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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Denham et al (US Patent Pub. 20210330311A1).
Denham recites bone displacement system. Specifically in regards to claim 1, Denham recites an anchoring portion (124) having an aperture (123, Fig. 1-3) for receiving a wire (212) configured to connect the anchoring portion (124) to a proximal bone (Fig. 3 and 13; and Para. [0053]). A flexing mechanism (40) connected to said anchoring portion (124) and having a rail (32 and rail shown in Fig. 11 for up/down movement of 42) and a holding portion (42) movable on said rail, said rail (32) being curved about a center of rotation located toward a bottom of said flexing mechanism (40) and toward the proximal bone (Fig. 2 and 7-13 and Para. [0042]-[0044],[0047],[0051]-[0053]). A distal body (35) connected to said holding portion (42), said distal body (35) having an aperture (132) for receiving a wire (210) to connect said distal body (35) to a distal bone, and said flexing mechanism (40) configured to move said distal body (35) relative to said anchoring portion (124) by a movement of said holding portion (42) on said rail (32) and about the center of rotation to flex the proximal bone relative to the distal bone (Connecting portion 45 connects trolley30 with mechanism 40, and allows for movement of trolley 30.) (Fig. 2 and 7-13 and Para. [0042]-[0044],[0047],[0051]-[0053]).
In regards to claim 2, Denham recites a screw (67) engaging the rail (rail on arm 60, Fig. 18) and the holding portion (42) to allow movement of the holding portion (42) and the distal body (35) relative to the anchoring portion (124) when a user drives said screw (67), the distal body (35) is configured to connect to the distal bone and the anchoring portion (124) is configured to connect to the proximal bone (Fig. 13 and 18-20; and Para. [0058]-[0059]).
In regards to claim 3, Denham recites a tool engaging portion (20) connected to said anchoring portion (124) and configured to connect a tool (50/250) thereto (Fig. 1.; and Para. [0042],[0054]).
In regards to claim 4, Denham recites wherein said tool (50) comprises a paddle (55), the paddle (55) releasably connected to the tool engaging portion (20) and configured to be received between the proximal bone and the distal bone for locating the anchoring portion (124) relative to the proximal bone and said distal body relative to the distal bone (Fig. 1-6; and Para. [0042],[0045]-[0046]).
In regards to claim 5, Denham recites wherein said tool (250) comprises a cut guide releasably connected to the tool engaging portion (20) and having a first cut slot (252) and a second cut slot (253) configured for cutting the proximal bone and/or the distal bone (Fig. 14-16; and Para. [0054]-[0057]).
In regards to claim 6, Denham recites a compression distraction fixture connected to said flex mechanism (40), wherein said compression distraction fixture comprises a rack mobile portion (arm 60), a rack and a screw (67) engageable by a user, the compression distraction fixture configured to cause movement of the rack mobile portion relative to the rack to cause a compression or a distraction of the proximal bone relative to the distal bone when the proximal bone is connected to the anchoring portion (124) and the distal bone is connected to the distal body (35) (Connecting portion 45 connects trolley30 with mechanism 40, and allows for movement of trolley 30.) (Fig. 2 and 7-13, 18-19 and Para. [0042]-[0044],[0047],[0051]-[0053],[0058]-[0059]).
In regards to claim 7, Denham recites wherein the distal body (35) comprises a trolley mobile portion moveably engaged with a rail (32) and the rail has a rail longitudinal axis, the compression distraction fixture (40) having an arm mobile portion (60) engaged with a rack and the rack having a rack longitudinal axis, said rail longitudinal axis and said rack longitudinal axis being about perpendicular to each other (Fig. 1-3 and 13).
In regards to claim 8, Denham recites a method for use in bone displacement. Specifically, Denham recites inserting a first wire (212) through an anchoring portion (124) of a bone displacement mechanism into a first bone, the anchoring portion (124) connected to a curved rail (32 connected to 124 by means of 40); inserting a second wire (210/211) through a distal body (30) of the bone displacement mechanism distal to the anchoring portion (124) into a second bone distal to the first bone, the distal body (35) connected to a holding portion (35); and moving the holding portion (35) on the curved rail (32) to move the distal body (30) relative to the anchoring portion (124) and about a center of rotation of the curved rail (32) to flex the first bone relative to the second bone (Fig. 10-19; and Para. [042]-[0044],[0047]-[0048],[0050]-[0059]).
In regards to claim 9, Denham recites releasably connecting an alignment paddle (55) to the bone displacement mechanism and inserting the paddle (55) between a first bone and a second bone (Fig. 1-6; and Para. [0042],[0045]-[0046]).
In regards to claim 10, Denham recites releasably connecting a bone cut guide (250) to the bone displacement mechanism and cutting the first bone through a slot (252/253/256/258) of the bone cut guide and cutting the second bone through a second slot (252/253/256/258) of the bone cut guide (Fig. 14-16; and Para. [0054]-[0057]).
Response to Arguments
Applicant’s amendments filed on 10/2/25 have overcome the previous 101 and 112 rejection which are now withdrawn.
Applicant's arguments filed on 10/2/25 have been fully considered but they are not persuasive. Applicant states that the Statement regarding the disclosure of common ownership filed on 10/2/25 overcomes the 102(a)(2) rejection of the claims over Denham. However, the statement does not make the common ownership clear and concise enough. For example, the statement does not recite whether Medartis AG, or Nextremity Solutions, Inc., or some third party corporation owns the patentable material; or the exact date the material became commonly owned and therefore no longer useable as a reference. In addition, the statement also does not state whether the material was gleaned from the same inventive entity. Consequently, without this information the statement provided by the applicant cannot be said to provide a clear and conspicuous notice that the patents were commonly owned. Thus, the continued rejection of the claims is proper.
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 MARCELA I SHIRSAT whose telephone number is (571)270-5269. The examiner can normally be reached M-F 9:00am-5:30pm MST.
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, Kevin Truong can be reached 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 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.
/MARCELA I. SHIRSAT/ Primary Examiner, Art Unit 3775