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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/20/2026 has been entered.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 24-32, 34-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanders (U.S. Pub. No. 2010/0312249 A1, hereinafter “Sanders”) in view of Weisel et al. (U.S. Pub. No. 2006/0069399 A1, hereinafter “Weisel”).
Sanders discloses, regarding claim 24, a method of retrieving a bone tie (48, see Fig. 1), the method comprising: forming a first lumen through a first bone portion and a second bone portion (see annotated Fig. 1 below); forming a second lumen in the second bone portion (see annotated Fig. 1 below); and advancing a retriever portion of a bone tie retriever into the second lumen (see annotated Fig. 1 below), the bone tie retriever comprising a depth stop (32) having a larger diameter than the retriever portion of the bone tie retriever (see Fig. 1, see para. [0041]), wherein a catch of a catcher mechanism is configured to slide (see annotated Fig. 1 below), wherein the bone tie retriever is advanced into the second lumen until the depth stop (32) abuts a surface of the second bone portion (see Fig. 1, see para. [0041]), wherein the depth stop positions the retriever portion relative to the first lumen (see Fig. 1, see para. [0041]).
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Regarding claim 25, wherein the first lumen is curved (see Fig. 1, e.g. curved about the circumference).
Regarding claim 26, wherein the second lumen is straight (see Fig. 1, e.g. straight along the longitudinal axis).
Regarding claim 27, further comprising advancing a bone tie advancer (see annotated Fig. 1 above) and the bone tie (48) through the first lumen (see annotated Fig. 1 above).
Regarding claim 28, further comprising positioning a head (50, e.g. bead, see para. [0044]) of the bone tie within the retriever portion (see paras. [0044]-[0045]).
Regarding claim 29, further comprising capturing a head (50, e.g. bead, see para. [0044]) of the bone tie within the retriever portion (see paras. [0044]-[0045]).
Regarding claim 30, further comprising removing the bone tie retriever and the bone tie from the second lumen (see para. [0048]).
Regarding claim 31, further comprising adjusting the position of the depth stop (see para. [0041]).
Sanders discloses, regarding claim 32, a method of retrieving a bone tie (48, see Fig. 1), the method comprising: forming a first lumen through a first bone portion and a second bone portion (see annotated Fig. 1 above); forming a second lumen in the second bone portion (see annotated Fig. 1 above); advancing a retriever portion of a shaft of a bone tie retriever into the second lumen (see annotated Fig. 1 above), the bone tie retriever comprising a depth stop (32) protruding laterally from the shaft of the bone tie retriever (see Fig. 1, see para. [0041]), a catcher mechanism (see annotated Fig. 1 above), wherein the depth stop limits the depth of penetration of the bone tie retriever relative to the second bone portion when the depth stop abuts the second bone portion (see Fig. 1, see para. [0041]); and removing the bone tie retriever (see para. [0048]).
Regarding claim 34, wherein the first lumen and the second lumen intersect (see Fig. 1).
Regarding claim 35, wherein the depth stop positions the bone tie retriever relative to a bone tie advancer (see Fig. 1).
Regarding claim 36, wherein the depth stop facilitates alignment of a channel of the retriever portion with the first lumen (see Fig. 1).
Regarding claim 37, wherein a head (50, e.g. bead, see para. [0044]) of the bone tie is retained by the bone tie retriever (see paras. [0044]-[0045]).
Regarding claim 38, further comprising advancing the catcher mechanism to retain a head (50, e.g. bead, see para. [0044]) of the bone tie within the retriever portion (see paras. [0044]-[0045]).
Sanders fails to disclose, regarding claim 24, wherein the catch is configured to slide only distal to the depth stop, and regarding claim 32, wherein the depth stop is proximal to one or more alignment features that facilitate sliding of the catcher mechanism.
Weisel discloses a method of using a surgical suturing device (10, see Figs. 1-3), to retrieve a bone tie (32) with a catch (28), the catch is configured to slide only distal to the depth stop (see Fig. 3, see para. [0071], note that shoulder stops 31 prevent distal sliding past 14) and includes one or more alignment features (18) that facilitate sliding of the catcher mechanism (see Figs. 1-2) that are proximal to the depth stop (e.g. 14, see Fig. 1) in order to prevent the catch from entering the shaft in the retracted position (see para. [0071]) and in order to enable the surgeon to retract and extend in a controlled manner with a thumb slide (see para. [0073]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the catch in Sanders to be configured to slide only distal to the depth stop and to include one or more alignment features proximal to the depth stop in view of Weisel in order to in order to prevent the catch from entering the shaft in the retracted position and in order to enable the surgeon to retract and extend in a controlled manner with a thumb slide.
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanders in view of Weisel, as applied to claim 32 above, and in further view of Alamin et al. (U.S. Pub. No. 2006/0004367 A1, hereinafter “Alamin”).
Sanders in view of Weisel discloses all of the features of the claimed invention, as previously set forth above. Sanders further discloses creating lumens in the bone of the patient which may be other locations, than shown (see para. [0016]), however fails to explicitly disclose, regarding claim 33, wherein the first lumen extends through the facet joint space.
Alamin discloses a method of creating opposing lumens through a facet joint (see Fig. 2, see para. [0045]) in order to enable the surgeon to apply compressive forces across the facet joints to promote fusion and / or stabilizing the joints (see para. [0045]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the method in Sanders in view of Weisel to be used in the spine and to have the lumens extending through the facet joint space in further view of Alamin in order to enable the surgeon to use the bone tie, tools, and method in other locations such as enabling the surgeon to apply compressive force across the facet joints to promote fusion and/or stabilizing the joints.
Claim(s) 39-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fallin et al. (U.S. Pub. No. 2017/0112511 A1, hereinafter “Fallin”) and in view of Howlett et al. (U.S. Pub. No. 2011/0054483 A1, hereinafter “Howlett”).
Fallin discloses, regarding claim 39, a method of retrieving a bone tie (191, see Figs. 1, 5-8, see para. [0043]), the method comprising: advancing a retriever portion (see annotated Fig. 7 below) of a bone tie retriever (110) into a lumen of a bone portion (see annotated Fig. 5 below), wherein the bone tie retriever is advanced into the lumen a depth (150) relative to a surface of the bone portion (e.g. surface of 198), wherein the bone tie retriever extends into the bone portion a predetermined distance (see Fig. 5, see paras. [0039]-[0040]); and retrieving the bone tie with the bone tie retriever (see para. [0037] “passer 136 may then be used to pull a flexible element such as, for example, a passing suture or a repair suture through the tunnel members 110, 120 to pass the flexible element through, for example, a bone”).
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Regarding claim 40, further comprising aligning a channel (146) of the bone tie retriever with a curved lumen (166, see Fig. 7).
Regarding claim 41, wherein the lumen is straight (see Fig. 5, see para. [0039] “tunnel”).
Regarding claim 25, wherein the first lumen is curved (see Fig. 5, see para. [0040] “cylindrical”).
Regarding claim 42, wherein the depth stop is positioned proximal (note that when 188 is positioned within 146 and 166, the depth stop is positioned proximal) to a catcher mechanism (188).
Regarding claim 43, further comprising retaining a head (e.g. end of 191 placed in loop 188) of the bone tie within the retriever portion (see para. [0043]).
Fallin discloses indicia (150) to indicated a depth of penetration into the bone (see para. [0039]); however, fails to explicitly disclose, regarding claim 39, the bone tie retriever comprising a depth stop larger than the lumen, wherein the bone tie retriever is advanced into the lumen until the depth stop abuts an outer surface of the bone portion, wherein the bone tie retriever extends into the bone portion a predetermined distance; and wherein the depth stop is fixed relative to the retriever portion of the bone tie retriever.
Howlett discloses a drill bit (102) for insertion into a bone (see Figs. 1-3, see para. [0009]) with an adjustable depth stop (106, see paras. [0009] and [0015]) that abuts the surface of the bone (see para. [0009]) and has a larger diameter / extends laterally from the drill bit (see Fig. 1) and wherein the depth stop is fixed relative to the retriever portion of the bone tie retriever (note that once the snap fit is engaged the depth stop is considered fixed relative to the sleeve / drill bit, see para. [0018] “snap-fit is sufficient to secure the stop 106 both rotationally and axially relative to the sleeve 104 and, in turn, drill bit 102”) in order to provide the surgeon with careful and precise control over the depth of the bore and provide the surgeon with added safety against drilling the bore too deep (see para. [0009]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the bone tie retriever in Fallin to comprise a depth stop having a larger diameter / laterally protruding than / from the retriever portion of the bone tie retriever, wherein the bone tie retriever is advanced into the second lumen until the depth stop abuts a surface of the bone, and adjusting the position of the depth stop in view of Howlett in order to provide the surgeon with careful and precise control over the depth of the insertion and provide the surgeon with added safety against too deep insertion.
Response to Arguments
Applicant’s arguments with respect to claim(s) 24-38 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.
Applicant's arguments filed 2/20/2026, with respect to claim(s) 39-43 have been fully considered but they are not persuasive.
The Applicant asserts that Fallin in view of Howlett fails to disclose, regarding amended claim 39, wherein the depth stop is fixed relative to the retriever portion of the bone tie retriever.
The Office respectfully disagrees. As set forth above, while adjustable, the depth stop in Howlett is considered to be fixed, since Howlett discloses that snap-fit that is sufficient to secure the stop both rotationally and axially, e.g. fixed relative when the snap fit is engaged.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michelle C. Green whose telephone number is (571)270-7051. The examiner can normally be reached on Monday-Friday between 9am-5pm.
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/M.C.G/ Examiner, Art Unit 3773 /EDUARDO C ROBERT/ Supervisory Patent Examiner, Art Unit 3773