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 .
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/014546 and 17/990101, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Neither of the two Applications provide adequate support “a recess defined by a peripheral wall” and “wherein translational movement of the base member along the control shaft and within the recess is limited by a first portion of the peripheral wall” as required by claims 1 and 14. As well as, “a recess defined by a boundary wall” and “wherein movement of the base member along the control shaft is limited by a first portion of the boundary wall” as required by claim 18. As a result, claims 1-8, 14-15 and 18-20 are given an effective filing date of July 1st, 2025.
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.
Claims 12 and 14-15 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 12 recites the limitation "the base" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation has been interpreted to read “the base member” as this provides proper antecedence.
Regarding claim 14, Applicant recites in lines 1-2 “a recess”. It is unclear if Applicant is attempting to further define the recess of claim 9, line 4 or is attempting to define a second, distinct recess. For the purpose of examination, the limitation has been interpreted to be further defining the recess of claim 4 as this appears to be consistent with Applicant’s specification. Claim 15 is been rejected under 35 U.S.C. 112(b) as it depends from a rejected base claim and does not rectify the issue at hand.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 9-17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zakelj (US 2021/0401586).
The applied reference has a common assignee and inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 9, Zakelj discloses an expandable implant comprising a first support (20) defining a control aperture (see figure below) extending through the first support; a second support (18) movably coupled to the first support (figures 12-13), the second support comprising a first end having an access bore (187) and a second end opposite the first end and comprising a recess (185); a control assembly (16) comprising a control shaft (166) movably coupled with the second support (figures 12-13), wherein the access bore provides tool access to the control shaft via the access bore(¶44, ¶49, figures 12-13); a base member (164) received on the control shaft (¶39, figure 11); and a pivot member (162’s, ¶40) pivotally coupled to the base member and movably coupled with the control aperture (¶37); and a cap (26) received by the recess (figures 12-13, ¶41), the cap configured to receive an end portion of the control shaft (169) to position the control shaft relative to the second support (figures 12-13, ¶41), wherein translation of the base member along the control shaft causes the pivot member to pivot relative to the base member (¶37, ¶40), and the first support to move relative to the second support to change an angle between the first support and the second support (figures 12-13).
Regarding claim 10, Zakelj discloses the cap (26) is configured to rotatably receive the end portion of the control shaft to permit rotational movement of the control shaft and vertically fix the control shaft relative to the second support (¶41).
Regarding claim 11, Zakelj discloses the recess is offset from a tip of the second end of the second support (laterally offset figures 12-13).
Regarding claim 12, Zakelj discloses the recess comprises a retention groove (female thread “troughs”) and the base comprises a retention projection (male thread “projections”) extending from the base, wherein the retention groove is configured to receive the retention projection to seat the cap within the recess (figures 12-13, ¶41).
Regarding claim 13, Zakelj discloses the recess of the second support is a lower recess, and wherein the first support further comprises an upper recess (figure 12), wherein when the expandable implant is in a collapsed position the cap is received by the lower recess and the upper recess (figures 12-13).
Regarding claim 14, Zakelj discloses the second support further comprises a recess (see figure below) defined by a peripheral wall (figures 12-13), and wherein translational movement of the base member along the control shaft and within the recess is limited by a first portion of the peripheral wall (see figure below).
Regarding claim 15, Zakelj discloses the recess is further defined by a second portion of the peripheral wall (see figure below), and wherein translational movement of the base member along the control shaft within the recess in a first direction is limited by the first portion of the peripheral wall, and translational movement of the base member along the control shaft within the recess in a second direction is limited by the second portion of the peripheral wall (figures 12-13).
Regarding claim 16, Zakelj discloses the pivot member comprises first (“left” 162) and second (“right” 162) pivot members coupled to opposite sides of the base member (figure 11).
Regarding claim 17, Zakelj discloses the second support (18) comprises a housing defining the access aperture, a cavity (192), and a control member bore (187), wherein the control member bore receives a head (167) of the control shaft (figure 12).
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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.
Claims 1-8 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lauf et al. (US 2022/0071772) in view of Engstrom (US 2019/0336301).
Regarding claim 1, Lauf et al. disclose an expandable implant comprising a first support (14) comprising an exterior surface (56) configured to engage bone and a control aperture (66), the control aperture defined by the first support and extending through the exterior surface (figure 6); a second support (12) movably coupled to the first support (figures 3-6); and a control assembly (16) comprising a control shaft (78); a base member (80) received on the control shaft; and a pivot member (82/83) pivotally coupled to the base member, the pivot member configured to move within the control aperture (¶28), wherein translation of the base member along the control shaft causes the pivot member to pivot relative to the base member, and the first support to move relative to the second support to change an angle between the first support and the second support (¶22, ¶33).
Lauf et al. fail to teach or disclose the second support comprises a recess defined by a peripheral wall wherein the base member is configured to translate along the control shaft within the recess, wherein translational movement of the base member along the control shaft and within the recess is limited by a first portion of the peripheral wall.
Engstrom discloses an expandable implant (10’, figure 42) comprising a first support (22’) comprising and exterior surface (30’) and a second support (20’) movably coupled to the first support (figure 48), the second support comprising a recess (70’) defined by a peripheral wall (70a’, 70b’, 70’) and a control assembly comprising a control shaft (98’) and a base member (52’) received on the control shaft (figure 43), the base member is configured to translate along the control shaft within the recess (¶151), wherein translational movement of the base member along the control shaft and within the recess is limited by a first portion (one of 70a’ and 70b’)of the peripheral wall (¶151) thereby controlling and limiting expansion of the implant to prevent over expansion.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have constructed the expandable implant of Lauf et al. have the second support comprise a recess defined by a peripheral wall wherein the base member is configured to translate along the control shaft within the recess, wherein translational movement of the base member along the control shaft and within the recess is limited by a first portion of the peripheral wall as taught by Engstrom as it allows for controlling and limiting expansion of the implant to prevent over expansion.
Regarding claim 2, Lauf et al. in view of Engstrom disclose the recess is further defined by second portion (the other of 70a’ and 70b’) of the peripheral wall (70’, figure 43 of Engstrom). Regarding claim 3, Lauf et al. in view of Engstrom disclose wherein translational movement of the base member along the control shaft within the recess in a first direction is limited by the first portion of the peripheral wall, and translational movement of the base member along the control shaft within the recess in a second direction is limited by the second portion of the peripheral wall (¶151 of Engstrom).
Regarding claim 4, Lauf et al. in view of Engstrom disclose the peripheral wall is continuous about the recess (figure 43 of Engstrom). Regarding claim 5, Lauf et al. disclose the control aperture defines a first ramp (74/76) surface configured to slidably engage a second ramp surface (102/104) on the pivot member.
Regarding claim 6, Lauf et al. disclose the pivot member comprises first (82) and second (83) pivot members independently coupled and rotatable to opposite sides of the base member (¶31-32).
Regarding claim 7, Lauf et al. disclose the first pivot member is received on a first boss (“left” 98) on a first side of the base member and the second pivot member is received on a second boss (“right” 98) on a second side of the base member (figure 7). Regarding claim 8, Lauf et al. disclose a cap (18) received by a recess (32) at an end of the second support (12), wherein the cap is configured to rotatably receive an end portion of the control shaft to permit rotational movement of the control shaft and vertically fix the control shaft relative to the second support (figures 3-6).
Regarding claim 18, Lauf et al. disclose an expandable implant comprising a first support (14) defining a control aperture (66) extending through the first support; a second support (12) movably coupled to the first support (figures 3-6); and a control assembly (16) comprising a control shaft (78) movably coupled with the second support; a base member (80) movably received on the control shaft; and a pivot member (82/83) pivotally coupled to the base member and movably coupled with the control aperture (figures 3-6); and a cap (18) received by a lower recess (32) of the second support, the cap configured to receive the control shaft (@88) to position the control shaft relative to the second support (figures 3-7), and wherein translation of the base member along the control shaft causes the pivot member to pivot relative to the base member, and the first support to move relative to the second support (¶31, figures 3-7). Lauf et al. fail to expressly teach or disclose the second support comprising a recess defined by a boundary wall and wherein movement of the base member along the control shaft is limited by a first portion of the boundary wall. Engstrom discloses an expandable implant (10’, figure 42) comprising a first support (22’) comprising and exterior surface (30’) and a second support (20’) movably coupled to the first support (figure 48), the second support comprising a recess (70’) defined by a boundary wall (70a’, 70b’, 70’) and movement of the base member along the control shaft is limited by a first portion (one of 70a’ and 70b’) of the peripheral wall (¶151) thereby controlling and limiting expansion of the implant to prevent over expansion.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have constructed the expandable implant of Lauf et al. have the second support comprise a recess defined by a peripheral wall wherein the base member is configured to translate along the control shaft, wherein translational movement of the base member along the control shaft and within the recess is limited by a first portion of the peripheral wall as taught by Engstrom as it allows for controlling and limiting expansion of the implant to prevent over expansion.
Regarding claim 19, Lauf et al. in view of Engstrom disclose the recess is further defined by a second portion (the other of 70a’ and 70b’ of Lauf) of the boundary wall (70’), and wherein translational movement of the base member along the control shaft within the recess in a first direction is limited by the first portion of the boundary wall (¶151), and translational movement of the base member along the control shaft within the recess in a second direction is limited by the second portion of the boundary wall (¶151). Regarding claim 20, Lauf et al. disclose the cap is configured to rotatably receive the control shaft to permit rotational movement of the control shaft and vertically fix the control shaft relative to the second support (figures 3-7).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW JAMES LAWSON whose telephone number is (571)270-7375. The examiner can normally be reached Mon - Fri 6:30-3:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at 571-270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW J LAWSON/Primary Examiner, Art Unit 3619
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