DETAILED ACTION
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 responsive to the Request for Continued Examination (RCE) received after a Notice of Allowance on 28 August 2026. Claims 1-5, 7-8 and 10-33 are currently pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 28 August 2026 has been entered.
Claim Objections
Claim 23 is objected to because of the following informality:
In line 2, it appears that the phrase “a top surface” should read “the top surface” for consistency.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 11-16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 11 recites the limitation "the load force" in line 3. Claim 13 recites the limitation "the load force" in line 2. There is insufficient antecedent basis for this limitation in the claims. Since claims 12 and 14-16 are dependent upon claim 11, they contain the same issue.
Note: It appears that amending line 1 of claim 11 to read “The method of claim 7” would overcome this rejection (see original set of claims received on 14 September 2023, claim 7 providing antecedent basis for the phrase “to bias the first coupling shaft and the second coupling shaft toward each other,” and claim 4 providing antecedent basis for the phrase “the load force”). For examination purposes, claim 11 will be treated as such.
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 1-4 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weiner et al. (U.S. Patent Application Publication 2017/0065276).
Weiner et al. disclose (as to claim 1) a method of fixating bones (50 and 55) for fusion (see paragraphs 0062 and 0074), the method comprising positioning a first leg (i.e. one instance of 2014) of a staple (2010) connected to an inserter (2092) in a first implant hole (i.e. an aperture) of a first bone (50) and a second leg (i.e. the second instance of 2014) of the staple connected to the inserter in a second implant hole (i.e. an aperture) of a second bone (55) (see paragraph 0064 referring to the formation of the holes/apertures), wherein the first leg of the staple is connected to the second leg of the staple by a bridge (2012), wherein the staple is positioned such that a bottom surface (i.e. surface of 2012 visible in Figure 39) of the staple faces the first bone and the second bone and a top surface (i.e. surface of 2012 facing 2092 in Figure 39) of the staple faces away from the first bone and the second bone (positioning as best illustrated in Figure 5), wherein the inserter comprises a first coupling shaft (i.e. one instance of 2094) connected to the staple through the top surface of the staple without extending under the bottom surface of the staple via a first handling coupling (2096) extending partially but not fully through a thickness of the staple (see paragraph 0103 referring to 2096 being located within the tine/leg; it is the examiner’s position that since 2096 is located within the tine/leg, it does not extend under the interpreted bottom surface) and a second coupling shaft (i.e. the second instance of 2094) connected to the staple through the top surface of the staple without extending under the bottom surface of the staple via a second handling coupling extending partially but not fully through the thickness of the staple (see paragraph 0103 referring to 2096 being located within the tine/leg; it is the examiner’s position that since 2096 is located within the tine/leg, it does not extend under the interpreted bottom surface) and detaching the inserter from the staple (see paragraph 0105), wherein (as to claim 2) the method further comprises prior to positioning the first leg of the staple at the first implant hole and the second leg of the staple at the second implant hole, connecting the first coupling shaft of the inserter to a first side (i.e. side defining first instance of 2014) of the staple having the first leg through the top surface of the first side of the staple without extending under the bottom surface of the first side of the staple (see paragraph 0104) and connecting the second coupling shaft of the inserter to a second side (i.e. side defining second instance of 2014) of the staple having the second leg through the top surface of the second side of the staple without extending under the bottom surface of the second side of the staple (see paragraph 0104), wherein (as to claim 3) the first coupling shaft of the inserter is connected to the first side of the staple through the top surface of the first side of the staple without extending under the bottom surface of the first side of the staple and without contacting an outer perimeter (i.e. perimeter defined by outer periphery of 2012) of the first side of the staple (i.e. due to location and shape of 2094, it is the examiner’s position that 2094 does not contact the interpreted outer perimeter), and wherein the second coupling shaft of the inserter is connected to the second side of the staple through the top surface of the second side of the staple without extending under the bottom surface of the second side of the staple and without contacting an outer perimeter (i.e. perimeter defined by outer periphery of 2012) of the second side of the staple (i.e. due to location and shape of 2094, it is the examiner’s position that 2094 does not contact the interpreted outer perimeter), wherein (as to claim 4) the method further comprises applying a load force at the staple using the inserter, wherein, as the load force is applied at the staple using the inserter, the first leg and the second leg are caused to move apart from one another (i.e. 2092 is used to deform/bias 2012 into an extended/biased state to further space apart each instance of 2014, see paragraph 0106 and claim 1), and wherein (as to claim 10) the first coupling shaft is connected through the top surface of the staple via the first handling coupling over the first leg of the staple and the second coupling shaft is connected through the top surface of the staple via the second handling coupling over the second leg of the staple (see paragraph 0103 referring to 2096 being located within the tine/leg) (see claim 1, Figures 5, 18 and 39, and paragraphs 0062, 0064, 0074 and 0103-0106).
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.
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.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Weiner et al. (U.S. Patent Application Publication 2017/0065276), as applied to claim 1 above, in view of Lizee (U.S. Patent Application Publication 2009/0254090).
Weiner et al. disclose the claimed method except for wherein the first bone and/or the second bone comprises a metatarsal bone.
Lizee teaches a method of fixating bones for fusion using a staple (1), wherein the bones comprise metatarsal bones (see Figures 4-6 and paragraph 0025).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the method of Weiner et al. with wherein the first bone and/or the second bone comprises a metatarsal bone in view of Lizee in order to provide a well-known, obvious bone to be compressed/fused to yield predictable results.
Allowable Subject Matter
Claims 5 and 7-8 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.
Claims 11-16 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 5, 7-8 and 11-16 in the instant application have not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose, or suggest, the following:
Regarding claim 5, in combination with the limitations required by claims 1 and 4, no prior art reference could be found disclosing or making obvious wherein the method further comprises removing the load force from the staple (i) after positioning the first leg in the first implant hole and the second leg in the second implant hole and (ii) prior to detaching the inserter from the staple, wherein removing the load force from the staple causes the first leg and the second leg to move toward one another to apply a compression force at the first bone and the second bone.
Regarding at least claim 7, in combination with the limitations required by claims 1 and 4, no prior art reference could be found disclosing or making obvious wherein applying the load force comprises biasing the first coupling shaft and the second coupling shaft toward each other.
Claims 17-31 and 33 are allowed (see “Statement of Reasons for Allowance” section of Notice of Allowance mailed on 03 August 2026, and “Allowable Subject Matter” section of Non-Final Rejection mailed on 06 January 2026).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY E WAGGLE, JR whose telephone number is (571)270-7110. The examiner can normally be reached TEAP: Monday - Friday (7:45am - 3:45pm).
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/LARRY E WAGGLE, JR/Primary Examiner, Art Unit 3775
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