Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 and 13-14 are rejected under 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention. The “pivotal bone screw assembly [singular]” (claim 1, line 1; emphasis added) comprising “a first receiver” (line 2) and “a second receiver” (line 9) as claimed is not believed to be supported in the original disclosure. Applicant states that “[support] may be found, for example, in FIG. 8B of the pending application” (Applicant’s reply of March 23, 2026: page 7, last sentence of last full paragraph) but offers no explanation as to how the first and second receivers are supposedly components of a single assembly. Instead, the original specification of the current application states that second receiver 26A is a replacement for the first receiver 26 (paragraphs 0031, 0084) rather than forming an assembly along with the first receiver. Applicant may wish to submit a claim in the form of a kit, but such may not be supported in earlier applications, as discussed below.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior applications (the parents or original nonprovisional applications or provisional application). The disclosure of the invention in the parent applications and in the later-filed application must be sufficient to comply with the requirements of 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 application no. 11/328,481 and possibly those of subsequent divisions and continuations fail to provide adequate support or enablement in the manner provided by pre-AIA 35 U.S.C. 112, first paragraph, for the claims of this present application. Applicant states that this application is a continuation of the prior-filed applications. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains matter not disclosed in one or more prior-filed applications, such as components shown in Figure 8B of the current application.
Response to Arguments
Applicant’s remarks have been considered but are deemed moot in view of the new grounds of rejection, necessitated by new claims 13-14 and the features added to amended claim 1. Because of the procedure for interpreting such claims as set forth in MPEP § 2163.06, prior art may be applicable to any subsequently amended claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David H. Willse, whose telephone number is 571-272-4762. The examiner can normally be reached on Monday through Thursday. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Thomas Barrett can be reached at telephone number 571-272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID H WILLSE/ Primary Examiner, Art Unit 3774