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 .
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.
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.
Claims 13-15 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nadim et al. (US Patent Publication 2019/0216455).
Claim 13: Nadim’465 discloses an implant (10) that is cannulated for anchoring a suture and used with a k-wire comprising:
a tip (20) having a tip front (left side of the tip 20, with respect to the page in Figures 2, 3), a tip central axis (central axis is co-linear with element 72 in Figure 1) and a tip k-wire passage (90) wherein the tip k-wire passage surrounds the tip central axis (Figure 3), and
an least one disc (30): each at least one disc having a disc front (left side of the disc 30, with respect to the page, in Figures 2, 3), a disc back (right side of the disc 30, with respect to the page in Figures 2, 3), a disc side (outer circumferential surface of 30), a disc central axis (same as tip central axis of the tip; it is co-linear with element 72 in Figure 1) and a disc k-wire passage (90; Figure 3) surrounding the disc central axis and at least one disc suture passage (32a) separated from the disc k-wire passage, and
a screw (40) having a screw back (right side of the screw, with respect to the page, in Figures 2, 3, a screw central axis (central axis is co-linear with element 72 in Figure 1) and a screw k-wire passage (90) wherein the screw k-wire passage surrounds the screw central axis, and
wherein the tip k-wire passage, the disc k-wire passage for each at least one disc, and the screw passage are aligned (Figures 1, 3), and
wherein the tip front is an implant front and the screw back is an implant back (Figures 1-3),and
wherein the implant from the implant front to the implant back includes, in order, the tip from the tip front to the tip back, each at least one disc each disc from the at least one disc front to the at least one disc back, and the screw from the screw front to the screw back (Figures 2, 3).
Claim 14: Nadim’465 discloses each at least one disc suture passage (32a, 32b) includes:
a disc suture passage entrance (32a) selected from the group consisting of: the disc suture passage entrance extending to the disc front, and the disc suture passage entrance extending to the disc side, and the disc suture passage entrance extending to the disc back (the disc suture entrance passage extends to the side; Figure 4 shows suture 50 passing through disc suture passage 32a, 32b), and
a disc suture passage exit (32b) selected from the group consisting of: the disc suture passage exit extending to the disc front, the disc suture passage exit extending to the disc side, and the disc suture passage entrance extending to the disc back (the disc suture passage extends to the side; Figure 4 shows suture 50 passing through disc suture passage 32a).
Claim 15: Nadim’465 discloses two disc suture passages (32a, 32b, 34a, 34b; Figure 9).
Claim 18: Nadim’465 discloses the disc suture passage (32a, 32b) does not include corners (Figure 9).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Nadim’465, as applied to claim 14, further in view of DiMatteo et al. (US Patent Publication 2012/0083840).
Claims 16, 17: Nadim’465 teaches two suture passages (32a, 32b and 34a, 34b). Therefore, Nadim’465 does not teach 3 or 4 suture passages, as required by claims 16 and 17, respectively.
Like Nadim’465, DiMatteo’840 teaches a suture anchor with a disc (38) between a screw (14) and a tip (12). The disc (38) disc has suture passages (42a-42f) passing through it in order to accommodate additional sutures.
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to modify the device taught by Nadim’465, with three or four suture passages, as taught by DiMatteo’840, in order to accommodate additional sutures, as needed, to perform a procedure for attaching soft tissue to bone.
Conclusion
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Lindsey Bachman
/L.B./Examiner, Art Unit 3771 27 July 2026
/ELIZABETH HOUSTON/Supervisory Patent Examiner, Art Unit 3771
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