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 § 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.
Claim 5 is 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 5 discloses that “the weakened region is devoid of any reinforcement strands” claim 4 which claim 5 depends from claims “the weakened region includes at least one strand oriented in a direction…” It is unclear how claim 5 can have no strands when it depends from claim 4 which requires at least one strand. This makes claim 5 indefinite.
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)(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.
Claim(s) 1, 3-10, 12, 13, 15-16 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beyar et al. (US Pub 2022/0160400).
With respect to claim 1, Beyar discloses an anisotropic surgical instrument (fig 9. 162) comprising: a first reinforced region (shaft 174) including a first at least one reinforcement strand that is embedded in a solidified polymer(paragraph 29, “ reinforcing filaments embedded in a polymer matrix”),a weakened region (fig 9, 170, collar, paragraph 670 only one component can be formed of the composite and paragraph 128 collar is slightly deformable and can have fibers is different directions (paragraph 144) or that includes the solidified polymer and one of :i) none of the first plurality of strands embedded in the solidified polymer (paragraph 670 one component has the fibers); and ii) a density of the first plurality of strands less than that of the first reinforced region (paragraph 144 and paragraph 289 different percentage of fibers used) wherein the first reinforced region is a first directionally reinforced region whereby the first at least one reinforcement strand is oriented substantially along a first direction that is oriented substantially along a direction of a force applied to the first reinforced region during use (paragraph 137, fibers parallel to the longitudinal axis)(paragraph 286 states this aligns the fibers to provide the screw with resistance to axial tension load)(additionally the fibers can be wrapped to form a helix in paragraph 286). With respect to claim 3, Beyar discloses wherein the first at least one reinforcement strand is oriented substantially along a first direction that is oriented substantially along a direction of a primary force applied to the first reinforced region during use (paragraph 137 along the axis). With respect to claim 4, Beyar discloses wherein the weakened region includes at least one strand oriented in a direction other than the first direction (paragraph 144 fibers are in a U-shape). With respect to claim 5, Beyar discloses wherein the weakened region is devoid of any reinforcement strands embedded in the solidified polymer (paragraph 670 discloses the fibers material can be in one component). With respect to claim 6, Beyar discloses wherein the solidified polymer of the weakened region is monolithic and unitary with the solidified polymer of the first directionally reinforced region (fig 9 and paragraph 445 , “single unit component”). With respect to claim 7, Beyar discloses wherein the first at least one reinforcement strand comprises a first plurality of reinforcement strands (paragraph 29, “filaments”). With respect to claim 9, Beyar discloses wherein the first direction is substantially straight and linear (paragraph 137, parallel to the axis). With respect to claim 9, Beyar discloses comprising a handle portion(fig 9, 174) and a torsional driving portion (fig 9, 170, has the driving elements to drive the screw) that is defined by the first directionally reinforced region, wherein the torsional driving portion is configured to deliver a torsional force along a central axis, and the first direction defines a substantially curved path about the central axis (paragraph 697 can have fibers wound around circumferentially). With respect to claim 10, Beyar discloses wherein the curved path substantially defines a helix (paragraph 286). With respect to claim 12, Beyar discloses wherein the torsional driving portion comprises a screw driving head (paragraph 330, screw head). With respect to claim 13, Beyar discloses wherein at least some of the first at least one reinforcement strand comprises carbon (paragraph 119). With respect to claim 15, Beyar discloses wherein at least some of the first at least one the reinforcement strand is fibrous (paragraph 119, “carbon fibers”).
With respect to claim 16, Beyar discloses an anisotropic surgical instrument comprising: a shaft (fig 9, 174) that extends along a central axis, from a proximal end to a distal end, and a head (fig 9, 170) that extends from the distal end, wherein at least a portion of the shaft includes a solidified polymer and at least one reinforcement strands that is embedded in the solidified polymer (paragraph 119) and oriented substantially helically about the central axis (paragraph 697 can have fibers wound around circumferentially), and wherein the shaft is configured to rotate such that the head transmits a torsional force (screw rotates when inserted). With respect to claim 18, Beyar discloses wherein the head defines a screw driving head (paragraph 330, driving head). With respect to claim 19, Beyar discloses wherein the screw driving head defines a cruciform (paragraph 330, cross-shaped). With respect to claim 20, Beyar discloses wherein the screw driving head defines a socket (slot).
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.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beyar et al. (US Pub 2022/0160400) in view of Omohundro et al. (US Pub 2019/0038295).
Beyar discloses the claimed invention with caron fibers to reinforce the polymer (paragraph 119). Beyer does not disclose glass fibers to reinforce the polymer.
Omohundro discloses both carbon fibers and glass fibers embedded in a polymer (paragraph 54) to reinforce the polymer (paragraph 54).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute carbon fibers of Beyar with the glass fibers in view of Omohundro because carbon fibers and the glass fibers are mere functional equivalents, and because such a substitution of one for the other would have achieved the same predicable result of reinforcing the polymer.
Response to Arguments
Applicant's arguments filed 12/1/2025 have been fully considered but they are not persuasive. With respect to the 112 rejection of claim 5 the applicant stated that claim 5 now depends from claim 1 instead of claim 4. This change was not included in the claim amendments and as such the 112 rejection is maintained. Amending the claim such that it does depend from claim 1 would overcome the rejection.
With respect to claim 1, the applicant argues that Beyar does not disclose the fibers oriented for resistance for torsional forces. The examiner respectfully disagrees. Claim 1 does not require torsional forces. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., resistance to torsional forces) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Beyar teaches the fibers can be oriented longitudinally to make the screw resistant to axial tension loads (paragraph 286) which Beyar teaches that screws undergo. Additionally even if torsional force resistance was required as in claim 16, Beyar does teach screws formed with PEEK tapes that can be wrapped around and at an angle with the axis (paragraphs 286-287 and 697).
With respect to claim 16, the applicant argues that Beyar does not teach the fibers are wrapped helically around the axis. The examiner respectfully disagrees. Paragraph 697 discloses that the fibers are wrapped around circumferentially such that it translates a pushing force to tension. For that to happen wound fibers would need to be helically around the fastener. Paragraph 704 further clarifies this in that the fastener is disclosed having fibers wound circumferentially around and at an angle relative to the axis. Additionally paragraph 286 and 287 states that the fibers can be formed on components such as screw in the form a PEEK fiber tape and that the tape can be wrapped to form a helix.
To overcome the Beyar reference the examiner suggests claiming how the material is formed in a materially different way to Beyar as disclosed in paragraphs 79 and 80.
The applicant does not individually argue the 103 rejection of claim 14.
The rejections are deemed proper.
Conclusion
THIS ACTION IS MADE FINAL. 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 STEVEN J COTRONEO whose telephone number is (571)270-7388. The examiner can normally be reached Monday-Friday 9am-5pm EST.
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, 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.
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.
/S.J.C/Examiner, Art Unit 3773 /EDUARDO C ROBERT/Supervisory Patent Examiner, Art Unit 3773
Prosecution Insights