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 .
Response to Arguments
Applicant’s arguments, filed August 17, 2026, with respect to the 35 U.S.C. 103 rejection of claims 1-4 and 7-20 have been fully considered and are persuasive. The 35 U.S.C. 103 rejection of claims 1-4 and 7-20 has been withdrawn.
Allowable Subject Matter
Claims 1-4 and 7-20 are allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
Most pertinent prior art, including U.S. Patent Pub. No. 2018/0303621 to Brotman et al. and U.S. Patent No. 8,303,663 to Jimenez et al. disclose an expandable implant device. The device comprises a first endplate having a first side and a second side, the first endplate moveably coupled to a second endplate at the first side, and an expansion mechanism disposed on the first endplate at the second side, the expansion mechanism including a drive screw extending across the first endplate and including a first threaded shank and a second threaded shank, a first threaded nut configured to engage at least a portion of the first threaded shank and a second threaded nut configured to engage at least a portion of the second threaded shank, wherein the drive screw includes first and second drive heads at respective ends of the drive screw for receiving an implant inserter to allow the drive screw to be rotated from either end. Actuation of the expansion mechanism causes the first endplate to pivot at the first side relative to the second endplate to expand the expandable implant device.
The prior art fails to teach or disclose, however, the structural relationship including but not limited to a first linkage pivotably coupled to the first threaded nut at a first end and a second end in contact with an interior surface of the first endplate and a second linkage pivotably coupled to the second threaded nut at a first end and a second end in contact with an interior surface of the first endplate, and wherein actuation of the expansion mechanism causes the first threaded nut and the second threaded nut to move away from each other and causes the first linkage and second linkage to pivot in a opposite directions causing the first endplate to pivot at the first side relative to the second endplate to expand the expandable implant device.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 7-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,273,047. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present application and granted patent disclose an expandable implant device. The device comprises a first endplate having a first side and a second side, an expansion mechanism disposed between the interior surface of the first endplate and the interior surface of the second endplate, the expansion mechanism including a drive screw extending across the entire length of the expandable implant device from the leading end of the first endplate to the trailing end of the first endplate and including a first threaded shank and a second threaded shank, and a first threaded nut configured to engage at least a portion of the first threaded shank and a second threaded nut configured to engage at least a portion of the second threaded shank; and at least one linkage coupled to the first threaded nut and extending from the first threaded nut to the inferior surface of the first endplate ad at least one linkage coupled to the second threaded nut and extending from the second threaded nut to the inferior surface of the first endplate, wherein the expandable implant device, including the expansion mechanism, is symmetrical about a central plane bisecting the leading end and the trailing end of the first endplate such that the expandable implant device has a first half that is a mirror image of a second half of the expandable implant device.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CHRISTOPHER J BECCIA whose telephone number is (571)270-7391. The examiner can normally be reached Mon - Fri 8:30-5:00.
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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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/CHRISTOPHER J BECCIA/Primary Examiner, Art Unit 3775
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