DETAILED ACTION
The following is a non-final office action is response to communications received on 07/23/2023. Claims 22-41 are currently pending and addressed below.
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 .
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 22-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 & 4 of U.S. Patent No. 11,642,225. The elements of the instant application are to be found in the Patent and therefore are anticipated. Although the conflicting claims are not identical, they are not patentably distinct from each other because the Patent and the instant application all recite the same basic structure with a permutation of similar elements throughout.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 22-31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Averous et al. (US 8,834,572).
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Regarding Claim 22, Averous teaches a bone fusion implant (1) for fixating a distal bone portion and a proximal bone portion across a bone fusion site (Fig 7), comprising:
an elongate member (1) configured to be disposed across the bone fusion site (Fig 7);
a distal portion (shown) of the elongate member configured to be inserted into the distal bone portion (P2);
a proximal portion (shown) of the elongate member configured to be inserted into the proximal bone portion (P1); and
a line of fixation (C) configured to be substantially aligned with the bone fusion site.
Regarding Claim 23, Averous teaches wherein the line of fixation (C) is disposed on the elongate member between the distal portion and the proximal portion (Fig 7).
Regarding Claim 24, Averous teaches wherein one or more pairs of distal ramps (shown) are disposed on opposite sides of the distal portion (shown) of the bone fusion implant.
Regarding Claim 25, Averous teaches wherein one or more pairs of proximal ramps (shown) are disposed on opposite sides of the proximal portion (shown) of the bone fusion implant.
Regarding Claim 26, Averous teaches wherein the one or more pairs of distal ramps (shown) and the one or more pairs of proximal ramps (shown) flare toward a proximal end of the bone fusion implant (Figs 1-2).
Regarding Claim 27, Averous teaches wherein the one or more pairs of distal ramps (shown) flare toward a proximal end of the bone fusion implant and the one or more pairs of proximal ramps (shown) flare toward a distal end of the bone fusion implant (Fig 1-2).
Regarding Claim 28, Averous teaches wherein the one or more pairs of distal ramps (shown) are disposed on surfaces of the bone fusion implant that are adjacent to the surfaces including the one or more pairs of proximal ramps (shown) (Fig 1).
Regarding Claim 29, Averous teaches wherein the elongate member (1) is configured to dispose the distal portion (shown) at an angle (Fig 2) relative to the proximal portion (shown).
Regarding Claim 30, Averous teaches wherein the distal portion and the proximal portion comprise straight portions that are disposed at an angle relative to one another (Fig 2).
Regarding Claim 31, Averous teaches wherein the elongate member comprises a curved portion that establishes an angle between the distal portion and the proximal portion (Fig 2).
Claim(s) 32-37, 40 & 41 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anderson et al. (US 2013/0123862).
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Regarding Claim 32, Anderson teaches a method for fixating a distal bone portion and a proximal bone portion across a bone fusion site, comprising:
drilling a bone hole (Fig 30) across the bone fusion site;
inserting a bone fusion implant (10) into the bone hole in the proximal bone portion (70);
advancing the bone fusion implant (10) across the bone fusion site (shown fully advanced in Fig 28);
pushing the bone fusion implant until a distal portion of the bone fusion implant is suitably inserted [0116] into the distal bone portion (74); and
situating a proximal portion of the bone fusion implant in the proximal bone portion (70) (Fig 26).
Regarding Claim 33, Anderson teaches wherein pushing the bone fusion implant includes substantially aligning a line of fixation (shown) of the bone fusion implant with the bone fusion site.
Regarding Claim 34, Anderson teaches wherein inserting the bone fusion implant includes using a suitable insertion tool (11) for grasping and pushing the bone fusion implant (Fig 26).
Regarding Claim 35, Anderson teaches wherein using the suitable insertion tool comprises using forceps or another similar tool (11).
Regarding Claim 36, Anderson teaches wherein inserting the bone fusion implant includes engaging the suitable insertion tool (11) with a pair of distal valleys (shown) disposed near the line of fixation.
Regarding Claim 37, Anderson teaches wherein inserting the bone fusion implant includes using the suitable insertion tool (11) to push the bone fusion implant until the pair of distal valleys are near the surface of the proximal bone portion (as shown on Fig 28).
Regarding Claim 40, Anderson teaches wherein pushing the bone fusion implant includes causing distal ramps disposed on opposite sides of a distal portion of the bone fusion implant to contact the distal bone portion (when fully assembled, distal ramps reside within distal bone 74).
Regarding Claim 41, Anderson teaches wherein situating the proximal portion includes causing proximal ramps (shown) on opposite sides of the proximal portion to contact the proximal bone portion (Fig 26).
Allowable Subject Matter
Claims 38 & 39 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN AINSLEY DUKERT whose telephone number is (571)270-3258. The examiner can normally be reached Mon-Fri 6am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melanie Tyson can be reached at (571)272-9062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN A DUKERT/Primary Examiner, Art Unit 3774