion.
Regarding claim 3, Garlock et al. disclose the connection element is attached to an anatomical feature that is a tendon or ligament before or after it is passed through the first channel (if one so chooses as the connection element is not positively recited). Regarding claim 4, Garlock et al. disclose the connection element is passed through the first channel more than once (if one so chooses as the connection element is not positively recited).
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW JAMES LAWSON whose telephone number is (571)270-7375. The examiner can normally be reached Mon - Fri 6:30-3:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at 571-270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW J LAWSON/Primary Examiner, Art Unit 3619