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 without traverse of Group II (plate claims 15-21) in the reply filed on March 13, 2026 is acknowledged.
Claim Rejections - 35 USC § 112
Claims 15-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 15 requires the conical portion to taper from a maximum diameter at the bone contacting surface to a minimum diameter at the opposing surface. Looking at Fig. 2 and reading the specification, the claim does not seem to represent the figures and specification. Fig. 2 shows the bore and paragraph [0140] states portion 7b of the bore is cylindrical. Therefore, the portion “at” the bone contacting surface is not tapering as required by the claim. If the term “at” is interpreted potentially unreasonably broader it would be the same claim as previously presented. In this case the same rejection would apply, which is provided below.
Claim Rejections - 35 USC § 102
(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) 15-18 and 20-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith et al. (US 2015/0105779; “Smith”).
Claim 15, Smith discloses an orthopaedic plate (Fig. 2A) for securing to a bone (abstract), the plate having an elongate shaft (part that 102 points towards) with a bone contact surface (Fig. 2C; 214) configured to contact the bone (Fig. 2C) and an opposing surface (212), the elongate shaft having an array of threaded bores (Fig. 2A; paragraph [0046] mentions holes are threaded, 206d, 206e 206h, 208), each bore for receiving a respective fastener (Fig. 2A), and wherein at least one of the array of threaded bores is a conical plate bore (Fig. 3A; 208) having a conical portion (from top to bottom it goes, cylindrical, conical taper, cylindrical lip, conical taper, then cylindrical portion) tapering from a maximum diameter at the bone contact surface to a minimum diameter at the opposing surface (Fig. 3A; interpreting “at” as meaning near).
Claim 16, Smith discloses the plate according to claim 15 wherein the plate comprises a head portion (Fig. 2A; 202) at an axial end (near where 206e points) of the elongate shaft (Fig. 2A), the plate comprising at least one head bore (206-a-g, 210a), the head portion extending at an angle (Fig. 2A; note how it flares out just like the applicant’s) to the elongate shaft (Figs. 2 and 6A).
Claim 17, Smith discloses the plate according to claim 16 wherein the head portion comprises a tool receiving portion (Fig. 2A; any part of the head can receive a tool) for receiving a tool (Fig. 2A).
Claim 18, Smith discloses the plate according to claim 15 wherein at least one of the array of threaded bores is a threaded plate bore (paragraph [0046]).
Claim 20, Smith discloses the plate according to claim 15 wherein the elongate shaft comprises a tapered insertion portion (Figs. 2A; where 204 points; Fig. 5C also shows how the end rounds/tapers off) terminating at an insertion axial end (Fig. 2A; 204).
Claim 21, Smith discloses the plate according to claim 20 wherein the array of threaded bores comprises an insertion portion bore (Fig. 2A; 206d) at or proximal the insertion axial end (Fig. 2A), wherein the insertion portion bore is a cylindrical threaded bore (Fig. 3B; 301b; paragraph [0046]).
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) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 2015/0105779; “Smith”), in view of Huebner et al. (US 2012/0083847; “Huebner”), in further view of Terrill et al. (US 9510880; “Terrill”).
Claim 19, Smith discloses the plate according to claim 15 wherein the bore has multiple regions which may or may not have threads.
Technically Smith is missing the cylindrical portion, even though Fig. 3A looks like a cylindrical cross section, this is for hole 208 which is not circular or elliptical, only substantially elliptical (paragraph [0040]), so it doesn’t make a true cylinder.
Huebner teaches a conical plate bore (Fig. 2; abstract) comprising a cylindrical portion (paragraph [0029]; 32) proximal to one surface of the plate, with a shoulder (90) between the cylindrical portion and a conical threaded bore (paragraph [0021]; threaded portion 34 may be tapered slightly less than the screw taper).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify at least one bore in the Smith plate to have a cylindrical portion next to a threaded conical section, since this is a well-known shape of a bore that can accept a bone screw (Figs. 1-2; abstract).
This combination would ultimately lead one to believe the cylindrical portion would be only on the side that is not contacting bone.
However, Terrill teaches putting a cylindrical looking counterbore on the bone contacting side of the bore (Fig. 4). The big difference between this reference and the current invention is that the threaded region conically tapers the opposite way.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to put the countersink on the bone facing side, as taught by Terrill, in the combination of Smith in view of Huebner, in order to allow the threaded region to be more easily inspected after manufacture (col. 7, lines 21-24).
Response to Arguments
In response to Applicant’s argument that the previous rejection does not teach the new limitation, it should be noted that the new amendment creates a different issue of being new matter. However, if the amendment is interpreted in an overly broad manner the previous rejection would still read on the amended claims. See Office action above for more clarification.
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 Zade Coley whose telephone number is (571)270-1931. The examiner can normally be reached M-F (9-5) PT.
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.
/Zade Coley/Primary Examiner, Art Unit 3775
Prosecution Insights