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 Election/Restriction response filed on 12/17/2025. Claims 1-20 are pending. Claims 1, 16 and 20 are independent. Claims 11, 12, and 16-20 are withdrawn by applicant because applicant indicated claims 1-10 and 13-15 are readable on the elected species. Claims 9 and 10 are withdrawn by the examiner for the reason(s) below.
Election/Restrictions
Applicant’s election of Invention I (claims 1-15 and 20) in the reply filed on 12/17/2025is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/17/2025.
Applicant’s election of Species A (Figures 1-4) in the reply filed on 12/17/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant identifies that claims 1-10 and 13-15 are readable on the elected species. The examiner disagrees that claims 9-12 are readable on the elected species because claim 9 is directed to the non-elected species, Species B (Figs. 7 and 9) and Species C (Fig. 8) by reciting “the plurality of locking barbs are angled in a direction away from the eyelet” because Species A (Figures 1-4) are directed to the locking ferrule having the plurality of locking barbs angled in a direction toward the eyelet. Claim 10 is withdrawn because it depends on claim 9.
Claims 9-12 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/17/2025.
Therefore, claims 9-12 and 16-20 are withdrawn from consideration.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Currently, none of the limitations are interpreted under 35 U.S.C. 112(f).
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 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, 2, 5-8, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Liu (US Pub. No.: 2019/0076141) in view of Bless (US Pub. No.: 2010/0249855).
Regarding claim 1, Liu discloses a locking ferrule (200, Figs. 2C and 4A) for performing tissue repairs, comprising: a body (205, Fig. 4A) extending between a first end (the end at the bottom of Fig. 4A) and a second end (the end at the top of Fig. 4A) and including an outer diameter wall (outer diameter wall, Figs. 2C and 4A), an inner diameter wall (inner diameter wall, Figs. 2C and 4A), and a cannulation (passageway of 205, Fig. 4A) that is circumscribed by the inner diameter wall; and a plurality of locking barbs (210, Figs. 2C and 4C) extending into the cannulation and configured to lock a suture that is received through the cannulation relative to the body (Para. [0031]). However, Liu does not disclose an eyelet connected to the body near the first end or the second end.
Bless teaches, in the same field of endeavor (suture / bone anchor), a locking ferrule (1, Figs. 6 and 7) comprising an eyelet (combination of rods 11 and ring 13, Fig. 6) connected to the body the second end of the body of the locking ferrule (Figs. 6 and 2).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the locking ferrule of Liu to include an eyelet connected to the body near the second end of the body of the locking ferrule as taught by Bless in order to obtain the advantage of providing a bearing for knotting of the suture to the locking ferrule (Bless, Paras. [0016] and [0044]-[0045]).
Regarding claim 2, Bless discloses that the eyelet is integrally formed with the body (Bless, Fig. 2).
Regarding claim 5, Liu in view of Bless discloses that the eyelet is connected to the second end (In the modified invention, the eyelet is connected to the second end because eyelet of Bless is located at the second end at which the suture is pulled, Bless, Fig. 6 and Liu, Fig. 4A).
Regarding claim 6, Bless discloses that the eyelet includes a band (Bless, Fig. 6, combination of rods 11 and ring 13 forms the band) that connects to the second end and a suture passage that extends between the band and the second end.
Regarding claim 7, Bless discloses that the suture is looped around the band (Bless, Fig. 7).
Regarding claim 8, Liu in view of Bless discloses that the plurality of locking barbs are angled in a direction toward the eyelet (Liu, Fig. 4A and Bless, Fig. 6, the plurality of locking barbs are angled in a direction toward the eyelet because the eyelet is located at the second end at which the sutures are pulled)
Regarding claim 13, Liu discloses that the plurality of locking barbs each protrude inwardly from the inner diameter wall (Liu, Fig. 4A).
Regarding claim 14, Liu discloses that the plurality of locking barbs are arranged in at least a first row and a second row (Liu, Fig. 2C).
Regarding claim 15, Liu discloses that a first portion of the plurality of locking barbs of the first row are staggered relative to a second portion of the plurality of locking barbs of the second row (Liu, Fig. 2C).
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu (US Pub. No.: 2019/0076141) in view of Bless (US Pub. No.: 2010/0249855) as applied to claim 1 above, and further in view of Stone et al. (US Pat. No.: 5,824,011).
Regarding claim 3, Liu in view of Bless discloses all the limitations of claim 1 as taught above. Liu in view of Bless further discloses that the body is comprised of a first material but fails to disclose the eyelet is comprised of a second material that is different from the first material.
Stone teaches, in the same field of endeavor (suture/bone anchor), an eyelet (16, Figs. 1 and 2; alternatively, 28, Fig. 6) of a locking anchor (12, Figs. 1 and 2 or Fig. 6) comprising a second material that can be either same or different from a first material of the body of the locking anchor (Abstract, Col. 4, line 63 – Col. 5, line 13, Col. 7, lines 18-21).
Before the effective filing of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the locking ferrule of Liu in view of Bless to include that the eyelet is comprised of a second material that is different from the first material as taught by Stone to allow the different portions of the locking ferrule to be manufactured independently withing conventional methods as an alternative to integrally form the locking ferrule (Stone, Col. 4, line 63- Col. 5, line 7).
Regarding claim 4, Stone discloses that the second material includes suture (Stone, Col. 7, lines 18-21, suture structure 28.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20100010538 A1 Juravic; Mark S. et al. discloses a tissue anchor comprising an eyelet formed at the proximal end.
US 20140379004 A1 RAYBIN; Samuel et al. discloses a ferrule device having arms inside the body the ferrule device for locking material through the ferrule device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JING RUI OU whose telephone number is (571)270-5036. The examiner can normally be reached M-F 9:00am -5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JING RUI OU/Primary Examiner, Art Unit 3771