DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is responsive to the preliminary amendments received on 20 October 2025. Claims 2-10 are currently pending.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings received on 15 May 2025 are accepted by the examiner.
Specification
The amendment filed 15 May 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The incorporation by reference of International Application No. PCT/CZ2023/050080 and of CZ Application No. PV 2022-476 is ineffective as it was added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of associated PCT, in this case 15 November 2023 (see MPEP 1893.03(b)). Therefore, the specification amendment of 15 May 2025 to include the incorporation by reference is new matter, per MPEP 608.01(p).
Applicant is required to cancel the new matter in the reply to this Office Action.
Note: This issue can be remedied by removing the statement "the disclosures of which are incorporated herein by reference in their entirety" from the specification.
Claim Objections
Claim 10 is objected to because of the following informalities:
In line 9, it appears that the phrase “at least one inner shaft” should end with a comma, not a period.
In lines 10-16, it appears that the phrase “at least one gear train configured to connect to the inner shaft or the drilling tool, wherein the motor part is adapted for removable connection to each one of the replacement parts individually, where the inner shaft of the motor part is connectable to the inner shaft of each one of the replacement parts, to transmit rotational forces from the inner shaft of the motor part to the inner shaft of the replacement parts and simultaneously the shafts have movement in a longitudinal direction relative to each other” should read “at least one gear train configured to connect to the at least one inner shaft or the drilling tool, wherein the motor part is adapted for removable connection to each one of the replacement parts individually, where the at least one inner shaft of the motor part is connectable to the at least one inner shaft of each one of the replacement parts, to transmit rotational forces from the at least one inner shaft of the motor part to the at least one inner shaft of the replacement parts and simultaneously the shafts have movement in a longitudinal direction relative to each other” for consistency and clarity.
Claim 3 is objected to because of the following informality:
In lines 2-3, it appears that the phrase “the inner shaft of each one of the replacement parts” should read “the at least one inner shaft of each one of the replacement parts” for consistency and clarity.
Claim 4 is objected to because of the following informality:
In lines 2-3, it appears that the phrase “the inner shaft of each one of the replacement parts” should read “the at least one inner shaft of each one of the replacement parts” for consistency and clarity.
Claim 5 is objected to because of the following informality:
In line 4, it appears that the phrase “the motor. the motor” should read “the motor, the motor.”
Claim 7 is objected to because of the following informality:
In line 2, it appears that the phrase “the motor part. the pistol attachment” should read “the motor part, the pistol attachment.”
Claim 8 is objected to because of the following informality:
In line 3, it appears that the phrase “the inner shaft of at least one of the replacement parts” should read “the at least one inner shaft of at least one of the replacement parts” for consistency and clarity.
Claim 9 is objected to because of the following informalities:
In line 2, it appears that the phrase “configured the be driven by” should read “configured to be driven by.”
In line 3, it appears that the phrase “the drill tool” should read “the drilling tool.”
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.
Claims 10 and 2-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 10 recites the limitation “at least one gear train configured to connect to the inner shaft or the drilling tool” in lines 10-11. On numbered page 12, the specification states “Alternatively, the drilling tool 15 may be connected by a connection member, such as a chuck, to the output shaft 9 of the transmission box, which is connected to the inner shaft 8 of the replacement part 3 by a bearing (can be seen in Fig. 3, where the drilling attachment 6 is connected to the output shaft 9 of the transmission box).” Since a connection member/chuck, a transmission box, and a bearing are located between the drilling tool and the gear train (see Figure 3), it is unclear as to how this relationship can be possible. Since claims 2-9 are dependent upon claim 10, they contain the same issue.
Claim 3 recites the limitation “the inner shaft of the motor part” in lines 1-2. Since claim 2 requires “at least two inner shafts” (see line 3), it is unclear as to which shaft claim 3 is referring (e.g. a single particular shaft, or more than one shaft).
Claim 4 recites the limitation “the inner shaft of the motor part” in lines 1-2. Since claim 2 requires “at least two inner shafts” (see line 3), it is unclear as to which shaft claim 4 is referring (e.g. a single particular shaft, or more than one shaft).
Claim 4 recites the limitation “wherein the inner shaft of the motor part is configured to be arranged parallel to the inner shaft of each one of the replacement parts” in lines 1-3. Claim 10 recites the limitation “where the inner shaft of the motor part is connectable to the inner shaft of each one of the replacement parts” in lines 12-13. Since the at least one inner shaft of the motor part is connectable to the at least one inner shaft of each one of the replacement parts, it is unclear as to how they can then be parallel to one another.
Claim 5 recites the limitation "the input shaft" in line 5. There is insufficient antecedent basis for this limitation in the claim. Since claims 6 and 7 are dependent upon claim 5, they contain the same issue.
Note: It appears that amending line 5 of claim 5 to read “to drive the output shaft, the gear train and the at least one inner shaft of the motor part” would overcome this rejection. For examination purposes, claim 5 will be treated as such.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 10 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Longo (U.S. Patent 5,993,454) in view of Lau (U.S. Patent 7,156,191).
Longo discloses (as to part of claim 10) a surgical tool (12) comprising a motor part (i.e. part defined by internal components of 12 and 18) comprising a motor (15), a gear train (not shown) of the motor part (see column 2, lines 63-67), at least one inner shaft (16) of the motor part connected to the gear train (see column 2, lines 63-67) and, at least two replacement parts (10, see column 6, lines 10-25 referring to other embodiments of the parts having different rotational speeds), each replacement part comprising a bearing system (84) for connecting the surgical tool to a drilling tool (14), at least one inner shaft (34), and at least one gear train (i.e. train defined by 58, 66 and 70) capable of connecting to the at least one inner shaft (i.e. via the interaction between 52 and 58), wherein the motor part is capable of being removably connected to each one of the replacement parts individually (i.e. via the interaction between 18 and 26), where the at least one inner shaft of the motor part is connectable to the at least one inner shaft of each one of the replacement parts, to transmit rotational forces from the at least one inner shaft of the motor part to the at least one inner shaft of the replacement parts (i.e. via the interaction between 17 and 49) and simultaneously the shafts have movement in a longitudinal direction relative to each other (i.e. sliding 26 into 18 results in a longitudinal movement of 49/34 into engagement with 17/16), wherein (as to claim 8) the surgical tool further comprises a drilling attachment (20) capable of being connected to the inner shaft of at least one of the replacement parts (see column 5, lines 6-18), the drilling attachment capable of being connected to the drilling tool (see column 3, lines 1-9) (see Figures 1-5, and column 2, line 54 – column 6, line 58).
Longo discloses the claimed invention except for wherein (as to the remainder of claim 10) the motor part comprises an output shaft connected to the motor, wherein the gear train is mounted on the output shaft.
Lau teaches the use of a motor part (11/12) comprising a motor (11), an output shaft (14) connected to the motor, a gear train (i.e. train defined within 26, see Figure 2) of the motor part mounted on the output shaft (i.e. via the interaction between 34 and 30), and a shaft (27) of the motor part connected to the gear train (i.e. via the interaction between 27/29 and 31) (see Figures 1-2, and column 2, line 28 – column 3, line 35).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the invention of Longo with wherein the motor part comprises an output shaft connected to the motor, wherein the gear train is mounted on the output shaft in view of Lau in order to provide a well-known, obvious connection between the motor and the gear train for operation of a battery-powered drill to yield predictable results.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Longo (U.S. Patent 5,993,454) in view of Lau (U.S. Patent 7,156,191), as applied to claim 10 above, further in view of Ju et al. (U.S. Patent 11,395,664).
Longo in view of Lau disclose the claimed invention except for wherein the surgical tool further comprises a battery and control electronics are arranged in the motor part and a switch operable to control the control electronics, the battery providing power to drive the motor, the motor being operable by the control electronics via operation of the switch to drive the output shaft, the gear train and the at least one inner shaft of the motor part.
Ju et al. teach the use of a surgical tool (100) comprising a battery (not shown, see column 6, lines 8-12) and control electronics (6) and a switch (8) operable to control the control electronics, the battery providing power to drive a motor (4) the motor being operable by the control electronics via operation of the switch to drive an inner shaft (3) of the motor (see Figures 1-13, and column 4, line 36 – column 8, line 17).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the invention of Longo in view of Lau with wherein the surgical tool further comprises a battery and control electronics are arranged in the motor part and a switch operable to control the control electronics, the battery providing power to drive the motor, the motor being operable by the control electronics via operation of the switch to drive the output shaft, the gear train and the at least one inner shaft of the motor part in view of Ju et al. in order to provide a well-known, obvious set of means for supplying power to and controlling the motor to yield predictable results. Furthermore, it has been held that rearranging parts of an invention (i.e. such that the control electronics are arranged in the motor part) involves only routine skill in the art (In re Japikse, 86 USPQ 70).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Longo (U.S. Patent 5,993,454) in view of Lau (U.S. Patent 7,156,191) further in view of Ju et al. (U.S. Patent 11,395,664), as applied to claim 5 above, and further in view of Bone (U.S. Patent 7,281,591).
Ju et al. teach wherein (as to part of claim 6) the battery is separated from the motor (see Figure 3); however, Longo in view of Lau further in view of Ju et al. fail to explicitly disclose wherein (as to the remainder of claim 6) the motor part is divided into two parts that are connected by a joint.
Bone teaches the use of a tool (2, i.e. a tool similar in function to a surgical tool) comprising a motor part (i.e. part defined by 4 and 6) divided into two parts (i.e. 4 and 6) that are connected by a joint (i.e. joint defined by 76, 78, 102 and 104) such that a battery (34) is separated from a motor (16) (see Figures 2-13, and column 4, line 34 – column 8, line 37).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the invention of Longo in view of Lau further in view of Ju et al. with wherein the motor part is divided into two parts that are connected by a joint in view of Bone in order to provide a well-known, obvious means allowing for adaptable surgical tool configurations given the task at hand to yield predictable results.
Allowable Subject Matter
Claims 2-4, 7 and 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter. Claims 2-4, 7 and 9 in the instant application have not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose, or suggest, the following:
Regarding at least claim 2, in combination with the limitations required by claim 10, no prior art reference could be found disclosing or making obvious wherein the gear train is arranged in the motor part and the at least one inner shaft of the motor part comprises at least two inner shafts of the motor part each connected to the gear train and each operable at a different rotational speed, and wherein the inner shaft of each one of the replacement parts is adapted to be selectively connected to a designated one of the inner shafts of the motor part.
Regarding claim 7, in combination with the limitations required by claims 10 and 5, no prior art reference could be found disclosing or making obvious wherein the surgical tool further comprises a pistol attachment attachable to the motor part, the pistol attachment comprising contacts connectable to the control electronics and a secondary control switch operable to control the control electronics.
Regarding claim 9, in combination with the limitations required by claims 10 and 8, no prior art reference could be found disclosing or making obvious wherein the drilling attachment comprises a further gear train configure the be driven by the at least one inner shaft of each one of the replacement parts to in turn drive the drill tool.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Schwamb (U.S. Patent 11,679,485) discloses a surgical tool comprising a motor part and at least two replacement parts.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY E WAGGLE, JR whose telephone number is (571)270-7110. The examiner can normally be reached TEAP: Monday - Friday (7:45am - 3:45pm).
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/LARRY E WAGGLE, JR/Primary Examiner, Art Unit 3775
