DETAILED ACTION
This office action is responsive to the response to restriction requirement of July 20, 2026. Claims 1-25 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 1-16) in the reply filed on July 20, 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Claims 17-25 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 July 20, 2026.
Applicant’s statement that he wishes to maintain the withdrawn claims as eligible for rejoinder is noted. Examiner is amenable to such, so long as the withdrawn claims are amended to correlate to an allowable claim prior to issuance of a notice of allowability.
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: At claims 1 and 3, the limitation “circular track drive” lacks antecedent basis in the specification.
Claim Objections
Claim 3 objected to because of the following informalities: line 4 refers to “the metatarsal”, which limitation lacks antecedent basis. Examiner suggests this should refer to ‘a metatarsal’.
Further, examiner suggests the spacing of claim 3 is improper. It appears applicant may have intended a semicolon and line break at line 9 at the section requiring the circular track drive.
Appropriate correction is required.
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 2 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 12,329,395. Although the claims at issue are not identical, they are not patentably distinct from each other because essentially all structures and functions of the ‘395 patent claim 1 are required in instant claim 2.
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, 2, 3, 4, 6, 9, 10, 13, and 15, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bofeli et al. (US 2021/0330335 A1).
Regarding claim 1, Bofeli teaches a system for performing a percutaneous bunionectomy [0003] as at fig. 4A, comprising:
a jig 210 comprising:
a body 212A including a first end (left) and an oppositely disposed second end (right);
a contact pad 213 connected to the first end, and configured to conform to a portion of soft tissue proximate to a metatarsal;
an arm 216 extending from the body having a first arm end (left in fig. 4B) and a second arm end (right in fig. 4B);
a head contact pad 267 connected to the first arm end, and configured to conform to a portion of the soft tissue proximate to a metatarsal head;
a linear track 244/240D connected to the second arm and movably connected to the body, the track including an engagement portion 244;
a circular track drive 246 rotatably connected to the body so as to cooperate with the engagement portion such that a rotation of the circular track drive 246 results in a lateral movement of the track wherein the track may be selectively restrained from translation relative to the body by screws 226/246; and,
a guide arm 214 connected to and extending from the body 212A;
a plurality of positioning k-wires 220 (see fig. 5A), wherein each of the head contact pad and the contact pad include openings (218/219 and holes seen in element 267 as in fig. 4B and 5C) configured to receive one of the plurality of positioning k-wires and at least one fixation k-wire (choosing one of 220).
The screws 226/246 which actuate the track are considered a lock in that they prevent motion of the components unless the screws are rotated by a tool such as a Torx T10 driver [0066] such that the track is considered selectively restrained.
Regarding claims 3, 9, 10, 13 and 15, Bofeli teaches an adjustable jig 210 for minimally invasive bunion surgery, comprising:
a body 212A having a first body end (left) and a second body end (right);
a metatarsal contact pad 213 connected to the first body end and configured to conform to a portion of soft tissue proximate the metatarsal;
an arm 216 extending from the body 212A having a first arm end (left in fig. 4B) and a second arm end (right in fig. 4B);
a metatarsal head contact pad 267 connected to the first arm end and configured to conform to a portion of soft tissue proximate the metatarsal;
a linear track 244/240D securely coupled to the second arm end while being movably connected to the body 212A, the track including an engagement section 244;
a circular track drive 246 rotatably connected to the body 212A and cooperating with the engagement section 244 of the track, such that a rotation of the circular track drive 246 results in lateral movement of the track; and,
a lock 226/246 connected to the body 212A and configured to selectively restrain the track from translation relative to the body 212A (considered a lock in that 226/246 prevent motion of the components unless the screws are rotated by a tool such as a Torx T10 driver [0066]).
Regarding claim 4, the jig includes an alignment guide arm 214 connected to and extending from the jig body 212A.
Regarding claim 6, the term “high friction surface” is considered a relative term. A surface of 244 can be considered to have a high frictional coefficient relative to other types of surfaces.
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) 5 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bofeli.
Regarding claims 5 and 14, the limitations of claim 3 are taught by Bofeli as above, but Bofeli teaches use of a screw mechanism rather than the claimed teeth.
Examiner takes the position that a screw and a gear/ratchet system are well known prior art functionally equivalent structures for permitting linear movement of structures. Forming the Bofeli device with a geared ratchet for actuating the track would have been a matter of selecting between well-known mechanisms for the purpose of providing the relative movement of the components. One would have done so in order to provide for a system which could be geared to reduce the amount of force required to move the components.
Allowable Subject Matter
Claims 2, 7, 8, 11, 12, and 16 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.
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
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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
