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 .
Claim Objections
Claim 7 is objected to because of the following informalities and Lines 5-6 should be amended as follows: “a pair of caps, each cap configured to be removably coupled to [[each]] one of the hexagonal end fittings of said titanium screw;”. Appropriate correction is required.
Claim 13 is objected to because of the following informalities and in Line 2, the word --consisting-- should be added after the word “group”. Appropriate correction is required.
Claim 14 is objected to because of the following informalities:
Lines 5-6 should be amended as follows: “a pair of caps, each cap configured to be removably coupled to [[each]] one of the hexagonal end fittings of said titanium screw;”.
In Line 13, the word --consisting-- should be added after the word “group”.
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.
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 8 is 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.
Claim 8 recites the newly added limitation “wherein the flat proximal face of each cap comprises a central recess for receiving one of the hexagonal end fittings by press fit therein” which seeks to introduce new matter as the “by press fit” portion of this limitation is not recited in the specification and the drawings do not depict any details/structure/dimensions which clearly convey each cap press fitted onto the end fittings of the screw. Since hex connections can be fitted through a variety of fits, reciting a press fit without having support in the disclosure seeks to introduce new matter. Appropriate correction is required.
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.
Claims 13-14 are 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 13 recites “13. (New) The device for retracting soft tissue according to claim 8, wherein: dimensions of the titanium screw are selected from the group of: a length of the titanium screw is 10 mm and a length of the threaded shaft is 8 mm; a length of the titanium screw is 8 mm and a length of the threaded shaft is 6 mm; and a length of the titanium screw is 6 mm and a length of the threaded shaft is 4 mm; and a diameter of the cap is 4.5 mm and a height of the cap is 1.5 mm.” which renders the claim indefinite as it is unclear if the last line of the claim reciting a diameter and a height is part of the Markush group or another separate limitation of the claim. For purposes of examination, the last line of the claim is being interpreted as a limitation in addition to the Markush group. If this is a separate limitation, it is suggested that the last line of the claim be moved up in the claim to precede the Markush limitations. Appropriate correction is required.
Claim 14 recites “wherein dimensions of the titanium screw are selected from the group of: a length of the titanium screw is 10 mm and a length of the threaded shaft is 8mm;a length of the titanium screw is 8 mm and a length of the threaded shaft is 6mm; and a length of the titanium screw is 6 mm and a length of the threaded shaft is 4 mm; and wherein a diameter of the cap is 4.5 mm and a height of the cap is 1.5 mm.” which renders the claim indefinite as it is unclear if the last line of the claim reciting a diameter and a height is part of the Markush group or another separate limitation of the claim. For purposes of examination, the last line of the claim is being interpreted as a limitation in addition to the Markush group. If this is a separate limitation, it is suggested that the last line of the claim be moved up in the claim to precede the Markush limitations. Appropriate correction is required.
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) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hadi (US PG Pub No. 2011/0071576) in view of Tipirneni et al. (US PG Pub No. 2008/0147127), Cushman (US Patent No. 5,647,710), and Nebosky et al. (US PG Pub. No. 2010/0042167).
Regarding Claims 7-8, Hadi discloses a fastener (Fig. 8, Paragraphs [0043-0044]) comprising: a screw (tubular member 66) having a pair of opposing end fittings (internal screw threading 56’ at distal end 58’; and internal screw threading 46’ at proximal end 44’) and an externally-threaded shaft (threading 68 of 66) extending therebetween; and a pair of caps (50’; and 16”), each configured to be removably coupled to one of the end fittings of said screw (via external threads 52’ & 36” which engage internal screw threading 56’ and 46’, Fig. 8, Paragraphs [0043-0044]); and wherein each cap includes distal face (upper surface of head 54’ which faces away from 68; and upper surface of head 34” which faces away from 68, Fig. 8) and a flat proximal face (underside surface of head 54’ which is adjacent to 52’; and underside surface of head 34” which is adjacent to 36”, Fig. 8) opposite the domed distal face, wherein the flat proximal face comprises an end fitting (external screw threading 52’; and external screw threading 36”) which is configured to correspondingly engage with one of the end fittings of the screw (Paragraphs [0034, 0039, 0043]). With respect to the functional language of the claim, the fastener of Hadi is fully and structurally capable of being used to retract soft tissue for appositional bone reconstruction surgeries in implantology as stated in the intended use recitation of the claim.
Hadi does not disclose that the end fittings of the screw comprise male fittings and the flat proximal face of each cap comprises a female fitting/central recess for receiving one of the male end fittings of the screw. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to rearrange the female and male connecting means between the screw and each cap of Hadi such that the proximal and distal ends of the screw comprise a male fitting and the proximal face of each cap comprises a female fitting for receiving one of the male fittings since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Hadi does not disclose that the screw is titanium, wherein the screw end fittings are hexagonal, wherein each hexagonal end fitting includes a hexagonal prism portion at a distal end of the hexagonal end fitting, and a hexagonal frustum portion at a proximal end of the hexagonal end fitting, the hexagonal frustum portion flaring outward in a proximal direction, and wherein the flat proximal face of each cap comprises a central recess for receiving one of the hexagonal end fittings by press fit therein. Hadi does disclose in Paragraph [0012] that “Each of these component parts of the assembly is constructed of surgical steel. However, the component parts could also be constructed of other biocompatible materials.”, and further discloses in Paragraph [0014] that “The external screw threading is complementary to the internal screw threading of the tubular member. Screwing the tip external screw threading into the internal screw threading at one end of the tubular member removably attaches the tip to the tubular member.”
Tiperneni et al. discloses a bone fastener (290 & 284, Fig. 1B, Paragraph [0053]) made from titanium which “minimizes reactivity with the body” (Paragraph [0050]), the assembly comprising a titanium screw (anchor component 2, specifically anchor including threads 284, Fig. 1B) having a hexagonal male fitting (10, not labeled in Fig. 1B, See Fig. 1A for example, Paragraph [0051]) at an upper end thereof for removably connecting to a correspondingly shaped hex opening (Paragraph [0051]), wherein the hexagonal male fitting comprises a hexagonal prism portion (upper portion) at a distal end of the hexagonal end fitting (upper end of 10), and a hexagonal frustum portion (flared lower portion) at a proximal end of the hexagonal end fitting (lower end of 10), the hexagonal frustum portion flaring outward in a proximal direction (Fig. 1B).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to replace the threaded male and female fittings between the screw and caps of the device of Hadi with hexagonal male and female fittings such that the opposing male end fittings of the screw each comprise a hexagonal prism portion at a distal end of the hexagonal end fitting, and a hexagonal frustum portion at a proximal end of the hexagonal end fitting and flaring outward in a proximal direction, and the female fitting of each cap comprises a hexagonal central recess for correspondingly receiving one of the hexagonal end fittings by pressing each cap onto the screw as taught by Tiperneni et al. as an alternate and functionally equivalent connection means which provides the added benefit of a quicker assembly of the caps on the screw during use in a surgical procedure.
Hadi does not disclose wherein the distal face of each cap is domed. Hadi does disclose in Paragraph [0033] that “The proximal bolt head 34 is shown only schematically in the drawing figures.”
Cushman discloses a fastener (10) comprising a screw (threaded bolt 12) having a pair of opposing male end fittings (externally threaded proximal and distal male ends of 12, Fig. 6) and an externally threaded shaft (Figs. 3-4 & 6), and a pair of caps (22, and 440, Figs. 3-4 & 6) each removably coupled to one of the end fittings, wherein each of the caps comprises a domed distal face (outer surface 26) opposite a flat proximal face (inner surface 24), wherein the flat proximal face comprises a female fitting/central recess (internally threaded aperture 28) for correspondingly receiving one of the male end fittings of the screw (Col. 3, Line 58- Col. 5, Line 14).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the distal face of each cap of Hadi to be domed as taught by Cushman in order to provide the caps with an atraumatically shaped outer surface which would minimize the likelihood of irritating surrounding tissue after implantation.
Hadi does not disclose that each cap is PEEK.
Nebosky et al. discloses an orthopaedic surgical screw (10, Figs. 1-5, & 7A-7C) comprising a threaded screw body (shank not including head or tip, Fig. 5) and a cap (26, Fig. 5) removably coupled within the screw head at the upper end of the shank, wherein the screw is composed of “any implantable polymer, metal or ceramic, or any combination thereof’, wherein “Possible polymers include polyetheretherketone (PEEK)” (Paragraph [0012]), and wherein the screw can include “a radiopaque marker to indicate position and orientation of the implant on an x-ray, fluoroscope, or similar diagnostic tool. The markers can be made of any number of more dense implantable materials. Options include, but are not limited to implantable metals (stainless steel, titanium, or titanium alloys for example), barium sulfate filled PEEK, carbon filled PEEK, and other polymers with radiopaque material (Such as barium sulfate or zirconium dioxide). Examples of the marker structure include one or more of the following: a pin filling some or all of the cannula of a cannulated screw, one of material layers of the inventive screw if manufactured by layering, all or some of the threads, a cross pin, or the head or tip of the screw. The opacity and/or amount of radiopaque material can be controlled so that the marker does not prevent evaluation of the tissue near the screw by x-ray or other diagnostic methods.” (Paragraphs [0016, 0051]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the caps of the device of Hadi to be made from PEEK or PEEK with a radiopaque marker structure therein as taught by Nebosky et al. in order to allow specific parts of the device to be seen by x-ray or other diagnostic methods which indicate the position and orientation of the implant.
Claim(s) 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hadi (US PG Pub No. 2011/0071576) in view of Tipirneni et al. (US PG Pub No. 2008/0147127), Cushman (US Patent No. 5,647,710), and Nebosky et al. (US PG Pub. No. 2010/0042167) as applied to Claim 7 above and further in view of Niznick (US PG Pub No. 2005/0136380).
Regarding Claims 9-12 & 13 as best understood, the combination of Hadi, Tiperneni et al., Cushman, and Nebosky et al. discloses the claimed invention as stated above in Claim 7, except wherein a length of the titanium screw is 10 mm, 8mm, or 6mm and a length of the threaded shaft is 8 mm, 6mm, or 4mm, and wherein a diameter of the cap is 4.5 mm and a height of the cap is 1.5 mm. Hadi does disclose that “The bone bolt assembly of the invention is designed to secure together adjacent bones, bone fragments, and to secure implants to bones without requiring a bone screw to be implanted into the bone.” but does not disclose any particular bones, and further discloses in Paragraphs [0046-0047] that “The embodiments were chosen and described in order to best explain the principles of the invention and its practical application to thereby enable others skilled in the art to best utilize the invention in various embodiments and with various modifications as are suited to the particular use contemplated” and “various modifications could be made in the constructions and methods herein described and illustrated without departing from the scope of the invention”. One having ordinary skill in the art would recognize that various sized screws are used in different anatomy and surgical sites based on the patient’s particular needs and the surgeon’s preference.
Niznick discloses a surgical fastener configured to be used in a jawbone of a patient (10, Fig. 1, Paragraph [0002]) comprising a threaded screw shaft (11) with a head (12) at one end and a tip at the opposite end (Fig. 2), wherein a cap is configured to be removably coupled to an opening (20) formed in the head (Paragraphs [0006- 0007]), and wherein “In preferred embodiments, these implants have a length in the range of about 8 mm to about 20 mm, and an outer diameter in the range of about 3 mm to about 7 mm. The internal cavity or shaft preferably has a length in the range of about 4 mm to about 8 mm, and a cross-section (or plurality of cross-sections) in the range of about 1.5 mm to about 3.5 mm.”. (Paragraph [0007]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the length of the screw of Hadi to be 10mm, 8mm, or 6mm as taught by Niznick based on a specific procedure and a patient's particular needs and anatomy. Furthermore, it would have been obvious to modify the caps of Hadi to have a diameter of 4.5mm and a height of 1.5mm since it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 105 USPQ 233. Furthermore, it would have been a matter of obvious design choice to a person of ordinary skill in the art to provide the threaded shaft of Hadi with the claimed 8mm, 6mm, or 4mm length because the Applicant has not disclosed that providing the recited length provides an advantage, is used for a particular purpose, or solves a stated problem. It would have been further prima facie obvious to modify the size of the device of the combination to obtain the invention specified in claims 9-13 because such modifications would have been considered a mere design consideration which fails to patentably distinguish over the prior art of the combination.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hadi (US PG Pub No. 2011/0071576) in view of Tipirneni et al. (US PG Pub No. 2008/0147127), Cushman (US Patent No. 5,647,710), Nebosky et al. (US PG Pub. No. 2010/0042167), and Niznick (US PG Pub No. 2005/0136380).
Regarding Claim 14 as best understood, Hadi discloses a fastener (Fig. 8, Paragraphs [0043-0044]) comprising: a screw (tubular member 66) having a pair of opposing end fittings (internal screw threading 56’ at distal end 58’; and internal screw threading 46’ at proximal end 44’) and an externally-threaded shaft (threading 68 of 66) extending therebetween; and a pair of caps (50’; and 16”), each configured to be removably coupled to one of the end fittings of said screw (via external threads 52’ & 36” which engage internal screw threading 56’ and 46’, Fig. 8, Paragraphs [0043-0044]); and wherein each cap includes distal face (upper surface of head 54’ which faces away from 68; and upper surface of head 34” which faces away from 68, Fig. 8) and a flat proximal face (underside surface of head 54’ which is adjacent to 52’; and underside surface of head 34” which is adjacent to 36”, Fig. 8) opposite the domed distal face, wherein the flat proximal face comprises an end fitting (external screw threading 52’; and external screw threading 36”) which is configured to correspondingly engage with one of the end fittings of the screw (Paragraphs [0034, 0039, 0043]). With respect to the functional language of the claim, the fastener of Hadi is fully and structurally capable of being used to retract soft tissue for appositional bone reconstruction surgeries in implantology as stated in the intended use recitation of the claim.
Hadi does not disclose that the end fittings of the screw comprise male fittings and the flat proximal face of each cap comprises a female fitting/central recess for receiving one of the male end fittings of the screw. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to rearrange the female and male connecting means between the screw and each cap of Hadi such that the proximal and distal ends of the screw comprise a male fitting and the proximal face of each cap comprises a female fitting for receiving one of the male fittings since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Hadi does not disclose that the screw is titanium, wherein the screw end fittings are hexagonal, wherein each hexagonal end fitting includes a hexagonal prism portion at a distal end of the hexagonal end fitting, and a hexagonal frustum portion at a proximal end of the hexagonal end fitting, the hexagonal frustum portion flaring outward in a proximal direction, and wherein the flat proximal face of each cap comprises a central recess for receiving one of the hexagonal end fittings by press fit therein. Hadi does disclose in Paragraph [0012] that “Each of these component parts of the assembly is constructed of surgical steel. However, the component parts could also be constructed of other biocompatible materials.”, and further discloses in Paragraph [0014] that “The external screw threading is complementary to the internal screw threading of the tubular member. Screwing the tip external screw threading into the internal screw threading at one end of the tubular member removably attaches the tip to the tubular member.”
Tiperneni et al. discloses a bone fastener (290 & 284, Fig. 1B, Paragraph [0053]) made from titanium which “minimizes reactivity with the body” (Paragraph [0050]), the assembly comprising a titanium screw (anchor component 2, specifically anchor including threads 284, Fig. 1B) having a hexagonal male fitting (10, not labeled in Fig. 1B, See Fig. 1A for example, Paragraph [0051]) at an upper end thereof for removably connecting to a correspondingly shaped hex opening (Paragraph [0051]), wherein the hexagonal male fitting comprises a hexagonal prism portion (upper portion) at a distal end of the hexagonal end fitting (upper end of 10), and a hexagonal frustum portion (flared lower portion) at a proximal end of the hexagonal end fitting (lower end of 10), the hexagonal frustum portion flaring outward in a proximal direction (Fig. 1B).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to replace the threaded male and female fittings between the screw and caps of the device of Hadi with hexagonal male and female fittings such that the opposing male end fittings of the screw each comprise a hexagonal prism portion at a distal end of the hexagonal end fitting, and a hexagonal frustum portion at a proximal end of the hexagonal end fitting and flaring outward in a proximal direction, and the female fitting of each cap comprises a hexagonal central recess for correspondingly receiving one of the hexagonal end fittings by pressing each cap onto the screw as taught by Tiperneni et al. as an alternate and functionally equivalent connection means which provides the added benefit of a quicker assembly of the caps on the screw during use in a surgical procedure.
Hadi does not disclose wherein the distal face of each cap is domed. Hadi does disclose in Paragraph [0033] that “The proximal bolt head 34 is shown only schematically in the drawing figures.”
Cushman discloses a fastener (10) comprising a screw (threaded bolt 12) having a pair of opposing male end fittings (externally threaded proximal and distal male ends of 12, Fig. 6) and an externally threaded shaft (Figs. 3-4 & 6), and a pair of caps (22, and 440, Figs. 3-4 & 6) each removably coupled to one of the end fittings, wherein each of the caps comprises a domed distal face (outer surface 26) opposite a flat proximal face (inner surface 24), wherein the flat proximal face comprises a female fitting/central recess (internally threaded aperture 28) for correspondingly receiving one of the male end fittings of the screw (Col. 3, Line 58- Col. 5, Line 14).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the distal face of each cap of Hadi to be domed as taught by Cushman in order to provide the caps with an atraumatically shaped outer surface which would minimize the likelihood of irritating surrounding tissue after implantation.
Hadi does not disclose that each cap is PEEK.
Nebosky et al. discloses an orthopaedic surgical screw (10, Figs. 1-5, & 7A-7C) comprising a threaded screw body (shank not including head or tip, Fig. 5) and a cap (26, Fig. 5) removably coupled within the screw head at the upper end of the shank, wherein the screw is composed of “any implantable polymer, metal or ceramic, or any combination thereof’, wherein “Possible polymers include polyetheretherketone (PEEK)” (Paragraph [0012]), and wherein the screw can include “a radiopaque marker to indicate position and orientation of the implant on an x-ray, fluoroscope, or similar diagnostic tool. The markers can be made of any number of more dense implantable materials. Options include, but are not limited to implantable metals (stainless steel, titanium, or titanium alloys for example), barium sulfate filled PEEK, carbon filled PEEK, and other polymers with radiopaque material (Such as barium sulfate or zirconium dioxide). Examples of the marker structure include one or more of the following: a pin filling some or all of the cannula of a cannulated screw, one of material layers of the inventive screw if manufactured by layering, all or some of the threads, a cross pin, or the head or tip of the screw. The opacity and/or amount of radiopaque material can be controlled so that the marker does not prevent evaluation of the tissue near the screw by x-ray or other diagnostic methods.” (Paragraphs [0016, 0051]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the caps of the device of Hadi to be made from PEEK or PEEK with a radiopaque marker structure therein as taught by Nebosky et al. in order to allow specific parts of the device to be seen by x-ray or other diagnostic methods which indicate the position and orientation of the implant.
Hadi does not disclose wherein a diameter of the cap is 4.5 mm and a height of the cap is 1.5 mm, and wherein dimensions of the screw are selected from the group consisting of: a length of the titanium screw is 10 mm and a length of the threaded shaft is 8mm;a length of the titanium screw is 8 mm and a length of the threaded shaft is 6mm; and a length of the titanium screw is 6 mm and a length of the threaded shaft is 4 mm.Hadi does disclose that “The bone bolt assembly of the invention is designed to secure together adjacent bones, bone fragments, and to secure implants to bones without requiring a bone screw to be implanted into the bone.” but does not disclose any particular bones, and further discloses in Paragraphs [0046-0047] that “The embodiments were chosen and described in order to best explain the principles of the invention and its practical application to thereby enable others skilled in the art to best utilize the invention in various embodiments and with various modifications as are suited to the particular use contemplated” and “various modifications could be made in the constructions and methods herein described and illustrated without departing from the scope of the invention”. One having ordinary skill in the art would recognize that various sized screws are used in different anatomy and surgical sites based on the patient’s particular needs and the surgeon’s preference.
Niznick discloses a surgical fastener configured to be used in a jawbone of a patient (10, Fig. 1, Paragraph [0002]) comprising a threaded screw shaft (11) with a head (12) at one end and a tip at the opposite end (Fig. 2), wherein a cap is configured to be removably coupled to an opening (20) formed in the head (Paragraphs [0006- 0007]), and wherein “In preferred embodiments, these implants have a length in the range of about 8 mm to about 20 mm, and an outer diameter in the range of about 3 mm to about 7 mm. The internal cavity or shaft preferably has a length in the range of about 4 mm to about 8 mm, and a cross-section (or plurality of cross-sections) in the range of about 1.5 mm to about 3.5 mm.”. (Paragraph [0007]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the length of the screw of Hadi to be 10mm, 8mm, or 6mm as taught by Niznick based on a specific procedure and a patient's particular needs and anatomy. Furthermore, it would have been obvious to modify the caps of Hadi to have a diameter of 4.5mm and a height of 1.5mm since it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 105 USPQ 233. Furthermore, it would have been a matter of obvious design choice to a person of ordinary skill in the art to provide the threaded shaft of Hadi with the claimed 8mm, 6mm, or 4mm length because the Applicant has not disclosed that providing the recited length provides an advantage, is used for a particular purpose, or solves a stated problem. It would have been further prima facie obvious to modify the size of the device of Hadi to obtain the invention specified in claim 14 because such modifications would have been considered a mere design consideration which fails to patentably distinguish over the prior art of the combination.
Response to Arguments
In regards to Applicant’s arguments, filed 11/07/25, with respect to the 103 rejection of Claims 7-8 as unpatentable over Greenberg in view of Nebosky, Niznick, and Evans: The Applicant’s arguments have been fully considered but are moot in view of the new grounds of rejection based upon the newly amended claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WEISS whose telephone number is (571) 270-5597. The examiner can normally be reached Monday through Friday, 8:00 am to 4:00 pm EST. If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, KEVIN T. TRUONG, at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JESSICA WEISS/Primary Examiner, Art Unit 3775