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 Invention I (claims 1-11) in the reply filed on October 8, 2025 is acknowledged.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 8, 2025.
Claim Objections
Claim 1 is objected to because of the following informalities: the paragraph beginning “a push rod” (line 13) should be indented at the same level as the paragraph beginning “a bender fork” (line 8) and not at the same level as the paragraph beginning “a prong” (line 11) as the push rod is not part of the bender fork. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the word “the” should be inserted between the comma and “push rod” (line 14). Appropriate correction is required.
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 8 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. The recitation of “a second portion of the surgical implant” implies the existence of a first portion of the surgical implant. However, claim 1 does not recite a first portion of the surgical implant, thereby making claim 8 indefinite. Because claim 5 recites a first portion of the surgical implant, the Examiner is interpreting claim 8 as depending from claim 5.
Claims 9-11 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 9 recites “the push rod comprising an angled surface selectively engaged with the angled portion of the bender fork.” As shown in Fig. 16, push rod 700 is located entirely within bender fork 500. As shown in Fig. 10, angled portion 530 of bender fork 500 is located on an exterior surface of bender fork 500. As stated in the specification, angled portion 530 engages inner recess 415 of housing 400 (see pg. 18, ll. 9-12). Because of the configuration shown in Fig. 16 as stated above, angled surface 705 of push rod 700 (shown in Fig. 12) would be located entirely within bender fork 500. Thus, it is unclear how angled surface 705 of push rod 700 would engage angled portion 530 of bender fork 500 as recited in claim 9. Instead, as stated in the specification, angled surface 705 of push rod 700 engages with separating boss 510 of bender fork 500 (see pg. 21, ll. 5-8). Thus, for examination purposes, the Examiner is interpreting claim 9 as reciting “the push rod comprising an angled surface selectively engaged with the separating boss of the bender fork.” Note that this is also consistent with claim 3, which recites that the separating boss engages the angled surface of the push rod. Claims 10 and 11 are rejected because they depend from claim 9.
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.
Claims 1, 5, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Hester (US 2009/0112217 A1) in view of Spitler et al. (US 2006/0036244 A1).
Claim 1. Hester discloses a system (device 1) for inserting or retrieving a surgical implant, the system comprising:
a housing (housing 30) having a first end (see Fig. 2B inset) and a second end (see Fig. 2B inset), the housing defining a hollow interior compartment (occupied by the bender fork as shown in Fig. 2B), the housing comprising:
an inner surface (see Fig. 2B inset) extending internally within the housing between the first end and the second end of the housing, the inner surface comprising a recess (see Fig. 2B inset); and
an opening (see Fig. 2B inset) disposed at the first end of the housing, the opening designed to receive a portion of a knob (handle 24);
a bender fork (see Fig. 2B inset) having a first end (see Fig. 2B inset) and a second end (see Fig. 2B inset), the bender fork received within and selectively engaging with the recess (see Fig. 2B), the bender fork comprising:
a threaded opening (opening with female threads 26) disposed at the first end of the bender fork; and
a prong (see Fig. 2B inset), the prong further comprising a hook (see Fig. 2B inset) disposed at the second end of the bender fork;
a push rod (see Fig. 2B inset) having a first end (see Fig. 2B inset) and a second end (see Fig. 2B inset), the push rod positioned adjacent to the bender fork, push rod comprising:
threads (see Fig. 2B inset) received by the threaded opening;
wherein the knob is designed to rotate within the opening, and
wherein the bender fork translates within the recess between at least a first bender fork position (position as shown in Fig. 2B) and a second bender fork position (position wherein the bender fork is translated distally relative to housing 30 such that tips 22 spring apart) (Figs. 2A-3C; para. 0027-0030).
Claim 5. Hester discloses a retention block (see Fig. 2B inset), the retention block receiving a first portion of the surgical implant (for example, one side of implant 10 as shown in Fig. 1A), the surgical implant forming a first implant orientation (see Fig. 1A, where implant 10 is secured to device 1) (Figs. 2A-3C; para. 0027-0030).
Claim 8. Hester discloses wherein the hook selectively engages with a second portion of the surgical implant (for example, the opposite side of implant 10 as shown in Fig. 1A) (Figs. 2A-3C; para. 0027-0030).
[AltContent: connector][AltContent: connector][AltContent: connector][AltContent: connector][AltContent: connector][AltContent: connector][AltContent: connector][AltContent: connector][AltContent: connector]
Hester fails to disclose a cavity positioned at the first end of the push rod, the cavity sized to receive a second end of a locking pin, wherein the locking pin comprises locking pin threads positioned between a first end and the second end of the locking pin, the locking pin received by the threaded opening, wherein the knob is designed to selectively engage with the locking pin, and the locking pin threads selectively engage with the threaded opening (claim 1).
Spitler teaches a system comprising: a housing (extension 3001); an implant-engaging instrument (component 4804) received within the housing, the implant-engaging instrument having a threaded opening (opening with female screw threads 4905) at a first end (see Fig. 49 inset); a push rod (sleeve 4803) positioned adjacent to the bender fork, the push rod having a cavity (cavity at section 4909 that receives portion 4802) at a first end (see Fig. 49 inset) that receives a second end (see Fig. 49 inset) of a locking pin (portion 4802); wherein the locking pin comprises locking pin threads (male screw threads 4910) positioned between a first end (see Fig. 49 inset) and the second end of the locking pin, wherein the locking pin is received by the threaded opening (see para. 0180); wherein a knob (handle 2902) is designed to selectively engage with the locking pin (via flat surfaces 4913; see para. 0181) and the locking pin threads selectively engage with the threaded opening (see para. 0180) (Figs. 48-50; paras. 0179-0181).
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[AltContent: arrow][AltContent: textbox (First End of Implant-Engaging Instrument)][AltContent: arrow][AltContent: textbox (First End of Push Rod)][AltContent: arrow][AltContent: textbox (Second End of Locking Pin)][AltContent: arrow][AltContent: textbox (First End of Locking Pin)]
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 system of Hester by replacing the implant-engaging instrument, push rod, and locking pin configuration of Spitler for the bender fork and push rod configuration of Hester (i.e., how these components engage with each other and with the knob), such that the system includes a cavity positioned at the first end of the push rod, the cavity sized to receive a second end of a locking pin, wherein the locking pin comprises locking pin threads positioned between a first end and the second end of the locking pin, the locking pin received by the threaded opening, wherein the knob is designed to selectively engage with the locking pin, and the locking pin threads selectively engage with the threaded opening (claim 1), as suggested by Spitler, as such a configuration allows the locking pin to engage with different knobs (such as, for example, a T-handle shaped knob) to allow the surgeon to choose a desired knob configuration while still providing means to convert rotational movement of the knob into translational movement of the bender fork.
Allowable Subject Matter
Claims 2-4, 6, and 7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Regarding claim 2, neither Hester nor Spitler can be reasonably modified such that a portion of the push rod engages the prong of the bender fork. Regarding claim 6, because the second end of the push rod is located within the bender fork, neither Hester nor Spitler can be reasonably modified such that a spacer engages the second end of the push rod. Kang (US 11,464,651 B2) cannot be reasonably modified such that the push rod (driver 310) includes a cavity that receives a locking pin and the locking pin includes threads received in a threaded opening of the bender fork (holding body 304) as recited in claim 1. Duffield (US 2017/0100260 A1) cannot be reasonably modified such that the bender fork (jaw 850) includes a threaded opening to receive threads of a locking pin as recited in claim 1.
Claims 9-11 would be allowable over the prior art if amended to overcome the 35 U.S.C. 112 rejection as suggested above. Neither Hester nor Spitler can be reasonably modified such that an angled surface of the push rod engages with a separating boss of the prong because the push rod is located within the bender fork at a location away from the prong. Kang cannot be reasonably modified such that the bender fork (holding body 304) includes a threaded portion engaged with a threaded portion of a locking pin as recited in claim 9. Duffield cannot be reasonably modified such that the threaded portion (threads 858) of the bender fork (jaw 850) engages with a threaded portion of a locking pin as recited in claim 9 as the threaded portion of the bender fork is configured to engage with a threaded portion (threads 807) of a knob (knob 806).
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Kang and Duffield as referred to above under “Allowable Subject Matter.”
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.
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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