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 with traverse of Group I and Species A (Claims 1-4 and 7-9) in the reply filed on 7/17/26 is acknowledged. The traversal is on the ground(s) that there is no serious search and/or examination burden, and the species were improperly categorized. This is not found persuasive. Applicant argues that citing that each group recited in the restriction request as necessitating a different field of search (such e.g. different classes/subclasses, electronic resources) is not an excessive burden but merely part of the ordinary burden involved in examining since both groups are sufficiently related (Remarks Pg. 5-6). This is not found persuasive. A prima facie case of burden can be shown when the groups are classified in separate classes which demonstrates that each invention has attained recognition in the art as a separate subject of inventive art. In addition, the groups cited in the application were drawn to the independent claims recite bone templates. However, the two independent claims do not recite similar required structures for meeting the limitations. Therefore, the independent claim 14 is broader than the independent claim 1, and examiner will need to look not only at references for drill guides but classes/subclasses, but also other types of guides and bone plate classes which expand the number of references that must be examined. Therefore, while applicant is correct in that the duty of an examiner is to thoroughly search every reasonable class/subclass in which the invention can be found it is excessive to search within classes/subclasses in which there may be no reference to both groupings but only a single group of the inventions.
As to the argument that the species were miscategorized (Remarks Pg. 6-7) this argument is also unpersuasive. Applicant points to paragraphs [0042]-[0043], [0045], [0046], and [0047]-[0048] as proof that the species are not mutually exclusive. However, those descriptions of the figures make it clear that each figure is a new embodiment of a template with each template including different or additional features not recited in the previous embodiments. This recitation makes clear that no single embodiment is meant to cover wholly the other embodiments and therefore, the different species/embodiments of the template are not miscategorized.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-6 and 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/17/26.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the indicia on the end portion of the plate body as recited in claim 7 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 1 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). In claim1 at line 5-6 the limitation recites “a curved surface contoured to receive a bone therein such that when the bone is received on the curved surface portion, the plate body is on one side of the bone”. This limitation cannot be satisfied without the inclusion of the human organism, or the bone, therefore, applicant is claiming the bone as part of the invention. Instead, applicant should use “adapted to” or “configured to” language to overcome the 101 rejection.
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 4 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.
Claim 4 is rejected as indefinite for the recitation of “a first curved surface” in line 2. It is unclear if this is meant to the be the same curved surface as recited in claim 1 at line 5, or a new curved surface specific only to the arm. In the interest in compact prosecution the limitation will be interpreted as being to the same curved surface.
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) 1-4 and 8-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaneyama et al (US Patent Pub. 20140058398A1).
Kaneyama recites a bone resection template. Specifically in regards to claim 1, Kaneyama recites a plate body (body of 7) having a length extending from a first end (end with 8) to a second end (end with 10) opposite the first end (Fig. 5-7, and 17-18); and an extension arm (11, Fig. 17-18) protruding from an end portion of the plate body proximate the second end (end with 10), the extension arm (11) including a portion with a curved surface (Fig. 17-18) contoured to receive a bone therein such that when the bone is received on the curved surface portion, the plate body is on one side of the bone (Fig. 5-7 and 17-18; and Para. [0045]-[0046], [0053]).
In regards to claim 2, Kaneyama recites wherein the plate body (body of 7) comprises an elongate portion (8) and the end portion (10), the end portion (10) being wider than the elongate portion, and the extension arm (11) extending from a lateral side of the end portion (10) (Fig. 17-18).
In regards to claim 3, Kaneyama recites wherein the extension arm (11) further comprises a transition portion (block guide 11a) and a gripping portion (curved portion with 20), the transition portion defining a space that separates the gripping portion of the extension arm from the plate body and the gripping portion including a neck portion (portion extending parallel with body of 7) between the transition portion and a free end of the extension arm (Fig. 17-18)..
In regards to claim 4, Kaneyama recites wherein the neck portion (portion extending parallel with body of 7) of the extension arm (11) is defined by a first curved surface and a second curved surface opposite the first curved surface, and the first curved surface and the second curved surface are concave (Fig. 17-18).
In regards to claim 8, Kaneyama recites wherein the plate body (body of 7) comprises an elongate portion (8) and a transition portion (portion adjacent 9) that connects the elongate portion (8) of the plate body to the extension arm (11) (Fig. 17-18).
In regards to claim 9, Kaneyama recites wherein the extension arm (11) extends from a single end of the plate body (body of 7), the extension arm (11) having a length from the plate body to a free end (Fig. 17-18).
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(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaneyama in view of Collazo (US Patent Pub. 20180008424A1).
Kaneyama recites a bone resection template that comprises a body having first and second end portions with an extension arm at the second end portion. In regards to claim 7, Kameyama recites the plate body having an extension arm (11) (Fig. 17-18). However, the reference is silent as to indicia at the end portion of the plate body.
Collazo recites a bone resection template. Specifically, in regards to claim 7, Collazo recites the template (600) having a body having first and second end portions (Fig. 16a); and wherein the end portion of the plate body (body of 600) includes indicia representative of a location of a bone-gripping edge of the template along a direction of the length of the plate body (Fig. 16a-16b; and Para. [0103]-[0104]). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the plate body of 7 of Kaneyama to have indicia thereon in view of Collazo in order to have a means to mark a location for resection that ensures complete removal of the unwanted bone growth (Para. [0103]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELA I SHIRSAT whose telephone number is (571)270-5269. The examiner can normally be reached M-F 9:00am-5:30pm MST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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MARCELA . SHIRSAT
Primary Examiner
Art Unit 3775
Prosecution Insights