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 .
Election/Restrictions
Applicant’s election without traverse of the election/restriction in the reply filed on August 6, 2026 is acknowledged.
Applicant has elected Group I: Claims 2-12, drawn to the device and Species III: Figures 6A-6D, wherein applicant states claims 2-12 are drawn to the elected species.
Claims 13-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 August 6, 2026.
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, 10, and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peterson (US 3,916,907).
Regarding claim 2, Peterson discloses a device (30) (figure 3) for measuring one or more forces applied to a joint during a surgical procedure (considered functional), the device (30) comprising a first body portion (32) comprising a first handle (45) and a first prong (38), a second body portion (31) comprising a second handle (46) and a second prong (37), the first body portion (32) being coupled to the second body portion (31) so that movement of the first and second handles (45+46) moves the first and second prongs (37+38) (col. 3, ll. 46-51), wherein the first prong (38) has a smooth, continuously curved surface (figure 3) extending an entire length thereof (figure 3), and wherein the second prong (37) has a smooth, continuously curved surface (figure 3) extending an entire length thereof (figure 3).
Regarding claim 3, Peterson discloses wherein the smooth, continuously curved surface of the first prong (38) (figure 3) and the smooth, continuously curved surface of the second prong (37) (figure 3) 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, Peterson 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, Peterson discloses wherein, when the first prong (38) and the second prong (37) are in the closed position (col. 3, ll. 49-51), no forces are applied to the joint by the device (considered functional).
Regarding claim 6, Peterson discloses wherein the first and second body portions (31+32) are coupled to each other via a rotational joint (35) (figure 3) so that the first body portion (32) and the second body portion (31) are rotatably attached to each other (col. 3, ll. 32-45) at the rotational joint (35) and the first prong (38) and the second prong (37) are configured to (i.e. capable of) pivot around the rotational joint (35) when a rotation force is applied to the first and second handles (45+46).
Regarding claim 10, Peterson discloses wherein the first prong (38) comprises an insertion end (figure 3), which is configured for (i.e. capable of) insertion within the joint (considered functional), and a base end (figure 3), which is closer to the rotational joint (35) than the insertion end of the first prong (38) (figure 3), and the second prong (37) comprises an insertion end (figure 3), which is configured for (i.e. capable of) insertion within the joint (considered functional), and a base end (figure 3), which is closer to the rotational joint (35) than the insertion end of the second prong (37) (figure 3).
Regarding claim 11, Peterson discloses wherein the first prong (38) and the second prong (37) are biased in a closed position (col. 3, ll. 49-51), and when a force is applied to the first and second handles (45+46), the first prong (38) and the second prong (37) move relative to each other to an open position (figure 3) to apply one or more forces to the joint (considered functional).
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 Peterson (US 3,916,907) in view of Sherman et al. (US 8,740,817), herein referred to as Sherman.
Regarding claim 7, Peterson’s 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 a 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 Peterson’s 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 Peterson (US 3,916,907) in view of Sarin et al. (US 2004/0097952), herein referred to as Sarin.
Regarding claim 8, Peterson’s 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 Peterson’s 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 Peterson’s 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) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peterson (US 3,916,907) in view of Claypool et al. (US 9,149,206), herein referred to as Claypool.
Regarding claim 12, Peterson’s device discloses all the features/elements as claimed including wherein the first prong is paddle-shaped (figure 3) and the second prong is paddle-shaped (figure 3) but lacks the first prong comprises a cavity formed therein, the second prong is positioned within the cavity of the first prong.
However, Claypool teaches a first prong (350) comprises a cavity formed therein (figure 4B) and a second prong (344) is positioned within the cavity (figure 6A).
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 Peterson’s device with the first prong comprises a cavity formed therein, the second prong is positioned within the cavity of the first prong as taught by Claypool, since such a modification would provide for an alternative tip.
Thus, the modified Peterson’s device has when the first prong and the second prong are in the closed position (col. 3, ll. 49-51 of Peterson), the second prong (the modified Peterson’s second prong) is positioned within the cavity (figure 6A of Claypool) of the first prong (the modified Peterson’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. 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 much 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”.
Conclusion
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/SI MING KU/Primary Examiner, Art Unit 3775
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