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 of Invention I (the instrument) and the species of Figs. 1-9C in the reply filed on July 24, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/124,975, filed on December 17, 2020.
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.
Claim 39 is 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 39 recites “an axial length of the second tube” (line 1). However, claim 36 already recites “an axial length of the second tube” (last line). Thus, it is unclear whether “an axial length of the second tube” as recited in claim 39 is intended to be the same axial length as recited in claim 36 or a different axial length.
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 22-24 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meyer et al. (US 2014/0163625 A1).
Claim 22. Meyer discloses an instrument (100) for use with a receiving part for connecting a bone anchoring element to a rod, the receiving part comprising two legs that define a recess for receiving the rod, the instrument comprising:
a first tube (106) having a first end (see Fig. 4 inset), a second end (see Fig. 4 inset), and a longitudinal axis that extends between the first end and the second end, and defining a coaxial internal channel (128) that opens towards the first end and the second end; and
at least one protruding portion (126) that extends radially outwardly from an outer surface (see Fig. 4 inset) of the first tube and that is engageable with the recess of the receiving part to prevent rotational movement of the first tube relative to the receiving part; and
a second tube (102) forming a closed ring around at least the first end of the first tube (Figs. 1A-12B).
Claim 23. Meyer discloses wherein the second tube has a first end (see Fig. 4 inset) and a second end (see Fig. 4 inset), and the second tube forms a closed ring at both the first end and at the second end (Figs. 1A-12B).
Claim 24. Meyer discloses wherein an axial length (see Fig. 4 inset) of the second tube is smaller than an axial length (see Fig. 4 inset) of the first tube (Figs. 1A-12B).
Claim 27. Meyer discloses wherein the at least one protruding portion comprises a first protruding portion (126) and a second protruding portion (126) respectively on opposite sides of the first tube (Figs. 1A-12B).
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Claims 22, 25, 26, 28-34, and 36-41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jones et al. (US 2007/0093849 A1).
Claim 22. Jones discloses an instrument (10) for use with a receiving part for connecting a bone anchoring element to a rod, the receiving part comprising two legs that define a recess for receiving the rod, the instrument comprising:
a first tube (12) having a first end (18), a second end (16), and a longitudinal axis that extends between the first end and the second end, and defining a coaxial internal channel (14) that opens towards the first end and the second end; and
at least one protruding portion (24) that extends radially outwardly from an outer surface (see Fig. 2 inset) of the first tube and that is engageable with the recess of the receiving part to prevent rotational movement of the first tube relative to the receiving part; and
a second tube (26) forming a closed ring around at least the first end of the first tube (Figs. 1-8D).
The Examiner notes that the claims are directed to an instrument and do not positively recite the receiving part or rod. Thus, the Examiner is taking the position that the instrument of Jones can be used with an appropriately configured receiving part and rod such that it would meet the functional limitations of claim 22 and claims dependent therefrom.
Claim 25. Jones discloses wherein a first protruding portion (24) of the at least one protruding portion extends axially from the first end of the first tube toward the second end of the first tube (Figs. 1-8D).
Claim 26. Jones discloses wherein the second tube is connected to the first tube via the at least one protruding portion (Figs. 1-8D).
Claim 28. Jones discloses wherein the second end of the first tube is configured to detachably engage with a grip member (via feature shown at 16) to prevent rotation of the first tube relative to the grip member (Figs. 1-8D).
Claim 29. Jones discloses an instrument (10) for use with a receiving part for connecting a bone anchoring element to a rod, the receiving part comprising two legs that define a recess for receiving the rod, the instrument comprising:
a first tube (12) having a first end (18), a second end (16), and a longitudinal axis that extends between the first end and the second end, and defining a coaxial internal channel (14) extending between the first end and the second end;
a second tube (26) positioned around at least part of the first tube; and
a first protruding portion (24) extending radially from an outer surface (see Fig. 2 inset) of the first tube,
wherein two internal gaps are defined radially between the outer surface of the first tube and an inner surface of the second tube, each of the two internal gaps being configured to receive at least part of a respective one of the two legs of the receiving part, and
wherein the first protruding portion is positioned circumferentially between the two internal gaps (Figs. 1-8D).
The Examiner notes that the claims are directed to an instrument and do not positively recite the receiving part or rod. Thus, the Examiner is taking the position that the instrument of Jones can be used with an appropriately configured receiving part and rod such that it would result in the claimed two internal gaps and meet the functional limitations of claim 29 and claims dependent therefrom.
Claim 30. Jones discloses a second protruding portion (24) protruding from the outer surface of the first tube and being positioned circumferentially between the two internal gaps (Figs. 1-8D).
Claim 31. Jones discloses wherein the first protruding portion extends from the outer surface of the first tube to the inner surface of the second tube to connect the second tube to the first tube (Figs. 1-8D).
Claim 32. Jones discloses wherein the first protruding portion and the first tube are monolithic (Figs. 1-8D).
Claim 33. Jones discloses wherein each of the two internal gaps are open at opposite ends of the second tube such that the two legs are configured to extend through the two internal gaps and axially past the second tube (Figs. 1-8D).
Claim 34. Jones discloses wherein the second tube forms a closed ring that extends axially along only part of the first tube (Figs. 1-8D).
Claim 36. Jones discloses an instrument (10) for use with a receiving part for connecting a bone anchoring element to a rod, the receiving part comprising two legs that define a recess for receiving the rod, the instrument comprising:
a first tube (12) having a first end (18), a second end (16), and a longitudinal axis that extends between the first end and the second end, and defining a coaxial internal channel (14) extending between the first end and the second end;
a first protruding portion (24) proximal to the first end of the first tube and extending radially from an outer surface (see Fig. 2 inset) of the first tube; and
a second tube (26) proximal to the first end of the first tube and positioned around at least part of the first tube,
wherein at least part of the first protruding portion is positioned radially between the first tube and the second tube, and
wherein an axial length (see “AL1” in Fig. 2 inset) of the second tube is less than an axial length (see “AL2” in Fig. 2 inset) of the first tube (Figs. 1-8D).
The Examiner notes that the claims are directed to an instrument and do not positively recite the receiving part or rod. Thus, the Examiner is taking the position that the instrument of Jones can be used with an appropriately configured receiving part and rod such that it would meet the functional limitations of claim 36 and claims dependent therefrom.
Claim 37. Jones discloses wherein the axial length of the second tube is less than an axial length (see “AL3” in Fig. 2 inset) of the first protruding portion (Figs. 1-8D).
Claim 38. Jones discloses wherein the axial length of the first protruding portion is less than an axial length (see “AL4” in Fig. 2 inset) of a region of the first tube between the first protruding portion and the second end of the first tube (Figs. 1-8D).
Claim 39. Jones discloses wherein an axial length (see “AL1” in Fig. 2 inset) of the second tube is less than an axial length (see “AL5” in Fig. 2 inset) of a region of the first tube between the second tube and the second end of the first tube (Figs. 1-8D).
Claim 40. Jones discloses wherein the first protruding portion connects the second tube to the first tube (Figs. 1-8D).
Claim 41. Jones discloses wherein the first protruding portion has an end face (see Fig. 2 inset) with a cylindrical recess (see Fig. 2 inset) having a diameter that substantially corresponds to a diameter of the rod (Figs. 1-8D).
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Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (US 2007/0093849 A1) in view of Meyer et al. (US 2014/0163625 A1).
Jones fails to disclose an inner shaft with a drive portion at one end, the inner shaft being movable axially in the internal channel of the first tube (claim 35).
Meyer teaches an instrument (100) for use with a receiving part for connecting a bone anchoring element to a rod, the receiving part comprising two legs that define a recess for receiving the rod, the instrument comprising: a first tube (106) having a first end (see Fig. 4 inset), a second end (see Fig. 4 inset), and a longitudinal axis that extends between the first end and the second end, and defining a coaxial internal channel (128) that opens towards the first end and the second end; and an inner shaft (130) with a drive portion (134) at one end, the inner shaft being movable axially in the internal channel of the first tube in order to insert a set screw into the receiving part to secure the rod to the receiving part (see para. 0037) (Figs. 1A-12B).
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 instrument of Jones to include an inner shaft with a drive portion at one end, the inner shaft being movable axially in the internal channel of the first tube (claim 35), as suggested by Meyer, in order to insert a set screw into the receiving part to secure the rod to the receiving part.
Conclusion
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
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