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 . This action is in response to the Applicant arguments/remarks made in an amendment received on February 24, 2026. Claims 1-5, 7-12, and 14-22 are currently pending.
Response to Arguments
Applicant's arguments filed February 24, 2026 have been fully considered but they are not persuasive. Regarding claims 1-5, 12, and 14-16, the previously applied prior art references disclose all claim limitations (see the new 35 USC § 103 rejections below).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Dacosta et. al (US Publication 2019/0015140), hereinafter “Dacosta” in view of Chiu et al. (EP 2085039A1).
Regarding claim 1, Dacosta further comprising second and third screws (350,360,370,380, Figure 1) and a bone plate (300, Figure 1) including at least first, second, and third receiving structures respectively sized to receive the first, second, and third screws [paragraph 0061], the first screw including a fully threaded shaft (all screws are fully threaded, see Figure 2).
Dacosta fails to disclose at least a first screw comprising a superelastic material, the first screw having a length sufficient to span a tibia and a fibula at a syndesmosis joint.
Chiu discloses at least a first screw (10, Figure 2) comprising a superelastic material [paragraph 0051], the first screw having a length sufficient to span a tibia and a fibula at a syndesmosis joint [paragraphs 0016-0017 and 0028].
Therefore, it would have been obvious to a person of ordinary skill in the art at the time the invention was modify the system of Dacosta wherein the first screw comprises a superelastic material as taught by Chiu in order to provide a relatively natural range of movement to joints.
Regarding claim 2, the modified Dacosta’s system further comprising a cannulated drill bit (not shown, [paragraph 0079] of Chiu) and a guide wire (150, Figure 2 of Chiu).
Regarding claim 3, the modified Dacosta’s system fails to disclose further comprising a drill bit (270, Figure 2 of Chiu).
Regarding claim 4, the modified Dacosta’s system discloses wherein the first screw comprises nitinol [paragraph 0051 of Chiu].
Regarding claim 5, the modified Dacosta’s system discloses wherein the first screw is solid (see Figure 2 of Dacosta).
Claims 12 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Dacosta et. al (US Publication 2019/0015140), hereinafter “Dacosta” in view of Chiu et al. (EP 2085039A1).
Regarding claim 12, Dacosta discloses a Lisfranc targeting guide (200, Figure 2), a cannulated drill bit (not shown, [paragraph 0079]), and a guide wire (150, Figure 2) [paragraph 0061].
Dacosta fails to disclose at least a first screw comprising a superelastic material, the first screw having a length sufficient to span a tibia and a fibula at a syndesmosis joint.
Chiu discloses at least a first screw (10, Figure 2) comprising a superelastic material [paragraph 0051], the first screw having a length sufficient to span a tibia and a fibula at a syndesmosis joint [paragraphs 0016-0017 and 0028].
Therefore, it would have been obvious to a person of ordinary skill in the art at the time the invention was modify the system of Dacosta wherein at least one screw comprises a superelastic material as taught by Chiu in order to provide a relatively natural range of movement to joints.
Regarding claim 14, the modified Dacosta’s system fails to disclose further comprising a drill bit (270, Figure 2 of Chiu).
Regarding claim 15, the modified Dacosta’s system discloses wherein the at least one screw comprises nitinol [paragraph 0051 of Chiu].
Regarding claim 16, the modified Dacosta’s system discloses wherein the at least one screw includes a fully threaded shaft (Figure 2 depict fully threaded screws, see Figure 2 of Dacosta).
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 DIANA S JONES whose telephone number is (571)270-5963. The examiner can normally be reached Monday to Friday (8am to 4pm EST).
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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.
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/Diana Jones/Examiner, Art Unit 3775
/KEVIN T TRUONG/Supervisory Patent Examiner, Art Unit 3775
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