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 § 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) 1-5, 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cherkashin et al. (US Pub 2013/0215114) in view of Mikheev et al. (US Pub 2016/0042571).
With respect to claim 1, Cherkashin discloses an external fixation frame (see figs 1A and 5D below) comprising; first and second support rings (fig 5D, 632); one or more wires or bone pins coupled to any of the first and second support rings (paragraph 99); one or more struts extending between the first and second support rings (fig 5, 634), and a reference body (fig 5D and 1A, 12) including a plurality of markers (fig 1A 14 , the reference body contacting any of the one or more wires, bone pins and struts (Shown connected to the rings), wherein the plurality of markers are arranged in a pattern to identify an orientation of the external fixation frame (paragraph 64). With respect to claim 2, Cherkashin discloses wherein the orientation of the external fixation frame is with respect to an adjacent bone (fig 5D). With respect to claim 3, Cherkashin discloses wherein the external fixation frame is coupled to the bone (paragraph 82). With respect to claim 4, Cherkashin discloses wherein the plurality of markers are radiopaque (paragraph 50). With respect to claim 5, Cherkashin discloses wherein an orientation of the external fixation frame with reference to the bone in an image is determined from the pattern (paragraph 51). With respect to claim 9, Cherkashin discloses wherein a scale of the external fixation frame with reference to the bone in an image is determined from the pattern (paragraph 63 discloses the markers being used for the scale). With respect to claim 10, Cherkashin discloses wherein the reference body defines a cuboid (fig 1A).
Cherkashin discloses the claimed invention except for the reference body directly contacting the strut.
Mikheev discloses a reference body (fig 3, 303) directly contacting the strut (paragraph 43 and fig 3, 303 shown on the struts) to determine the 3D positioning while using less markers (paragraph 52)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Cherkashin to include the reference body directly contacting the strut in view of Mikheev in order to determine the 3D positioning while using less markers.
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Claim(s) 12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cherkashin in view of Mikheev as applied to claim 1 above, and further in view of Funk et all (US Patent 7,406,775).
With respect to claim 12 and 14, Cherkashin in view of Mikheev discloses the claimed invention except for wherein the plurality of markers are cylindrical bodies wherein a first set of cylindrical bodies extend from a first face of the cuboid and a second set of cylindrical bodies extend from a second face of the cuboid.
Funk discloses a reference body being a cuboid (fig 15B) wherein the plurality of markers (fig 15B, 920s, 935, 940 and 945) are cylindrical bodies (Fig 15D) wherein a first set of cylindrical bodies (fig 15D, 920s) extend from a first face (fig 15D) of the cuboid and a second set of cylindrical bodies (Fig 15D, 935, 940 and 945) extend from a second face (fig 15D) of the cuboid to effectively determine the orientation of the body with respect to the bone in a 2D image (col. 18, ll. 39-67).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Cherkashin in view of Mikheev to include wherein the plurality of markers are cylindrical bodies wherein a first set of cylindrical bodies extend from a first face of the cuboid and a second set of cylindrical bodies extend from a second face of the cuboid in view of Funk in order to effectively determine the orientation of the body with respect to the bone in a 2D image.
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Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cherkashin in view of Mikheev and in view of Funk as applied to claim 12 above, and further in view of Messerli et al. (US Patent RE46,647).
With respect to claim 13, Cherkashin in view of Mikheev and in view of Funk discloses the claimed invention with the markers being a cylindrical body to be identified in an X-ray (Col. 18, ll. 38-40 of Funk) and does not disclose that cylindrical body including threads.
Messerli discloses both cylindrical bodies (pins) and cylindrical bodies with threads (screws) (col. 3, ll. 13) being used to be identified in an x-ray (Col. 3, ll. 15).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the cylindrical bodies (a pin) of Cherkashin in view of Mikheev and in view of Funk with the cylindrical bodies with threads (a screw) in view of Messerli because a cylindrical body and the a cylindrical body with threads are mere functional equivalents, and because such a substitution of one for the other would have achieved the same predicable result of being used to be identified in an x-ray.
Response to Arguments
Applicant’s arguments, see remarks, filed 8/18/2025, with respect to the U.S.C. 101 rejection of claims 2-5 and 9 have been fully considered and are persuasive due to the amendment. The U.S.C. 101 rejection of claims 2-5 and 9 has been withdrawn.
Applicant’s arguments with respect to claim(s) 1-5, 9, 10 and 12-14 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
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.
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/S.J.C/ Examiner, Art Unit 3773 /EDUARDO C ROBERT/ Supervisory Patent Examiner, Art Unit 3773