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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 28, 2026 has been entered.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wentz et al. (US 2016/0270825 A1) in view of Ross et al. (US 2015/0250505 A1) and Bilger et al. (US 2015/0105834 A1).
Claim 11. Wentz discloses an implant for moving bone in a patient's body, the implant comprising:
an implantable biocompatible housing (housing 502) having a first cavity (cavity at first end 504 and located within circle 3C – see also Fig. 3C) and a second cavity (cavity at second end 506 and located within circle 3B – see also Fig. 3B);
a set of adjustment rods comprising:
a first adjustment rod (first threaded driver 528 and first rod 558) at least partially contained within the first cavity; and
a second adjustment rod (second threaded driver 542 and second rod 588) at least partially contained within the second cavity; and
a drive mechanism (driving member 514) configured to drive the set of adjustment rods for controlling translation of the first adjustment rod (see para. 0077, which states that first rod 558 and second rod 588 translate axially) and rotation of the second adjustment rod (see para. 0077, which states that first threaded driver 528 and second threaded driver 542 rotate) (Figs. 1-3C; paras. 0066-0082, 0084, and 0097).
Claim 12. Wentz discloses wherein the drive mechanism includes a magnetic or electronic clutch (see para. 0097, which refers to a slip clutch) positioned coaxially with and between the first and second adjustment rods and being configured to control adjustment of both the first adjustment rod and the second adjustment rod (Figs. 1-3C; paras. 0066-0082, 0084, and 0097).
Claim 13. Wentz discloses wherein the drive mechanism includes a magnetic actuator (magnet 516) configured to be actuated by a magnetic field external to the patient's body (see para. 0084, which states that handpiece 178 generates a moving magnetic field to apply to magnet 516) (Figs. 1-3C; paras. 0066-0082, 0084, and 0097).
Claim 14. Wentz discloses wherein the drive mechanism is the sole drive mechanism of the implant (Figs. 1-3C; paras. 0066-0082, 0084, and 0097).
Wentz fails to disclose that the implant is a long bone implant (claims 11-14) and that the drive mechanism includes a clutch implant having a first gear set for controlling translation of the first adjustment rod and a second gear set for controlling rotation of the second adjustment rod (claim 11).
Ross teaches that an implant comprising a housing (housing 12), adjustment rods (extension elements 16 and 17), and a drive mechanism (drive assemblies 14 and 15) can be used as either a spinal implant or a long bone implant (see para. 0005) and that, when in use as a long bone implant, the implant is configured to be used as such (see para. 0023) (Figs. 1-2).
Bilger teaches that an implant comprises a housing (housing 112) having a cavity (cavity occupied by lead screw 136 and distraction shaft 114), an adjustment rod (lead screw 136 and distraction shaft 114) at least partially contained within the cavity, and a drive mechanism (magnet 134 and planetary gear set 154) configured to drive the adjustment rod, wherein the drive mechanism includes a magnetic actuator (magnet 134) and clutch implant (planetary gear set 154) having a gear set (planetary gear set 154) for controlling translation and rotation of the adjustment rod (see para. 0074, which states that lead screw 136 rotates and distraction shaft 114 translates), wherein the gear set reduces speed and augments torque to increase the distraction force of the implant (see para. 0075) (Figs. 7-8c).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the implant of Wentz such that it is a long bone implant (claims 11-14) and configured to be used as such, as suggested by Ross, as Ross teaches that an alternative use for a telescopic spinal implant is as a telescopic long bone implant. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the implant of Wentz such that the drive mechanism includes a clutch implant having a first gear set for controlling translation of the first adjustment rod and a second gear set for controlling rotation of the second adjustment rod (claim 11), wherein the first gear set is located between the magnetic actuator and the first adjustment rod and the second gear set is located between the magnetic actuator and the second adjustment rod, as suggested by Bilger, as the use of such a gear set reduces speed and augments torque to increase the distraction force of the implant.
Response to Arguments
Applicant’s arguments with respect to claims 11-14 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIANNA N HARVEY whose telephone number is (571)270-3815. The examiner can normally be reached Mon.-Fri. 8:00am-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eduardo Robert can be reached at (571)272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIANNA N HARVEY/Primary Examiner, Art Unit 3773
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