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 Group II, claims 8, 9 and 11-14, in the reply filed on 6/1/2026 is acknowledged. The traversal is on the ground(s) that “Chang does not deprive the claims of the same or corresponding special technical features. The method, compression moulded bone plate, and mould tool claims are not directed to unrelated inventions, but instead recite corresponding aspects of the same manufacturing concept”. This is not found persuasive because Chang teaches all the features recited in claim 8 which is shown in the 102 rejection below. As such, the special technical features of the claimed invention are not found to define a contribution over the prior art. Therefore, the claims do not satisfy unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-3, 6, 7, 17 and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/1/2026.
Claim Objections
Claims 8, 9 and 11-14 are objected to because of the following informalities: Claims 8, 9 and 11-14 depend from claim 1 which has been withdrawn. Appropriate correction is required.
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 8, 9 and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chang et al. (US 5,064,439) [hereinafter Chang].
Regarding claim 8, Chang discloses a compression molded body which can be a bone plate (col. 4, lines 30-32) comprising a plurality of stacked layers of a composite material comprising reinforcement fiber and polyaryletherketone (Figs. 3-4; claim 1), wherein in a first region (left region of Fig. 3) of the bone plate a first layer (68 or 50 or 52) defining a first side of the stack is narrower along a first axis (transversal axis) than a second layer (60, 62, 64, 66; or 54 or 56) within the stack such that the bone plate is thinner in the first region than in a second region (Fig. 3), wherein the polyaryletherketone is polyetheretherketone and the reinforcement fiber is carbon fiber, and wherein the carbon fiber is present in an amount of 30 to 68 volume% (col. 1, lines 18-21; col. 3, lines 50-60; and col. 4, lines 7-10).
It is to be pointed out that the preamble “bone plate” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
Furthermore, it is to be pointed out that claim 8 defines the product by how the product was made, since it depends from the method of claim 1. Thus, claim 8 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a plurality of stacked layers of a composite material comprising reinforcement fiber and polyaryletherketone, wherein in a first region of the bone plate a first layer defining a first side of the stack is narrower along a first axis than a second layer within the stack such that the bone plate is thinner in the first region than in a second region, wherein the polyaryletherketone is polyetheretherketone and the reinforcement fiber is carbon fiber, and wherein the carbon fiber is present in an amount of 30 to 68 volume%. As shown above, Chang suggests such a product. The method of forming the product is not germane to the issue of patentability of the product itself. MPEP 2113.
Regarding claim 9, Chang discloses wherein in the first region, layers (60, 62, 64 or 66) deeper within the stack are wider along the first axis (transversal axis) than layers closer to the first layer (68), wherein the first region (left region) comprises a cut out portion of the first layer (68) revealing at least part of the second layer (66), wherein in the first region a subset of the plurality of stacked layers are shaped such that layers (66, 64 and 62) deeper within the stack are wider along the first axis (transversal axis) than layers closer to the first layer, wherein in the first region each layer is at least as wide along the first axis (transversal axis) than an adjacent layer arranged closer to the first layer (Fig. 3).
Regarding claim 11, Chang discloses wherein the first region comprises a cut out such that the thickness of the plate varies within the first region (left side region Figs. 3-4).
Regarding claim 12, Chang discloses the cut out comprising a chamfered region upon an edge of the bone plate, the cut out being less deep than the thickness of the bone plate in a second region and formed in a bone facing surface of the bone plate (left top part of Figs. 3-4).
Regarding claim 13, Chang discloses the bone plate is elongated and a plurality of cut outs are provided along at least one long edge (Fig. 3).
Regarding claim 14, Chang discloses wherein each of the plurality of layers are curved along a length or width of the bone plate (curved shape of Fig. 3; col. 6, lines 46-60).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781
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