DETAILED ACTION
Note: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is responsive to the set of claims received on 12 January 2023. Claims 1-25 are currently pending.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Drawings
The drawings received on 12 January 2023 are accepted by the examiner.
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.
Claims 19-25 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 19 recites the limitation "the implant retainer" in line 25. There is insufficient antecedent basis for this limitation in the claim. Since claim 20-25 are dependent upon claim 19, they contain the same issue.
Note: It appears that amending line 25 of claim 19 to read “an implant retainer” would overcome this rejection. For examination purposes, claim 19 will be treated as reading as such.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3-5, 8 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wilk (U.S. Patent 6,273,903).
Wilk discloses (as to claim 1) a fixation system (i.e. system defined by 50 and 148) capable of being used in an orthopedic manner (see 1st Note below regarding effect of preamble) comprising an implant (50) transitionable between a natural shape (i.e. shape as best seen in Figure 1) and an insertion shape (i.e. shape as best seen in Figure 2) whereby a transition of the implant from the natural shape to the insertion shape stores deliverable energy (i.e. energy stored via 68) and a transition of the implant from the insertion shape to the natural shape delivers stored energy (i.e. energy delivered via 68), the implant, comprising a bridge (i.e. bridge defined by 52 and 54) with a first end (i.e. end of 52 adjacent 64) and a second end (i.e. end of 54 adjacent 66), a transition section (i.e. section defined around 56 and 68) disposed in the bridge, whereby the transition section deforms to move (i.e. via 68) the implant between the natural shape and the insertion shape, a first anchoring segment (64) disposed at the first end of the bridge, and a second anchoring segment (66) disposed at the second end of the bridge, a first post (70) protruding from the bridge adjacent the transition section at a first side (i.e. side adjacent 70) thereof, the first post including an opening (i.e. opening defined by 70 as best seen in Figure 2) therethrough; a second post (76) protruding from the bridge adjacent the transition section at a second side (i.e. side adjacent 76), the second post including an opening (i.e. opening defined by 76 as best seen in Figure 2) therethrough; and the first post and the second post protruding from the bridge (protruding as best seen in Figure 2), whereby, when the implant resides in the insertion shape, the opening of the first post and the opening of the second post align (alignment as best seen in Figure 2); and an implant retainer (148) capable of being inserted in the opening of the first post and the opening of the second post when the implant resides in the insertion shape, whereby the implant retainer interconnects the first post and second post while spanning the transition section, thereby constraining the implant in the insertion shape (see column 5, lines 23-29), wherein (as to claim 3) the implant retainer comprises a pin (i.e. rod 148, see 2nd Note below regarding the term “pin”) being insertable in the opening of the first post and the opening of the second post when the implant resides in the insertion shape, whereby the pin interconnects the first post and second post while spanning the transition section, thereby constraining the implant in the insertion shape (see column 5, lines 23-29), wherein (as to claim 4) a removal of the pin from the opening through the first post or the opening through the second post allows attempted transition of the implant from the insertion shape toward the natural shape (see column 5, lines 35-38), wherein (as to claim 5) a cutting of the pin prior to a removal of the pin from the openings through the first post and the second post allows attempted transition of the implant from the insertion shape toward the natural shape (i.e. although not explicitly disclosed, it is the examiner’s position that cutting the pin would result in the claimed transitioning and that claim 5 does not further limit the claimed invention by requiring a further limiting structural difference; see column 5, lines 35-38), wherein (as to claim 8) the openings through the first and second posts each comprise a bore (i.e. bores defined by 70 and 76 as best seen in Figure 2; it is the examiner’s position that there is no structural difference between an opening and a bore, possibly only the process by which each is formed), the pin being insertable through the bore of the first post and the bore of the second post when the implant resides in the insertion shape, whereby the pin interconnects the first post and second post while spanning the transition section, thereby constraining the implant in the insertion shape and preventing the implant from returning to the natural shape (see column 5, lines 35-38), and wherein (as to claim 10) the first anchoring segment comprises a first leg (64) extending from the bridge (extension as best seen in Figure 1); and the second anchoring segment comprises a second leg (66) extending from the bridge (extension as best seen in Figure 1) (see Figures 1-2 and 6, and column 4, line 66 – column 5, line 38).
1st Note: If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction (see MPEP 2111.02).
2nd Note: For examination purposes and in light of the broadest reasonable interpretation, the term “pin” is being interpreted as a short metal rod, as a linchpin, driven through holes in adjacent parts, as a hub and an axle, to keep the parts together (definition retrieved from https://www.thefreedictionary.com/pin).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Wilk (U.S. Patent 6,273,903), as applied to claims 1 and 3 above, respectively.
In the embodiment of Figures 1-2, Wilk disclose the first and second posts each being provided on the bridge (see column 5, lines 23-29); however, fail to explicitly disclose the first post and the second post each being removable from the bridge.
In the embodiment of Figures 3-4, Wilk teaches a first post (82) and a second post (84) each being affixed to a bridge (i.e. bridge defined by 86, 88 and 90) (i.e. it is the examiner’s position that if the post is capable of being affixed to the bridge, it is capable of being removed from the bridge; Figures 3-4, and column 5, lines 39-61).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the invention of Wilk with the first post and the second post each being removable from the bridge in order to provide for affixing or removing the posts if so desired to yield predictable results. Furthermore, it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art (see Nerwin v. Erlichman, 168 USPQ 177, 179).
Allowable Subject Matter
Claims 7, 9 and 11-18 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.
Claim 19 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action.
Claims 20-25 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter. Claims 19-25 in the instant application have not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose, or suggest, in combination with the underlined limitations below, an orthopedic fixation system, comprising: an implant transitionable between a natural shape and an insertion shape whereby a transition of the implant from the natural shape to the insertion shape stores deliverable energy and a transition of the implant from the insertion shape to the natural shape delivers stored energy, the implant, comprising: a bridge with a first end and a second end, a first anchoring segment disposed at the first end of the bridge, a second anchoring segment disposed at the second end of the bridge, a first transition section, a second transition section, and a third transition section disposed along the bridge between the first anchoring segment and the second anchoring segment, whereby the first transition section, the second transition section, and the third transition section deform to move the implant between the natural shape and the insertion shape, a first post protruding from the bridge between the first anchoring segment and the first transition section, the first post including an opening therethrough, a second post protruding from the bridge between the first transition section and the second transition section, the second post including an opening therethrough, a third post protruding from the bridge between the second transition section and the third transition section, the third post including an opening therethrough, a fourth post protruding from the bridge between the third transition section and the second anchoring segment, the fourth post including an opening therethrough, and the first post, the second post, the third post, and the fourth post protruding from the bridge, whereby, when the implant resides in the insertion shape, the openings of the first post, the second post, the third post, and the fourth post align; and an implant retainer being configured to insert in the openings of the first post, the second post, the third post, and the fourth post when the implant resides in the insertion shape, whereby the implant retainer interconnects the first post, the second post, the third post, and the fourth post while spanning the first transition section, the second transition section, and the third transition section, thereby constraining the implant in the insertion shape.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY E WAGGLE, JR whose telephone number is (571)270-7110. The examiner can normally be reached TEAPP: Monday - Friday (8am - 4pm).
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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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/LARRY E WAGGLE, JR/Primary Examiner, Art Unit 3775