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 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 13-14 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 13 at Lines 1-3 recites the limitation “wherein: the end effector comprises a first coupling device and the shaft comprises a second coupling device in an operational engagement with the first coupling device in a coupling state”. The Applicant is required to clarify to what the claim is intended to be drawn to, i.e., either the subcombination of the handpiece alone as recited in the preamble, or the combination of the hanpiece and the end effector. The Applicant sets forth the combination of the handpiece and the end effector when stating “the shaft comprises a second coupling device in an operational engagement with the first coupling device in a coupling state”, which is inconsistent with the preamble that sets forth the subcombination of the handpeice with the end effector only functionally recited. Applicant is required to make the language of the claims consistent with the intent of the claims. It should also be noted that in considering the claims on the merits, the Examiner will consider the claims as drawn to the subcombination where the end effector is only functionally recited, and specifically for claim 13 as follows “wherein: the end effector comprises a first coupling device and the shaft comprises a second coupling device configured to be in operational engagement with the first coupling device in a coupling state”. Appropriate correction is required.
Claim 14 at Lines 1-3 recites the limitation “further comprising at least one latching and/or stop unit configured to limit rotational movement of the operating element at end positions” which renders the claim indefinite as it is unclear what end positions are being recited: end positions of the operating element, of the latching and/or stop unit, or referred to a location of something instead of structural ends of one of the components. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim limitations in this application that are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: “operating element”, “latching and/or stop unit”, “locking unit”, and “drive unit”.
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) 11-12, 14, 16-17 & 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Petrzelka et al. (US PG Pub No. 2011/0152867).
Regarding Claim 11, Petrzelka et al. discloses a medical motor handpiece (articulating tool, Figs. 1-7, Paragraphs [0044-0051]) for driving an end effector (driver tip, which may be “a screwdriver tip, a drill bit, a blade, a socket, an alien tip, a file, etc”, Paragraphs [0045, 0051]), the medical motor handpiece comprising: a handle portion (109, Fig. 3, Paragraph [0049]) having a distal end portion (front end portion of 109 towards 120, Fig. 3) with a longitudinal handle axis (axis running centrally through the length of 109, Fig. 3); and an operating element (controller including 117 & 118, Paragraphs [0049-0050]) held rotatably (via corresponding threads, Figs. 3-4) about the longitudinal handle axis on the distal end portion of the handle portion (Paragraph [0049]), the operating element being coupleable to the end effector (via drive shaft 106/107/108, Figs. 3-4) in such a way as to: transform rotational movement of the operating element in a first direction of rotation (clockwise rotation of 117) into movement of the end effector (angulation/articulation of the driver tip from the first position, Fig. 3, to the second position, Fig. 4) and effect a function at the end effector (angulation/articulation of the driver tip from the second position, Fig. 4, to the first position, Fig. 3) in response to rotational movement of the operating element in a second direction (counter clockwise rotation of 117) of rotation opposite to the first direction of rotation (Paragraphs [0033, 0049-0050]).
Regarding Claim 12, Petrzelka et al. discloses wherein: the medical motor handpiece is coupleable to the end effector via a shaft (106/107/108, Figs. 3-4, Paragraphs [0033, 0045]), and the operating element causes the end effector to be angled relative to the shaft during rotational movement of the operating element in the first direction of rotation (Fig. 4, Paragraph [0046]).
Regarding Claim 14 as best understood, Petrzelka et al. discloses at least one latching unit (corresponding threads on 109 and 117, Figs. 3-4) configured to increase resistance to rotational movement of the operating element in at least one intermediate rotary position (Paragraph [0049]).
Regarding Claim 16, Petrzelka et al. discloses a locking unit (corresponding threads on 109 and 117, Figs. 3-4), wherein: the locking unit is operable in a locking position to lock the operating element against rotational movement in the first direction of rotation and in the second direction of rotation (when 117 is in a resting position and not being rotated, the corresponding threads lock 117 against rotating in the clockwise or counter clockwise direction), and the locking unit is operable in a release position to unlock the operating element from the locking position and allow rotational movement of the operating element in the first direction of rotation and in the second direction of rotation (when 117 is in a moving position and being rotated clockwise or counterclockwise, the corresponding threads allow 117 to rotate in the clockwise or counter clockwise direction).
Regarding Claim 17, Petrzelka et al. discloses wherein: the medical motor handpiece is coupleable to the end effector via a shaft (106/107/108, Figs. 3-4, Paragraphs [0033, 0045]), and the shaft is coupleable to a rotary transmission sleeve (sleeve extending about the proximal end of 106 as seen in Fig. 3) of the medical motor handpiece in a rotationally fixed manner.
Regarding Claim 19, Petrzelka et al. discloses a proximal end portion (rear/trailing end portion of articulating tool adjacent the dashed 101, Figs. 1-2) and a connection at the proximal end portion (connection portion within articulating tool such as aperture for connecting to power device, not shown), the connection capable of coupling the medical motor handpiece to a drive unit (power device, such as 101 handle with trigger, manual driver handle, twist handle, or lever screw, Paragraphs [0038, 0042, 0049]) and a locking unit (front connection means of the power device which is inserted into the articulating tool to secure the power device thereto, not shown), the locking unit being connected to the operating element in such a way that rotation of the operating element in the second direction of rotation is locked when the medical motor handpiece is coupled to the drive unit (upon connecting the drive unit via its locking unit to the articulating tool, when 117 is in a resting position and not being rotated, the corresponding threads on 109 & 117 lock 117 against rotating in the clockwise or counter clockwise direction without deliberate manual manipulation, Paragraph [0049).
Regarding Claim 20, Petrzelka et al. discloses a medical manual instrument comprising: the medical motor handpiece according to claim 11 above; and an end effector (driver tip which may be “a screwdriver tip, a drill bit, a blade, a socket, an alien tip, a file, etc”, Paragraphs [0045, 0051]) coupled to the medical motor handpiece via a shaft (106/107/108, Figs. 3-4, Paragraphs [0033, 0045]) to transmit torque from the medical motor handpiece to the end effector.
Allowable Subject Matter
Claims 13 & 15 would be allowable if rewritten to overcome the properly rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 18 is 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WEISS whose telephone number is (571) 270-5597. The examiner can normally be reached Monday through Friday, 8:00 am to 4:00 pm EST. If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, KEVIN T. TRUONG, at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JESSICA WEISS/Primary Examiner, Art Unit 3775
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