DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 the 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/5/25 has been entered.
Accordingly, claims 22, 28-30, 33-34 are amended.
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 34 is 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 34 recites the limitation "of the previous claim” in line 1, should read as “of claim 33".
Claim Objections
Claim 34 is objected to under 37 CFR 1.75(c) as being in improper form because it depends of “the previous claim”. Accordingly, the claim 34 is not been further treated on the merits.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(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.
Claim(s) 22-23, 28, 33-34 is/are rejected under pre-AIA 35 U.S.C. 102b as being anticipated by Reiley et al. (US 20010049531 A1).
Reiley discloses a device fig.36B capable to reinforcing a femoral neckbone, the bone can including a cortical bone region and a cancellous bone region, the device including a cancellous-bone-compressing support structure 410 being formed and adopted to deploy into the cancellous bone region of the femoral neck and expand against the cancellous bone region of the femoral neck so that the cancellous-bone-compressing support structure compresses the cancellous bone region in the direction of the cortical bone region creating a cavity (para. 175) within the cancellous bone region of the femoral neck, the cavity can be filled with a filler material (para. 245); wherein the filler material is (bone cement) (para. 276), or a gelatinous material (viscous) (para. 265), wherein further the support structure 410 section is capable to physically couples with at least a portion of the internal cancellous bone region when the support structure section is released into the portion of the cancellous bone region, the cancellous-bone-compressing support structure is adapted to release growth factors (para. 272) that stimulate an overall positive level of bone formation in vivo, wherein growth factors are TGF Beta family para. 285).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 29-30 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reiley in view of Shaolian et al (US. 20040006341).
Reiley fails to teach wherein the support structure section is formed at least partially from a material that increases its rigidity upon the application of a certain wavelength of light, wherein the support structure section is formed at least partially from a material that increases its rigidity upon the application of a certain temperature, preferably body temperature.
Shaolian teaches the support structure section is formed at least partially from a material that increases its rigidity upon the application of a certain wavelength of light (para. 107), wherein the support structure section is formed at least partially from a material that increases its rigidity upon the application of a certain temperature, preferably body temperature (para. 13-14, 99, 101, 108).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the support structure section of Reiley to be formed at least partially from a material that increases its rigidity upon the application of a certain wavelength of light, wherein the support structure section is formed at least partially from a material that increases its rigidity upon the application of a certain temperature, preferably body temperature in view of Shaolian in order to increase the strength of the support structure to maintain the cavity within the bone so it can be filled with the filling materials.
Claims 24-25 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reiley.
Reiley fails to teach the filler material comprises a gelatinous material or a material selected from one of the group consisting of glue, adhesive, and foam.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the filler material from the above claimed materials, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant’s arguments, with respect to the rejection(s) of claim(s) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Reiley et al. (US 20010049531 A1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMEH RAAFAT BOLES whose telephone number is (571)270-5537. The examiner can normally be reached 9-5 pm.
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/SAMEH R BOLES/Primary Examiner, Art Unit 3775
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