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 set of claims received on 20 August 2025. Claims 1-20 are currently pending.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Drawings
The drawings received on 20 August 2025 are accepted by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “an adjustment member...operable to move the lateral portion with respect to the medial portion” in claim 6, and “an adjustment member...operable to move the first portion with respect to the second portion” in claim 16.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f), it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
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 1-2 and 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 12,408,987 (see Claim Mapping Table below). 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". 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.
Claim Mapping Table
Current Application – 19/305,712
U.S. Patent No. 12,408,987
Claim 1 – a device for registering a bone for a robotic knee arthroplasty with a surgical robot, the device comprising: a plate engageable with the bone, the plate comprising: a lateral portion engageable with the bone and including a lateral bore extending through the lateral portion, the lateral bore configured to receive a fastener therethrough to secure the lateral portion to the bone; a medial portion connected to the lateral portion, the medial portion engageable with the bone and including a medial bore extending through the medial portion, the medial bore configured to receive a fastener therethrough to secure the medial portion to the bone; and a hinge connected to the lateral portion and the medial portion to allow relative movement of the lateral portion and the medial portion before the lateral portion and the medial portion are secured to the bone; and a registration device connected to the plate and configured to interface with the surgical robot for registration of the plate and the bone.
Claim 1 – a device for registering a bone for a robotic knee arthroplasty with a surgical robot, the device comprising: a plate engageable with the bone, the plate comprising: a lateral portion engageable with the bone and including a lateral bore extending through the lateral portion, the lateral bore configured to receive a fastener therethrough to secure the lateral portion to the bone, the lateral portion contoured to engage a lateral portion of a femur; a medial portion connected to the lateral portion, the medial portion engageable with the bone and including a medial bore extending through the medial portion, the medial bore configured to receive a fastener therethrough to secure the lateral portion to the bone, the medial portion contoured to engage a medial portion of a femur; and a hinge connected to the lateral portion and the medial portion to allow relative movement of the lateral portion and the medial portion before the lateral portion and the medial portion are secured to the bone; and a registration device connected to the plate and configured to interface with the surgical robot for registration of the plate and the bone.
Claim 2 – the device of claim 1, wherein the hinge is a pivoting hinge configured to allow the lateral portion to rotate with respect to the medial portion.
Claim 2 – the device of claim 1, wherein the hinge is a pivoting hinge configured to allow the lateral portion to rotate with respect to the medial portion.
Claim 11 – a device for registering a bone for a robotic knee arthroplasty with a surgical robot, the device comprising: a plate engageable with the bone, the plate comprising: a first portion engageable with the bone and including a first bore extending through the first portion, the first bore configured to receive a first fastener therethrough to secure the first portion to the bone; a second portion connected to the first portion, the second portion engageable with the bone and including a second bore extending through the second portion, the second bore configured to receive a second fastener therethrough to secure the second portion to the bone; and a hinge connected to the first portion and the second portion to allow relative movement of the first portion and the second portion before the first portion and the second portion are secured to the bone by the first fastener and the second fastener; and a registration device connected to the plate and configured to interface with the surgical robot for registration of the plate or the bone.
Claim 1 – a device for registering a bone for a robotic knee arthroplasty with a surgical robot, the device comprising: a plate engageable with the bone, the plate comprising: a lateral portion engageable with the bone and including a lateral bore extending through the lateral portion, the lateral bore configured to receive a fastener therethrough to secure the lateral portion to the bone, the lateral portion contoured to engage a lateral portion of a femur; a medial portion connected to the lateral portion, the medial portion engageable with the bone and including a medial bore extending through the medial portion, the medial bore configured to receive a fastener therethrough to secure the lateral portion to the bone, the medial portion contoured to engage a medial portion of a femur; and a hinge connected to the lateral portion and the medial portion to allow relative movement of the lateral portion and the medial portion before the lateral portion and the medial portion are secured to the bone; and a registration device connected to the plate and configured to interface with the surgical robot for registration of the plate and the bone.
Claim 12 –the device of claim 11, wherein the hinge is configured to allow the first portion to rotate with respect to the second portion.
Claim 2 – the device of claim 1, wherein the hinge is a pivoting hinge configured to allow the lateral portion to rotate with respect to the medial portion.
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.
Claims 1-5 and 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hunter et al. (US Patent 8,814,874).
Regarding claims 1-5, Hunter et al. disclose (as to claim 1) a device (10) capable of registering a bone (12) capable of being used for a robotic knee arthroplasty with a surgical robot (see Note below regarding functional language), the device comprising a plate (i.e. plate defined by 10) engageable with the bone, the plate comprising a lateral portion (i.e. portion defined by 30, 36 and 42) engageable with (i.e. via 132) the bone and including a lateral bore (130) extending through the lateral portion, the lateral bore capable of receiving a fastener (132) therethrough to secure the lateral portion to the bone; a medial portion (20) connected to (i.e. via the interaction between 32 and 34) the lateral portion, the medial portion engageable with (i.e. via 68) the bone and including a medial bore (24) extending through the medial portion, the medial bore capable of receiving a fastener (68) therethrough to secure the medial portion to the bone; and a hinge (i.e. hinge defined by 32 and 34) connected to the lateral portion and the medial portion to allow relative movement of the lateral portion and the medial portion before the lateral portion and the medial portion are secured to the bone (see column 3, lines 58-62); and a registration device (500) connected to (i.e. via 42) the plate and capable of interfacing with a surgical robot for registration of the plate and the bone (see Note below regarding functional language), wherein (as to claim 2) the hinge is a pivoting hinge (i.e. pivoting hinge defined by 32 and 34) capable of allowing the lateral portion to rotate with respect to (i.e. about C) the medial portion (see column 3, lines 58-62), wherein (as to claim 3) the lateral portion includes a lateral boss (i.e. boss defined by portion of 30 defining 32, see Figure 2) and the medial portion includes a medial boss (34), wherein (as to claim 4) the lateral boss and the medial boss are connected to or located near the hinge (i.e. due to each being defined on the hinge), wherein (as to claim 5) the lateral boss and the medial boss at least partially form the hinge (i.e. due to each being defined on the hinge) (see Figures 1-2 and 8, and column 2, line 58 – column 7, line 67).
Regarding claims 11-15, Hunter et al. disclose (as to claim 11) a device (10) capable of registering a bone (12) capable of being used for a robotic knee arthroplasty with a surgical robot (see Note below regarding functional language), the device comprising a plate (i.e. plate defined by 10) engageable with the bone, the plate comprising a first portion (i.e. portion defined by 30, 36 and 42) engageable with (i.e. via 132) the bone and including a first bore (130) extending through the first portion, the first bore capable of receiving a first fastener (132) therethrough to secure the first portion to the bone; a second portion (20) connected to (i.e. via the interaction between 32 and 34) the first portion, the second portion engageable with (i.e. via 68) the bone and including a second bore (24) extending through the second portion, the second bore capable of receiving a second fastener (68) therethrough to secure the second portion to the bone; and a hinge (i.e. hinge defined by 32 and 34) connected to the first portion and the second portion to allow relative movement of the first portion and the second portion before the first portion and the second portion are secured to the bone by the first fastener and the second fastener (see column 3, lines 58-62); and a registration device (500) connected to (i.e. via 42) the plate and capable of interfacing with a surgical robot for registration of the plate and the bone (see Note below regarding functional language), wherein (as to claim 12) the hinge is capable of allowing the first portion to rotate with respect to (i.e. about C) the second portion (see column 3, lines 58-62), wherein (as to claim 13) the first portion includes a first boss (i.e. boss defined by portion of 30 defining 32, see Figure 2) and the second portion includes a second boss (34), wherein (as to claim 14) the first boss and the second boss are connected to or located near the hinge (i.e. due to each being defined on the hinge), wherein (as to claim 15) the first boss and the second boss at least partially form the hinge (i.e. due to each being defined on the hinge) (see Figures 1-2 and 8, and column 2, line 58 – column 7, line 67).
Note: Regarding functional language, "[a]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (see MPEP 2114(II)).
Allowable Subject Matter
Claims 6-10 and 16-20 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.
The following is a statement of reasons for the indication of allowable subject matter. Claims 6-10 and 16-20 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 6, in combination with the limitations required by claims 1-3, no prior art reference could be found disclosing or making obvious wherein the device comprises an adjustment member connected to the lateral boss and the medial boss, the adjustment member operable to move the lateral portion with respect to the medial portion.
Regarding at least claim 16, in combination with the limitations required by claims 11-13, no prior art reference could be found disclosing or making obvious wherein the device comprises an adjustment member connected to the first boss and the second boss, the adjustment member operable to move the first portion with respect to the second portion.
Conclusion
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).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LARRY E WAGGLE, JR/Primary Examiner, Art Unit 3775
