Application No.: 17/639,038
`Response Dated: 8/8/2024
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`REMARKS/ARGUMENTS
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`Review andreconsideration of the subject application in view of the present amendment
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`is respectfully requested. Claims 1-3, 5, 31-34, 37, 38, 41, 42, 45, 46, 51-53 and 56-63 are
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`currently pending, claims 1 and 5 have been amended, claims 58-63 are new, and claims 6-30,
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`35, 36, 39, 40, 43, 44, 47-50, 54 and 55 have been canceled. Applicant respectfully requests
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`reconsideration and allowance.
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`Allowable Subject Matter
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`Original claims 31 and 32 have been deemed allowable. Further, previously presented
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`claims 39, 47-50 and 55 have been deemed allowable subject matter if amended to independent
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`form.
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`Claims 58-63 are written in independent form to include the allowable subject matter of
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`previous claims 39, 47-50 and 55 respectively. Accordingly, Applicant requests notification that
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`these claims are in condition for allowance.
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`Amendments to the Claims
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`Claim 1 has been amendedto include subject matter previously recited in claim 4.
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`Claims 58-63 are written in independent form to include the allowable subject matter of
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`previous claims 39, 47-50 and 55 respectively.
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`Specification
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`The abstract of the disclosure stands objected to becauseit uses terminology thatis
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`implied: “The present invention provides”.
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`Applicant has amendedthe abstract to remove terminology that is implied, rendering the
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`objection moot.
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`Page 9 of 13
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`Application No.: 17/639,038
`Response Dated: 8/8/2024
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`Claim Objections
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`Applicant has canceled claim 4, rendering the objection moot.
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`Claim Rejections — 35 USC § 103
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`Claims 1-5, 34, 37, 38, 41, 45, 46, 51-53, 56 and 57 stand rejected under 35 U.S.C. 103
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`as being unpatentable over Lorio (2015/0313720) in view of Dawsonetal. (2006/0276790).
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`Claim 1 has been amendedto include subject matter previously recited in claim 4. Amended
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`claim 1 nowrecites:
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`Claim 1: A decorticating screw device, comprising:
`a substantially cylindrical body, the body having a
`distal threaded section, a proximal threadedsection, a
`central ring having one or more decorticating elements;
`wherein the central ring is independently rotatable
`from the distal threaded section.
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`In the rejection of claim 1, the Examiner acknowledgesthat Lorio fails to disclose decorticating
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`elements and instead relies on Dawson’s decorticating elements 32 shownin device 20 ofFig.
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`1E. According to the Examiner, it would have been obvious to configure the screw device of
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`Lorio with the decorticating elements of Dawsonto facilitate joint preparation in a simple
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`minimally invasive manner. Further, with regard to the claim limitation of a central ring
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`independently rotatable from the distal threaded section, the Examiner(in the rejection of claim
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`4) argues Lorio paragraphs 0061 and 0062 rendersthis limitation obvious.
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`Applicant respectfully disagrees and requests the rejection of currently amendedclaim 1
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`be withdrawnforat least the following reasons.
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`According to MPEP 2143.03, “All words in a claim must be considered in judging the
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`patentability of that claim against the prior art.” Jn re Wilson,424 F.2d 1382, 1385, 165 USPQ
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`494, 496 (CCPA 1970). When determining whether a claim is obvious, an examiner must make
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`Page 10 of 13
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`Application No.: 17/639,038
`Response Dated: 8/8/2024
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`“a searching comparison of the claimed invention — including all its limitations — with the
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`teaching ofthe priorart.” Jn re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis added).
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`Thus, “obviousness requires a suggestion ofall limitations in a claim.” CFMT;) Inc. v. Yieldup
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`Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985
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`(CCPA 1974)).
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`Applicant submits that there is no motivation to modify Lorio to include decorticating
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`elements that are rotatable independent from the distal threaded section. Lorio teaches
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`intermediate expandable members for applying compression to surrounding osseoustissue, not
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`for decorticating or removing it. See e.g. Lorio paragraph 0061 cited above, see paragraph 0040;
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`“ upon alteration of the distance D between the distal segment 120 and proximal segment 140,
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`a clinician can advantageously compress or decompress osseous tissue between the two segments
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`120, 140... Such compression can beneficially enhance fusion of osseoustissue between the
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`proximal segment 120 and distal segment 140...”; and see paragraph 0036, “...can
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`advantageously provide an increase in compression of osseoustissue about the expanded
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`intermediate segment 160 to facilitate fusion about the segment 160...”. Accordingly, Lorio’s
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`objective is to create compression proximate to intermediate portions, not decorticate or remove
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`tissue proximate to intermediate portions. Decorticating or removing tissue would actually
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`enlarge and decompress the space, not compress it. Accordingly, there is no suggestion to
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`modify Lorio to include decorticating elements since such a modification would promote
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`decompression, not compression, and render Lorio unsatisfactory for its intended purpose (see
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`e.g. MPEP 2143.01, if a proposed modification would render the prior art invention being
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`modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to
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`make the proposed modification, In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984).
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`Page 11 of 13
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`Application No.: 17/639,038
`Response Dated: 8/8/2024
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`Forat least the reasons stated above, Applicant submits that Lorio in view of Dawson
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`fails to render amended claim 1 obvious. Further, Applicant submits that claims 2, 3, 5, 34, 37,
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`38, 41, 45, 46, 51-53, 56 and 57, which ultimately depend on currently amendedclaim 1, are in
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`condition for allowancefor at least the reasons stated above for claim 1.
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`Claims 33 and 42 stand rejected under 35 U.S.C. 103 as being unpatentable over Lorio
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`(2015/0313720) in view of Dawsonetal. (2006/0276790), as applied above, and further in view
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`of Whipple etal. (2016/0242820).
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`Applicant submits that for at least the reasons provided above for claim 1, from which
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`claims 33 and 42 ultimately depend, claims 33 and 42 are in condition for allowance. Applicant
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`further submits that Whipple fails to cure the deficiencies of Lorio and Dawson since Whipple
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`fails to suggest a central ring independently rotatable from a distal threaded section andfails to
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`otherwise properly suggest modifying Lorio to include decorticating elements.
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`Page 12 of 13
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`Application No.: 17/639,038
`Response Dated: 8/8/2024
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`In light of the foregoing, it is respectfully submitted that the present application is in
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`condition for allowance and notice to that effect is hereby requested. If it is determined that the
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`application is not in a condition for allowance, the Examineris invited to initiate a telephone
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`interview with the undersigned attorney to expedite prosecution of the present application.
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`Date: August 8, 2024
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`Respectfully submitted,
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`MUSC FOUNDATION FOR RESEARCH DEVELOPMENT
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`/Ryan D. Artis/
`Ryan D. Artis
`Reg. No. 67,798
`Attorney for Applicant
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`Riverside Law LLP
`175 Strafford Avenue, Suite 100
`Wayne, PA 19087
`215-268-3888 (main)
`215-268-3871 (fax)
`518-708-6044 (direct)
`E-Mail: docketsi@riversidelaw.cam
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`Page 13 of 13
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