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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/28/2025 has been entered.
Response to Arguments
Applicant's arguments filed 04/28/2025 have been fully considered but they are not persuasive.
Applicant argues: Sommers does not disclose the limitations of the claim directed to the first, second and third portions of the interior of the body portion of the bushing prior to receipt of the set screw.
Response: With regards to the recitation directed to “the portions prior to receipt of the set screw having fully, partially and no threads”, the office is of the position that the claimed phrase “prior to receipt of the set screw” is being treated as a product by process limitation. As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 USC 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. MPEP 2113.
The office respectfully directs the Applicant to the annotated figures of Sommers, which was cited in the previous office action, and below for clarification. In at least the annotated Fig.50 below, the interior portions shows a fully threaded portion “towards the left”, a portion without threads “towards the right”, and a partially threaded portion “between the identified portions”, thereby showing a product with substantially similar structure to that claimed
Furthermore, the office is of the position that it has been held that “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original); and a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)].
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Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102/103 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.
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) 1, 3, 5 – 7, 9, 14 – 17 and 19 – 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sommers et al. (US Pub. 2019/0105087 A1), or alternatively, under 35 U.S.C. 103 as being unpatentable over Sommers et al. (US Pub. 2019/0105087 A1).
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Claim 1, Sommers discloses a system [abstract, Figs. 1 – 50 and annotated Figure to Sommers above] comprising:
a set screw [defined by at least a portion of 84 or 84’] having a plurality of exterior threads [92]; and
a bushing [defined by at least a portion of 82 or 82’] comprising:
a body portion [defined by at least a body portion of 62 or 62’]; and
an opening through the body portion configured to receive a nail [defined by at least a portion of the nail section, which is configured to receive nail 60], wherein the body portion of the bushing comprises:
a plurality of exterior threads [defined by at least a portion of external thread structure 121]; and
an interior [defined by at least a portion of axial opening 128] configured to receive the set screw [Fig. 43], the interior portion comprising a first portion, a second portion, ana third portion prior to receipt of the set screw [see the annotated Figured to Sommers above; the office is of the position that the recitation of “prior to receipt of the set screw” is product by process limitation, and does not specify prior to a first, second or third … etc. receipt of the set screw. In this case, the office respectfully asserts that the interior exhibits a substantially identical structure to that claimed with the three portions prior to at least a second receipt of the set screw], the first portion comprising fully formed interior threads configured to interface with the plurality of exterior threads of the set screw [the body has at least a portion of axial opening 128 including interior threads 90, ¶77, wherein the fully formed interior threads can be defined by at least a portion of threads 90 by the annular portion, see Figures to Sommers above], the second portion comprising partially formed interior threads configured to interface with the plurality of exterior threads of the set screw [defined by at least a portion of axial opening 128 by the nail section including threads 418, and/or threads 90, wherein the partially formed interior threads can be defined by at least a portion of threads 90 by the interrupted portion and/or threads 418 away from the annular portion, see Figure to Sommers above], and the third portion without interior threads [the body has at least a portion of axial opening 128 by the nail section, by a distal end of the set screw does not have threads, see Figures to Sommers above], wherein the set screw is configured to be advanced into the first portion, the second portion and the third portion of the interior of the bushing to apply compressive force to the nail received by the opening [best seen in Figs 46 – 50, and Figures to Sommers above].
Sommers discloses the limitations of claim 1, as above, and further, Sommers discloses:
(claim 3) wherein a threading of the interior gradually tapers from the first portion with the fully formed interior threads to the second portion with the partially formed interior threads [¶165, interior threads corresponds to threads 92/418 of set screw, i.e. Fig.46, ¶165]; (claim 5) wherein the second portion with the partially formed interior threads is disposed between the first portion with the fully formed interior threads and the third portion without the interior threads [in this configuration, the fully formed internal threads will be interpreted as being a portion of 90, the partially formed interior threads will be interpreted as being a portion of 418, Fig. 50 above]; (claim 6) wherein a threading of the interior gradually tapers from the second portion with the partially formed interior threads to the third portion without the interior threads [¶165, interior threads corresponds to threads 92/418 of set screw, i.e. Fig.46]; (claim 7) wherein the second portion with the partially formed interior threads is longer than the first portion with the fully formed interior threads with respect to a length of the bushing [Fig. 50 above and Fig.14]; (claim 9) wherein the first portion with the fully formed interior threads comprises at least two first portions with the fully formed interior threads and the second portion with the partially formed interior threads comprises at least two second portions with the partially formed interior threads, wherein the at least two first portions with the fully formed interior threads and the at least two second portions with the partially formed interior threads are alternately disposed [Figure above, wherein at least two axial portions of the fully threaded portion and at least two axial portions of the partially threaded portion are alternately disposed, Sommers device exhibits substantially identical configuration to that of the present application]; (claim 14) wherein the set screw further includes a non-threaded end portion at its leading end [Figure 43 above, leading end]; (claim 15) wherein the plurality of exterior threads of the set screw extend along its entire length except for the non-threaded end portion [Figure above, threads 92]; (claim 16) wherein the set screw further includes a tapered lead end [Fig. 46, ¶165]; (claim 17) the nail [nail 60]; (claim 19) wherein the set screw is made of a material having a greater hardness than a material of which the bushing is made [¶340]; (claim 20) wherein the bushing further comprises a nipple extending from the body portion [¶81 and Figure above, component 108].
Assuming Applicant does not agree with the interpretation directed to the threaded portions prior to the receipt of the set screw, currently presented in claim 1.
The office takes alternative interpretation, wherein this would simply be a matter of design choice to one skilled in the art before the effective filing date of the current application to construct the at least first and second portions of the interior wall having preformed threads to ensure alignment of the sect screw relative to the bushing and avoid cross-threading [¶168], since applicant has not disclosed that such solve any stated problem or is anything more than one of numerous shapes or configurations a person ordinary skill in the art would find obvious for the purpose of providing a connection between the set screw and the bushing. In re Dailey and Eilers, 149 USPQ 47 (1966).
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 SAMUEL S. HANNA whose telephone number is (571)270-3248. The examiner can normally be reached 8-5 M-F.
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/SAMUEL S HANNA/Primary Examiner, Art Unit 3775