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 . This action is in response to the set of claims received on March 16, 2025. Claims 75-94 are currently pending.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 75-94 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 75-94 of copending Application No. 18/925,293 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a locking mechanism to lock adjustability of the length of the linking segment” as in claim 89 and “a locking mechanism configured to lock adjustability of the length of the linking segment” as in claim 94. In both instances, “a locking mechanism” is interpretated as a screw, nut, pin, or bolt.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 75-91 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lowe et al. (US Publication 2014/0257501), hereinafter “Lowe”.
Regarding claim 75, Lowe discloses a bone plate apparatus (100, Figure 1) comprising first and second plates (102 and 104, respectively, Figure 1) each capable of securing to a bone portion [paragraph 0107 describe the plates are attached to a patient’s bones]; and a plurality of linking segments of various lengths (i.e. a portions 120 and 144 of 106, see Figure 1), each linking segment capable of attaching to each of the first and second plates at articulating joints for connecting the first and second plates together (i.e. ball portions, 136 and 150, figure 2) wherein each linking segment has a different length for extending between and connecting the first and second plates together at a respective, different spacing between the plates (i.e. the length of adjustability occurs with 140), and wherein the first and second plates are capable of being connected together only by a linking segment extending between and being connected at the articulating joints to the first and second plates (see Figure 1).
Regarding claim 76, Lowe discloses wherein the bone plate apparatus comprises one or more orientation adjustment pins (144) for locking an orientation of one of the articulating joints (i.e., 144 is locking engagement with spring 112 via 140, see Figure 3).
Regarding claim 77, Lowe discloses wherein one of the articulating joints is configured for movement in two dimensions (i.e. due to the interaction between 102 and 150, see paragraph 0114 referring to the socket in 102).
Regarding claim 78, Lowe discloses wherein one of the articulating joints is configured for movement in three dimensions (i.e. due to the interaction between 102 and 150, see paragraph 0114 referring to the socket in 102).
Regarding claim 79, Lowe discloses wherein one of the articulating joints is configured for free movement in three dimensions (i.e. due to the interaction between 102 and 150, see paragraph 0114 referring to the socket in 102).
Regarding claim 80, Lowe discloses wherein one of the articulating joints is configured for free simultaneous movement through two perpendicular planes (i.e. due to the interaction between 102 and 150, see paragraph 0114 referring to the socket in 102).
Regarding claim 81, Lowe discloses wherein one of the articulating joints is configured to allow for rotation of the first plate and linking segment relative to one another (i.e. due to the interaction between 102 and 150, see paragraph 0114 referring to the socket in 102).
Regarding claim 82, Lowe discloses wherein one of the articulating joints is configured to restrict motion to a particular range of motion (i.e. due to the interaction between 102 and 150, see paragraph 0114 referring to the socket in 102).
Regarding claim 83, Lowe discloses wherein one of the articulating joints is configured for free, multi-dimensional movement simultaneously through two perpendicular planes, but with a limited range of motion (i.e. due to the interaction between 102 and 150, see paragraph 0114 referring to the socket in 102).
Regarding claim 84, Lowe discloses wherein one of the articulating joints is a ball and socket joint (joint is defined by 102 and 150, see paragraph 0114 referring to the socket in 102).
Regarding claim 85, Lowe discloses wherein the one of the articulating joints that is a ball and socket joint has a range of motion that is limited by the shape of its socket(joint is defined by 102 and 150, see paragraph 0114 referring to the socket in 102).
Regarding claim 86, Lowe discloses wherein one of the linking segments has a length that is adjustable (due to the interaction between 112 and 114).
Regarding claim 87, Lowe discloses wherein one of the linking segments comprises an inner segment (114) partially received within an outer segment (112), and wherein the inner and outer segments are adjustably mated together with threading such that a length of the linking segment may be adjusted via rotation of the inner and outer segments relative to one another (due to the interaction between 114 and 112).
Regarding claim 88, Lowe discloses wherein one of the linking segments has a length that is adjustable (i.e., due to the interaction between 112 and 114).
Regarding claim 89, Lowe discloses wherein the bone plate apparatus further comprises a locking mechanism to lock adjustability of the length of the linking segment (due to the interaction between 112 and 114).
Regarding claim 90, Lowe discloses wherein one of the articulating joints comprises one or more curved concave surfaces and one or more curved convex surfaces, with the curved concave surfaces being configured to mate in adjustable engagement with the curved convex surfaces (i.e., surfaces defined by 102 and 150, see paragraph 0014 referring to the socket in 102) (see Figures 0091-0111).
Regarding claim 91, Lowe discloses wherein one of the articulating joints comprises one or more channels enabling rotative movement (i.e., via the opening 142).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 92-94 are rejected under 35 U.S.C. 103 as being unpatentable over Lowe et al. (US Publication 2014/0257501) in view of Strauss et al. (US Publication 20080255620).
Regarding claim 92, Lowe discloses a bone plate apparatus (100, Figure 1) having a plurality of linking segments of various lengths (i.e. a portions 120 and 144 of 106, see Figure 1), and further comprising first and second plates (102 and 104, respectively, Figure 1) each capable of securing to a bone portion, wherein each linking segment is capable of attaching to each of the first and second plates for connecting the first and second plates together(i.e. ball portions, 136 and 150, figure 2), wherein each linking segment has a different length for extending between and connecting the first and second plates together at a respective, different spacing between the first and second plates(i.e. the length of adjustability occurs with 140), and wherein the first and second plates are configured to be connected together only by a linking segment extending between and being connected to the first and second plates. (see Figure 1).
Lowe fails to disclose a kit. However, Strauss et al. discloses a bone apparatus kit [0046] comprising additional orthopedic devices and instruments, such as links and any additional instruments or tools. [0046].
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made to modify the bone apparatus of Lowe in a kit with a plurality or orthopedic instruments to include a link as taught by Strauss so that the surgeon can a variety of options readily available during the procedure.
Regarding claim 93, Lowe discloses a bone plate apparatus (100, Figure 1) having a linking segment(i.e. a portions 120 and 144 of 106, see Figure 1), and further comprising first and second plates (102 and 104, respectively, Figure 1) each capable of securing to a bone portion, wherein the linking segment is capable of attaching to each of the first and second plates for connecting the first and second plates together (see Figure 1), wherein the linking segment has an adjustable length for extending between and connecting the first and second plates together at a respective, different spacing between the first and second plates(i.e., due to the interaction between 112 and 114), and wherein the first and second plates are capable of being connected together only by the linking segment extending between and being connected to the first and second plates (see Figure 1).
Lowe fails to disclose a kit. However, Strauss et al. discloses a bone apparatus kit [0046] comprising additional orthopedic devices and instruments, such as links and any additional instruments or tools. [0046].
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made to modify the bone apparatus of Lowe in a kit with a plurality or orthopedic instruments to include a link as taught by Strauss so that the surgeon can a variety of options readily available during the procedure.
Regarding claim 94, the modified Lowe’s apparatus discloses further comprises a locking mechanism configured to lock adjustability of the length of the linking segment(due to the interaction between 112 and 114).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANA S JONES whose telephone number is (571)270-5963. The examiner can normally be reached Monday to Friday (8am to 5pm EST).
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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.
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/Diana Jones/Examiner, Art Unit 3775
/KEVIN T TRUONG/Supervisory Patent Examiner, Art Unit 3775