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 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 29-33 and 37 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 29 recites “a head of the bone anchoring element” (line 9). However, claim 29 previously recites “a bone anchoring element comprising a head” (line 3). Thus, it is unclear whether “a head” in line 9 is intended to be the same head as recited in line 3 or an additional head. For examination purposes, the Examiner is interpreting “a head” in line 9 as “the head” and as referring to the same head as recited in line 3.
Claim Rejections - 35 USC § 102
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.
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 29, 31-33, 37, 45, 46, and 48 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Biedermann et al. (US 2013/0085536 A1).
Claim 29. Biedermann discloses a bone anchoring device comprising:
a bone anchoring element (bone anchoring element 1) comprising a head (head 3) and a shank (threaded portion of bone anchoring element 1 located below head 3);
a receiving part (receiving part 5) for coupling a rod to the bone anchoring element, the receiving part having a first end (first end 9a), a second end (see Fig. 36 inset) below the first end, a central axis extending between the first and second ends, a rod receiving portion (portion of receiving part 5 that receives rod 6 as shown in Fig. 25) at the first end that defines a recess (U-shaped recess that receives rod 6 as shown in Fig. 25) that extends from the first end towards the second end for receiving the rod, a head receiving portion (head receiving portion 17) at the second end that defines an accommodation space (space that receives head 3 as shown in Fig. 35) configured to pivotably receive the head of the bone anchoring element, and a first engagement surface (see Fig. 36 inset) having at least a portion (see Fig. 36 inset) spaced apart from the first end; and
a locking member (locking ring 8’) adjustable relative to the receiving part and comprising a pressure exerting surface (first portion 81) configured to lock the head in the receiving part;
wherein the bone anchoring device is configured to connect to a tool that is positionable around and rotatable relative to the receiving part from a first rotational orientation to a second rotational orientation to facilitate the locking of the head, with the tool being configured to abut against the first engagement surface of the receiving part and engage the locking member to adjust the locking member to a locking position to lock the head (Figs. 25-37; paras. 0074-0082).
Claim 31. Biedermann discloses wherein the locking member is positionable around an outside of the receiving part (Figs. 25-37; paras. 0074-0082).
Claim 32. Biedermann discloses wherein the locking member comprises a projection (rib portions 88a’ and 88b’) configured to engage the tool (Figs. 25-37; paras. 0074-0082).
Claim 33. Biedermann discloses wherein the pressure exerting surface of the locking member is configured to engage a compressible portion (see Fig. 36 inset) of the receiving part, and the compressible portion of the receiving part is configured to exert pressure on the head (Figs. 25-37; paras. 0074-0082).
Claim 37. Biedermann discloses wherein the head receiving portion further defines an opening (see Fig. 36 inset) at the second end for inserting the head into the accommodation space (Figs. 25-37; paras. 0074-0082).
Claim 45. Biedermann discloses a bone anchoring device comprising:
a receiving part (receiving part 5) for coupling a rod to a bone anchoring element, the receiving part having a first end (first end 9a), a second end (see Fig. 36 inset) below the first end, a central axis extending between the first and second ends, a rod receiving portion (portion of receiving part 5 that receives rod 6 as shown in Fig. 25) at the first end that defines a recess (U-shaped recess that receives rod 6 as shown in Fig. 25) that extends from the first end towards the second end for receiving the rod, and a head receiving portion (head receiving portion 17) at the second end that defines an accommodation space (space that receives head 3 as shown in Fig. 35) configured to pivotably receive a head of the bone anchoring element; and
a locking member (locking ring 8’) adjustable relative to the receiving part, the locking member comprising a pressure exerting surface (first portion 81) configured to lock the head in the receiving part and an engagement surface (rib portions 88a’ and 88b’);
wherein the bone anchoring device is configured to connect to a tool when the locking member is at an insertion position (position when first portion 81 of locking ring 8’ does not compress head receiving portion 17) where the head of the bone anchoring element is insertable into the accommodation space, and wherein the engagement surface of the locking member is engageable by the tool to adjust the locking member from the insertion position to a locking position (position when first portion 81 of locking ring 8’ compresses head receiving portion 17) where the head is locked in the receiving part while the recess for the rod remains sufficiently unobstructed for the rod to extend and move therethrough (Figs. 25-37; paras. 0074-0082).
Claim 46. Biedermann discloses wherein the locking member is positionable around an outside of the receiving part (Figs. 25-37; paras. 0074-0082).
Claim 48. Biedermann discloses wherein the locking member is movable axially relative to the receiving part to the locking position (Figs. 25-37; paras. 0074-0082).
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Claims 39-41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Biedermann et al. (US 2012/0179211 A1).
Claim 39. Biedermann discloses a bone anchoring device comprising:
a receiving part (receiving part 5) for coupling a rod to a bone anchoring element, the receiving part having a first end (first end 9a), a second end (free end 17) below the first end, a central axis extending between the first and second ends, a rod receiving portion (rod receiving portion 9) at the first end that defines a recess (U-shaped recess 12) that extends from the first end towards the second end for receiving the rod, a head receiving portion (head receiving portion 16) at the second end that defines an accommodation space (internal section 18) configured to pivotably receive a head of the bone anchoring element, and a first engagement surface (see Fig. 3 inset); and
a locking member (locking ring 8) adjustable relative to the receiving part and comprising a pressure exerting surface (cylindrical portion 83) configured to lock the head in the receiving part;
wherein the bone anchoring device is configured to connect to a tool that is positionable around and rotatable relative to the receiving part from a first rotational orientation where the tool is movable axially upwardly away from the second end of the receiving part to separate the tool from the receiving part, to a second rotational orientation where the tool engages the first engagement surface of the receiving part to restrict separation of the tool from the receiving part, wherein the locking member is further engageable with the tool at at least the second rotational orientation (Figs. 1-9d; paras. 0027-0048). Though Biedermann fails to disclose a tool, the Examiner is taking the position that a tool could be provided to engage the first engagement surface of receiving part 5 as claimed and also engage locking ring 8 as claimed, such as at the slits located between projections 86 and adjacent wall portions 83a.
Claim 40. Biedermann discloses wherein the locking member is positionable around an outside of the receiving part (Figs. 1-9d; paras. 0027-0048).
Claim 41. Biedermann discloses wherein the head receiving portion further defines an opening (opening 19) at the second end for inserting the head into the accommodation space (Figs. 1-9d; paras. 0027-0048).
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Claims 29 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schlaepfer et al. (US 2009/0149887 A1).
Claim 29. Schlaepfer discloses a bone anchoring device comprising:
a bone anchoring element (bone anchor 12) comprising a head (head 22) and a shank (threaded portion of bone anchor 12 located below head 22);
a receiving part (connector body 20) for coupling a rod to the bone anchoring element, the receiving part having a first end (end adjacent rim 80), a second end (end adjacent bottom opening 48) below the first end, a central axis extending between the first and second ends, a rod receiving portion (portion that extends from inner surface 72 to the first end) at the first end that defines a recess (channel 71) that extends from the first end towards the second end for receiving the rod, a head receiving portion (lower section 40) at the second end that defines an accommodation space (socket 47) configured to pivotably receive the head of the bone anchoring element, and a first engagement surface (arms 74) having at least a portion (portion of arms 74 adjacent upper section 36 is spaced apart from the first end) spaced apart from the first end; and
a locking member (sleeve 32) adjustable relative to the receiving part and comprising a pressure exerting surface (inner surface 102) configured to lock the head in the receiving part;
wherein the bone anchoring device is configured to connect to a tool that is positionable around and rotatable relative to the receiving part from a first rotational orientation to a second rotational orientation to facilitate the locking of the head, with the tool being configured to abut against the first engagement surface of the receiving part and engage the locking member to adjust the locking member to a locking position to lock the head (Figs. 1-18; paras. 0072-0092).
Claim 30. Schlaepfer discloses wherein the first engagement surface comprises a projection (arms 74) formed on an outer surface (cylindrical surface 60) of the receiving part (Figs. 1-18; paras. 0072-0092).
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 JULIANNA N HARVEY whose telephone number is (571)270-3815. The examiner can normally be reached Mon.-Fri. 8:00am-5:00pm EST.
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, Eduardo Robert can be reached at (571)272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIANNA N HARVEY/Primary Examiner, Art Unit 3773