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 with traverse of the invention of Group E, drawn to Figures 12-14 in the reply filed May 4, 2026 is acknowledged.
Applicant's traversal is on the grounds that search and examination of the entire application can be made without serious burden to the Examiner. Applicant's traversal has been carefully considered, but fails to establish error in the propriety of the present requirement for restriction and election.
Though Applicant asserts that examination of all pending claims would not pose an undue burden on the Examiner, such is not an accurate assertion in light of the disparate nature of the presently claimed subject matter as noted in the Requirement for Restriction of January 26, 2026.
Consideration of the plurality of inventions that Applicant has claimed would significantly compromise and preclude a quality examination on the merits. Furthermore, execution of a search encompassing the entirety of Applicant's species would not only constitute an undue burden on the Examiner, but consideration of the findings of such a search in accordance with the requirements of the law under 35 U.S.C. §§101,102, 103 and 112 would be unduly onerous.
Moreover, it is further noted that a comprehensive search for the presently claimed subject matter is not solely limited to a search of the classes and subclasses in which they are classified. Therefore, it is obvious that a comprehensive search of the copious amounts of patent and non-patent literature for each of the patentably distinct inventions and their permutations presently claimed would necessarily place an undue burden on the Examiner.
Therefore, for the reasons above and those made of record in the Requirement for Restriction of January 26, 2026, the restriction requirement is deemed proper and is made FINAL.
Claims 21-25 are withdrawn from further consideration pursuant to 37 C.F.R. 1.142(b), as being to non-elected inventions, there being no allowable generic or linking claim.
However, claims 6-7 also do not read on the elected species because the non-cylindrical hole belongs to species D which is a non-elected species. Therefore, claims 6-7 are further withdrawn.
Claim 12 also does not read on the elected species, because wherein the plurality of blind holes runs completely along a length of the internal hole wall belongs to species C which is a non-elected species. Therefore, claim 12 is further withdrawn.
Claim 16 also does not read on the elected species, because wherein the hole comprises at least one substantially straight side belongs to species F which is a non-elected species. Therefore, claim 16 is further withdrawn.
Claims 1-5, 8-11, 13, 18, 20 remain under consideration in the application.
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.
Claim(s) 1-5, 8, 10-11, 13, 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Papannagari et al. 2022/0233222, hereinafter “Papannagari”.
Regarding claim 1, Papannagari discloses an orthopedic implant (100) adapted for fastening to a bone by use of a screw, the screw comprising an externally threaded head having a thread depth, the implant comprising: a plate (140) composed of a biocompatible material (¶58); and a hole (200) through the plate defining an internal hole wall (202) and having an innermost surface, the hole adapted to receive said screw; the internal hole wall comprising a primary inner width (see Figure A below) and a secondary outer width (see Figure A below) with a distance therebetween (see Figure A below), wherein the distance resulting between the primary inner width and the secondary outer width of the internal hole wall defines a volume; the volume comprising a biocompatible material (¶58) and a plurality of blind holes (space between fins 210A and 210B) extending from the primary inner width to the secondary outer width resulting in a porosity (FIG. 4); wherein the internal hole wall comprises a non-helical pattern (FIG. 4); and wherein the non-helical pattern defined by the internal hole wall comprises a plurality of pockets (space between fins 210A and 210B) forming the plurality of blind holes.
Regarding claim 2, Papannagari discloses the implant of claim 1 wherein between 30% and 70% of the volume defined by the primary inner width and the secondary outer width is comprised of the biocompatible material and the remaining 70% to 30% of the volume is devoid of any material (FIGS. 3-8).
Regarding claim 3, Papannagari discloses the implant of claim 1 wherein the porosity of the biocompatible material within the volume defined by the primary inner width and the secondary outer width is between 0.3 and 0.7 (FIGS. 3-8).
Regarding claim 4, Papannagari discloses the implant of claim 1 wherein the distance between the primary inner width and the secondary outer width can be at least one half the thread depth (screw and thread depth are not positively claimed).
Regarding claim 5, Papannagari discloses the implant of claim 1 wherein the biocompatible material of the volume of the internal hole wall is integral and indistinguishable from that of the biocompatible material of the plate (FIGS. 3-8).
Regarding claim 8, Papannagari discloses the implant of claim 1 wherein the hole has a cylindrical shape (FIGS. 3-8).
Regarding claim 10, Papannagari discloses the implant of claim 1 wherein at least three of the plurality of blind holes are evenly spaced (FIGS. 3-8).
Regarding claim 11, Papannagari discloses the implant of claim 1 wherein the plurality of blind holes runs partially along a length of the internal hole wall (FIGS. 3-8).
Regarding claim 13, Papannagari discloses the implant of claim 1 wherein the plurality of pockets extends along a partial depth of the hole such that the plurality of pockets do not extend all the way through to a top side or a bottom side of the plate and there is a distance between the plurality of pockets and the top side and bottom side of the plate (FIGS. 3-8).
Regarding claim 20, Papannagari discloses the implant of claim 1 wherein the plurality of pockets is interrupted by a slot (220) capable of receiving an instrument.
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.
Claim(s) 9 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Papannagari.
Regarding claim 9, Papannagari discloses the implant of claim 1 wherein the plate comprises a top side (144) and a bottom side (142); however, Papannagari is silent regarding the hole through the plate narrowing from the top side to the bottom side of the plate creating a decreasing primary inner width. Tapered holes are well known in the art for receiving complementary fasteners. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, to form the hole of Papannagari having a decreasing primary width, to produce predictable results.
Regarding claim 18, Papannagari discloses the implant of claim 1, except wherein a space between each of the plurality of blind holes forms a crest width between 0.125 to 0.5 millimeters. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make a space between each of the plurality of blind holes forming a crest width between 0.125 to 0.5 millimeters, since 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVIA C CHANG whose telephone number is (571) 270-5017. The examiner can normally be reached Monday-Friday, 7:30AM-5:00PM.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, KEVIN TRUONG, at (571) 272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571 -273-8300.
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/OLIVIA C CHANG/Primary Examiner, Art Unit 3775
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