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 .
Response to Arguments
Applicant’s arguments with respect to all pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claims 2-3 and 12 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.
Regarding claim 2, Applicant recites that “the fastener is a screw comprising distal threads; and a reamer proximal to the distal threads, wherein the screw is a headless screw”. Applicant appears to be stating that their fastener is the screw illustrated in figure 10 filed on May 5th, 2026. However, claim 2 depends from claim 1 which requires the external invertible coil have a second end with a closed configuration such that the second end is aligned distally under an adjacent helical curve such that the second end contacts the adjacent helical curve; wherein the second end has a larger diameter than the first end. Claim 1 focuses on the embodiment of figures 11A-11B. Applicant’s specification fails to provide support for mixing of the external invertible coil of the embodiment of figure 11A with the screw having a reamer embodiment of figure 10. Applicant appears to be mixing embodiments in a manner that is not supported by their original disclosure.
Regarding claim 3, Applicant recites “wherein the fastener comprises distal threads; a reamer proximal to the distal threads; and a head having an outer diameter equal to or less than an outer diameter of the reamer.”
However, claim 2 depends from claim 1 which requires the external invertible coil have a second end with a closed configuration such that the second end is aligned distally under an adjacent helical curve such that the second end contacts the adjacent helical curve; wherein the second end has a larger diameter than the first end. Claim 1 focuses on the embodiment of figures 11A-11B. Applicant’s specification fails to provide support for mixing of the external invertible coil of the embodiment of figure 11A with the screw having a reamer embodiment of figure 10. Applicant appears to be mixing embodiments in a manner that is not supported by their original disclosure.
Regarding claim 12, Applicant recites “said screw comprising a head, a shaft having threads and a collar, said collar having a greater cross-sectional area than that of the shaft and the head; wherein the coil comprises…a second end having a closed configuration such that the second end is aligned distally under an adjacent helical curve such that the second end contacts the adjacent helical curve; wherein the second end has a larger diameter than the first end.
Applicant’s specification fails to provide support for mixing of the external invertible coil of the embodiment of figure 11A with the screw having a collar having a greater cross-sectional area than that of the shaft and the head embodiment of figure 8A. Applicant appears to be mixing embodiments in a manner that is not supported by their original disclosure.
Allowable Subject Matter
Claims 1, 6, 9 and 14-17 allowed.
The following is a statement of reasons for the indication of allowable subject matter: While DeCaro (US 4,762,453) teaches the use of a fastener (12) having a helically would coil which increases in diameter toward the distal end (figure 12). The distal end of the coil is meant to puncture/pierce into the material that it is holding (column 4, lines 62-63). Providing the distal end with a closed configuration would render it unable to puncture/pierce into the medium that it is mean to hold in place. Additionally, Dovesi et al. teach a coil having a closed end (best show in figures 3 and 4) but the coil does not have a conical shape/a larger circumference at the close second end as required by the independent claims. Additionally, it would not be obvious to change the shape of the coil to have the second end larger than the first as the first end has tangential part 10 which includes folded portion 11 which is provided outside of the bone tunnel to prevent rotation (¶21). Having the second end be larger than the first in circumference would render it unable to be seated in the bone tunnel for fixation therein. For at least these reasons, claims 1, 6, 9 and 14-17 are allowable.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW JAMES LAWSON whose telephone number is (571)270-7375. The examiner can normally be reached Mon - Fri 6:30-3:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at 571-270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW J LAWSON/Primary Examiner, Art Unit 3619
Prosecution Insights