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 Invention I and Species 1 in the reply filed on 09/22/2025 is acknowledged.
Claims 19-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “92” has been used to designate the second side hole in Fig. 4A. First arm 82 includes second side hole 90. Accordingly, “92” on the first arm should be changed to --90--. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 2, 7, 8, 14 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Treace et al. (U.S. 2020/0253641 A1).
Concerning claim 1, Treace et al. disclose a reversible compressor-distractor comprising: (a) a first engagement arm (see below) comprising: (i) a first side pin-receiving hole (see below) for receiving a first pin inserted into a first bone portion; and (ii) a second side pin-receiving hole (see below) for receiving the first pin inserted into the first bone portion, wherein the second side pin-receiving hole is on an opposite lengthwise side of the first engagement arm than the first side pin-receiving hole; (b) a second engagement arm (see below) comprising a pin-receiving hole (see below) for receiving a second pin inserted into a second bone portion; and (c) an actuator (106) operatively coupled to the first engagement arm and the second engagement arm, the actuator being configured to move the first engagement arm and the second engagement arm each other to move the first bone portion toward the second bone portion (see par. 0071).
[AltContent: connector][AltContent: textbox (1st Bridging arm)][AltContent: connector][AltContent: textbox (2nd Bridging arm)][AltContent: textbox (2nd Engagement arm)][AltContent: arrow][AltContent: connector][AltContent: textbox (Length of Second arm)][AltContent: arrow][AltContent: connector][AltContent: textbox (2nd End)][AltContent: connector][AltContent: textbox (1st End)][AltContent: connector][AltContent: textbox (Pin Receiving Hole)][AltContent: connector][AltContent: textbox (2nd Engagement arm)][AltContent: textbox (Length of First arm)][AltContent: arrow][AltContent: connector][AltContent: textbox (2nd Side Pin Receiving Hole)][AltContent: connector][AltContent: textbox (1st Side Pin Receiving Hole)][AltContent: arrow][AltContent: textbox (1st Engagement arm)]
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Concerning claim 2, wherein: the first engagement arm has a length extending from a first end to a second end (see above); the first side pin-receiving hole extends through the first end of the first engagement arm; and the second side pin-receiving hole extends through the second end of the first engagement arm (see above).
Concerning claim 7, wherein the reversible compressor-distractor is configured to be flipped from a first orientation in which a first end is positioned closer to the first bone portion than a second end and the first pin is inserted through the first side pin-receiving hole to a second orientation in which the second end is positioned closer to the first bone portion than the first end and the first pin is inserted through the second side pin-receiving hole. See Fig. 4 above. It is noted that the guide can be flipped. The manner in which a device is intended to be employed does not differentiate the claimed apparatus from prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Concerning claim 8, wherein: the second engagement arm has a length (see Fig. 4 above) extending from a first end to a second end; and the pin-receiving hole (see Fig. 4 above) extends from the first end through the second end of the second engagement arm.
Concerning claim 14, wherein the actuator (106) comprises a threaded shaft operatively connected to the first engagement arm (see above) and the second engagement arm (see above) and at least one unthreaded shaft (132A) extending parallel to the threaded shaft.
Concerning claim 15, further comprising a first bridging arm (see above) between the actuator and the first engagement arm and a second bridging arm (see above) between the actuator and the second engagement arm.
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.
Claim(s) 3-6, 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Treace et al. (U.S. 2020/0253641 A1) in view of Eschle (US 2013/0204261 A1).
Treace et al. disclose the invention substantially as described above. However, Treace et al. do not explicitly disclose that the first side pin-receiving hole extends through the sidewall at a first location; and the second side pin-receiving hole extends through the sidewall at a second location.
Eschle teaches a pin-receiving hole that extends through a sidewall (see Fig. 4 below) in the same field of endeavor for the purpose of receiving a pin secured to a bone (see par. 046).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second side pin-receiving holes of Treace’s compressor-distractor such that they extend through the sidewall at first and second locations, the concept of which is disclosed by Treace et al, in order to receive pins of different angulations. The pin should be received in the healthiest portion of bone and that may require the insertion angle to vary. Accommodating for this would involve modifying the pin-receiving hole of the cutting guide.
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Concerning claim 4, the above described modification would result in the first location being offset along the length of the first engagement arm from the second location. See annotated Figs. 4 above.
Concerning claim 5, wherein a longitudinal axis defined by the first side pin-receiving hole intersects a longitudinal axis defined by the second side pin- receiving hole at a location between the first end and the second end of the first engagement arm. See annotated Figs. 4 above.
Concerning claim 6, wherein: the first side pin-receiving hole defines a pin entry location at the first location of the sidewall and a pin exit location at the first end of the first engagement arm; and the second side pin-receiving hole defines the pin entry location at the second location of the sidewall and the pin exit location at the second end of the first engagement arm. See annotated Figs. 4 above.
Concerning claim 9, the above described modification results in: the first side pin-receiving hole defines a first longitudinal axis; the second side pin-receiving hole defines a second longitudinal axis; the pin-receiving hole of the second engagement arm defines a third longitudinal axis; and the first longitudinal axis and the second longitudinal axis are each angled relative to the third longitudinal axis.
As stated above, one in the art would find it obvious to alter the angle of the pin receiving holes such that the pins engage the strongest bone, or if necessary, avoid delicate structures.
Concerning claim 10, the above described modification may result in an angle between the first longitudinal axis and the third longitudinal axis to be equal and opposite to an angle between the second longitudinal axis and the third longitudinal axis. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Concerning claim 11, the above described modification may result in the first longitudinal axis being angled relative to the third longitudinal axis in one or both of a frontal plane and a sagittal plane; and the second longitudinal axis being angled relative to the third longitudinal axis in one or both of the frontal plane and the sagittal plane. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Concerning claim 12, the above described modification may result in the first longitudinal axis and the second longitudinal axis each being angled relative to the third longitudinal axis in the frontal plane at an angle ranging from 2 degrees to 20 degrees. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Concerning claim 13, the above described modification may result in the first longitudinal axis and the second longitudinal axis each being angled relative to the third longitudinal axis in the sagittal plane at an angle ranging from 5 degrees to 12 degrees. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Allowable Subject Matter
Claims 16-18 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN HAMMOND whose telephone number is (571)270-3819. The examiner can normally be reached Monday-Friday 8 - 4 PM .
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eduardo C. 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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/ELLEN C HAMMOND/Primary Examiner, Art Unit 3773