DETAILED ACTION
This office action is responsive to the Response to Restriction Requirement of April 28, 2026. Claims 1-20 are pending.
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 Invention I, claims 1-15, in the reply filed on April 28, 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Claims 16-20 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 28, 2026.
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 2, 3 and 5-15 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.
Claim 2 requires the ramped surface “configured to enable passive translation of the inner element with respect to the outer element”. Examiner is unclear what translations are considered passive, and which ones are considered to be non-passive. Examiner has studied the specification and fails to find any clarification as to what makes a translation passive. Clarification is required.
Claim 3 requires ‘passive disengagement of the threaded distal end from the screw’. What makes this disengagement passive? Further, examiner is unclear how a ‘reduced diameter’ can be configured to translate the inner element distally or to facilitate passive disengagement of the threaded distal end from the screw. Clarification as to how this occurs, with citation from the originally presented disclosure is requested.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rodriguez et al. (US 2020/0390478 A1).
Regarding claim 1, Rodriguez teaches a tool 100 for driving a screw 103 into a vertebral body, comprising:
an inner element 102 including a distal end 102a for engaging a screw portion of the screw as at fig. 4;
an outer element 104 including a threaded distal end 104b for engaging a coupling element of the screw as at fig. 4;
a button 110, wherein depressing the button permits translation of the inner element with respect to the outer element [0064]; and
an outer knob 118, wherein movement of the outer knob to a first position permits rotation of the inner element with respect to the outer element and movement of the outer knob to a second position prevents rotation of the inner element with respect to the outer element [0068].
Regarding claim 2, the tool further includes a ramped surface at the protrusion near 112 on the inner element 102 configured to enable passive translation of the inner element with respect to the outer element (such as when the button is pressed).
Regarding claim 3, as best understood, the inner element 102 includes a more proximal reduced diameter 112 and a more distal reduced diameter at tip 102a, the more proximal reduced diameter is configured to translate the inner element distally and the more distal reduced diameter is configured to facilitate passive disengagement of the threaded distal end from the screw.
Regarding claim 4, the button 110 includes a spring-loaded button (spring 114).
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gedore 2018 Catalog in view of Rodriguez et al. (US 2020/0390478 A1). A teaching reference is presented at video V.270 Gedore to demonstrate functionality of the Gedore screwdriver portions.
Regarding claim 1, Gedore teaches a tool capable of use in driving an inferred screw into a vertebral body at p. 131 of the catalog – “R38920000”. See marked up figures:
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Gedore includes an inner element including a distal end for engaging a screw portion of the screw; an outer element; a button, wherein depressing the button permits translation of the inner element with respect to the outer element (button for actuation of the ‘lockable telescopic blade’); and an outer knob, wherein movement of the outer knob to a first position (one of the two ratcheting positions) permits rotation of the inner element with respect to the outer element and movement of the outer knob to a second position (middle ratchet lock position) prevents rotation of the inner element with respect to the outer element.
These functionalities can be observed in the teaching reference, the “V.270 Gedore” video, as follows:
Ratchet/ratchet lock visible around 1:25 and used at about 3:00-3:20 in the video; center position lock not demonstrated but known to examiner as a typical function of ratcheting screwdrivers, and described at the catalog in bullet 6: “ratchet lock in central position”;
Button for telescoping at about 2:15-2:45
Gedore fails to teach the outer element including a threaded distal end capable of engaging a coupling element of the inferred screw.
Rodriguez teaches a screwdriver tool with an outer element 104 with a threaded portion 104b and an inner element 102. The screw threads at 104b are considered to be capable of interlocking with any properly dimensioned screw which is positioned in communication with these threads.
It would have been obvious to one with ordinary skill in the art at the time of the invention to add a screw thread or other textured surface on the outer element of Gedore in order to improve ergonomics of the tool and permit a surgeon improved manual grip on this portion of the tool. Such a design and placement of a thread was suggested by the Rodriguez device. Such a thread would be capable of interacting with screw threads on some inferred screw which was sized and positioned correctly.
Regarding claim 2, the inner surface includes a ramped surface on the inner element (e.g. between the shaft, and the bit holder at distal end; alternatively, the shape of the shaft, itself, being hexagonal as seen clearly in the video; alternatively, structures that function as part of the ratchet) configured to enable passive translation of the inner element with respect to the outer element (e.g. permit grasping the shaft to move it while the button is pressed).
Regarding claim 3, the inner element includes a more proximal reduced diameter (portion proximal the bit holder) and a more distal reduced diameter (the bit portion), the more proximal reduced diameter is configured to translate the inner element distally (when the button is pressed) and the more distal reduced diameter is configured to facilitate passive disengagement of the threaded distal end from the screw (there is no reason the bit cannot permit such to occur).
Regarding claim 4, the button includes a spring-loaded button (the button can be seen to return to a home position when released in the video).
Allowable Subject Matter
Claims 5-15 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. These claims cannot be allowed until such time as the outstanding rejections under 35 USC 112(b) are overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Bates whose telephone number is (571)270-7034. The examiner can normally be reached Monday through Friday, 10AM-6PM
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, please contact the examiner’s supervisor, Kevin Truong, 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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/DAVID W BATES/Primary Examiner, Art Unit 3799
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