DETAILED ACTION
The following is a non-final office action is response to communications received on 10/07/2025. Claims 1-27 are currently pending and addressed below. Claims 21-27 are withdrawn.
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 .
Election/Restrictions
Applicant’s election without traverse of Invention I (Claims 1-20), Species C, Subspecies DD in the reply filed on 10/07/2025 is acknowledged. Claims 21-27 have been withdrawn.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 8, 13, 14 & 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Friis et al. (US 10,960,218).
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Regarding Claims 8 & 14, Friis teaches an orthopedic prosthesis (Fig 6) for stimulating bone growth comprising:
a substrate (104/202) comprising at least one bone-facing surface (first bone facing surface as shown)
a first piezoelectric nanostructure (shown) coupled to the at least one bone-facing surface at a first location (or to the first bone-facing surface);
a second piezoelectric nanostructure (shown) coupled to the at least one bone-facing surface at a second location (second bone facing surface as shown); and
a conductor (Col 5: line 64 – Col 6: line 4) electrically couple d with the first piezoelectric nanostructure and the second piezoelectric nanostructure, wherein:
the first piezoelectric nanostructure is configured to generate a first electric charge in response to a first mechanical force applied to the first piezoelectric nanostructure (Col 5: lines 18-24) (Col 15: lines 47-54);
the second piezoelectric nanostructure is configured to generate a second electric charge in response to a second mechanical force applied to the second piezoelectric nanostructure (Col 5: lines 18-24) (Col 15: lines 47-54); and
the conductor (or at least one interconnect) is configured to: transfer the first electric charge to the second piezoelectric nanostructure (Col 5: line 64 – Col 6: line 4); and
transfer the second electric charge to the first piezoelectric nanostructure (Col 5: line 64 – Col 6: line 4) to promote bone growth (Col 15: lines 47-54) on at least one of the first location and the second location of the at least one bone-facing surface (or the first and second bone-facing surfaces).
Regarding Claims 13 & 19, Friis teaches wherein the orthopedic prosthesis is configured to experience at least one mechanical force while the orthopedic prosthesis is implanted within a patient (Col 5: lines 18-24) (Col 15: lines 47-54).
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, 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) 9-11 & 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Friis et al. (US 10,960,218) in view of Abdou (US 2007/0198090).
Regarding Claim 9, as set forth supra, Friis discloses the invention substantially as claimed.
However, Friis does not disclose wherein at least one of the first piezoelectric nanostructure and the second piezoelectric nanostructure comprises a nanotube.
Abdou teaches the use of carbon nanotubes in orthopedic implants [0041] in the same field of endeavor. Said nanotubes can be used to generate and apply current to neighboring tissues in order to accelerate bone formation [0038].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the piezoelectric nanostructures, as taught by Friis, with the piezoelectric carbon nanotubes, as taught by Abdou, in order to further/alternatively generate and apply current to neighboring tissues in order to accelerate bone formation [0038].
Regarding Claim 10, the combination teaches wherein the nanotube comprises a carbon nanotube[0030] and [0036].
Regarding Claim 11, the combination teaches wherein the nanotube comprises a plurality of nanotubes (Friis Fig 4B) projecting from the at least one bone-facing surface and oriented substantially parallel with each other.
Regarding Claims 15-17, the combination teaches the limitations set forth in the rejection of claims 9-11.
Allowable Subject Matter
Claims 1-7 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record, which is the most pertinent art found, fails to teach and/or fairly suggest the instant invention. As set forth supra, Friis et al. (US 10,960,218) in view of Abdou (US 2007/0198090) discloses the invention substantially as claimed. Further, Friis teaches wherein the prosthesis comprises at least one internal surface (Figs 4B & 6; internal lumen within spinal cage). However, the prior art either individually or in combination, does not teach or render obvious at least one charge storing material placed within the orthopedic prosthesis proximate the at least one internal surface.
Claims 12 & 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN AINSLEY DUKERT whose telephone number is (571)270-3258. The examiner can normally be reached Mon-Fri 6am-4pm.
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/BRIAN A DUKERT/Primary Examiner, Art Unit 3774