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 .
Status of the Claims
This Office Action is responsive to the amendment filed July 1, 2026. As directed by the amendment: Claims 19 and 20 were cancelled. Claim 21 is newly added. Claims 1-18 and 21 are presently pending in this application.
Examiner’s Note
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.
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) 1-18 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Courtney, Jr. et al. (US 2020/0237418), herein referred to as Courtney, Jr., and in view of Franklin (US 2024/0335217).
Regarding claim 1, Courtney, Jr. discloses a bone plate (100) for securing a fractured bone (element “F”, see figure 2), the bone plate (100) comprising a shaft portion (116) (figure 2), and a head portion (118) extending from the shaft portion (116) along a longitudinal axis (159) of the bone plate (100) (figure 2A) and including a plurality of holes (elements 134) comprising a first pair of screw holes (see figure 2A below) including a first hole (see figure 2A below) and a second hole (see figure 2A below), a second pair of screw holes (see figure 2A below) including a third hole (see figure 2A below) and a fourth hole (see figure 2A below), and a third pair of screw holes (see figure 2A below) including a fifth hole (see figure 2A below) and a sixth hole (see figure 2A below), wherein the second pair of screw holes (see figure 2A below) is between the first and third pairs of screw holes (see figure 2A below).
PNG
media_image1.png
428
826
media_image1.png
Greyscale
Yet, Courtney, Jr. lacks the first pair of screw holes including the first hole and the second hole having central axes that converge towards each other, the second pair of screw holes including the third hole and the fourth hole having central axes that are substantially parallel to each other, and the third pair of screw holes including the fifth hole and the sixth hole having central axes that converge towards each other.
However, Courtney, Jr. discloses that a wide variety of designs and approaches are possible (¶147). Furthermore, Franklin teaches various types of screws may be used with various shapes and types of screw holes (elements 114) (¶40, ¶42, and figure 1). Franklin teaches angle-stable screws may be parallel, non-parallel (e.g. divergent or convergent) (¶42).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Courtney, Jr.’s bone plate with the first pair of screw holes including the first hole and the second hole having central axes that converge towards each other, the second pair of screw holes including the third hole and the fourth hole having central axes that are substantially parallel to each other, and the third pair of screw holes including the fifth hole and the sixth hole having central axes that converge towards each other, since such a modification is considered a design choice within the level of ordinary skill in the art.
Regarding claim 2, the modified Courtney, Jr.’s bone plate has wherein the first pair of screw holes (see figure 2A of Courtney, Jr. above) are positioned between a tip of the head portion (118 of Courtney, Jr.) and the second pair of screw holes (see figure 2A of Courtney, Jr. above).
Regarding claim 3, the modified Courtney, Jr.’s bone plate has wherein the second pair of screw holes (see figure 2A of Courtney, Jr. above) are positioned between the first pair of screw holes (see figure 2A of Courtney, Jr. above) and the shaft portion (116 of Courtney, Jr.).
Regarding claim 4, the modified Courtney, Jr.’s bone plate has wherein the third pair of screw holes (see figure 2A of Courtney, Jr. above) are positioned between the second pair of screw holes (see figure 2A of Courtney, Jr. above) and the shaft portion (116 of Courtney, Jr.).
Regarding claim 5, the modified Courtney, Jr.’s bone plate has further comprising a fourth pair of screw holes (see figure 2A of Courtney, Jr. above) including a seventh hole (see figure 2A of Courtney, Jr. above) and an eighth hole (see figure 2A of Courtney, Jr. above), wherein the fourth pair of screw holes (see figure 2A of Courtney, Jr. above) are positioned between the third pair of screw holes (see figure 2A of Courtney, Jr. above) and the shaft portion (116 of Courtney, Jr.). Yet, the modified Courtney, Jr.’s bone plate lacks the seventh and eighth holes having central axes angled towards a most proximal end of the head portion.
However, Courtney, Jr. discloses that a wide variety of designs and approaches are possible (¶147). Furthermore, Franklin teaches various types of screws may be used with various shapes and types of screw holes (elements 114) (¶40, ¶42, and figure 1). Franklin teaches angle-stable screws may be parallel, non-parallel (e.g. divergent or convergent) (¶42).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified Courtney, Jr.’s bone plate with the seventh and eighth holes having central axes angled towards a most proximal end of the head portion, since such a modification is considered a design choice within the level of ordinary skill in the art.
Regarding claim 6, the modified Courtney, Jr.’s bone plate has wherein the fourth pair of screw holes (see figure 2A of Courtney, Jr. above) are configured to (i.e. capable of) align with a calcar region of bone (element “MC” of Courtney, Jr.).
Regarding claim 7, the modified Courtney, Jr.’s bone plate has wherein the entire head portion (118 of Courtney, Jr.) is wider than the shaft portion (116 of Courtney, Jr.) in a direction perpendicular to the longitudinal axis (159 of Courtney, Jr,) along an upper surface of the plate (see figure 2A of Courtney, Jr. above).
Regarding claim 8, the modified Courtney, Jr.’s bone plate has further comprising threads (¶86 and figure 2A of Courtney, Jr.) within at least one hole of the plurality of holes (elements 134 of Courtney, Jr.), the threads (¶86 and figure 2A of Courtney, Jr.) configured to (i.e. capable of) engage a head of a bone screw (figure 2 of Courtney, Jr.).
Regarding claim 9, the modified Courtney, Jr.’s bone plate has wherein the threads (¶86 and figure 2A of Courtney, Jr.) extend only partially through the at least one hole (figure 2A of Courtney, Jr.).
Regarding claim 10, the modified Courtney, Jr.’s bone plate has wherein the plurality of screw holes (elements 134 of Courtney, Jr.) further includes a ninth hole (see figure 2A of Courtney, Jr. above) disposed between the first and second holes (see figure 2A of Courtney, Jr. above).
Regarding claim 11, the modified Courtney, Jr.’s bone plate has wherein the plurality of screw holes (elements 134 of Courtney, Jr.) further includes a tenth hole (see figure 2A of Courtney, Jr. above) disposed adjacent and forming a triangle (see figure 2A of Courtney, Jr. above) with the seventh and eighth holes (see figure 2A of Courtney, Jr. above).
Regarding claim 12, the modified Courtney, Jr.’s bone plate discloses all the features/elements as claimed but lacks wherein the tenth hole converges toward the seventh and eighth holes beneath a lower surface of the bone plate.
However, Courtney, Jr. discloses that a wide variety of designs and approaches are possible (¶147). Furthermore, Franklin teaches various types of screws may be used with various shapes and types of screw holes (elements 114) (¶40, ¶42, and figure 1). Franklin teaches angle-stable screws may be parallel, non-parallel (e.g. divergent or convergent) (¶42).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified Courtney, Jr.’s bone plate with wherein the tenth hole converges toward the seventh and eighth holes beneath a lower surface of the bone plate, since such a modification is considered a design choice within the level of ordinary skill in the art.
Regarding claim 13, the modified Courtney, Jr.’s bone plate has wherein at least one of the first or third pairs of screws holes (see figure 2A of Courtney, Jr. above) are disposed on opposite sides of the longitudinal axis of the bone plate (see figure 2A of Courtney, Jr. above).
Regarding claim 14, the modified Courtney, Jr.’s bone plate discloses all the features/elements as claimed but lacks wherein the first and second holes are asymmetrically disposed on the opposite sides of the longitudinal axis.
However, Franklin teaches in first and second holes (404a, 404b) are asymmetrically disposed (¶51 and figure 4) on the opposite sides of a longitudinal axis (figure 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified Courtney, Jr.’s bone plate with wherein the first and second holes are asymmetrically disposed on the opposite sides of the longitudinal axis as taught by Franklin, since asymmetric placement of the holes may facilitate positioning of the plate without any of the holes being positioned directly over the fracture (¶51).
Regarding claim 15, the modified Courtney, Jr.’s bone plate has wherein at least one hole of the plurality of holes (elements 134 of Courtney, Jr.) includes a plurality of spaced apart scalloped regions (see figure 2A of Courtney, Jr. above).
Regarding claim 16, the modified Courtney, Jr.’s bone plate has wherein the third and fourth central hole axes (the modified Courtney, Jr.’s third and fourth central hole axes) do not converge beneath a lower surface (112 of Courtney, Jr.) of the bone plate (the modified Courtney, Jr.’s bone plate).
Regarding claim 17, the modified Courtney, Jr.’s bone plate has wherein the seventh and eighth central hole axes (the modified Courtney, Jr.’s seventh and eighth central hole axes) do not converge beneath a lower surface (112 of Courtney, Jr.) of the bone plate (the modified Courtney, Jr.’s bone plate).
Regarding claim 18, Courtney, Jr. discloses a bone plate (100) for securing a fractured bone (element “F”, see figure 2), the bone plate (100) comprising a shaft portion (116) (figure 2), and a head portion (118) extending from the shaft portion (116) along a longitudinal axis (159) of the bone plate (100) (figure 2A) and including a plurality of holes (elements 134) comprising a first pair of screw holes (see figure 2A above) including a first hole (see figure 2A above) and a second hole (see figure 2A above), a second pair of screw holes (see figure 2A above) including a third hole (see figure 2A above) and a fourth hole (see figure 2A above), and a third pair of screw holes (see figure 2A above) including a fifth hole (see figure 2A above) and a sixth hole (see figure 2A above), wherein the second pair of screw holes (see figure 2A above) is between the first and third pairs of screw holes (see figure 2A above), wherein the bone plate (100) is configured to (i.e. capable of) be secured to a humerus head (element “H”) (¶58 and figure 2), and wherein the pairs of screw holes (see figure 2A above) are aligned so that a bottom of each pair of screw holes (figures 2 and 7) is at a different height respective to the longitudinal axis (e.g. curvature of the plate, see figure 7) so that the plurality of holes (elements 134) are configured to (i.e. capable of) receive screws (the Examiner notes that the screws have not been positively claimed) at differing heights along at least a portion of the humerus head.
Yet, Courtney, Jr. lacks the first pair of screw holes including the first hole and the second hole having central axes that converge towards each other; the second pair of screw holes including the third hole and the fourth hole having central axes that are substantially parallel to each other, and the third pair of screw holes including the fifth hole and the sixth hole having central axes that converge towards each other.
However, Courtney, Jr. discloses that a wide variety of designs and approaches are possible (¶147). Furthermore, Franklin teaches various types of screws may be used with various shapes and types of screw holes (elements 114) (¶40, ¶42, and figure 1). Franklin teaches angle-stable screws may be parallel, non-parallel (e.g. divergent or convergent) (¶42).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Courtney, Jr.’s bone plate with the first pair of screw holes including the first hole and the second hole having central axes that converge towards each other; the second pair of screw holes including the third hole and the fourth hole having central axes that are substantially parallel to each other, and the third pair of screw holes including the fifth hole and the sixth hole having central axes that converge towards each other, since such a modification is considered a design choice within the level of ordinary skill in the art.
Regarding claim 21, the modified Courtney, Jr.’s bone plate has wherein the head portion (118 of Courtney, Jr.) is configured to (i.e. capable of) be secured to a long bone (¶53 of Courtney, Jr.).
Response to Arguments
Applicant's arguments filed July 1, 2026 have been fully considered but they are not persuasive.
Applicant’s arguments on pages 5-10, under 35 U.S.C. 103, of the Remarks are directed to the combination of references (Courtney, Jr. in view of Franklin). Applicant’s argues “First, Courtney, Jr. teaches away from screw holes that "converge towards each other" or are "substantially parallel to each other," as recited in claim 1. Instead, Courtney, Jr. teaches screw pairs that are splayed from each other for "an enhanced degree of safety for the patient." (Courtney, Jr., ¶[0128].) Particularly, Courtney, Jr. aims to "provide the maximal amount of splaying possible in the bone of the specific patient or to target maximal amount of splaying into good bone and minimize splaying into weakened bone." (Id., ¶[0129] (emphasis added).) Thus, it would not be obvious to modify three of the four relied-upon pairs of screw holes in the bone plate of Courtney, Jr. to instead "converge towards each other" and be "substantially parallel to each other," as recited in claim 1.” However, the Examiner respectfully disagrees because Courtney, Jr. discloses that a wide variety of designs and approaches are possible (¶147). Even though the reference teaches the benefits of the screw pairs being splayed, the reference does not preclude such a combination being made.
Next, applicant argues “Second, Franklin fails to recognize the specific combination of two pairs of screw holes that "converge towards each other" with another pair of screw holes that are "substantially parallel to each other" positioned in between, as required by claim 1. The present application explains that the combination of screw holes is essential for enabling screws to be inserted in specific orientations and positions.” However, the reference Franklin was specifically used to teach various types of screws may be used with various shapes and types of screw holes (elements 114) (¶40, ¶42, and figure 1). Franklin teaches angle-stable screws may be parallel, non-parallel (e.g. divergent or convergent) (¶42). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Courtney, Jr.’s bone plate with the first pair of screw holes including the first hole and the second hole having central axes that converge towards each other, the second pair of screw holes including the third hole and the fourth hole having central axes that are substantially parallel to each other, and the third pair of screw holes including the fifth hole and the sixth hole having central axes that converge towards each other, since such a modification is considered a design choice within the level of ordinary skill in the art as Courtney, Jr. clearly contemplates a wide variety of designs and approaches are possible (¶147). Furthermore, it would be obvious to try by one of ordinary skill in the art as there are finite number of identified, predictable solutions with a reasonable expectation of success.
Applicant further argues “Third, there is no motivation to modify the bone plate of Courtney, Jr. to include the screw orientations of Franklin, as alleged in the Action. The Action alleged that "such a modification is a design choice." In response to applicant' s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. The Examiner notes that applicant’s specification [0048]-[0049] states “It is to be understood that the disclosure set forth herein includes any possible combinations of the particular features set forth above, whether specifically disclosed herein or not. For example, where a particular feature is disclosed in the context of a particular aspect, arrangement, configuration, or arrangement, that feature can also be used, to the extent possible, in combination with and/or in the context of other particular aspects, arrangements, configurations, and arrangements of the technology, and in the technology generally” and “It is therefore to be understood that numerous modifications, including changes in the sizes of the various features described herein, may be made to the illustrative arrangements and that other arrangements may be devised without departing from the spirit and scope of the present technology”. It appears there is no criticality to the combination of screw holes. Applicant is suggested to use the transitional phrase “consisting of”.
Lastly, applicant argues “Further, Courtney, Jr. teaches a humeral fixation plate, and Franklin teaches an ilial fracture stabilization apparatus. Though Franklin only generally describes possible screw orientations, it has not been shown that the screw orientations for securing an apparatus to an ileum would also be successful for securing a plate to a humerus.” However, the Examiner notes that the claims are directed to the device rather than the method.
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 SI MING KU whose telephone number is (571)270-5450. The examiner can normally be reached Monday-Friday, 9:30am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached at (571)272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SI MING KU/Primary Examiner, Art Unit 3775
Prosecution Insights