Detailed Action
This is the first office action on the merits for US application number 19/068,405.
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 without traverse of Invention I, the cutting guide of claims 1-13, in the reply filed on June 19, 2026 is acknowledged.
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention there being no allowable generic or linking claim.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 June 19, 2026.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
As to claim 12, the specification appears to lack proper antecedent basis for “the plate comprises an upstanding, vertical wall extending perpendicular to the plate.”. That is, the specification is silent to a disclosure of “perpendicular” as it relates to the disclosed wall and plate. Thus, the specification fails to provide proper antecedent basis for “the plate comprises an upstanding, vertical wall extending perpendicular to the plate.”.
Claim Objections
Claim(s) 7 is/are objected to because of the following informalities:
Claim 7 line 2 should read “the first T-shaped end of the elongate slot comprises:”.
Claim 7 line 7 should read “the second T-shaped end of the elongate slot comprises:”.
Appropriate correction is required.
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.
Claim(s) 2 is/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 pre-AIA the applicant regards as the invention.
Claim(s) 2 is/are unclear with regards to “the first widened end having a length greater than the distance” in lines 1-2 for “the first end wall is at least as wide as the distance” of claim 1 line 11. That is, it appears that Applicant is using both width/wide and length to refer to distances along the same dimension/axis, i.e. the relative sizing shown in Fig. 9. Alternately, it is unclear if the length in one dimension is shown to be greater than the claimed distance which lies in another dimension as there is no scale or measurement indicated in Fig. 7. Examiner is interpreting the claimed ‘wide’/width and ‘length’ as referring to the dimension/axis that extends horizontally as shown in Fig. 9 and suggests amending to clarify, e.g. Examiner suggests using consistent terminology to refer to a single distance.
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.
Claim(s) 1-6 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Posner (US 2004/0153163).
The claimed phrase “forms” is being treated as a product by process limitation; that is the product reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim. As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 USC 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. MPEP 2113.
As to claim 1, Posner discloses a cutting guide (72, Figs. 7-12) capable of use for a tibial implant (102, Figs. 12-14), the cutting guide comprising: a plate (Fig. 7) capable of engaging a resected surface of a tibia (Fig. 7); and an elongate slot (80) extending through the plate along a slot axis (along the longest dimension of the slot, centered, parallel, and perpendicular to the shown walls of the slot as shown in Fig. 7, Fig. 7), the elongate slot comprising: a first longitudinal wall (see illustration of partial Fig. 7, Fig. 7) extending parallel to the slot axis (as defined, Fig. 7); a second longitudinal wall (see illustration of partial Fig. 7, Fig. 7) extending parallel to the slot axis (as defined, Fig. 7); and a first end wall (see illustration of partial Fig. 7, Fig. 7) that is flat (Fig. 7) and that extends perpendicular to the slot axis (as defined, Fig. 7); wherein: the first longitudinal wall is spaced from the second longitudinal wall by a distance (Fig. 7); and the first end wall is at least as wide as the distance (Fig. 7).
As to claim 2, Posner discloses that the first end wall forms part of a first widened end of the elongate slot (Fig. 7), the first widened end having a length greater than the distance (Fig. 7).
As to claim 3, Posner discloses that the first widened end of the elongate slot comprises a first T-shaped end of the elongate slot (Fig. 7).
As to claim 4, Posner discloses that the first T-shaped end is centered on the elongate slot (as defined, Fig. 7).
As to claim 5, Posner discloses a second T-shaped end of the elongate slot (Fig. 7), the second T-shaped end comprising a second end wall (see illustration of partial Fig. 7, Fig. 7) disposed perpendicular to the first longitudinal wall and the second longitudinal wall (as defined, Fig. 7).
As to claim 6, Posner discloses that the elongate slot comprises a length and the length is greater than the distance (Fig. 7).
As to claim 11, Posner discloses one or more bores (76s) extending through the plate (shown in Fig 8 holding pins 54s, Fig. 8, ¶s 56 and 57) capable of receiving an anchoring pin (54s, Fig. 8, ¶57).
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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 of this title, 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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Posner.
The claimed phrase “form” is being treated as a product by process limitation; that is the product reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim. As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 USC 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. MPEP 2113.
As to claim 7, Posner discloses the invention of claim 5 as well as the first T-shaped end of the elongate slot comprises: a first end (see illustration of partial Fig. 7, Fig. 7) connecting the first longitudinal wall of the elongate slot and the first end wall (Fig. 7); and a second end (see illustration of partial Fig. 7, Fig. 7) connecting the second longitudinal wall of the elongate slot and the first end wall (Fig. 7); and the second T-shaped end of the elongate slot comprises: a third end (see illustration of partial Fig. 7, Fig. 7) connecting the second longitudinal wall of the elongate slot and the second end wall (Fig. 7); and a fourth end (see illustration of partial Fig. 7, Fig. 7) connecting the second longitudinal wall of the elongate slot and the second end wall (Fig. 7). Posner further discloses that the elongate slot is capable of use to form a recess comprising a similarly interpreted first end, second end, third end, and fourth end (Fig. 10); wherein the first end, the second end, the third end, and the fourth end of the recess are each arcuate (Fig. 10).
Posner is silent to the first end, the second end, the third end, and the fourth end each being arcuate.
It would have been an obvious matter of design choice to one skilled in the art before the effective filing date of the claimed invention to construct the first end, the second end, the third end, and the fourth end of the elongate slot of Posner to be arcuate, since Applicant has not disclosed that such is anything more than one of numerous shapes or configurations a person ordinary skill in the art would find obvious for the purpose of providing a cutting slot for forming a recess where the first end, the second end, the third end, and the fourth end of the recess are each arcuate (Posner Fig. 10), i.e. to match an abutting surface shape of a cutting tool (Posner Figs. 9 and 10) and thereby enable a smooth guiding of the tool in the slot,
Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Posner in view of Pinczewski et al. (US 2003/0130665, hereinafter “Pinczewski”).
As to claims 8-10, Posner discloses the invention of claim 5.
Posner is silent to the elongate slot, the first T-shaped end and the second T-shaped end are located within a groove in the plate. As to claim 9, Posner is silent to the groove comprises: a posterior pocket located posterior of the elongate slot; an anterior pocket located anterior of the elongate slot; and a pair of rails extending alongside opposite sides of the elongate slot. As to claim 10, Posner is silent to the anterior pocket extends through a perimeter of the plate.
Pinczewski teaches a similar guide (98, Figs. 23, 25, 26, and 31-33c), the guide comprising: a plate (Fig. 257) capable of engaging a resected surface of a tibia (Figs. 25 an 31); and a through portion (see illustration of Fig. 25, Fig. 25) extending through the plate along a slot axis (along the longest dimension of 140a, centered and parallel to the shown walls of the slot as shown in Fig. 25, Fig. 25), the elongate slot comprising: a first longitudinal wall (see illustration of Fig. 25, Fig. 25) extending parallel to the slot axis (as defined, Fig. 25); a second longitudinal wall (see illustration of Fig. 25, Fig. 25) extending parallel to the slot axis (as defined, Fig. 25); where the through portion is located within a groove (140a) in the plate (Fig. 25). As to claim 9, Pinczewski teaches that the groove comprises: a posterior pocket (see illustration of Fig. 25, Fig. 25) located posterior of the through portion (Fig. 25); an anterior pocket (see illustration of Fig. 25, Fig. 25) located anterior of the elongate slot (Fig. 25); and a pair of rails (see “First rail” and “Second rail” in the illustration of Fig. 25, i.e. top portions of the dovetail shape as disclosed in ¶161, Fig. 25, ¶161) extending alongside opposite sides of the through portion (Fig. 25). As to claim 10, Pinczewski teaches that the anterior pocket extends through a perimeter of the plate (Fig. 25).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify the plate as disclosed by Posner by adding the groove around the through portion as taught by Pinczewski in order to provide a channel to receive a router (Pinczewski ¶161) to permit resection of the femur during operation of the router and the tibia being moved about the femur through an arc of motion to an extended position to the desired depth in the direction of movement of the tibia (Pinczewski ¶169), i.e. to orient the slot for the central fin of the femoral prosthesis according to the desired motion of the tibia.
As a result, as to claim 8, the combination of Posner and Pinczewski discloses that the elongate slot, the first T-shaped end and the second T-shaped end (Posner 80, Fig. 7) are located within a groove (Pinczewski 140a, Fig. 25) in the plate (Posner Fig. 7; Pinczewski Fig. 25).
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Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Posner in view of Barnett et al. (EP 4,212,108, hereinafter “Barnett”).
As to claims 12 and 13, Posner discloses the invention of claim 1 as well as the plate comprises a tibial template (Figs. 7-12, ¶s 57-59) capable of use for a partial knee arthroplasty (Figs. 7-12, ¶s 57-59). As to claim 13, Posner discloses that the plate comprises: a straight edge (left edge as shown in Fig. 7, Fig. 7); and a curved edge (right edge as shown in Fig. 7, Fig. 7) disposed opposite the straight edge to approximate a curvature of a tibia (Fig. 7).
Posner is silent to the plate comprises an upstanding, vertical wall extending perpendicular to the plate. As to claim 13, Posner is silent to the straight edge being along which the upstanding, vertical wall extends.
Barnett teaches a similar cutting guide (50) capable of use for a tibial implant (Fig 6c), the cutting guide comprising: a plate (Fig. 6a) capable of engaging a resected surface of a tibia (Fig. 6a); and an elongate slot (56) extending through the plate along a slot axis (along the longest dimension of 56, centered and parallel to the shown walls of the slot as shown in Fig. 6a, Fig. 6a), the elongate slot comprising: a first longitudinal wall (see illustration of Fig. 6a, Fig. 6a) extending parallel to the slot axis (as defined, Fig. 6a); a second longitudinal wall (see illustration of Fig. 6a, Fig. 6a) extending parallel to the slot axis (as defined, Fig. 6a); wherein the plate comprises a tibial template (Fig. 6a) capable of use for a partial knee arthroplasty (Fig. 6a), the plate comprises an upstanding, vertical wall (see illustration of Fig. 6a, Fig. 6a) extending perpendicular to the plate (in as much as Applicant’s, Fig. 6a). As to claim 13, Barnett teaches that the plate comprises: a straight edge (rear edge as shown in Fig. 6a, Fig. 6a) along which the upstanding, vertical wall extends (Fig. 6a); and a curved edge (front edge as shown in Fig. 6a, Fig. 6a) disposed opposite the straight edge to approximate a curvature of a tibia (Fig. 6a).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify the straight edge as disclosed by Posner by adding an upstanding, vertical wall as taught by Barnett in order to ensure proper positioning of the guide for preparing the tibia for a keel of a tibial component (Barnett ¶126).
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY R SIPP whose telephone number is (313)446-6553. The examiner can normally be reached on Mon - Thurs 6-4.
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 or telephone the Examiner.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached on (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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/AMY R SIPP/Primary Examiner, Art Unit 3775
Prosecution Insights