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 Objections
Claims 3 and 5 are objected to because of the following informalities:
Claim 3 recites “upto” in line 1, however this is not grammatically correct, thus the Examiner suggests the line be amended to read “up to”;
Claim 5 recites “wherein implanting the nitrogen” in line 1, although the line is understood by the Examiner to mean “wherein the step of implanting nitrogen” as the “implanting” step was previously defined, the Examiner suggests the line be amended to read “wherein the step of implanting nitrogen” for the purpose of maintaining consistent language throughout the claims;
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 1 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 1 positively requires a “bone”, which is a type of human tissue (i.e., a human organism); therefore, claim 1 is seen as being directed to a human organism.
Allowable Subject Matter
Claims 2 – 6 are allowed.
The following is an examiner’s statement of reasons for allowance: the prior art alone or in combination with fails to disclose or make obvious the method of implanting nitrogen into a bone and then heating the bone with the implanted nitrogen.
The closest prior art, Webster et al (US 2014/0302109 A1), discloses a method for treating a bone defect comprising the step of implanting nitrogen in a bone injury / defect (paragraphs [0009], [0017], [0019], and claim 1). However, Webster does not disclose or make obvious the method step of heating the bone with the implanted nitrogen. Furthermore, it would not have been obvious to one of ordinary skill in the art to modify the method of treating a bone defect of Webster to include the step of heating the bone because there is no motivation to do so. Additionally, no other references, or reasonable combination thereof, could be found which discloses or suggests these features in combination with other limitations in the claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Chu et al (US 2009/0270422 A1) teaches a method of treating a bone defect with a compound including nitrogen.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew Restaino whose telephone number is (571)272-4748. The examiner can normally be reached Mon - Fri 8:00 - 4:00 ET.
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/Andrew Restaino/Primary Examiner, Art Unit 3771