DETAILED ACTION
This office action is responsive to the Response to Restriction Requirement of September 8, 2025. By that response, claims 1-22 stand pending.
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 .
Election/Restrictions
Applicant’s election without traverse of Invention I, Claims 1-21, in the reply filed on September 8, 2025, is acknowledged.
Claim 22 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 8, 2025.
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, 2, 5, 6, 9-19 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9-11, 16-20 and 23 of copending Application No. 18/388362 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they refer to an essentially identical tool with identical functionality and mechanism for operation of the tool.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/396800 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they refer to an essentially identical tool with identical functionality and mechanism for operation of the tool.
Claims 1, 5, 6, 9-19, and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 6, 9-11, 14-17, 20, 21 and 22 of U.S. Patent No. 11,918,268. Although the claims at issue are not identical, they are not patentably distinct from each other because they are not patentably distinct from each other because they refer to an essentially identical tool with identical functionality and mechanism for operation of the tool.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-7 and 9-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bittenson (US 2013/0261681 A1) in view of Jacquemet ‘594 (US 4,468,594). Jacquemet ‘297 (US 4,215,297) is referred to as a teaching reference.
Regarding claim 1, Bittenson teaches an orthopedic impactor as at fig. 2A, comprising:
a housing 102 enclosing:
a strike assembly 136;
a winding 138 arranged to receive a current causing the winding to generate a magnetic field; and
a connector 106/104 configured to impart force to an object, wherein the housing 102 encloses at least a portion of the connector (the opening within 106/104 is an opening into the housing 102); and
wherein:
the impactor can apply force to the object in two opposite directions depending on which connector 106 or 104 is coupled to the object.
Bittenson fails to teach:
in a first operating mode, movement of the housing in a first direction causes the connector to move towards the object, wherein the strike assembly translates in a second direction being opposite the first direction, wherein the magnetic field generated by the winding, upon receiving of the current, causes the strike assembly to translate in the first direction impacting the connector; and
in a second operating mode, movement of the housing in the second direction causes the connector to move away from the object in the second direction, wherein the strike assembly translates in the first direction, wherein the magnetic field generated by the winding, upon receiving of the current, causes the strike assembly to translate in the second direction impacting the connector.
Jacquemet ‘594 teaches an impactor arranged as at fig. 1. Jacquemet ‘594 teaches this impactor as an improvement over a prior impactor, ‘297, in which impaction is caused electromagnetically in only a single direction. The arrangement of the strike assembly of the original patent was modified and use of two windings at opposed ends of the impactor is now implemented in the ‘594 patent in order to provide this improved device with the ability to provide forces in two directions. Improvements such as removal of a step of turning ‘upside-down’ the impactor in order to switch directions is described. (col. 1, lines 16-40).
Jacquemet ‘594 teaches movement of the housing 44 in a first direction (as by suspending from above, col. 4, lines 55-61) for driving in a first direction (when the switch 23 is in a first setting (col. 3, lines 49-52); and when the anvil 2 is supported upon the lower bumper 25, col. 4, lines 55-61 – clearly making the housing 44 advance forward (down in fig. 1)). Movement down of the housing 44 causes relative movement in reverse of the strike assembly relative to the housing 44. Force is applied to the workpiece by attachment to lower end of anvil 2 (considered to be a connector). Force can be applied in a second operating mode such that housing 44 moves to be in contact with upper bumper 27, and the switch 23 moved to its second position causing the strike assembly 1 to move in the reverse direction. col. 4, lines 55-61; (col. 3, lines 49-52). Movement of strike assembly 1 is caused by a winding 9/12.
It would have been obvious to one with ordinary skill in the art at the time of the invention to modify the Bittenson device in view of the teachings and improvements referred to in Jacquemet ‘594 in order to provide Bittenson with simpler two directional functionality. One would have done so by providing Bittenson with a ram and housing structures arranged similarly to that of Jacquemet in which the ram can impact anvils at both ends of the device upon application of sufficient force to bias the housing onto bumper structures and provide Bittenson with a switch for changing the direction of the application of force. One would have done so in order to take the step of removal of the Bittenson device, rotation, and re-installation in the opposite direction, and replaced these steps with flipping a switch, and changing the direction of force applied to the housing relative to the object being worked upon.
Regarding claim 2, the claim is considered to be merely an intended use of the device. There is no reason the combination device cannot be utilized in order to implant an object and/or remove the same object. The claim refers to “the object”, which structure was only inferentially recited in claim 1.
Regarding claim 3, the connector at 2 is stationary – at least relative to several structures; e.g. portions of housing 44.
Regarding claim 4, the connector at 2 is configured to transfer one or more forces from the strike assembly 1 to the object.
Regarding claim 5, the impactor includes a biasing mechanism configured to bias the strike assembly towards a resting position (spring 140 in Bittenson; spring 16/17 in Jacquemont).
Regarding claim 6, the biasing mechanism comprises a spring 16, wherein the spring is configured to: compress as the strike assembly is translated in the first direction in the first operating mode; and extend as the strike assembly is translated in the second direction.
Regarding claim 7, when the strike assembly 1 is in the resting position, the winding is capable of not receiving current – as discussed at col. 3, lines 45-48, the current is selectively applied by use of a switch.
Regarding claim 9, the strike assembly 1 comprises a striker at a distal face of 1 configured to impact the connector at 2.
Regarding claim 10, the connector at 2 at least partially surrounds the striker of 1 at its distal direction and is configured to receive a force from the striker of 1 to impart a force to the object.
Regarding claim 11, the connector will now be understood to be both the portion at 2 (lower anvil) for connecting to the object, and the upper anvil at 3. The connector 2/3 is configured to receive: a first force from a proximal striker (proximal face of 1) of the strike assembly 1; and a second force from a distal striker (distal face of 1) of the strike assembly 1.
Regarding claim 12, a body of the strike assembly 1 comprises a ferromagnetic material. (Claim 1, the ram (1) functions as armatures for the coils, thereby inherently meaning the ram is formed from a ferromagnetic material).
Regarding claim 13, the winding 7/8 is configured to radially or axially surround a ferromagnetic body of the strike assembly 1.
Regarding claim 14, the impactor includes a power source 126 (Bittenson) 22 for supplying the current to the winding 7/8, wherein the power source includes at least one of: a battery, a capacitor. [0038]
Regarding claim 15, the impactor includes an input 23 for changing a parameter of a force impacting the connector being a direction of the force.
Regarding claim 16, the impactor includes an input 23 for changing a parameter of the current received by the winding, being a direction of the current. (In one switch setting, the current flows in a first direction to a coil 9; in a second setting, the current flows in a second, different direction, to the coil 12).
Regarding claim 17, the impactor includes a sensor configured to measure an energy of an impact on the object (Bittenson, [0045]).
Regarding claim 18, the impactor includes control electronics 22 (circuit, col. 3, line 40-48; circuit shown in detail in Jacquemet ‘297) communicatively coupled to a power source of the impactor.
Regarding claim 19, Bittenson includes further control electronics aspects as described at [0045] which are configured to determine a force of an impact based on the current and/or a voltage in the winding.
Regarding claim 20, the control electronics are configured to determine impactor use data including an impact force. ([0045], Bittenson)
Regarding claim 21, the impactor includes a bearing at the structure of 19 configured to support the strike assembly 1. Examiner interprets the entirety of the limitations met by this showing due to use of “at least one of” language in line 1 of the claim.
Allowable Subject Matter
Claim 8 is 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 David Bates whose telephone number is (571)270-7034. The examiner can normally be reached Monday through Friday, 10AM-6PM
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571)272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID W BATES/Primary Examiner, Art Unit 3799