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 .
Claim Objections
Claim 21 is objected to because of the following informalities: Applicant uses the phrase “the later wall”. This should read “the lateral wall”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 26 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 26 recites the limitations "the distal side" in lines 1-2 and “the side edge” in line 2. There is insufficient antecedent basis for these limitations in the claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 39 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Regarding claim 39, Applicant recites “the window visually indicating how far the tool has been inserted into a femur.” The positively recites the femur as the femur must be present for the indicator to visualize how far the tool has been inserted. The Examiner suggests amending the claim to read “the window for/capable of visually indicating how far the tool has been inserted into a femur.
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 21-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Buck et al. (US 5,056,223). Regarding claim 21, Buck et al. disclose a tool capable of use for removal of an implant, comprising a proximal end (18); a distal end (30); a lateral wall (see figure below) including at least one opening (47) allowing features of the implant to be removed to pass through, and sharpened side edges (44, 46, column 4, lines 11-14) along at least a portion of the lateral wall between the proximal end and the distal end (figure 1). Regarding claim 22, Buck et al. disclose the lateral wall is arcuate (figure 1).
Regarding claim 23, Buck et al. disclose there is only one opening in the lateral wall (figure 1).
Regarding claim 24, Buck et al. disclose the opening is rectangular in shape (figure 1). Regarding claim 25, Buck et al. disclose the opening has a length along a longitudinal axis of the tool, the length of the opening being greater than a width of the opening (figure 1).
Regarding claim 26, Buck et al. disclose a proximal edge of the opening is on the distal side of a proximal end of the side edge (figure 1). Regarding claim 27, Buck et al. disclose the at least one opening has sharpened edges (44, 46, 50). Regarding claim 28, Buck et al. disclose the distal end has a leading edge (42). Regarding claim 29, Buck et al. disclose the leading edge is sharpened (50). Regarding claim 30, Buck et al. disclose wherein the leading edge has two pointed ends (see figure below) and bevels on a proximal side of the pointed ends (see figure below), wherein the bevels are sharpened (figure 1). Regarding claim 31, Buck et al. disclose the leading edge between the two pointed ends is curved (figure 1, circular in shape).
Regarding claim 32, Buck et al. disclose the leading edge between the two pointed ends is straight (straight as in it is flat/planar on its distal face).
Regarding claim 33, Buck et al. disclose a proximal connector (14) at the proximal end.
Regarding claim 34, Buck et al. disclose the proximal connector is configured for connection to a handle (12) parallel to a cutting plane of a leading edge of the distal end (figure 1).
Regarding claim 35, Buck et al. disclose the lateral wall has an inside surface profile matching a profile of a lateral side of a femoral implant lateral side (if one uses the tool with an implant with a circular shape). Regarding claim 36, Buck et al. disclose one or more recesses (47) to accommodate (capable of) an additional cutting element to further facilitate removal of an implant (the device is capable as it is dependent upon both the implant shape/orientation and the shape/orientation of the additional cutting element). Regarding claim 37, Buck et al. disclose the side edges are tapered in height from the proximal end towards the distal end of the tool (figure 1).
Regarding claim 38, Buck et al. disclose at least one indicator (gap/opening between the edges 44, 46) positioned between the two side edges, the at least one indicator visually indicating a width between the side edges (figure 1). Regarding claim 39, Buck et al. disclose a window (47 is a window) formed in the lateral wall, the window visually indicating how far the tool has been inserted into a femur (if one so chooses to use it in this manner).
Regarding claim 40, the device of Buck et al. is capable of being used with the functionally recited a femoral implant.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW JAMES LAWSON whose telephone number is (571)270-7375. The examiner can normally be reached Mon - Fri 6:30-3:00.
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/MATTHEW J LAWSON/Primary Examiner, Art Unit 3619
