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 .
Response to Arguments
Applicant's arguments filed December 15, 2025, regarding the 35 U.S.C. 102 rejection of claims 1, 13, and 14, have been fully considered but they are not persuasive.
Applicant’s arguments with respect to the 35 U.S.C. 103 rejection of claim 3 have been fully considered and are persuasive. The rejection has been withdrawn.
Regarding the rejection of independent claim 1, Applicant argues:
Applicant's claim 1 recites, among other features, "the fixator comprising a rigid planar member having a pair of parallel opposite sides, wherein the planar member comprises." Thus, claim 1 recites that the member is "planar," i.e., in the form of a plane.
The device shown in Tredinnick et al. (Fig. 1 below) is not planar, but in the shape of an elongate rod with an approximately square cross-section.
Examiner respectfully disagrees. Applicant’s claimed definition of planar meaning “in the form of a plane” is not supported by the specification. [0118] of the application’s specification describes that “the planar member 2 may have a thickness of about 2 to 3 mm, whereas the walls 50, 60 may each have a thickness of about 4 mm.” Does a thickness of 2-3 mm qualify as “in the form of a plane?” At what thickness does a member transition from “planar” to “rod?” The device of Tredinnick clearly shows opposing planar, parallel opposite sides 221 and 222.
Applicant argues:
Accordingly, the device shown in Tredinnick et al. could not be used in the manner of the inventive device because it could not be fitted between two adjacent fingers of a patient on account of its shape.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “fitted between two adjacent fingers of a patient on account of its shape”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claim simply reads “an external fixator for fixation of a fractured joint.”
Applicant argues that
The Office has identified slot 230 in the device of Tredinnick et al. as the claimed "main slot" thereof and the holes 236A and 236B as through holes which fulfil the requirement of claim 1 that they should be "normal to the parallel opposite sides" of the device, which they are in the embodiment shown below in Fig. 6 of Tredinnick et al. However, slot 230 in Tredinnick et al. is not radially aligned with either of the holes 236A and 236B.
Examiner respectfully disagrees. The rejection reads:
The planar member comprises a circular through hole (236) normal to the parallel opposite sides (Fig. 1, [0070]), and a rectilinear main slot (230) connecting the parallel opposite sides with each other [0061]. The main slot (230) is radially aligned with the through hole (236, Fig. 1).
Please see annotated Fig. 1 below, and the hole designated by ref. 236.
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Applicant argues that:
Finally, claim 1 recites that the claimed main slot "has a dentilated inner surface." The Office's reliance on cylindrical apertures 232, 233, 234, and 235 do not constitute a dentilated inner surface of a main slot.
Examiner respectfully disagrees. [0078] of the application’s specification reads “As the enlargement of FIG. 1 shows, the main slot 10 has a pair of opposing inner surfaces 12, which are both dentilated, corrugated or serrated. Thus, a rectilinear rod or wire passed through the main slot 10 is restrained by the pair of dentilated inner surfaces 12 of the main slot 10 from sliding freely along the main slot 10 in the direction indicated by the arrows Y-Y′.” The configuration of Tredinnick, including wider diameter portions formed by 232, 233, 234, and 235 and the narrow portions connecting therebetween, seen in Fig. 2, is capable of restricting sliding of a rod along main slot 230.
Applicant argues that:
Applicant's claim 13 recites, among other features, "wherein the rigid planar member comprises a tail located at an opposite end of the main slot from the through hole." The relied upon device shown in Tredinnick et al. clearly has no distinct part which could be clearly identified as a "tail" within the terms of claim 13. Accordingly, claim 13 is allowable over Tredinnick et al. for this additional reason, including its dependance on claim 1. Claim 14, which depends from claim 13, is allowable over Tredinnick et al. for at least the same reasons as claims 1 and 13 in addition to its novel features recited therein.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “a distinct part”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further defining the tail may be sufficient to overcome the rejection.
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Allowable Subject Matter
Claims 16-25 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach or disclose a kit comprising a congruent pair of external fixators wherein each of the pair of external fixators comprises a rigid planar member having a pair of parallel opposite sides, and wherein the planar member comprises a circular through hole normal to the parallel opposite sides, and a rectilinear main slot connecting the parallel opposite sides with each other, wherein the main slot is radially aligned with the through hole, and has a dentilated inner surface.
Claims 2, 3 and 4-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach or disclose wherein the dentilated inner surface of the main slot comprises a first plurality of dentilations, each tapering in a direction along the main slot which is away from the through hole.
The prior art fails to teach or disclose wherein the rigid planar member is made of a radio-transparent material and the external fixator further comprises a circular arc of radio-opaque material centered on the through hole.
The prior art fails to teach or disclose wherein the rigid planar member further comprises a subsidiary slot connecting the parallel opposite sides with each other, wherein the subsidiary slot extends away from the through hole, oblique to the main slot, and has a dentilated inner surface.
The prior art fails to teach or disclose wherein the rigid planar member has a shape which is reflection-symmetric about a longitudinal axis, and the through hole and the main slot lie on the longitudinal axis.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 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.
Claims 1, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2018/0028272 to Tredinnick et al.
As to Claim 1, Tredinnick discloses an external fixator (100) for fixation of a fractured joint (Fig. 1, fixation described in [0070]). The fixator comprises a rigid planar member (200) having a pair of parallel opposite sides (221 and 222, [0074]). The planar member comprises a circular through hole (236) normal to the parallel opposite sides (Fig. 1, [0070]), and a rectilinear main slot (230) connecting the parallel opposite sides with each other [0061]. The main slot (230) is radially aligned with the through hole (236, Fig. 1), and has a dentilated (formed by 232, 233, 234, 235, [0066]) inner surface (Fig. 2).
As to Claim 13, Tredinnick discloses an external fixator wherein the rigid planar member comprises a tail located at an opposite end of the main slot from the through hole (seen in Fig. 6, below).
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As to Claim 14, Tredinnick discloses an external fixator wherein the tail has a deltoid or bifurcate shape and comprises a flat or concave surface at an opposite end of the rigid planar member from the through hole (shape formed by flat, opposing, chamfered edges seen in Fig. 6, above).
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTOPHER J BECCIA whose telephone number is (571)270-7391. The examiner can normally be reached Mon - Fri 8:30-5:00.
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/CHRISTOPHER J BECCIA/Primary Examiner, Art Unit 3775