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 .
Response to Amendment
This Office Action is responsive to the preliminary claim amendments filed 06 April 2026. As directed by the amendments, claims 1-18 are cancelled and claims 19-38 are newly added. Claims 19-38 currently stand pending.
Priority
The priority date is 12 May 2015.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, each of the outer tines being formed to have plural, longitudinally spaced apart, inwardly directed lobes (claim 23), in the same embodiment as the drive link and the blade web having teeth that engage each other, as required by claim 19, must be shown or the feature(s) canceled from the claim(s). Figure 5 which shows the drive link and the blade web having teeth that engage each other does not show plural, longitudinally spaced apart, inwardly directed lobes. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 19-38 are objected to because of the following informalities: improper antecedence and language. Appropriate correction is required. The following amendments are suggested:
Claim 19 / line 5: “so as to be located”
Claim 19 / lines 7-8: “with teeth, the teeth having a configured to form a kerf”
Claim 19 / line 9: “the at least one drive link”
Claim 19 / lines 10-11: “a drive element”
Claim 19 / lines 11-12: “so that [[the]] reciprocation of the at least one drive link results in [[the]] pivoting of the blade”
Claim 19 / lines 14-15: “the at least one drive link”
Claim 19 / line 16: “wherein the web is formed at least one drive link”
Claim 20 / line 1: “The surgical saw blade cartridge”
Claim 20 / line 2: “between the two outer plates”
Claim 21 / line 5: “are directed inwardly”
Claim 23 / line 1: “wherein each of the pair of outer tines”
Claim 24 / line 2: “the at least one lobe is integral with the respective outer tine and is located”
Claim 25 / line 2: “the two drive links”
Claim 25 / lines 3-4: “between two drive links”
Claim 30 / line 4: “the two outer plates”
Claim 30 / line 8: “the at least one drive link”
Claim 30 / lines 9-10: “a drive element”
Claim 30 / lines 10-11: “so that [[the]] reciprocation of the at least one drive link results in [[the]] pivoting of the blade”
Claim 30 / line 14: “wherein the blade is formed
Claim 33 / line 3: “teeth having a configured to form a kerf”
Claim 34 / line 1: “The surgical saw blade cartridge”
Claim 35 / line 4: “between the two outer plates”
Claim 35 / line 8: “the blade formed with teeth, the teeth having a configured to form a kerf”
Claim 35 / line 9: “the two outer plates, the at least one drive link”
Claim 35 / line 10: “a drive element”
Claim 35 / lines 11-12: “so that [[the]] reciprocation of the at least one drive link results in [[the]] pivoting of the blade”
Claim 35 / lines 13-14: “the at least one drive link”
Claim 35 / line 15: “wherein the blade is formed at least one drive link”
Claim 36 / line 1: “The surgical saw blade cartridge”
Claim 37 / line 1: “The surgical saw blade cartridge”
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 19-38 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 19, the limitation “the proximal end adapted to be attached to drive element of a saw and the distal end being connected to the web of the blade” (lines 10-11) renders the claims indefinite, because it is unclear if the proximal end and the distal end refer to the proximal and distal ends of the guide bar or to the proximal and distal ends of the at least one drive link. For examination purposes, the limitation will be interpreted as the proximal end of the at least one drive link adapted to be attached to a drive element of a saw and the distal end of the at least one drive link being connected to the web of the blade.
Further as to claim 19, the limitation “a distal end of the drive link” (lines 14-15) renders the claims indefinite, because it is unclear if this refers to the previously recited distal end of the at least one drive link, or to a different distal end. For examination purposes, the limitation will be interpreted as the distal end of the at least one drive link.
Further as to claim 19, the limitation “to at least one drive link” (line 17) renders the claims indefinite, because it is unclear if this refers to the previously recited at least one drive link, or to a different at least one drive link. For examination purposes, the limitation will be interpreted as to the at least one drive link.
As to claim 20, the limitation “distal ends of the guide bar” renders the claims indefinite, because it is unclear if this refers to the previously recited distal end of the guide bar, or to different distal ends of the guide bar. For examination purposes, the limitation will be interpreted as the distal end of the guide bar.
As to claim 25, the limitation “wherein two drive links are connected to the web of the blade” (lines 1-2) renders the claims indefinite, because it is unclear if the previously recited at least one drive link includes the two drive links, or if the two drive links are different drive links. For examination purposes, the limitation will be interpreted as wherein the at least one drive link comprises two drive links that are connected to the web of the blade.
As to claim 28, the limitation “the outer tine” (line 2) renders the claim indefinite because it lacks proper antecedent basis in the claims. For examination purposes, claim 28 will be interpreted as dependent upon claim 21, and amendment is suggested to “each of the pair of outer tines”. Similar amendment to claim 28 / line 4 is suggested: “the pair of outer tines”.
As to claim 30, the limitation “the proximal end adapted to be attached to drive element of a saw and the distal end being connected to the blade” (lines 9-10) renders the claims indefinite, because it is unclear if the proximal end and the distal end refer to the proximal and distal ends of the guide bar or to the proximal and distal ends of the at least one drive link. For examination purposes, the limitation will be interpreted as the proximal end of the at least one drive link adapted to be attached to a drive element of a saw and the distal end of the at least one drive link being connected to the blade.
Further as to claim 30, the limitation “a distal end of the at least one drive link” (lines 12-13) renders the claims indefinite, because it is unclear if this refers to the previously recited distal end of the at least one drive link, or to a different distal end. For examination purposes, the limitation will be interpreted as the distal end of the at least one drive link.
Further as to claim 30, the limitation “to at least one drive link” (line 15) renders the claims indefinite, because it is unclear if this refers to the previously recited at least one drive link, or to a different at least one drive link. For examination purposes, the limitation will be interpreted as to the at least one drive link.
As to claim 35, the limitation “the proximal end adapted to be attached to drive element of a saw and the distal end being connected to the blade” (lines 10-11) renders the claims indefinite, because it is unclear if the proximal end and the distal end refer to the proximal and distal ends of the guide bar or to the proximal and distal ends of the at least one drive link. For examination purposes, the limitation will be interpreted as the proximal end of the at least one drive link adapted to be attached to a drive element of a saw and the distal end of the at least one drive link being connected to the blade.
Further as to claim 35, the limitation “a distal end of the drive link” (lines 13-14) renders the claims indefinite, because it is unclear if this refers to the previously recited distal end of the at least one drive link, or to a different distal end. For examination purposes, the limitation will be interpreted as the distal end of the at least one drive link.
Further as to claim 35, the limitation “to at least one drive link” (line 16) renders the claims indefinite, because it is unclear if this refers to the previously recited at least one drive link, or to a different at least one drive link. For examination purposes, the limitation will be interpreted as to the at least one drive link.
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.
Claims 19, 20, 26, 27, 29-33, 35, 36, and 38 are rejected under 35 U.S.C. 102(a)(1)/(2) as anticipated by U.S. Patent No. 4,941,466 to Romano.
As to claim 19, Romano discloses a surgical sagittal saw blade cartridge, the cartridge comprising: a guide bar (169) having opposed proximal and distal ends, FIGS. 12-15, the guide bar defining a void extending between the proximal and distal ends, FIG. 13, and defining a pivot boss (156) located within the void (col. 10 / line 40 – col. 11 / line 8), FIGS. 12 and 13; a blade having a web (153 and 154), the web being located in the void of the guide bar, FIG. 13, so as to located adjacent the pivot boss, FIG. 12; and a blade head (168), the blade head formed with teeth, FIG. 12, the teeth having a sufficient thickness to form a kerf able to receive the guide bar (interpreted as language of intended use; the teeth have a sufficient thickness to form a kerf able to receive the guide bar, where the formed kerf is capable of receiving at least part of the guide bar and/or the teeth are capable of multiple passes to form a larger kerf to receive the entire guide bar); at least one drive link (163, 164) moveably disposed within the void of the guide bar (col. 11 / lines 9-36), FIGS. 12 and 13, the drive link having opposed proximal and distal ends, FIG. 12, the proximal end adapted to be attached to drive element of a saw (interpreted as language of intended use; the proximal end is fully capable of being attached to a drive element of a saw, e.g. a motor) and the distal end being connected to the web of the blade (at 153, col. 11 / lines 9-16) so that the reciprocation of the at least one drive link (the drive link fully capable of being reciprocated, or moved forwards and backwards, since the drive link also retracts, col. 12 / lines 23-27) results in the pivoting of the blade about the pivot boss internal to the guide bar (pivoted positions shown in phantom); wherein the at least one drive link is formed so as to have teeth (rotations of thread 162 form teeth) at a distal end of the drive link, FIG. 12; and wherein the web is formed is formed with teeth (projections that form slots 161) that engage the teeth of the drive link (col. 11 / lines 9-16) so as to pivotally connect the blade to at least one drive link (the drive link remains longitudinally aligned along its own axis while the blade web pivots about the pivot boss and thus pivots with respect to the drive link).
As to claim 20, Romano discloses the surgical sagittal cartridge of claim 19, wherein the guide bar includes two outer plates (long sides of 169, shown in cross-section at the top and bottom of FIG. 13) and an inner plate (151) located between the outer plates, FIGS. 12 and 13, the inner plate defining the pivot boss (the inner plate defines the pivot boss since the pivot boss is attached to the inner plate and thus the inner plate defines the limits of the pivot boss, i.e. one stops where the other begins) located proximally of distal ends of the guide bar, FIG. 12; and wherein the blade (at blade web at 154) is disposed against the pivot boss, FIG. 12.
As to claim 26, Romano discloses the surgical saw blade cartridge of claim 19, wherein the guide bar is further formed to have an opening (proximal opening in which the drive link is journal mounted, col. 11 / lines 16-18, shown similarly in another embodiment in FIG. 9) for receiving a coupling member (interpreted as language of intended use) that holds the guide bar to the saw (interpreted as language of intended use; the opening is fully capable of receiving a coupling member that holds the guide bar to the saw by connecting to the saw motor).
As to claim 27, Romano discloses the surgical saw blade cartridge of claim 19, wherein the guide bar is formed with an opening (proximal opening in which the drive link is journal mounted, col. 11 / lines 16-18) in which the proximal end of the at least one drive link is connected to the drive element of the saw (interpreted as language of intended use; the proximal end of the drive link is fully capable of being connected to the drive element of the saw in the opening because the portion located in the opening can be interpreted as the connecting part to the drive element).
As to claim 29, Romano discloses the surgical saw blade cartridge of claim 20, wherein the two outer plates and the inner plate are three separate plates that are secured together (the two outer plates are secured together integrally and the inner plate is secured by being closely fitted into the outer plates, col. 11 / lines 41-43, FIG. 13) to form the guide bar.
As to claim 30, Romano discloses a surgical sagittal saw blade cartridge, the cartridge comprising: a guide bar (169) including a proximal end and a distal end, FIGS. 12-15, the guide bar comprising: two outer plates (long sides of 169, shown in cross-section at the top and bottom of FIG. 13); and an inner plate (151 and 156) located between the outer plates, FIGS. 12 and 13, the inner plate comprising a pair of outer tines (free ends of long sidewalls of 151 adjacent the cutaway at 152, col. 10 / lines 57-59) and defining a head (156) proximate the distal end of the guide bar, FIGS. 12 and 13; and a blade (153, 154, 157, 168) coupled to the guide bar, the blade configured to contact and pivot about the head of the inner plate (col. 10 / line 40 – col. 11 / line 8); at least one drive link (163, 164) moveably disposed between the two outer plates (col. 11 / lines 9-36), FIGS. 12 and 13, the drive link having opposed proximal and distal ends, FIG. 12, the proximal end adapted to be attached to drive element of a saw (interpreted as language of intended use; the proximal end is fully capable of being attached to a drive element of a saw, e.g. a motor) and the distal end being connected to the blade (at 153, col. 11 / lines 9-16) so that the reciprocation of the drive link (the drive link fully capable of being reciprocated, or moved forwards and backwards, since the drive link also retracts, col. 12 / lines 23-27) results in the pivoting of the blade about the head of the inner plate (pivoted positions shown in phantom); wherein the at least one drive link is formed so as to have teeth (rotations of thread 162 form teeth) at a distal end of the at least one drive link, FIG. 12; and wherein the blade is formed is formed with teeth (projections that form slots 161) that engage the teeth of the at least one drive link (col. 11 / lines 9-16) so as to pivotally connect the blade to at least one drive link (the drive link remains longitudinally aligned along its own axis while the blade pivots about the head and thus pivots with respect to the drive link).
As to claim 31, Romano discloses the surgical saw blade cartridge of claim 30, wherein each of the pair of outer tines extends distally past the head defined by the inner plate (since 156 is proximal to the end of 151), FIG. 12.
As to claim 32, Romano discloses the surgical saw blade cartridge of claim 31, wherein at least a portion of the blade is located between the pair of outer tines, FIG. 13.
As to claim 33, Romano discloses the surgical saw blade cartridge of claim 31, wherein the blade further comprises a blade head (168) formed with a plurality of cutting teeth, FIG. 12, located distal to the guide bar (in phantom), the cutting teeth having a sufficient thickness to form a kerf able to receive the guide bar (interpreted as language of intended use; the teeth have a sufficient thickness to form a kerf able to receive the guide bar, where the formed kerf is capable of receiving at least part of the guide bar and/or the teeth are capable of multiple passes to form a larger kerf to receive the entire guide bar).
As to claim 35, Romano discloses a surgical sagittal saw blade cartridge, the cartridge comprising: a guide bar (169) including a proximal end and a distal end, FIGS. 12-15, the guide bar comprising: two outer plates (long sides of 169, shown in cross-section at the top and bottom of FIG. 13); and an inner plate (151 and 156) located between the outer plates, FIGS. 12 and 13, the inner plate defining a head (156) proximate the distal end of the guide bar, FIGS. 12 and 13; and a blade (153, 154, 157, 168) coupled to the guide bar, the blade configured to contact and pivot about the head of the inner plate (col. 10 / line 40 – col. 11 / line 8); teeth the teeth having a sufficient thickness to form a kerf able to receive the guide bar (interpreted as language of intended use; the teeth have a sufficient thickness to form a kerf able to receive the guide bar, where the formed kerf is capable of receiving at least part of the guide bar and/or the teeth are capable of multiple passes to form a larger kerf to receive the entire guide bar); at least one drive link (163, 164) moveably disposed between the outer plates (col. 11 / lines 9-36), FIGS. 12 and 13, the drive link having opposed proximal and distal ends, FIG. 12, the proximal end adapted to be attached to drive element of a saw (interpreted as language of intended use; the proximal end is fully capable of being attached to a drive element of a saw, e.g. a motor) and the distal end being connected to the blade (at 153, col. 11 / lines 9-16) so that the reciprocation of the drive link (the drive link fully capable of being reciprocated, or moved forwards and backwards, since the drive link also retracts, col. 12 / lines 23-27) results in the pivoting of the blade about the head of the inner plate (pivoted positions shown in phantom); wherein the at least one drive link is formed so as to have teeth (rotations of thread 162 form teeth) at a distal end of the drive link, FIG. 12; and wherein the blade is formed is formed with teeth (projections that form slots 161) that engage the teeth of the drive link (col. 11 / lines 9-16) so as to pivotally connect the blade to at least one drive link (the drive link remains longitudinally aligned along its own axis while the blade pivots about the head and thus pivots with respect to the drive link).
As to claim 36, Romano discloses the surgical saw cartridge of claim 35, wherein the inner plate further comprises a pair of outer tines (free ends of long sidewalls of 151 adjacent the cutaway at 152, col. 10 / lines 57-59), each of the pair of outer tines extends distally past the head defined by the inner plate (since 156 is proximal to the end of 151), FIG. 12.
As to claim 38, Romano discloses the surgical saw blade cartridge of claim 36, wherein at least a portion of the blade is located between the pair of outer tines, FIG. 13.
Allowable Subject Matter
Claims 21-25, 28, 34, and 37 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19, 20, 30-33, 35, 36, and 38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. US 10,687,823. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus more specific. Thus the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. It has been held that the “generic” invention is anticipated by the “species.” See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
Instant claims 19/203,110
Patent claims 10,687,823
19. A surgical sagittal saw blade cartridge, the cartridge comprising: a guide bar having opposed proximal and distal ends, the guide bar defining a void extending between the proximal and distal ends and defining a pivot boss located within the void;
a blade having a web, the web being located in the void of the guide bar so as to located adjacent the pivot boss; and
a blade head, the blade head formed with teeth the teeth having a sufficient thickness to form a kerf able to receive the guide bar;
at least one drive link moveably disposed within the void of the guide bar, the drive link having opposed proximal and distal ends, the proximal end adapted to be attached to drive element of a saw and the distal end being connected to the web of the blade so that the reciprocation of the at least one drive link results in the pivoting of the blade about the pivot boss internal to the guide bar;
wherein the at least one drive link is formed so as to have teeth at a distal end of the drive link; and wherein the web is formed is formed with teeth that engage the teeth of the drive link so as to pivotally connect the blade to at least one drive link.
1. A surgical sagittal saw blade cartridge, said cartridge comprising: a guide bar comprising: two outer plates; and an inner plate located between the outer plates (between the outer plates is the “void”), said inner plate formed to have an inner tine and opposed outer tines located on opposed sides of said inner tine and, wherein, said inner tine is formed to define a head (the “pivot boss” which is located within the void because it is on the inner plate which is between the outer plates in the void) and said outer tines extend distally past said head of said inner tine;
a blade, said blade having: a web disposed between the outer plates (in the “void”) and against (“adjacent”) said head of said inner tine so that at least a portion of said web is disposed between sections of said outer tines located distal to said head of said inner tine; and
a head integral with and located distal to said web, said head formed with teeth located distal to said guide bar, said teeth having a sufficient thickness to form a kerf able to receive said guide bar; and
at least one drive link moveably disposed between the outer plates (within the “void”) within a space between said inner tine and one of said outer tines, said at least one drive link having opposed proximal and distal ends, the proximal end adapted to be attached to a drive element of a saw and the distal end being connected to said web of said blade so that reciprocation of said at least one drive link results in pivoting of said blade around said head (the “pivot boss”) of said inner tine.
10. The surgical saw blade cartridge of claim 1, wherein: said at least one drive link is formed with teeth at the distal end of the drive link; and said web of said blade is formed with teeth, said web teeth positioned and shaped to engage said teeth of said at least one drive link.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRACY L KAMIKAWA whose telephone number is (571)270-7276. The examiner can normally be reached M-F 10:00-6:30 PM.
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/TRACY L KAMIKAWA/Examiner, Art Unit 3775
Prosecution Insights