Detailed Action
This is the final office action for US application number 17/438,387. Claims are evaluated as filed on November 24, 2025.
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 .
Response to Arguments
Applicant's arguments filed November 24, 2025 have been fully considered but they are not persuasive. The rejections in this office action have been amended to address the amended claims. Examiner asserts that Macey and Chang teach all the newly-amended limitations and are capable of performing the functions as claimed. Examiner directs Applicant to the rejection below for a more in-depth description of the limitations.
With regards to Applicant’s argument that Chang has no disclosure or teaching regarding the positioning of a fixation plate on a bone because it is a surgical retractor directed to opening arms 18 and bone engaging portions 82 to push soft tissue away, using the bone as an anchor point and has nothing to do with a bone plate (Remarks p. 6-7), Examiner notes that it has not been asserted that the device of Chang engages a bone plate as appears to be the intent of Applicant’s arguments. Instead, as detailed in the rejection below and that of pages 5-6 of the non-final office action dated May 22, 2025, it has been noted that Chang is capable of assisting in open fracture reduction surgery that involves clamping a fixation plate as such is shown in Figs. 1 and 2 to have a structure capable of use in such a surgery, paragraph 11 specifically discloses that such is a surgical retractor for use in long-bone surgery, and paragraph 41 specifically discloses use retracting tissues surrounding the long bone and providing improved visibility of the surgical site without the need for bone-piercing end points. Thus, such is clearly capable of use to help with open fracture reduction surgery that involved a plate with holes as claimed.
With regards to Applicant’s argument that Examiner has cited Chang for the releasable mechanism, releasable portion, and rotatable frame elements of the claimed invention; however, combining the releasable dissection components of the arms 18 and bone engaging portions 82 with Macey’s clamping apparatus would make a cumbersome, unwieldy surgical device that would be impractical for use in surgery (Remarks p. 7), Examiner notes that it has not been proposed to ‘combining the releasable dissection components of the arms 18 and bone engaging portions 82’ of Chang with the device of Macey as appears to be Applicant’s argument. Instead, as detailed in the rejection below and that of page 6 of the non-final office action dated May 22, 2025, one would have been motivated to modify the attachment of the frame to the second tong as disclosed by Macey to be rotatable and releasable as taught by Chang to predictably provide the self-aligning ability and ease of removal for cleaning and sanitizing (Chang ¶s 41 and 39). That is, one would have been motivated to change the rigid attachment/coupler between components to be rotatable and releasable attachment/coupler between components to achieve the benefits taught by Chang.
With regards to Applicant’s argument that Applicant disagrees with the assertion that Chang teaches a similar orthopedics device to Macey and the references are not properly combined to form the basis of an obviousness rejection (Remarks p. 7), Examiner notes that MPEP 2141.01(a) provides that “A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art.” As detailed in the rejection below and that of pages 5-6 of the non-final office action dated May 22, 2025, Chang is similar in that it is capable of use in the surgery that the claimed invention is claimed to be used in and comprises a similar structure. Examiner directs Applicant to the rejection below for a more in-depth description of the limitations. Thus, such constitutes a similar device that is appropriately analogous art.
With regards to Applicant’s argument that Applicant does not believe that a hollow screw, i.e. second fastening mechanism 26 with aperture 28 of Macey can be reasonably interpreted as teaching a frame as in the claimed invention (Remarks p. 8), Examiner notes that the only limitation on the frame of the claimed invention are that the frame surrounds an opening that provides access to functionally recited features from the preamble that the clamp is capable of use in surgery with, i.e. an area of a plate and holes., extends longitudinally along bone, and able to position the plate between the frame and the bone. Thus, a hollow screw reasonably reads on a BRI of the claim language where an alternate definition of frame does not appear to be provided and the ordinary definition includes: “something composed of parts fitted together and united”, “the underlying constructional system or structure that gives shape or strength”, “an open case or structure made for admitting, enclosing, or supporting something”, “an enclosing border” (https://www.merriam-webster.com/dictionary/frame). That said, it has not been asserted that 26 alone reads on the frame. Instead, as detailed in the rejection below and that of page 5 of the non-final office action dated May 22, 2025, the frame has been interpreted as 26, 18, and the portion of 14 that forms 24. It appears that Applicant intends for the frame to be interpreted more narrowly than a BRI of the current claim language; thus, Examiner suggests amending to clarify the intended scope of the claimed frame structure.
With regards to Applicant’s argument that cylindrical hollow screw 26, 28, and cylindrical rubber means 18 cannot be reasonably interpreted as the claimed frame that extends longitudinally along bone as they form a drill guide and Macey only briefly mentions different shapes for clamping jaw 14 and not a frame (Remarks p. 8), Examiner notes that a cylinder is a three-dimensional object and thus extends longitudinally along a bone when such is positioned there along as shown in Macey Fig. 2. As detailed above, it appears that Applicant is applying a narrower interpretation of the claimed frame than is justified by the current claim limitations; however, what that interpretation encompasses is unclear. Thus, Examiner suggests amending to clarify the intended scope of the claimed frame structure. Further, Macy not only discloses that 14 can be rectangular in col. 4 lines 10-20, but also discloses that shape is determined by 20, 22, and 18. Thus, for a disclosed rectangular 14, the clamp is capable of use with a rectangular fixation plate 20 and rectangular frame portion 18.
With regards to Applicant’s argument that Macey does not teach the release mechanism or releasable portion nor does Chang which has no disclosure of a frame as recited so that what Examiner has equated to the release mechanism and release portion, i.e. sleeve 54, pin 52, joint 70, and plates 72 serve a completely different purpose than those elements in the claimed invention and it combining such would result in an impractical tool for use in surgery (Remarks p. 8), Examiner notes that it the release mechanism has been interpreted as 54, the releasable portion has been interpreted as 52, 70, and 78, and these serve a purpose of providing attachment between the tong and the portion, enabling self-alignment on bone (Chang ¶41), and easy removal for cleaning/sanitizing (Chang ¶11). It is unclear how one can reasonably assert that the claimed release mechanism or releasable portion serves a different purpose. Thus, Examiner suggests amending to claim the unidentified different purpose that such are argued to provide.
With regards to Applicant’s argument that Chang does not teach a swivel and other elements of claims 10 and 11 as Chang’s hinge plates 72 simply does not teach the structure or operation of the swivel of claims 10 and 11 (Remarks p. 9), Examiner notes that Applicant has provided no reasoning for this assertion. As detailed in the rejection below and that of page 6 of the non-final office action dated May 22, 2025, swivel 72 is shown in Figs. 1, 2, 5, and 6 to be positioned between the frame and the tong and allows rotation relative to the tong as provided in claims 10 and 11. Examiner directs Applicant to the rejection below for a more in-depth description of the limitations. Thus, Examiner suggests amending to claim the unidentified different structure or operation of the swivel that such are argued to provide.
With regards to Applicant’s argument that amended claims 7 and 21 because Macey at most teaches that hollow screw 26, 28 provides access to the particular point on bone at which the aperture forming mechanism is to form an indentation or hole and does not teach that it could somehow provide access to an area of working material/bone 22 beyond aperture 28 (Remarks p. 9), Examiner disagrees as Macey specifically discloses that “the clamping apparatus 10 preferably holds the support material 20 relative to the working material while a plurality of apertures within the support or reinforcement material 20 are penetrated by fasteners into the working material 22…… where the clamping apparatus 10 remains fixed relative to the support material 20 and working material 22 while a fastener is mounted through the first clamping jaw 14 and the discontinuity reducing means 18” (col. 8 lines 38-56).
With regards to Applicant’s argument that Boldt adds nothing to Macey and Chang to render claims 8 and 9 obvious (Remarks p. 9), Examiner notes that, as detailed in the rejection below and on pages 10-12 of the non-final office action dated May 22, 2025, Boldt teaches specific materials for known reasons for which Examiner directs Applicant to the rejection below for a more in-depth description of the limitations.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/351,417, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Application No. 16/351,417 fails to provide adequate support for a release mechanism and a releasable portion of claims 7-12 and 21-25, the frame comprises a radiolucent material of claim 8, the frame comprises polyphenylsulfone, polyetherimide, polyether etherketone or a carbon fiber reinforced polyketone or polyether etherketone of claim 9, and “the opening provides access to the fixation plate area within which four holes are located” in claim 22 lines 1-2 that are in addition to the at least two holes of claim 21 line 3.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
As to claim 22, the specification appears to lack proper antecedent basis for “the opening provides access to the fixation plate area within which four holes are located” in claim 22 lines 1-2 that are in addition to the at least two holes of claim 21 line 3. That is, the opening providing access to a plate area with a total of six holes has not been shown, described, or originally claimed. Thus, the specification fails to provide proper antecedent basis for “the opening provides access to the fixation plate area within which four holes are located” in claim 22 lines 1-2 that are in addition to the at least two holes of claim 21 line 3. Examiner suggests amending to claim structural features of the frame.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “rectangular fixation plate” with which the clamp is capable of use in claim 7 lines 1-2, the “the opening provides access to the fixation plate area within which four holes are located” in claim 22 lines 1-2 that are in addition to the at least two holes of claim 21 line 3, and the “two or more attachment devices” of claim 23 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim(s) 22 is/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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 22, the “the opening provides access to the fixation plate area within which four holes are located” in claim 22 lines 1-2 that are in addition to the at least two holes of claim 21 line 3 appears to be new matter. That is, the opening providing access to a plate area with a total of six holes has note been shown, described, or originally claimed. Thus, the “the opening provides access to the fixation plate area within which four holes are located” in claim 22 lines 1-2 that are in addition to the at least two holes of claim 21 line 3 constitutes new matter. Examiner suggests amending to claim structural features of the frame.
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 of this title, 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) 7, 10-12, and 21-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Macey (US 6,579,296) in view of Chang (US 2003/0055319).
As to claims 7, 10-12, and 24, Macey discloses an orthopedic clamp (10, Figs. 1-4B, col. 3 lines 38-44, col. 4 lines 10-20, col. 8 lines 51-55; where col. 4 lines 10-20 discloses that 14 can be rectangular and is shaped as determined by 20, 22, and 18, and where col. 8 lines 51-55 disclose mounting a fastener through 14, 18, and 20) capable of assisting with open fracture reduction surgery (col. 3 lines 38-44) involving a rectangular fixation plate (20, col. 3 lines 38-44, col. 4 lines 10-20; where col. 3 lines 38-44 discloses that 20 is a bone plate used with the clamp to firmly secure to bone and col. 4 lines 10-20 disclose that 14 can be rectangular and is shaped as determined by 20, 22, and 18, thus, the clamp is capable of use with a rectangular fixation plate 20 and rectangular frame portion 18) having a rectangular area within which two or more holes are located (col. 8 lines 38-42 discloses that clamp 10 holds plate 20 while a plurality of apertures within the plate 20 are penetrated by fasteners into the working material 22), the orthopedic clamp comprising: a first tong (13, 16) that includes a distal end (16) which is capable of engaging a fractured bone (22, Fig. 2, col. 3 lines 40-42, col. 7 lines 17-22); a second tong (12, left portion of 14 as shown in Fig. 2) that is capable of moving coupled to the first tong (via 56, Figs. 1 and 2, abstract, col. 6 line 66 – col. 7 line 5); a portion (18, 26, right portion of 14 as shown in Fig. 2, Fig. 2) that is attached to the second tong (Fig. 2), wherein the portion includes a frame (26, 18, and portion of 14 forming 24, Figs. 1 and 2) that surrounds an opening (30, 28, openings formed by 24 and 42, Figs. 1-4B) which provides access to the fixation plate rectangular area and the at least two holes involved in the surgery that the clamp is capable of use therein (Fig. 2, col. 3 lines 38-44, col. 4 lines 10-20, col. 8 lines 38-56; where col. 8 lines 51-55 disclose mounting a fastener through 14, 18, and 20), that extends longitudinally along the fractured bone (Figs. 1 and 2), and that is capable of positioning the fixation plate between the frame and the fractured bone (Fig. 2).
Macey is silent to the second tong includes a release mechanism; the portion is a releasable portion that is releasably attached to the release mechanism, wherein the releasable portion includes the frame. As to claim 10, Macey is silent to the releasable portion further comprising a swivel between the frame and the second tong, wherein the swivel allows the frame to rotate relative to the second tong. As to claim 11, Macey is silent to the releasable portion includes a swivel that is attached to the frame and that allows the frame to be rotatable relative to the second tong. As to claim 12, Macey is silent to the releasable portion includes a pin that releasably engages the release mechanism. As to claim 24, Macey is silent to the releasable portion is releasable in a longitudinal direction away from the release mechanism.
Chang teaches a similar orthopedic device (Figs. 1, 2, and 5-7B, ¶s 11 and 39; where ¶39 discloses that the connection of 56, 62, 64, and 60 may be reversed such that 58 includes the annular channel 60 and 52 includes an outwardly biased bearing member) capable of assisting with open fracture reduction surgery (Figs. 1 and 2, ¶s 11 and 41) involving clamping a fixation plate (if so positioned due to the shown structure, Figs. 1 and 2, ¶41), the orthopedic device comprising: a first tong (left 12 and left 82 as shown in Figs. 1 and 2, Figs. 1 and 2, ¶37) that includes a distal end (left 82 as shown in Figs. 1 and 2, Figs. 1 and 2, ¶37) which is capable of engaging a fractured bone (¶41 discloses that 82 is a bone-engaging portion); a second tong (right 12 and right 82 as shown in Figs. 1 and 2, Figs. 1 and 2, ¶37) that includes a release mechanism (54) and that is capable of moving coupled to the first tong (via pivotal connection 14, Figs. 1 and 2, ¶37); a releasable portion (52, 70, 78) that is capable of releasing when attached to the release mechanism (due to biasing of bearing member, ¶39), wherein the releasable portion includes a frame (78) that is capable of rotating relative to the second tong (about the longitudinal axis of 54, ¶39). As to claim 10, Chang teaches that the releasable portion further comprises a swivel (72) between the frame and the second tong (Figs. 1, 2, 5, and 6), wherein the swivel allows the frame to rotate relative to the second tong (Figs. 1, 2, 5, and 6, ¶40). As to claim 11, Chang teaches to the releasable portion includes a swivel (72) that is attached to the frame (Figs. 1, 2, 5, and 6, ¶40) and that allows the frame to be capable of rotating relative to the second tong (Figs. 1, 2, 5, and 6, ¶40). As to claim 12, Chang teaches the releasable portion includes a pin (52) that releasably engages the release mechanism (Figs. 5 and 6, ¶39). As to claim 24, Chang teaches that the releasable portion is capable of releasing in a longitudinal direction (vertical as shown in Fig. 6, Fig. 6) away from the release mechanism (Figs. 5 and 6).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify the attachment of the frame to the second tong as disclosed by Macey to be rotatable and releasable as taught by Chang in order to enable the frame to self-align on the bone (Chang ¶41) and bone plate when performing fixation of a fracture of a bone (Macey col. 3 lines 39-44) and to provide easy removal for cleaning and sanitizing (Chang ¶39), i.e., so that the frame can orient relative to the contour of the particular bone and plate.
As to claims 21, 23, and 25, Macey discloses a system (Figs. 1-4B, col. 3 lines 38-44) capable of assisting with open fracture reduction surgery (col. 3 lines 38-44), the system comprising: a fixation plate (20, col. 3 lines 38-44) including an area within which at least two holes are located (shown with dashed lines in Fig. 2, col. 8 lines 40-47 discloses a plurality of apertures) capable of receiving at least two attachment devices (Fig. 2, col. 8 lines 40-47 discloses a plurality of apertures receiving fasteners); a clamp (10, Figs. 1-4B, col. 3 lines 38-44) including: a first tong (13, 16) that includes a distal end (16) which is capable of engaging a fractured bone (22, Fig. 2, col. 3 lines 40-42, col. 7 lines 17-22); a second tong (12, left portion of 14 as shown in Fig. 2) that is capable of moving coupled to the first tong (via 56, Figs. 1 and 2, abstract, col. 6 line 66 – col. 7 line 5); a portion (18, 26, right portion of 14 as shown in Fig. 2, Fig. 2) that is attached to the second tong (Fig. 2), wherein the portion includes a frame (26, 18, and portion of 14 forming 24, Figs. 1 and 2) that surrounds an opening (30, 28, openings formed by 24 and 42, Figs. 1-4B) which provides access to the fixation plate area (Fig. 2, col. 8 lines 40-47) and the at least two plate holes (Fig. 2, col. 8 lines 40-47), that extends longitudinally along the fractured bone (Figs. 1 and 2), and that is capable of positioning the fixation plate between the frame and the fractured bone (Fig. 2). As to claim 23, Macey discloses comprising two or more attachment devices (fasteners of col. 8 lines 40-47 for attaching the plate to bone within a plurality of apertures, Fig. 2, col. 8 lines 40-47, col. 3 lines 40-44 discloses securing a bone plate to bone for fracture fixation).
Macey is silent to the second tong includes a release mechanism; the portion is a releasable portion that is releasably attached to the release mechanism, wherein the releasable portion includes the frame. As to claim 25, Macey is silent to the releasable portion is releasable in a longitudinal direction away from the release mechanism.
Chang teaches a similar orthopedic device (Figs. 1, 2, and 5-7B, ¶s 11 and 39; where ¶39 discloses that the connection of 56, 62, 64, and 60 may be reversed such that 58 includes the annular channel 60 and 52 includes an outwardly biased bearing member) capable of assisting with open fracture reduction surgery (Figs. 1 and 2, ¶s 11 and 41) involving clamping a fixation plate (if so positioned due to the shown structure, Figs. 1 and 2, ¶41), the orthopedic device comprising: a first tong (left 12 and left 82 as shown in Figs. 1 and 2, Figs. 1 and 2, ¶37) that includes a distal end (left 82 as shown in Figs. 1 and 2, Figs. 1 and 2, ¶37) which is capable of engaging a fractured bone (¶41 discloses that 82 is a bone-engaging portion); a second tong (right 12 and right 82 as shown in Figs. 1 and 2, Figs. 1 and 2, ¶37) that includes a release mechanism (54) and that is capable of moving coupled to the first tong (via pivotal connection 14, Figs. 1 and 2, ¶37); a releasable portion (52, 70, 78) that is capable of releasing when attached to the release mechanism (due to biasing of bearing member, ¶39), wherein the releasable portion includes a frame (78) that is capable of rotating relative to the second tong (about the longitudinal axis of 54, ¶39). As to claim 25, Chang teaches that the releasable portion is capable of releasing in a longitudinal direction (vertical as shown in Fig. 6, Fig. 6) away from the release mechanism (Figs. 5 and 6).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify the attachment of the frame to the second tong as disclosed by Macey to be rotatable and releasable as taught by Chang in order to enable the frame to self-align on the bone (Chang ¶41) and bone plate when performing fixation of a fracture of a bone (Macey col. 3 lines 39-44) and to provide easy removal for cleaning and sanitizing (Chang ¶39), i.e., so that the frame can orient relative to the contour of the particular bone and plate.
As to claim 22, the combination of Macey and Chang discloses the invention of claim 21 as well as two or more holes in the fixation plate (plurality of apertures of col. 8 lines 39-40).
The combination of Macey and Chang is silent to the opening provides access to the fixation plate area within which four holes are located.
Macey further teaches that at least an opening portion (30, 28) of the opening is shown to have a circular cross-section, but other cross-sectional shapes include but are not limited to triangular, rectangular, pentagonal, octagonal, hexagonal, oval, and/or elliptical shapes (col. 4 lines 45-50) to substantially align and guide aperture forming means 32 to facilitate an appropriate angle for reaming the bone (col. 4 lines 49-54) and, for the portion, a cylindrical shape is shown but other shapes can be employed including, but not limited to, elliptical, triangular, rectangular, pentagonal, octagonal, hexagonal, and other polygonal shapes (col. 4 lines 10-17) and is typically determined by the shape of the bone plate (col. 4 lines 17-18).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify the opening and the portion as disclosed by Macey to be elliptical as taught by Macey in order to facilitate an appropriate angle for reaming the bone (Macey col. 4 lines 49-54). Further, it would have been an obvious matter of design choice before the effective filing date of the claimed invention to specify that the elliptical opening for facilitation angled reaming in the bone as taught by Macey is large enough to provide access to the fixation plate area within which four holes are located, since such a modification would have involved a mere specification/change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art.
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Macey and Chang in view of Boldt et al. (US 2016/0278794, hereinafter “Boldt”).
As to claim 8, the combination of Macey and Chang discloses the invention of claim 7.
The combination of Macey and Chang is silent to the frame comprises a radiolucent material.
Boldt teaches a similar orthopedic clamp (10, Figs. 1, 2, 20, and 21, abstract) comprising: a first tong (20, 22, 26, 28) that includes a distal end (28) which is capable of engaging a bone (Fig. 21, ¶s 50, 54); a second tong (30, 32, 32, 14, 16, ¶s 49 and 61) that includes a release mechanism (32, ¶61) and that is capable of moving coupled to the first tong (via pivoting about 24, Figs. 1, 2, 20, and 21, ¶51); a releasable portion (14, 16, ¶s 49 and 61) that is capable of releasing when attached to the release mechanism (¶49), wherein the releasable portion includes a frame (14, 16, ¶s 49 and 61) that surrounds an opening (Fig. 1); wherein the frame comprises a radiolucent material (¶s 64 and 66 disclose medical-grade polyetheretherketone (PEEK)).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to specify that the frame as disclosed by the combination of Macey and Chang comprises a radiolucent material as taught by Boldt in order to provide a known medical grade frame material (Boldt ¶s 64 and 66) for use in orthopedic clamping (Boldt Fig. 21). That is, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to specify that the frame as disclosed by the combination of Macey and Chang comprises a radiolucent material as taught by Boldt, since it is 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 to provide a known medical grade frame material (Boldt ¶s 64 and 66) for use in orthopedic clamping (Boldt Fig. 21).
As to claim 9, the combination of Macey and Chang discloses the invention of claim 7.
The combination of Macey and Chang is silent to the frame comprises polyphenylsulfone, polyetherimide, polyether etherketone or a carbon fiber reinforced polyketone or polyether etherketone.
Boldt teaches a similar orthopedic clamp (10, Figs. 1, 2, 20, and 21, abstract) comprising: a first tong (20, 22, 26, 28) that includes a distal end (28) which is capable of engaging a bone (Fig. 21, ¶s 50, 54); a second tong (30, 32, 32, 14, 16, ¶s 49 and 61) that includes a release mechanism (32, ¶61) and that is capable of moving coupled to the first tong (via pivoting about 24, Figs. 1, 2, 20, and 21, ¶51); a releasable portion (14, 16, ¶s 49 and 61) that is capable of releasing when attached to the release mechanism (¶49), wherein the releasable portion includes a frame (14, 16, ¶s 49 and 61) that surrounds an opening (Fig. 1); wherein the frame comprises polyether etherketone (¶s 64 and 66 disclose medical-grade polyetheretherketone (PEEK)).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to specify that the frame as disclosed by the combination of Macey and Chang comprises a radiolucent material as taught by Boldt in order to provide a known medical grade frame material (Boldt ¶s 64 and 66) for use in orthopedic clamping (Boldt Fig. 21). That is, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to specify that the frame as disclosed by the combination of Macey and Chang comprises a radiolucent material as taught by Boldt, since it is 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 to provide a known medical grade frame material (Boldt ¶s 64 and 66) for use in orthopedic clamping (Boldt Fig. 21).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY SIPP whose telephone number is (313)446-6553. The examiner can normally be reached on Monday through Thursday, 6:30am-4pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached on 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMY R SIPP/Primary Examiner, Art Unit 3775