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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/18/26 has been entered.
Response to Amendment
The Amendment filed 09/18/26 has been entered. Claims 8, 13, and 18 have been amended, and claims 18-22 remain withdrawn. Claims 8-9, 11-14, and 16-17 are addressed in the following office action.
Claim Objections
Claims 8 and 13 are objected to because of the following informalities:
Claim 8, lines 8-9: “the distal end of the taper portion attached to the proximal end of the cutting arm at an angle between 90 and 180 degrees” should read “the distal end of the taper portion attached to the proximal end of the cutting arm at an angle between 90 and 180 degrees with respect to the cutting arm”.
Claims 13, line 4: “a distal cutting end attached to the proximal grip at an angle between 90 and 180 degrees” should read “a distal cutting end attached to the proximal grip at an angle between 90 and 180 degrees with respect to the proximal grip”
Claim 13, line 12: “cutting arm” should read “distal cutting end”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 8-9, 11-14, and 16-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Concerning claim 8, applicant’s original disclosure fails to detail the limitation “the distal end of the taper portion attached to the proximal end of the cutting arm at an angle between 90 and 180 degrees”. Applicant’s original disclosure only provides support in figures 10-12 for the distal end of the taper portion attached to the proximal end of the cutting arm at an angle with respect to the cutting arm. Hence, the limitation is considered new matter. Claims 9 and 11-12 are rejected for the same reasons as claim 8 by virtue of dependency on claim 8. For examination purposes, the limitation will be interpreted as “the distal end of the taper portion attached to the proximal end of the cutting arm at an angle with respect to the cutting arm”.
Concerning claim 12, applicant’s original disclosure fails to detail “the angle is about 120 degrees”. Applicant’s original disclosure only provides support in figures 10-12 for the distal end of the taper portion attached to the proximal end of the cutting arm at an angle with respect to the cutting arm. Hence, the limitation is considered new matter. For examination purposes, the limitation will be interpreted as “the distal end of the taper portion attached to the proximal end of the cutting arm at an angle with respect to the cutting arm”.
Concerning claim 13, applicant’s original disclosure fails to detail “a distal cutting end attached to the proximal grip at an angle between 90 and 180 degrees”. Applicant’s original disclosure only provides support in figures 10-12 for a distal cutting end attached to the proximal grip at an angle with respect to the proximal grip. Hence, the limitation is considered new matter. Claims 14, 16, & 17 are rejected for the same reasons as claim 13 by virtue of dependency on claim 13. For examination purposes, the limitation will be interpreted as “a distal cutting end attached to the proximal grip at an angle with respect to the proximal grip”.
Concerning claim 13, applicant’s original disclosure fails to detail “the proximal grip and distal cutting end are flat, such a width of the surgical blade is uniform across the proximal grip and the distal cutting end”. Applicant’s original disclosure only provides support in figures 10 and 11 that the proximal grip and distal cutting end are flat, such that a width of the surgical blade is substantially uniform across the proximal grip and the distal cutting end, because there is no explicit disclosure of the uniformity and the blade appears to be beveled at the distal end meaning a different width at the distal cutting end. Hence, the limitation is considered new matter. Claims 14, 16, & 17 are rejected for the same reasons as claim 13 by virtue of dependency on claim 13. For examination purposes, the limitation will be interpreted as “the proximal grip and distal cutting end are flat, such that a width of the surgical blade is substantially uniform across the proximal grip and the distal cutting end”.
Concerning claims 17, applicant’s original disclosure fails to detail “the angle is about 120 degrees”. Applicant’s original disclosure only provides support in figures 10-12 for a distal cutting end attached to the proximal grip at an angle with respect to the proximal grip. Hence, the limitation is considered new matter. For examination purposes, the limitation will be interpreted as “a distal cutting end attached to the proximal grip at an angle with respect to the proximal grip”.
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 8-9, 11-14, and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Briganti et al. (US 2012/0016397), cited in previous office action.
Regarding claim 8, an invention relating to an anatomic cutting device, Briganti discloses (Figs. 9B-C) a surgical cutting blade (770) comprising: a cutting arm (771) with a distal cutting end, a proximal end (see annotated figure below), and a raised stop (713) at the proximal end (see annotated figure below); and a handle arm (772) comprising: a rectangular body portion with a distal end (see annotated figure below); a triangular portion extending from the distal end of the rectangular body portion and narrowing on one side to a distal end of the taper portion (see annotated figure below); and the distal end of the taper portion attached to the proximal end of the cutting arm at an angle between 90 and 180 degrees [Note, the limitation is interpreted as the distal end of the taper portion attached to the proximal end of the cutting arm at an angle with respect to the cutting arm (see annotated figure below), because of the 35 USC 112(a) rejection detailed above], wherein: the cutting arm is more narrow than the handle arm [i.e. the blade is more narrow at the blade], the cutting arm and handle arm are flat (Fig. 9C), the handle arm is configured to be held by a hand [i.e. surgeon would maintain a neutral or upward force by hand/ would insert the knife by hand], and the cutting arm is configured for insertion along a first channel in a guide member to cut only tissue in a gap of the guide member, and not tissue outside the gap of the guide member (Par. 0047), and the raised stop is configured to limit the distance the cutting arm can be inserted along the first channel (Par. 0048).
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Regarding claim 9, Briganti discloses the cutting blade of claim 8. Briganti further discloses wherein the handle arm further comprises a rounded proximal end at a proximal end of the rectangular body portion (see annotated figure below).
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Regarding claim 11, Briganti discloses the cutting blade of claim 8. Briganti further discloses wherein the cutting blade comprises a retrograde knife (Abstract).
Regarding claim 12, Briganti discloses the cutting blade of claim 8. Briganti further discloses wherein the angle is about 120 degrees [Note, the limitation is interpreted as the distal end of the taper portion attached to the proximal end of the cutting arm at an angle with respect to the cutting arm (see annotated figure below), because of the 35 USC 112(a) rejection detailed above].
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Regarding claim 13, Briganti discloses (Figs. 9B-C) a surgical blade (770) comprising: a proximal grip (772) comprising a substantially straight proximal back side and a distal front side (see annotated figure below), the proximal grip configured to be held by a hand [i.e. surgeon would maintain a neutral or upward force by hand/ would insert the knife by hand] (Par. 0047); and a distal cutting end (771) attached to the proximal grip at an angle between 90 and 180 degrees [Note, the limitation is interpreted as a distal cutting end attached to the proximal grip at an angle with respect to the proximal grip (see annotated figure below), because of the 35 USC 112(a) rejection detailed above], wherein: the proximal grip and distal cutting end are flat, such that a width of the surgical blade is uniform across the proximal grip and the distal cutting end [Note, the limitation is interpreted as the proximal grip and distal cutting end are flat, such that a width of the surgical blade is substantially uniform across the proximal grip and the distal cutting end (Fig. 9C), because of the 35 USC 112(a) rejection detailed above], and the width of the distal cutting end is configured for insertion along a first channel in a guide member to cut only tissue in a gap of the guide member, and not tissue outside the gap of the guide member (Abstract & Par. 0046-0047), the distal cutting end includes a raised stop (713) configured to limit the distance the cutting arm can be inserted along the first channel (Par. 0048), and a height of the proximal grip between the straight proximal back side and the distal front side gradually decreases from a maximum height in a proximal portion to a minimum height at the angle where the distal cutting end is attached (see annotated figure below).
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Regarding claim 14, Briganti discloses the surgical blade of claim 13. Briganti further discloses wherein the proximal grip further comprises a rounded proximal end (see annotated figure below).
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Regarding claim 16, Briganti discloses the surgical blade of claim 13. Briganti discloses further wherein the surgical blade comprises a retrograde knife (Abstract).
Regarding claim 17, Briganti discloses the surgical blade of claim 13. Briganti further discloses wherein the angle is about 120 degrees [Note, the limitation is interpreted as a distal cutting end attached to the proximal grip at an angle with respect to the proximal grip (see annotated figure below), because of the 35 USC 112(a) rejection detailed above].
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Response to Arguments
Applicant's arguments filed 09/18/26 have been fully considered but they are not persuasive.
Concerning claims 8 and 13, applicant argues previously cited prior art reference Briganti fails to disclose "a raised stop at the proximal end" wherein "the raised stop is configured to limit the distance the cutting arm can be inserted along the first channel", and a distal cutting end that "includes a raised stop configured to limit the distance the cutting arm can be inserted along the first channel". Examiner respectfully disagrees. Briganti discloses (Fig. 9B) a raised stop (713) at the proximal end (see annotated figure below); and the raised stop is configured to limit the distance the cutting arm can be inserted along the first channel (Par. 0048). Also, Briganti discloses (Fig. 9B) a distal cutting end (771) includes a raised stop (713) configured to limit the distance the cutting arm can be inserted along the first channel (Par. 0048).
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Concerning claims 12 and 17, applicant argues applicant’s original disclosure provides support for the angle being about 120 degrees, because figures 10-12 show the angle of the blade and it is reasonably understood to be “about 120 degrees”. Examiner respectfully disagrees. Concerning claim 12, applicant’s original disclosure fails to detail “the angle is about 120 degrees”. Applicant’s original disclosure only provides support in figures 10-12 for the distal end of the taper portion attached to the proximal end of the cutting arm at an angle with respect to the cutting arm, but presents no numerical value for that angle. Hence, the limitation is considered new matter. Concerning claims 17, applicant’s original disclosure fails to detail “the angle is about 120 degrees”. Applicant’s original disclosure only provides support in figures 10-12 for a distal cutting end attached to the proximal grip at an angle with respect to the proximal grip, but presents no numerical value for that angle. Hence, the limitation is considered new matter.
Concerning claim 13, applicant argues figures 8 & 10-12 and paragraphs [0045] & [0057]-[0059] of applicant’s original disclosure provide support that the knife is flat and has a uniform width to allow it to fit within the gap of the guide. Examiner respectfully disagrees. Firstly, applicant does not expressly claim or detail in the original disclosure that the knife is flat and has a uniform width to allow it to fit within the gap of the guide. Specifically, applicant claims “the proximal grip and distal cutting end are flat, such that a width of the surgical blade is uniform across the proximal grip and the distal cutting end”. However, applicant’s original disclosure only provides support in figures 10 and 11 that the proximal grip and distal cutting end are flat, such that a width of the surgical blade is substantially uniform across the proximal grip and the distal cutting end, because there is no explicit disclosure of the uniformity and the blade appears to be beveled at the distal end meaning a different width at the distal cutting end. Hence, the limitation is considered new matter. Claims 14, 16, & 17 are rejected for the same reasons as claim 13 by virtue of dependency on claim 13.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Chima Igboko whose telephone number is (571)272-8422. The examiner can normally be reached on Monday-Friday 9:00am-6:00pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Jackie Ho, at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHIMA U IGBOKO/ Examiner, Art Unit 3771
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