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 .
Priority
This application claims priority from application 16/297,940 filed 03/11/2019.
Status of Claims
Claims 1-15 are pending.
Information Disclosure Statement
The Information Disclosure Statement filed on 07/10/2023 has been considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the threaded surfaces of the dome’s through holes and C clips having top and bottom chamfers on top and bottom surfaces thereof (Figure 14 is the only figure showing chamfers but they are not on top and bottom surfaces, they are on internal or side surfaces of the clips) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: missing/outdated priority information. Since the filing of this application at least one of the parent applications have been issued patent numbers. The priority information within the first line of the specification must be amended to disclose these patent numbers. Appropriate correction is required.
Claim Objections
Claims 1, 6, and 11 are objected to for unclear wording. The wording describing the through hole of the dome in lines 5-6 of claim 1 is unclear. The applicant is advised to amend these lines to say “the talar dome comprises at least one through hole defined by a threaded surface and a groove”. Similarly, the wording of line 5-6 of claim 11 should be amended to be more clear. The applicant is advised to amend these lines to say “having an articulating surface configured to face the tibial component and a second surface configured to face the plate”.
Claim 6 should be amended so that the last line of the third paragraph reads “each of the at least one through hole having a threaded surface and a groove”.
Claim 6 should be amended so that the fourth paragraph reads “inserting a clip into each of the at least one through hole”.
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 1-5 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 1 is rendered indefinite because the fourth paragraph has an incomplete thought. Specifically line 8 says “a groove that is aligned with the” but then defines the condition of the fastener. It is unclear what the groove is aligned with.
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 1-5 and 11-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 9-14 of U.S. Patent No. 10,9140,012 and claims 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-6 of U.S. Patent No. 11,752,001. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus much specific. Thus the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
With regards to the 012 Patent:
Pending claim 1 is a substantial duplicate of patented claim 1, but patented claim further defines the surfaces as inferior and superior surfaces instead of just surfaces, the fastener is defined as engaging the threaded hole instead of engaging the threads of the hold, and at least one clip instead of one clip.
Pending claim 2 is a substantial duplicate of patented claim 2, but they use different phrasing for describing the same surface.
Pending claim 3 is a substantial duplicate of patented claim 3, but they use different phrasing for describing the same surface and patented claim defines a central vertical axis instead of an axis.
Pending claim 4 is a substantial duplicate of patented claim 4, but patented claim defines the head surface as a circumferential surface instead of a surface.
Pending claim 5 is a substantial duplicate of patented claim 9.
Pending claim 11 is a substantial duplicate of patented claim 10, but patented claim further defines the surfaces as inferior and superior surfaces instead of just surfaces.
Pending claim 12 is a substantial duplicate of patented claim 11, but they use different phrasing for describing the same surface.
Pending claim 13 is a substantial duplicate of patented claim 12, but they use different phrasing for describing the same surface and patented claim defines a central vertical axis instead of a central axis.
Pending claim 14 is a substantial duplicate of patented claim 13.
Pending claim 15 is a substantial duplicate of patented claim 14.
With regards to the 001 Patent:
Pending claim 6 is a substantial duplicate of patented claim 1, but patented claim further defines the surfaces as inferior and superior surfaces instead of just surfaces, and the fastener insertion steps is more wordy.
Pending claim 7 is a substantial duplicate of patented claim 3.
Pending claim 8 is a substantial duplicate of patented claim 4, but they use different phrasing for describing the same surface.
Pending claim 9 is a substantial duplicate of patented claim 5, but patented claim defines a central vertical axis instead of a central axis.
Pending claim 10 is a substantial duplicate of patented claim 6, but they use different phrasing for describing the same surface and patented claim defines a central vertical axis instead of a central axis.
Examiner’s Comments
The closest prior art is CN 108524063 (cited in the applicant’s IDS), but it fails to disclose the dome in combination with a plate having a central post. The dome of CN 108524063 is mounted on a post of the bone. Other prior art disclose plates but none with attachment to the dome with the through holes, fasteners, and clips as claimed because they are usually movable or the dome and plate are a single piece.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER D PRONE whose telephone number is (571)272-6085. The examiner can normally be reached Monday-Friday 10 am - 6 pm (HST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melanie R 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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CHRISTOPHER D. PRONE
Primary Examiner
Art Unit 3774
/Christopher D. Prone/Primary Examiner, Art Unit 3774