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 .
Status of Claims
This office action is responsive to the amendment filed on 05/14/2026. As directed by the amendment: claims1-3 and 10-12 are presently pending in this application.
Response to Arguments
Applicant's arguments regarding the “polarized piezoelectric coating” amendment with respect to claims 1-3 and 10-11 rejected under 35 U.S.C. 102(a)(1) and 102 (a)(2) as being anticipated by Evans (2011/0118852) and claim 12 rejected under 35 U.S.C. 103 as being unpatentable over Evans (2011/0118852) in view of Bu Park (2023/0088596) have been considered but are moot in view of the new ground(s) of rejection.
Applicant’s argument regarding Evans failing to disclose “coating covers both the outer side wall and the inner side wall” are not found to be persuasive. Par. 0037 of Evans discusses the piezoelectric coating being applied to all surfaces of the implant body 102 which would include the outer sidewall and the inner sidewall of the bore 104. Furthermore, par. 0037 discusses various orthopedic implants and coating surfaces of the implants including exterior/interior surfaces and par. 0004 discloses piezoelectric components emit signal that stimulates growth in the surrounding bone. It would be beneficial to coat the inner and outer side walls of the implant to allow for bone ingrowth on all sides of the implant such as to repair bone fractures or orthodontic use. Therefore, Evans discloses the coating covers both the outer and inner side wall.
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.
Claims 1-3 and 10-11 rejected under 35 U.S.C. 103 as being unpatentable over Evans (2011/0118852) in view of Ohnishi et al. (5684061) “Ohnishi”.
Regarding claim 1, Evans discloses an implanted piezoelectric bone material 100 (abstract and Fig. 1A), composed of a main body 102 and a piezoelectric coating: wherein the main body 102 is a hollow pillar 104 (hollow body 102 has a bore 104; Figs. 1A and 3B) having an inner side wall 104a at a center of the hollow pillar 104 and an outer side wall at an outer side of the hollow pillar 103 (par. 0016); and the piezoelectric coating covers both the outer side wall an the inner side wall (par. 0037 discloses the piezoelectric coating being applied to all surfaces of the implant body 102 which would include the outer sidewall and the inner sidewall of the bore 104 and discusses various orthopedic implants and coating surfaces of the implants including exterior/interior surfaces), and the piezoelectric coating is made of a piezoelectric material (par. 0020 and 0037 disclose a piezoelectric coating comprising piezoelectric pieces and the piezoelectric material); except for a polarized piezoelectric coating that is subjected to a polarization treatment. However, Ohnishi teaches a similar piezoelectric bone material (abstract) composed of polarized piezoelectric material that is subjected to a polarization treatment (abstract and col. 5, lin. 12-16 and 26-27 disclose the piezoelectric material is polarized by being subjected to polarization treatment). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the piezoelectric coating in Evans to include a polarized piezoelectric coating that is subjected to a polarization treatment, as taught and suggested by Ohnishi, for providing an electrical stimulus to promote the bone formation (col. 6, lin. 20-23).
Furthermore, the claimed phrase “is subjected to polarization treatment” is being treated as a product-by-process limitation and a product-by-process claim is not limited to the manipulations of the recited steps, only the structure implied by the steps. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. MPEP 2113.
Regarding claims 2 and 10, Evans discloses wherein the main body 102 is made of a metallic material and wherein the main body is made of pure titanium, titanium alloy, or stainless steel (par. 0023).
Regarding claims 3 and 11, Evans discloses wherein the piezoelectric material is ceramic and wherein the piezoelectric material is selected from the group consisting of BaTiO3, PbTiO3, Pb(ZrTi)O3, Na0.5K0.5NbO3, BaxSr1-xNb2O5, and Bi0.5Na0.5TiO3 (par. 0022 discloses the piezoelectric material is barium titanate).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Evans (2011/0118852) in view of Ohnishi et al. (5684061) “Ohnishi” in view of Bu Park (2023/0088596).
Evans in view of Ohnishi discloses the claimed invention of claim 1; except for wherein the piezoelectric material is piezoelectric plastic. However, Bu Park teaches a similar piezoelectric bone material (abstract) comprising PVDF (par. 0084). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the piezoelectric material in Evans to include plastic, as taught and suggested by Bu Park, for using a biocompatible piezoelectric material.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the piezoelectric material to be plastic since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YASHITA SHARMA whose telephone number is (571)270-5417. The examiner can normally be reached on 8am-5pm M-Th; 8am-4pm Fri. If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Jerrah Edwards, can be reached at 408-918-7557. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YASHITA SHARMA/
Primary Examiner, Art Unit 3774
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