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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 35-37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 35 requires a system comprising first and second pressure members having different second maximum angles, wherein the first and second pressure members are interchangeable. However, a system comprising two different interchangeable pressure members is not supported by the disclosure as originally filed. The disclosure supports different embodiments of a pressure member, but does not disclose a system having two different interchangeable pressure members.
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.
Claim(s) 10, 11, 14-16, 23-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Biedermann et al. (Pat. No. US 5,672,176) in view of Kishan et al. (Pub. No. US 2015/027228 A1).
Regarding claims 10, 11, 14-16, and 23-27, Biedermann et al. discloses a bone anchoring device (figure 2) comprising: a bone anchoring element 1 comprising a head 3 and a shank 2 for anchoring in bone (figure 2); a receiving part 5 connectable to the head (figure 1 and 2), the receiving part 5 having a first end, a second end, and a longitudinal axis extending between the first and second ends (figure 2), and defining a coaxial passage 9 extending from the first end towards the second end (figure 2); and a monolithic pressure member 20 that is shorter axially than an axial length of the receiving part and that is movable in the passage (figure 1-3), the pressure member 20 comprising a seat 25 for holding the head in the receiving part (figures 1 and 2) and a downwardly directed surface configured to exert a downward pressure on the head to clamp the head in the seat (figure 1); and wherein when the pressure member 20 is in the receiving part 5 with a central axis of the pressure member 20 extending substantially coaxially with the longitudinal axis and when the head 2 is held in the seat, the bone anchoring element 1 is pivotable in at least a first direction at a first maximum angle relative to the longitudinal axis (figure 1) and a second direction opposite the first direction at a second maximum angle relative to the longitudinal axis (figure 1) wherein the pressure memberanchoring element is pivotable in at least a third direction). The seat of the pressure member 20 is expandable to facilitate passing of the head therethrough (figure 1).
Biedermann et al. discloses the claimed invention except wherein the second angle is smaller than the first maximum angle; wherein the pressure member 20 forms an abutment that limits the pivoting of the bone anchoring element in the second direction; wherein an edge of the opening comprises the abutment; wherein a wall thickness of
Kishan et al. teaches wherein a pressure member 140 comprises an abutment 145 at the distal end thereof which limits pivoting of the bone anchoring element in the second direction, wherein the second maximum pivot angle is smaller than the first maximum angle (figure 4); wherein an edge of the opening comprises the abutment 145 (figure 4); wherein a wall thickness of
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to modify the pressure member disclosed by Biedermann et al. to comprise an abutment that limits the pivoting of the bone anchoring element in the second direction, wherein the second maximum pivot angle is smaller than the first maximum angle; wherein an edge of the opening comprises the abutment; wherein a wall thickness of
Regarding claims 28-34, Biedermann et al. discloses a bone anchoring device (figure 2) comprising: a bone anchoring element 1 comprising a head 3 and a shank 2 for anchoring in bone (figure 2); a receiving part 5 connectable to the head (figure 1 and 2), the receiving part 5 having a first end, a second end, and a longitudinal axis extending between the first and second ends (figure 2), and defining a coaxial passage 9 extending from the first end towards the second end (figure 2); and a pressure member 20 that is shorter axially than an axial length of the receiving part and that comprises an expandable portion that forms a seat for holding the head in the receiving part 5 (figures 1 and 2) and a downwardly directed surface configured to exert a downward pressure on the head when the pressure member is moved axially in the passage to clamp the head in the seat (figure 1); and wherein when the pressure member 20 is in the receiving part 5 with a central axis of the pressure member 20 extending substantially coaxially with the longitudinal axis and when the head 2 is held in the seat, the bone anchoring element 1 is pivotable in at least a first direction at a first maximum angle relative to the longitudinal axis (figure 1) and a second direction opposite the first direction at a second maximum angle relative to the longitudinal axis (figure 1). The seat of the pressure member 20 defines an opening sized for inserting the head 2 into the seat 25 (figure 1). The bone anchoring element 1 is pivotable relative to the receiving part 5 in at least a third direction relative to the longitudinal axis that is different from the first and second directions (figures 1-3- due to the spherical shape of the head and seat, the bone anchoring element is pivotable in at least a third direction). The seat of the pressure member is expandable to facilitate passing the head therethrough (figure 1).
Biedermann et al. discloses the claimed invention except wherein the second angle is smaller than the first maximum angle; wherein a wall thickness of the pressure member is greater in the second direction than in the first direction; wherein an edge of the opening forms an abutment that limits the pivoting of the bone anchoring element in the second direction; wherein the pressure member is configured to extend out of the second end of the receiving part; wherein the second maximum angle is substantially 0° relative to the longitudinal axis;
Kishan et al. teaches wherein a pressure member 140 comprises an abutment 145 at the distal end thereof which limits pivoting of the bone anchoring element in the second direction, wherein the second maximum pivot angle is smaller than the first maximum angle (figure 4); wherein a wall thickness of (figure 4); wherein the seat of the pressure member defines an opening that has a non-circular profile (figure 1); wherein an edge of the opening forms the abutment 145 that limits the pivoting of the bone anchoring element in the second direction (figure 4); wherein the pressure member 140 is configured to extend out of the second end of the receiving part 120 (figure 4); wherein the second maximum angle is substantially 0° relative to the longitudinal axis (figures 4 and 5). Kishan et al. teaches that it is advantageous for the pressure member to comprise the abutment in order to inhibit the screw from pivoting in a desired direction, which facilitates manipulation and realignment of the spine (paragraphs 0012 and 0040).
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to modify the pressure member disclosed by Biedermann et al. to comprise an abutment that limits the pivoting of the bone anchoring element in the second direction, wherein a wall thickness of the pressure member is greater in the second direction than in the first direction; wherein an edge of the opening forms the abutment that limits the pivoting of the bone anchoring element in the second direction; wherein the pressure member is configured to extend out of the second end of the receiving part; wherein the second maximum angle is substantially 0° relative to the longitudinal axis, as taught by Kishan et al., in order to inhibit the screw from pivoting in a desired direction, which facilitates manipulation and realignment of the spine (paragraphs 0012 and 0040).
Response to Arguments
Applicant’s arguments with respect to claim(s) 10, 11, 14-16, 23-37 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.
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 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 Lynnsy Summitt whose telephone number is (571)270-78567856. The examiner can normally be reached on Monday through Thursday from 8am until 5pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eduardo Robert, at (571) 272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNNSY M SUMMITT/Primary Examiner, Art Unit 3773
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