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 I, claims 2-6, in the reply filed on June 8, 2026 is acknowledged. Claims 7-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 5,139,500 (Schwartz).
Regarding claim 2, Schwartz discloses an apparatus (10), comprising: a drill bit (11) having a first portion (portion including threads 15) and a second portion (portion including notches 15; see Fig. 4 and col. 2, line 68 – col. 3, line 11, each drill bit includes at least two breakneck sections 18 each with a notch 19), wherein the first portion of the drill bit has threads (15) disposed along a length of the first portion, wherein the second portion of the drill bit has a plurality of notches (19) along a length of the second portion, the plurality of notches configured to permit detachment from a drill upon application of a force to the drill bit such that a fracture is caused along one of the plurality of notches (see col. 3, lines 9-21).
Regarding the feature “wherein the first portion of the drill bit and one or more notches of the second portion of the drill bit are configured to remain in a medullary canal of a rib”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As the drill bit of Schwartz has all claimed structural features and is configured to have first and second portions of the drill bit remain in a bone (see Fig. 9 and col. 2, lines 57-61, e.g.), the prior art structure is capable of performing the recited intended use.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Schwartz in view of U.S. Patent Application Publication No. 2006/0063998 (von Jako).
Regarding claim 3, Schwartz is silent regarding wherein the first drill bit has a lumen extending from a first end to a second end, the lumen configured to receive bone cement through the lumen at the second end and out of the first end of the first drill bit and into the medullary canal of the rib. However, von Jako discloses a needle that is drilled into a bone and has a lumen extending therethrough can be configured to receive and transport bone cement through the lumen and into a bone (see paragraph [0025]). It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the invention to have the first drill have a lumen extending from a first end near a user to a second at a distal end, the lumen configured to transport bone cement in order to use a single tool to provide access to a damaged bone (such as a medullary canal of a rib, e.g.) and deliver bone cement to help repair the damaged bone (see von Jako, paragraph [0025]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Schwartz in view of U.S. Patent Application Publication No. 2005/0222571 (Ryan).
Regarding claim 4, Schwatz appears to disclose wherein the first drill bit is in the form of a reamer (see col. 4, line 32 – col. 5, line 9 and Figs. 5-7; drill bit used to ream bone to expand the pilot hole). Alternatively, Ryan discloses that a drill bit can be in the form of a reamer to produce an opening of a desired size in a bone for insertion of a fastener element into the bone (see Ryan, paragraph [0056]). It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the first drill bit to be in the form of a reamer as such a form facilitates creating an opening in a bone of a desired size for allowing fixation of the bone by a fastener (see Ryan, paragraph [0056]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Schwartz in view of U.S. Patent Application Publication No. 2010/0152752 (Denove).
Regarding claim 5, Schwartz is silent regarding wherein the first drill bit is comprised of metal or plastic. However, Denove discloses a K-wire used for drilling into bone comprises metal (see paragraphs [0010] and [0028]). It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the invention to make the first drill bit from metal as Denove suggests such a material is suitable for forming a wire used to drill into bone (see Denove, paragraphs [0010] and [0028]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Schwartz.
Regarding claim 6, Schwartz discloses wherein the first portion of the first drill bit has cutting edges (drill point 16 planar surfaces, see col. 2, line 62 – col. 3, line 8). Further, Schwartz discloses that the notches can be arranged a desired distance d along a length of the first drill bit based on the desired working length of wire needed (see col. 4, lines 6-31). It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the notches to be arranged a desired distance along the length of the second portion of the first drill bit, as Schwartz recognizes that amount of distance of the notches along the length of the wire is a result effective variable that determines the working lengths of wire used to provide fixation to the bone (see Schwartz, col. 4, lines 6-31), and “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Additionally, there is no evidence that the recited range is critical to the functioning of the invention.
Conclusion
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/NICHOLAS J PLIONIS/Primary Examiner, Art Unit 3773
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