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 August 31, 2026. As directed by the amendment: Claims 1-5, 8, 11, 12, 14, 15, and 18 have been amended. Claims 7 and 17 have been cancelled. Claims 1-6, 8-16, and 18-20 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 § 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) 1-3, 5, 6, 8-13, 15, 16, and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bechtold et al. (US 2015/0342588), herein referred to as Bechtold, and in view of Bogojevic et al. (US 2008/0183387), herein referred to as Bogojevic.
Regarding claim 1, Bechtold discloses a device (10) for use during a surgical procedure (¶2), the device (10) comprising a cantilevered body (8+12+16) (¶37) including a handle portion (14) and a tip portion (20) having at least one prong (figures 1, 2B), wherein the tip portion (20) is configured to (i.e. capable of) apply a force to a joint (figures 4-6, 7A-7C), a first optical tracker (¶40) operatively connected to the cantilevered body (8+12+16) (¶37) at a proximal end thereof (figures 1, 2B).
Yet, Bechtold lacks wherein the optical tracker is a first optical tracking array operatively connected to the cantilevered body at a proximal end thereof and a second optical tracking array connected to the cantilevered body adjacent the tip portion.
However, Bogojevic teaches a device (figure 3) having a first optical tracking array (3+4+5) (¶39) operatively connected to a body at a proximal end thereof (figure 3) and a second optical tracking array (13a+13b+13c) (¶39) connected to the body (figure 3) adjacent a tip portion (figure 3).
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 Bechtold’s device having an optical tracker with a first optical tracking array operatively connected to the body at a proximal end thereof and a second optical tracking array connected to the body adjacent the tip portion as taught by Bogojevic, since such a modification would provide an alternative data measurement.
Thus, the modified Bechtold’s device has wherein the first and second optical tracking arrays (3, 4, 5, 13a, 13b, 13c of Bogojevic) define a measurable vector having a vector angle (¶39 of Bogojevic), wherein, when the tip portion (20 of Bechtold) applies a force to a joint (figures 4-6, 7A-7C of Bechtold), the cantilevered body (8+12+16 of Bechtold) deflects (¶37 of Bechtold) along a length of the cantilevered body (figures 4-6, 7A-7C of Bechtold) and the measurable vector is altered (figures 4-6, 7A-7C of Bechtold), and wherein a magnitude and a direction of the force applied to the joint (figures 4-6, 7A-7C of Bechtold) can be determined based on an amount of deflection (figures 4-6, 7A-7C of Bechtold) of the cantilevered body (8+12+16 of Bechtold) (¶37 of Bechtold), and wherein the vector angle (¶39 of Bogojevic) is proportional to the force applied to the device (the modified Bechtold’s device).
Regarding claim 2, the modified Bechtold’s device has wherein a position of the first optical tracking array (3+4+5 of Bogojevic) changes with respect to a position of the second optical tracking array (13a+13b+13c of Bogojevic) when the cantilevered body (8+12+16 of Bechtold) (¶37 of Bechtold) deflects based on the force applied (figures 4-6, 7A-7C of Bechtold).
Regarding claim 3, the modified Bechtold’s device has wherein the force (figures 4-6, 7A-7C of Bechtold) can be determined based on a relative position between the first and second optical tracking arrays (3, 4, 5, 13a, 13b, 13c of Bogojevic).
Regarding claim 5, the modified Bechtold’s device has wherein the at least one prong (20 of Bechtold) is sized and shaped to (i.e. capable of) be received between a femoral condyle and a tibial condyle of the joint (figures 4-6, 7A-7C of Bechtold), and wherein the at least one prong (20 of Bechtold) is configured to (i.e. capable of) deflect with respect to the cantilevered body (8+12+16 of Bechtold) (¶37 of Bechtold) by concentrating the force applied to the device at a predetermined location of the device (figures 4-6, 7A-7C of Bechtold).
Regarding claim 6, the modified Bechtold’s device has wherein the second optical tracking array (13a+13b+13c of Bogojevic) remains exposed outside of the joint (figures 4-6, 7A-7C of Bechtold) while the at least one prong (20 of Bechtold) is between the femoral condyle and the tibial condyle (figures 4-6, 7A-7C of Bechtold).
Regarding claim 8, the modified Bechtold’s device has wherein the cantilevered body (8+12+16 of Bechtold) (¶37 of Bechtold) is linear (figures 1, 2B of Bechtold).
Regarding claim 9, the modified Bechtold’s device has wherein the first optical tracking array (3+4+5 of Bogojevic) comprises at least one of an active tracker (¶39 of Bogojevic), a passive tracker (¶39 of Bogojevic), an infrared camera system, a stereo camera system, an active LED tracker, a retroreflective marker tracker, and a video tracker, and the second optical tracking array (13a+13b+13c of Bogojevic) comprises at least one of an active tracker (¶39 of Bogojevic), a passive tracker (¶39 of Bogojevic), an infrared camera system, a stereo camera system, an active LED tracker, a retroreflective marker tracker, and a video tracker.
Regarding claim 10, the modified Bechtold’s device has wherein the tip portion (20 of Bechtold) comprises at least one of a z-type retractor and a Hohmann-type retractor (inasmuch as applicant’s) (figures 1, 2B of Bechtold).
Regarding claim 11, Bechtold discloses a system (figure 9) for measuring one or more forces applied to a joint during a surgical procedure (¶2), the system (figure 9) comprising a device (10) comprising a cantilevered body (8+12+16) (¶37) including a handle portion (14) and a tip portion (20) having at least one prong (figures 1, 2B), wherein the tip portion (20) is configured to (i.e. capable of) apply a force to a joint (figures 4-6, 7A-7C), a first optical tracker (¶40) operatively connected to the cantilevered body (8+12+16) (¶37) at a proximal end thereof (figures 1, 2B), and a robotic surgical system (900) including a tracking system (940) (figure 9).
Yet, Bechtold lacks wherein the optical tracker is a first optical tracking array operatively connected to the cantilevered body at a proximal end thereof and a second optical tracking array connected to the cantilevered body adjacent the tip portion, a tracking system configured to determine a relative position between the first and second optical tracking arrays.
However, Bogojevic teaches a device (figure 3) having a first optical tracking array (3+4+5) (¶39) operatively connected to a body at a proximal end thereof (figure 3) and a second optical tracking array (13a+13b+13c) (¶39) connected to the body (figure 3) adjacent a tip portion (figure 3), a tracking system (100+200) (figure 3) configured to (i.e. capable of) determine a relative position between the first and second optical tracking arrays (3, 4, 5, 13a, 13b, 13c).
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 Bechtold’s device having an optical tracker with a first optical tracking array operatively connected to the body at a proximal end thereof and a second optical tracking array connected to the body adjacent the tip portion, a tracking system configured to determine a relative position between the first and second optical tracking arrays as taught by Bogojevic, since such a modification would provide an alternative data measurement.
Thus, the modified Bechtold’s device has wherein the first and second optical tracking arrays (3, 4, 5, 13a, 13b, 13c of Bogojevic) define a measurable vector having a vector angle (¶39 of Bogojevic), wherein, when the tip portion (20 of Bechtold) applies a force to a joint (figures 4-6, 7A-7C of Bechtold), the cantilevered body (8+12+16) deflects (¶37 of Bechtold) along a length of the cantilevered body (figures 4-6, 7A-7C of Bechtold) and the measurable vector is altered (figures 4-6, 7A-7C of Bechtold), the vector angle of the measurable vector (¶39 of Bogojevic) being proportional to the applied force (figures 4-6, 7A-7C of Bechtold), and the robotic surgical system (900 of Bechtold) including a tracking system (100+200 of Bogojevic) configured to (i.e. capable of) determine a relative position between the first and second optical tracking arrays (3, 4, 5, 13a, 13b, 13c of Bogojevic) and, from the relative position, determine the force applied to the device (the modified Bechtold’s device).
Regarding claim 12, the modified Bechtold’s system has wherein a position of the first optical tracking array (3+4+5 of Bogojevic) changes with respect to a position of the second optical tracking array (13a+13b+13c of Bogojevic) when the cantilevered body (8+12+16 of Bechtold) (¶37 of Bechtold) deflects based on the force applied (figures 4-6, 7A-7C of Bechtold).
Regarding claim 13, the modified Bechtold’s system has wherein the force (figures 4-6, 7A-7C of Bechtold) can be determined based on a relative position between the first and second optical tracking arrays (3, 4, 5, 13a, 13b, 13c of Bogojevic).
Regarding claim 15, the modified Bechtold’s system has wherein the at least one prong (20 of Bechtold) is sized and shaped to (i.e. capable of) be received between a femoral condyle and a tibial condyle of the joint (figures 4-6, 7A-7C of Bechtold), and wherein the at least one prong (20 of Bechtold) is configured to (i.e. capable of) deflect with respect to the cantilevered body (8+12+16 of Bechtold) (¶37 of Bechtold) by concentrating the force applied to the device at a predetermined location of the device (figures 4-6, 7A-7C of Bechtold).
Regarding claim 16, the modified Bechtold’s system has wherein the second optical tracking array (13a+13b+13c of Bogojevic) remains exposed outside of the joint (figures 4-6, 7A-7C of Bechtold) while the at least one prong (20 of Bechtold) is between the femoral condyle and the tibial condyle (figures 4-6, 7A-7C of Bechtold).
Regarding claim 18, the modified Bechtold’s system has wherein the cantilevered body (8+12+16 of Bechtold) (¶37 of Bechtold) is linear (figures 1, 2B of Bechtold).
Regarding claim 19, the modified Bechtold’s system has wherein the robotic surgical system (900 of Bechtold) is configured to (i.e. capable of) determine a magnitude and a direction of the force applied to the joint based on an amount of deflection (figures 4-6, 7A-7C of Bechtold).
Regarding claim 20, the modified Bechtold’s system has wherein the amount of deflection is recorded based on at least one of a user input, a user gesture, a user voice, temporal components, a determined force being applied (figures 4-6, 7A-7C of Bechtold), a rotational force being applied, and a sensor input.
Claim(s) 4 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bechtold and Bogojevic as applied to claims above, and further in view of Drapeau et al. (US 2013/0274763), herein referred to as Drapeau.
Regarding claims 4, 14, the modified Bechtold’s device/system discloses all the features/elements as claimed but lacks a detailed description on wherein the cantilevered body further comprises a flexible portion having a first modulus of elasticity and a moment of inertia, and the tip portion has a second modulus of elasticity less than the first modulus of elasticity.
However, Drapeau teaches a body (901, 911) comprises a flexible portion (901) having a first modulus of elasticity (¶49) and a moment of inertia (¶49), and a tip portion (903, 905) has a second modulus of elasticity less than the first modulus of elasticity (¶49).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the modified Bechtold’s device/system with wherein the body further comprises a flexible portion having a first modulus of elasticity and a moment of inertia, and the tip portion has a second modulus of elasticity less than the first modulus of elasticity as taught by Drapeau, since such materials are old and well known.
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 1-6, 8-16, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,569,237. 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”.
Response to Arguments
Applicant's arguments filed August 31, 2026 have been fully considered but they are not persuasive.
Applicant’s arguments on pages 7-10, under 35 U.S.C. 103, of the Remarks are directed to the amended claims and the combination of references (Bechtold in view of Bogojevic). Applicant argues that “Applicants' claimed device does not employ a fulcrum” in which the Examiner agrees. Applicant further argues that the “cited documents fail to teach or suggest "a cantilevered body including a handle portion and a tip portion having at least one prong, wherein the tip portion is configured to apply a force to a joint ... wherein, when the tip portion applies a force to a joint, the cantilevered body deflects along a length of the cantilevered body". However, as generally claimed, the reference Bechtold discloses a cantilevered body (8+12+16) (¶37) including a handle portion (14) and a tip portion (20) having at least one prong (figures 1, 2B), wherein the tip portion (20) is configured to (i.e. capable of) apply a force to a joint (figures 4-6, 7A-7C), wherein when the tip portion (20) applies a force to a joint (figures 4-6, 7A-7C), the cantilevered body (8+12+16) deflects (¶37) along a length of the cantilevered body (figures 4-6, 7A-7C).
In response to applicant's arguments (e.g. “Neither Bechtold nor Bogojevic teaches or suggests placing two tracking arrays on a deformable body, i.e., a cantilevered body, for measuring that body's deflection to determine an applied force.) against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. The reference Bogojevic was used specifically to teach a device (figure 3) having a first optical tracking array (3+4+5) (¶39) operatively connected to a body at a proximal end thereof (figure 3) and a second optical tracking array (13a+13b+13c) (¶39) connected to the body (figure 3) adjacent a tip portion (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 Bechtold’s device having an optical tracker with a first optical tracking array operatively connected to the body at a proximal end thereof and a second optical tracking array connected to the body adjacent the tip portion as taught by Bogojevic, since such a modification would provide an alternative data measurement.
Applicant argues in part B of the Remarks that “The cited documents fail to teach or suggest "a measurable vector having a vector angle ... wherein the vector angle is proportional to the force applied to the device". The Examiner notes that it is the modified Bechtold’s device that has wherein the first and second optical tracking arrays (3, 4, 5, 13a, 13b, 13c of Bogojevic) define a measurable vector having a vector angle (¶39 of Bogojevic), wherein, when the tip portion (20 of Bechtold) applies a force to a joint (figures 4-6, 7A-7C of Bechtold), the cantilevered body (8+12+16 of Bechtold) deflects (¶37 of Bechtold) along a length of the cantilevered body (figures 4-6, 7A-7C of Bechtold) and the measurable vector is altered (figures 4-6, 7A-7C of Bechtold), and wherein a magnitude and a direction of the force applied to the joint (figures 4-6, 7A-7C of Bechtold) can be determined based on an amount of deflection (figures 4-6, 7A-7C of Bechtold) of the cantilevered body (8+12+16 of Bechtold) (¶37 of Bechtold), and wherein the vector angle (¶39 of Bogojevic) is proportional to the force applied to the device (the modified Bechtold’s device). Lastly, applicant’s claims are directed towards the device rather than the method.
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.
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/SI MING KU/Primary Examiner, Art Unit 3775
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