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 § 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.
Claim(s) 38-41 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jackson (US Pub 2006/0111715).
With respect to claim 38, Jackson discloses a receiving part (see figures 1 and 4 below, 70) for coupling a rod to a bone anchoring element (fig 1.24), the receiving part having a first end (top), a second end (bottom) below the first end, and a central axis (fig 1, B) extending between the first end and the second end, the receiving part comprising: a rod receiving portion (fig 1, 76) defining a recess (fig 1) that extends from the first end towards the second end for receiving the rod, the recess forming two legs (Fig 1, 72 and 73) each having a free end at the first end of the receiving part; and a head receiving portion (Fig 1, 104) defining an accommodation space at the second end for pivotably holding the head of the bone anchoring element (fits into 104 105); wherein a groove (fig 4, 94) is formed in an uppermost end face of at least one of the legs, the groove extending axially from the first end of the receiving part towards the second end such that sidewalls are formed by portions of the leg positioned radially inside and outside the groove (see fig 4 below), and extending circumferentially around the leg with at least one open circumferential end to facilitate engagement by a tool in the circumferential direction (can be inserted circumferential by 88). With respect to claim 39, Jackson discloses wherein the groove is arranged asymmetric with respect to a plane extending through the central axis and through an axis of extension of the recess for the rod (fig 4 shows the groove oof center with the axis). With respect to claim 40, Jackson discloses further comprising a second groove (fig 4, 88) for the tool formed in the leg a sidewall of the leg that is completely spaced apart (fully below the groove) from the groove. With respect to claim 41, Jackson discloses and a tool (fig 10, 14) comprising an engagement surface (fig 10, 186) that is insertable through the at least one open circumferential end into the groove via rotation (Can rotate into position) of the tool around the central axis.
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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.
Claim(s) 1, 2 and 22-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Biedermann et al. (US Pub 2013/0085536)(hereafter Biedermann ‘536) in view of Biedermann et al. (US Pub. 2014/0012337)(hereafter Biederman ‘337).
With respect to claim 1, Biedermann ‘536 discloses a bone anchoring device(see figures 1, 2, 5-6 and 8 below) comprising: a bone anchoring element (fig 1, 1) comprising a head (fig 1, 3)and a shank (fig 1, 2); a receiving part (fig 1, 5) for coupling a rod (fig 1, 6) to the bone anchoring element, the receiving part comprising a first end (top), a second end (bottom) below the first end, a central axis (fig 6, C) extending between the first end and the second end, a recess (fig 1. 11) at the first end for receiving the rod, and a head receiving portion (fig 1, 17) at the second end for pivotably holding the head of the bone anchoring element,; and a separate ring-shaped member (fig 1, 8) configured to be assembled to the head receiving portion, the ring-shaped member having an outer surface and a projection (fig 8, 88) that extends radially outwardly from the outer surface; wherein when the head, the pressure member, and the ring-shaped member are assembled to the receiving part (fig 2), the head is held in the receiving part; and spaced apart from the ring-shaped member by a compressible seat (fig 6, 18), while the ring-shaped member is configured to directly engage and urge the seat radially inwardly against the head (fig 2, paragraph 57, clamping effect). With respect to claim 2, Biedermann ‘536 discloses wherein the projection of the ring-shaped member is configured to be engaged by an instrument to facilitate axial displacement movement of the clamping ring relative to the receiving part (paragraph 61). With respect to claim 22, Biedermann ‘536 discloses, wherein the projection of the ring- shaped member is exposed to outside the receiving part when the ring-shaped member is assembled to the receiving part (fig 2). With respect to claim 23, Biedermann ‘536 discloses wherein the compressible seat is monolithically (fig 5)formed as part of the head receiving portion of the receiving part. With respect to claim 24, Biedermann ‘536 discloses wherein the compressible seat is formed by at least one flexible portion (fig 1, 18). With respect to claim 25, Biedermann ‘536 discloses, wherein when the head is in the head receiving portion, the head receiving portion is configured to directly engage the head (fig 2, seat engages the head With respect to claim 26, Biedermann ‘536 discloses, wherein the ring-shaped member is configured to be assembled around the head receiving portion. With respect to claim 29, Biedermann ‘536 discloses wherein the seat and the ring- shaped member are configured to move axially relative to one another while a rotational orientation between the seat and the ring-shaped member remains constant (linear motion constrained by 15 in fig 5). With respect to claim 30, Biedermann ‘536 discloses wherein an axial length of the entire bone anchoring device remains constant when the seat and the ring-shaped member are moved axially relative to one another (length from the tip of the shank to the top of the receiving part will remain constant when assembled). With respect to claim 31, Biedermann ‘536 discloses wherein when the ring-shaped member is assembled to the receiving part at an uppermost position relative to the receiving part, at least part of the ring-shaped member extends to an axial position that is lower than an axial position of the greatest diameter of the head. (lower in fig 2). With respect to claim 232, Biedermann ‘536 discloses wherein when the head is held in the head receiving portion, a monolithic portion of the receiving part extends to an axial position that is lower than an axial position of the greatest diameter of the head (The seat portion of the receiving part is lower than the head diameter). With respect to claim 33, Biedermann ‘536 discloses wherein the ring-shaped member is prevented by the receiving part from extending into the recess for the rod blocked by stop 9b or 17). With respect to claim 34, Biedermann ‘536 discloses wherein when the head is held in the head receiving portion and the ring-shaped member is assembled to the receiving part at an uppermost position relative to the receiving part, the head is prevented from being removed from the head receiving portion (fig 2 head is clamped into the part). With respect to claim 35, Biedermann ‘536 discloses wherein when the ring-shaped member is assembled to the receiving part at an uppermost position relative to the receiving part, the ring-shaped member restricted from further upward movement by a stop (fig 6, 17 or 9b) located lower axially than a bottom of the recess for the rod.
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With respect to claim 1, Biederman ‘546 discloses the claimed invention except for a pressure member configured to directly engage and exert pressure on the head in the receiving part, while being configured to remain spaced apart from every portion of the head below a greatest diameter of the head measured in a direction perpendicular to the central axis.
Biedermann ‘337 discloses a bone anchoring device having a pressure member (fig 12a, 6)configured to directly engage and exert pressure on the head in the receiving part(fig 12a), while being configured to remain spaced apart from every portion of the head below a greatest diameter of the head measured in a direction perpendicular to the central axis (only contacts above the greatest width) to distribute the load on the head (paragraph 47).With respect to claim 27, Biedermann ‘337 discloses wherein the pressure member is movable axially in the receiving part to adjust a pressure exerted by the pressure member on the head (paragraph 47, pressed downward).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Biedermann ‘536 to include a pressure member configured to directly engage and exert pressure on the head in the receiving part, while being configured to remain spaced apart from every portion of the head below a greatest diameter of the head measured in a direction perpendicular to the central axis in view of Biedermann ‘337 in order to distribute the load on the head. With respect to claim 28, Biedermann ‘536 in view of Biedermann ‘337 discloses wherein when the head, the pressure member, and the ring-shaped member are fully assembled to the receiving part, the seat and the ring-shaped member are configured to remain movable axially relative to one another (Biedermann ‘536 shows the ring member moving up when assembled).
With respect to claim 36, Biedermann ‘536 discloses bone anchoring device comprising: a bone anchoring element (fig 1, 1) comprising a head (fig 1, 3) and a shank (fig 1, 2); a monolithic receiving part (fig 1, 5) for coupling a rod to the bone anchoring element, the receiving part comprising a first end (top), a second end (bottom) below the first end, a central axis (fig 6, C) extending between the first end and the second end, a recess (Fig 1, 11) at the first end for receiving the rod, and a compressible head receiving portion (fig 1, 17) at the second end for pivotably holding the head of the bone anchoring element; and a separate ring-shaped member (fig 1, 8) positionable around the head receiving portion and movable to an uppermost position relative to the receiving part (Fig 2) where a stop (fig 6, bump of 17 and 9b) located lower axially than a bottom of the recess for the rod restricts further upward movement of the ring-shaped member relative to the receiving part (shown lower in fig 6); wherein when the head, the pressure member, and the ring-shaped member are fully assembled to the receiving part, the ring-shaped member remains movable axially relative to the receiving part to adjust a pressure exerted on the head (movable by a tool). With respect to claim 37, Biedermann ‘536 discloses wherein when the head is held in the head receiving portion, the head receiving portion extends to an axial position that is lower than an axial position of the greatest diameter of the head (17 surrounds the head in fig 2).
With respect to claim 36, Biederman ‘546 discloses the claimed invention except for a pressure member configured to directly engage and exert pressure on the head in the receiving part, while being configured to remain spaced apart from every portion of the head below a greatest diameter of the head measured in a direction perpendicular to the central axis.
Biedermann ‘337 discloses a bone anchoring device having a pressure member (fig 12a, 6)configured to directly engage and exert pressure on the head in the receiving part(fig 12a), while being configured to remain spaced apart from every portion of the head below a greatest diameter of the head measured in a direction perpendicular to the central axis (only contacts above the greatest width) to distribute the load on the head (paragraph 47).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Biedermann ‘536 to include a pressure member configured to directly engage and exert pressure on the head in the receiving part, while being configured to remain spaced apart from every portion of the head below a greatest diameter of the head measured in a direction perpendicular to the central axis in view of Biedermann ‘337 in order to distribute the load on the head.
Response to Arguments
Applicant’s arguments, see remarks, filed 2/24/2026, with respect to the double patenting rejection of claims 1 and 2 have been fully considered and are persuasive. The double patenting rejection of claims 1 and 2 has been withdrawn.
Applicant’s arguments with respect to claim(s) 1, 2 and 22-41 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.
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/S.J.C/Examiner, Art Unit 3773
/EDUARDO C ROBERT/Supervisory Patent Examiner, Art Unit 3773
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