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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-4 and 6-7) in the reply filed on 1/16/26 is acknowledged.
Claim 8-12, 14, 16, 18-19, 21-22, 34-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/16/26.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim limitation recites “at an intermediate location between the first end the second end;” at lines 9-10 which is believed should recite “at an intermediate location between the first end and the second end;” (emphasis added). Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1 and 7 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
In claim 1 at line 14 the limitation recites “the one or more bone engaging features grip the first bone;”; and
In claim 7 at lines 1-2 the limitation recites “wherein the first and second bones each comprise one of a cuneiform bone, a metatarsal, a cuboid bone, or a navicular bone.”
These limitation cannot be satisfied without the inclusion of the human organism, or the first or second bones or the cuneiform bone, a metatarsal, a cuboid bone, or a navicular bone, therefore, applicant is claiming these bones as part of the invention. Instead, applicant should use “adapted to” or “configured to” language to overcome the 101 rejection.
Claims 2-4 and 6 are rejected under 35 USC 101 since they do not rectify the issues of the claim from which they depend.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent Pub. 20180296257A1 to Penzimer et al; and US Patent Pub. 20200305940A1 to Hollis et al were both considered in regards to the claims. Penzimer discloses a bone plate disclosing a bone plate having apertures for holding a post at one end and a screw at another end while a staple at an intermediate portion however, the staple does not have a post engaging member (see Fig. 5 and 17). While the Hollis reference has a plate member having a screw aperture and a screw at one end and an undercut portion that engages a post member and a post at the other end, a staple having a bridge, a bone engaging member and a post engaging member that engages the central area of the post (see Fig. 1a-1c). Neither reference nor the combination of references gives rise to the claimed limitations. Therefore, the claims of the instant application have not been rejected using prior art because none of the references or reasonable combinations thereof could be found which disclose or suggest all of the features of the claims, and there is no reasonable motivation to modify the art of record to have these features. Furthermore, attempting to modify the references to have all the cited limitations would destroy the proposed inventions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELA I SHIRSAT whose telephone number is (571)270-5269. The examiner can normally be reached M-F 9:00am-5:30pm MST.
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/MARCELA I. SHIRSAT/ Primary Examiner, Art Unit 3775