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 .
Status of the Claims
This Office Action is responsive to the amendment filed September 24, 2026. As directed by the amendment: Claims 2 and 12 have been amended. Claim 1 was cancelled. Claims 13-21 were withdrawn. Claims 2-21 are presently pending in this application.
Examiner’s Note
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 2-6 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hawkins et al. (US 3,209,753), herein referred to as Hawkins.
Regarding claim 2, Hawkins discloses a device (figures 1-3) for measuring one or more forces applied to a joint during a surgical procedure (considered functional), the device (figures 1-3) comprising a first body portion (10) comprising a first handle (13) and a first prong (19), the first prong (19) comprising a concave surface (figure 3) and an opposing convex surface (figure 3), a second body portion (11) comprising a second handle (14) and a second prong (20), the second prong (20) comprising a concave surface (figure 3) and an opposing convex surface (figure 3), wherein the concave surface of the first prong (19) and the concave surface of the second prong (20) comprise a co-directional orientation (figure 3), the first body portion (10) being coupled to the second body portion (11) so that movement of the first and second handles (13+14) moves the first and second prongs (19+20), wherein the first prong (19) has a smooth, continuously curved surface extending an entire length thereof (figures 1-3), and wherein the second prong (20) has a smooth, continuously curved surface extending an entire length thereof (figures 1-3).
Regarding claim 3, Hawkins discloses wherein the smooth, continuously curved surface of the first prong (19) and the smooth, continuously curved surface of the second prong (20) are both configured (i.e. capable of) such that, when in a closed position, bones of the joint are rotatable relative to each other while the first prong and the second prong are positioned within the joint (considered functional).
Regarding claim 4, Hawkins is capable of having wherein the joint is a knee joint and the bones of the joint are a femur and a tibia as this is considered functional.
Regarding claim 5, Hawkins discloses wherein, when the first prong (19) and the second prong (20) are in the closed position (figures 1-3), no forces are applied to the joint by the device (considered functional).
Regarding claim 6, Hawkins discloses wherein the first and second body portions (10+11) are coupled to each other via a rotational joint (12) so that the first body portion (10) and the second body portion (11) are rotatably attached (col. 1, ll. 62-64 and figure 1) to each other at the rotational joint (12) and the first prong (19) and the second prong (20) are configured to (i.e. capable of) pivot around the rotational joint (12) when a rotation force (col. 1, ll. 62-64) is applied to the first and second handles (13+14).
Regarding claim 10, Hawkins discloses wherein the first prong (19) comprises an insertion end (figures 1-3), which is configured for (i.e. capable of) insertion within the joint (considered functional), and a base end (figures 1 and 3), which is closer to the rotational joint (12) than the insertion end of the first prong (19) (figures 1 and 3), and the second prong (20) comprises an insertion end (figures 1-3), which is configured for (i.e. capable of) insertion within the joint (considered functional), and a base end (figures 1 and 3), which is closer to the rotational joint (12) than the insertion end of the second prong (20) (figures 1 and 3).
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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hawkins (US 3,209,753) in view of Sherman et al. (US 8,740,817), herein referred to as Sherman.
Regarding claim 7, Hawkins’ device discloses all the features/elements as claimed but lacks comprising one or more force indicators configured for measuring the one or more forces applied to the joint.
However, Sherman teaches one or more force indicators (12) (figure 17) configured for (i.e. capable of) measuring the one or more forces applied to the joint (col. 15, ll. 10-11).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hawkins’ device with one or more force indicators as taught by Sherman, since such a modification would allow the surgeon to measure or sense the joint force (col. 15, ll. 10-11).
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hawkins (US 3,209,753) in view of Sarin et al. (US 2004/0097952), herein referred to as Sarin.
Regarding claim 8, Hawkins’ device discloses all the features/elements as claimed but lacks further comprising one or more location tracking devices arranged and configured to record one or more location data points, indicating one or more of a location, an orientation, a motion, or a combination thereof, of the device and to provide at least one of the one or more location data points to a computer.
However, Sarin teaches one or more location tracking devices (elements 56) (¶56, ¶57) arranged and configured to (i.e. capable of) record one or more location data points, indicating one or more of a location, an orientation, a motion, or a combination thereof (¶57), of the device and to provide at least one of the one or more location data points to a computer (32).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hawkins’ device with one or more location tracking devices arranged and configured to record one or more location data points, indicating one or more of a location, an orientation, a motion, or a combination thereof, of the device and to provide at least one of the one or more location data points to a computer as taught by Sarin, since such a modification would allow the surgeon to track the device.
Regarding claim 9, the modified Hawkins’ device has wherein the one or more location tracking devices (elements 56 of Sarin) are optical tracking arrays (¶56, ¶57, figure 3 of Sarin).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hawkins (US 3,209,753) in view of Peterson (US 3,916,907).
Regarding claim 11, Hawkins’ device discloses all the features/elements as claimed but lacks wherein the first prong and the second prong are biased in a closed position.
However, Peterson teaches a first prong (37) and a second prong (38) are biased in a closed position (col. 3, ll. 49-51).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hawkins’ device with wherein the first prong and the second prong are biased in a closed position as taught by Peterson, since such a modification would move the device back into a closed position.
Thus, the modified Hawkins’ device has when a force is applied to the first and second handles (13+14 of Hawkins), the first prong (19 of Hawkins) and the second prong (20 of Hawkins) move relative to each other to an open position to apply one or more forces to the joint (considered functional).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hawkins (US 3,209,753) in view of Sandel (US 4,024,870).
Regarding claim 12, Hawkins’ device discloses all the features/elements as claimed including wherein the first prong (19) is paddle-shaped (figure 3) and the second prong (20) is paddle-shaped (figure 3) but lacks the first prong comprises a cavity formed therein.
However, Sandel teaches a first prong (22) comprises a cavity formed therein (figure 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hawkins’ device having a first prong with the first prong having a cavity formed therein as taught by Sandel, since such a modification would securely trap material (col. 4, ll. 5-9).
Thus, the modified Hawkins’ device has the cavity (32 of Sandel) being formed by the concave surface (figure 2 of Sandel) and the opposing convex surface of the first prong (19 of Hawkins) and shaped to (i.e. capable of) nest with the concave surface of the second prong (20 of Hawkins), and when the first prong (the modified Hawkin’s first prong) and the second prong (20 of Hawkins) are in the closed position (figure 3 of Hawkins), the second prong (20 of Hawkins) is nested within the cavity (32 of Sandel) of the first prong (the modified Hawkin’s first prong).
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 2-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 12,213,658 in view of Hawkins et al. (US 3,209,753).
USP ‘658 discloses all the features/elements as the instant application but lacks a detailed description on a first body portion comprising a first handle and a first prong, the first prong comprising a concave surface and an opposing convex surface, a second body portion comprising a second handle and a second prong, the second prong comprising a concave surface and an opposing convex surface, wherein the concave surface of the first prong and the concave surface of the second prong comprise a co-directional orientation. However, Hawkins teaches a first body portion (10) comprising a first handle (13) and a first prong (19), the first prong (19) comprising a concave surface (figure 3) and an opposing convex surface (figure 3), a second body portion (11) comprising a second handle (14) and a second prong (20), the second prong (20) comprising a concave surface (figure 3) and an opposing convex surface (figure 3), wherein the concave surface of the first prong (19) and the concave surface of the second prong (20) comprise a co-directional orientation (figure 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the USP ‘658 having a first member and a second member with a first body portion comprising a first handle and a first prong, the first prong comprising a concave surface and an opposing convex surface, a second body portion comprising a second handle and a second prong, the second prong comprising a concave surface and an opposing convex surface, wherein the concave surface of the first prong and the concave surface of the second prong comprise a co-directional orientation as taught by Hawkins, since such a modification would provide an alternative tip such that there is a small central area of contact when the members are closed together.
Response to Arguments
Applicant's arguments filed September 24, 2026 have been fully considered but they are not persuasive.
Applicant’s arguments on pages 8-10, under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103, of the Remarks are directed to the amended claim 2 and the reference Peterson. Thus, the Examiner has relied upon the reference Hawkins to teach applicant’s amended features, see Office Action above.
Applicant’s arguments with respect to the reference Claypool has been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SI MING KU whose telephone number is (571)270-5450. The examiner can normally be reached Monday-Friday, 8:00am-5:00pm.
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/SI MING KU/Primary Examiner, Art Unit 3775
