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 .
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.
Claim Objections
Claim 30 is objected to because of the following informalities: the preposition “in” in line 2 between “region” and “includes” appears to be unnecessary. The word may be removed from the claim to overcome this rejection. Appropriate correction is required.
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 34 and 39 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 34 requires the limitation “the series of triple circumferential stitches” in line 6. There is lack of antecedent basis for this limitation in the claim. Claim 34 depends from claim 31. Neither claims 34 nor 31 requires the series of circumferential stitches to be a series of triple circumferential stitches”.
Claim 39 recites the limitation “the series of the whip stitches” in line 3. There is lack of antecedent basis for this limitation in the claim. Claim 39 depends from independent claim 36.
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)(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.
Claims 36 and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaplan et al. U.S. patent no. 5,376,118 (“Kaplan”).
Regarding claim 36, for example, including features described at least with respect to figure 11, Kaplan discloses a pre-sutured allograft construct fully capable of the intended use of repairing, replacing, reconstructing or augmenting a patient’s labrum, the construct comprising: a tissue roll (90) extending from a first end to a second end (figure 11); and a stitched pattern securing the tissue roll (e.g., see at least col. 12, lines 28-38; and figure 11), the stitched pattern (including at least supporting sheath and circumferential fastening 92) extending through an adjustable region (e.g., see at least col. 12, lines 28-38; and figure 11), wherein the adjustable region comprises a series of circumferential stitches (92) (e.g., see at least figure 11; and col. 12, lines 36-48).
Regarding claim 37, Kaplan discloses the series of circumferential stitches (92) of the adjustable region (figure 11) comprises a series of triple circumferential stitches (e.g., see at least figure 11).
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,607,315. Although the claims at issue are not identical, they are not patentably distinct from each other because the main difference between the patent claims and the present application claims is that the patent claims are narrower than the present application claims. Species anticipates genus. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
Allowable Subject Matter
Claims 21-33 and 35 would be allowable if Applicant overcomes the non-statutory double patenting rejection set forth in this Office action.
Claim 34 would be allowable if Applicant overcomes the non-statutory double patenting rejection set forth in this Office action and if the claim is rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 38 and 40 would be allowable if Applicant overcomes the non-statutory double patenting rejection set forth in this Office action and if the claims are rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 39 would be allowable if Applicant overcomes the non-statutory double patenting rejection set forth in this Office action, if the claim is rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and if the claim is amended to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shah U.S. patent no. 4,642,119 uses circumferential stitch 5 in a manner that would form an adjustable region (e.g., see at least figures).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCIA LYNN WATKINS whose telephone number is (571)270-1456. The examiner can normally be reached Mon. & Tues. 3-8pm and Thurs. 12-6pm.
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/MARCIA L WATKINS/Primary Examiner, Art Unit 3774