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`UNITED STATES I)I~II‘AR'I‘Mli-.‘J'I‘ 01'-‘ C0.\1i\1I<2RCl-I
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`1 1/35/2003
`03/25/2009
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`APPI.l('l/\TIOn\' :\'0.
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`10/722.101
`7590
`3377:
`PAUL D. BIANCO
`Flcil Gibbons Gulman Bongini & Bizmco PI,
`21355 EAST DIXIE HI(.‘vI~IW/\Y
`sum:-, I15
`MIAMI, FL 33180
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`FIRST :\‘r\Mi-ID INVF.I\'TOR
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`Polk»: M. Bmiulli
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`730»AO3w012C
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`6375
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`EXAMIN'ER
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`PHILUU).-.:\"‘
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`3733
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`03/25/2009
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`I"I'OL~90A (Rev. 04/07)
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`Application No.
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`Applicant(s)
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`Office Action Summary
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`10/722,102
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`Examine,
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`BONUTTI, PETER M.
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`M Unit
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`
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`3733
`Pedro Phllogene
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERlOD FOR REPLY IS SET TO EXPIRE .’_3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAlLlNG DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisionsol 37 CFR 1.136(3).
`In no event. however. may a reply be timely tiled
`alter SIX (6) it-'.0NTl~iSiron1 the mailing date at this communication.
`-
`It NO period for reply is specified above. the maximum statutory period wilt apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`- Failure to reply within the set orextendetl period tor reply will. by statute. cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Oifice later than three months alter the mailing date of this communication. even it timely filed. may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`Status
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`'l)lZI Responsive to communication(s') filed on 02 March 2009.
`2a)E] This action is FINAL,
`' 2b) This action is non-final.
`3)I:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 06. 213.
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`Disposition of Claims
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`4)Xl Claim(s) 1 2 4-8 10-20 22-26 28-37 and 39-42 is/are pending in the application.
`4a) Of the above c|aim(s) ______ is/are withdrawn from consideration.
`5)E C|aim(s) 1 2 4-8 10-12 19 2022-26 28-37 and 40-42 is/are allowed.
`6)lXl Claim(s) 13-18 and 39 is/are rejected.
`7)[] C|aim(s)____ is/are objected to.
`8)[] Claim(s) _____ are subject to restriction and/or election requirement.
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`Application Papers
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`9)D The specification is objected to by the Examiner.
`10)[:J The drawing(s) filed on ______ is/are: a)l:] accepted or b)l:| objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(cl).
`11)I:] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)[:] Acknowledgment is made of a claim for foreign priority under 35 U.S.C.
`a)l:I All b)lj Some * c)[] None of:
`1.[:l Certified copies of the priority documents have been received.
`2.[:l Certified copies of the priority documents have been received in Application No. __
`3.I:] Copies of the certified copies ofthe priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detaiied Office action for a list of the certified copies not received.
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`119(a)-(d) or (f),
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`Attachmsnt(s)
`1) E Notice of References Cited (PTO-892)
`2) El Notice of Drattsperson's Patent Drawing Review (PTO-948)
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`3) E information Disclosure Statement(s) (PTOISB/O8)
`Paper No(s)IMail Date 12/9/08 12/9/08.
`U.S. Patent and Trademark Oflice
`PTOL-326 (Rev. 08-06)
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`4) [:I Interview Summary (PTO-413)
`PEPE? N°(S)/Mall Date:
`v
`5) D N°“Ce °’ '”f°’m3‘ Pater“ ApP“°a"°”
`6) C] Other:
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`Oflice Action Summary
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`Part of Paper No.IMalI Date 20090323
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`Application/Control Number: 10/722,102
`Art Unit: 3733
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`Page 2
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections underthis section made in this Office action:
`A person shall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in public
`use or on sale in this country, more than one year prior to the date of application for patent in the United
`States.
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`Claims 13-18, 39 are rejected under 35 U.S.C. 102(b) as being anticipated by
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`Glock (5,462,549).
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`With respect to claim 13, Glock discloses a total knee replacement cutting guide
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`for forming a cut surface on a bone in preparation to receive a total joint replacement
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`component comprising a disposable cutting guide (10) customized for a single bone,
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`disposable as no longer useful after the bone for which it has been customized has
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`been cut and thereby changed, having a body (12, 44) dimensioned for attachment to a
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`surface of an end portion of the bone free of extramedullary or intramedullary alignment
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`rod; as best seen in FlGS. 2-4; and at least one guide surface (40) dimensioned for
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`engagement with a cutting tool to thereby direct the cutting tool.
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`With respect to claims 14-18, 39, Glock discloses all the limitations, as set forth
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`in column 3, lines 30-67, column 4, lines 1-67, column 5, lines 1-20, and as best seen in
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`FlGs.1-5.
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`Allowable Subject Matter
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`Claims 1-2, 4-8, 10-12, 19-20, 22-26, 28-37, 40-42 are allowed.
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`Response to Amendment
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`Application/Control Number: 10/722,102
`Art Unit: 3733
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`Page 3
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`Applicant's arguments with respect to claims 13-18, 39 have been considered but
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`are moot in view of the new ground(s) of rejection. Furthermore, the passage
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`“disposable as no longer useful after the bone for which it has been customized has
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`been cut and thereby changed" is considered as functional limitations. Furthermore.
`anything could be disposable, if one so desired.
`Conclusion
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`A shortened statutory period for reply to this action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Pedro Phllogene whose telephone number is (571) 272-
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`4716. The examiner can normally be reached on Monday to Friday,6:30 AM to 4:00
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`PM.
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`lf attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Eduardo Robert can be reached on (571) 272 - 4719. The fax phone
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`number for the organization where this application or proceeding is assigned is 571-
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`’ 273-8300.
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`Application/Control Number: 10/722,102
`Art Unit: 3733
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`Page 4
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-directuspto.gov. Should
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`you have questions on access to the Private PAIR system, Contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll—free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, Call 800~786-9199 (IN USA OR CANADA) or 571-2724000.
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`/Pedro Philogenel
`Primary Examiner, Art Unit 3733
`March 23, 2009
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