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 .
Election/Restrictions
Applicant’s election without traverse of Species A in the reply filed on May 7th, 2026 is acknowledged.
Priority
This application discloses and claims only subject matter disclosed in prior Application No. 16/414059, filed May 16th, 2027, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
This application discloses and claims only subject matter disclosed in prior Application No. 16/414036, filed May 16th, 2027, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
This application discloses and claims only subject matter disclosed in prior Application No. 16/414088, filed May 16th, 2027, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
Claim Objections
Claims 2-4 are objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim 1 recites that the distraction mechanisms are motorized and therefore already include a motor.
Claim 14 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 11. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim 11 recites that the device is configured to contact the medial and lateral sides of a joint and that the first distraction mechanism is configured to change the height of the medial and lateral side of the joint equally.
Claim 15 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 11. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim 11 recites that the device is configured to contact the medial and lateral sides of a joint and that the second and third distraction mechanisms are configured to change the height of the medial and lateral sides of the joint.
Double Patenting
Claims 11 and 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-14 of U.S. Patent No. 11,185,425 in view of Todorov (U.S. Publication 2016/0278754) and in view of Paszicsnyek (U.S. Publication 2019/0231252).
Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 11 and 14-16 of the current application and the invention of claims 12-14 of the patent lies in the fact that the invention of claims 12-14 of the patent includes more elements and is thus more specific. Thus the invention of claims 12-14 of the patent is in effect a "species" of the "generic" invention of claims 11 and 14-16 of the current application. It has been held that the generic invention is “anticipated” by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 11 and 14-16 are anticipated by claims 12-14, claims 11 and 14-16 are not patentably distinct from claims 12-14. The invention of claims 12-14 of the patent fails to disclose the device wherein the distraction mechanisms include motors and the device including a module coupled to the second support.
Regarding the distraction mechanisms including motors, Todorov teaches a device comprising a first support (22, 24, 42, 44, etc.), a second support (12), and a distraction mechanism (131, 131a, etc.) configured to change the height between the first support and the second support, wherein the distraction mechanism further includes a motor (126; for example see paragraph 93 and 121) in order to allow for wireless control of the distraction mechanism (paragraph 125). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the distraction mechanisms of the patent with motors in view of Todorov in order to allow for wireless control of the distraction mechanisms.
Regarding the device further comprising a module coupled to the second support, Paszicsnyek teaches a device comprising a first support (104 and 106), a second support (102), and a distraction mechanism (108, 110, 112, 114, 122, etc.), wherein the device further comprises a module (for example see paragraphs 109 and 115) including electronic circuitry and at least one sensor (202 or 204; for example see Figures 6-7) coupled to the second support configured to transmit data to a computer to display the data in real-time (for example see paragraphs 109 and 125) in order to measure medial and lateral forces on the device (for example see paragraph 109). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the second support of the patent with a module including electronic circuitry and at least one sensor in view of Paszicsnyek in order to measure medial and lateral forces on the device.
Claims 1-10 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,266,512 in view of Todorov (U.S. Publication 2016/0278754).
Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 1-10 and 17-20 of the current application and the invention of claims 1-17 of the patent lies in the fact that the invention of claims 1-17 of the patent includes more elements and is thus more specific. Thus the invention of claims 1-17 of the patent is in effect a "species" of the "generic" invention of claims 1-10 and 17-20 of the current application. It has been held that the generic invention is “anticipated” by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-10 and 17-20 are anticipated by claims 1-17, claims 1-10 and 17-20 are not patentably distinct from claims 1-17. The invention of claims 1-17 of the patent fails to disclose the device wherein the distraction mechanisms include motors.
Regarding the distraction mechanisms including motors, Todorov teaches a device comprising a first support (22, 24, 42, 44, etc.), a second support (12), and a distraction mechanism (131, 131a, etc.) configured to change the height between the first support and the second support, wherein the distraction mechanism further includes a motor (126; for example see paragraph 93 and 121) in order to allow for wireless control of the distraction mechanism (paragraph 125). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the distraction mechanisms of the patent with motors in view of Todorov in order to allow for wireless control of the distraction mechanisms.
Claims 11-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,266,512 in view of Paszicsnyek (U.S. Publication 2019/0231252).
Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 11-16 of the current application and the invention of claims 1-17 of the patent lies in the fact that the invention of claims 1-17 of the patent includes more elements and is thus more specific. Thus the invention of claims 1-17 of the patent is in effect a "species" of the "generic" invention of claims 11-16 of the current application. It has been held that the generic invention is “anticipated” by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 11-16 are anticipated by claims 1-17, claims 11-16 are not patentably distinct from claims 1-17. The invention of claims 1-17 of the patent fails to disclose the device further including a module coupled to the second support. Paszicsnyek teaches a device comprising a first support (104 and 106), a second support (102), and a distraction mechanism (108, 110, 112, 114, 122, etc.), wherein the device further comprises a module (for example see paragraphs 109 and 115) including electronic circuitry and at least one sensor (202 or 204; for example see Figures 6-7) coupled to the second support configured to transmit data to a computer to display the data in real-time (for example see paragraphs 109 and 125) in order to measure medial and lateral forces on the device (for example see paragraph 109). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the second support of the patent with a module including electronic circuitry and at least one sensor in view of Paszicsnyek in order to measure medial and lateral forces on the device.
Claims 1-10 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,284,873 in view of Todorov (U.S. Publication 2016/0278754).
Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 1-10 and 17-20 of the current application and the invention of claims 1-17 of the patent lies in the fact that the invention of claims 1-17 of the patent includes more elements and is thus more specific. Thus the invention of claims 1-17 of the patent is in effect a "species" of the "generic" invention of claims 1-10 and 17-20 of the current application. It has been held that the generic invention is “anticipated” by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-10 and 17-20 are anticipated by claims 1-17, claims 1-10 and 17-20 are not patentably distinct from claims 1-17. The invention of claims 1-17 of the patent fails to disclose the device wherein the distraction mechanisms include motors.
Regarding the distraction mechanisms including motors, Todorov teaches a device comprising a first support (22, 24, 42, 44, etc.), a second support (12), and a distraction mechanism (131, 131a, etc.) configured to change the height between the first support and the second support, wherein the distraction mechanism further includes a motor (126; for example see paragraph 93 and 121) in order to allow for wireless control of the distraction mechanism (paragraph 125). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the distraction mechanisms of the patent with motors in view of Todorov in order to allow for wireless control of the distraction mechanisms.
Claims 11-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,284,873 in view of Paszicsnyek (U.S. Publication 2019/0231252).
Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 11-16 of the current application and the invention of claims 1-17 of the patent lies in the fact that the invention of claims 1-17 of the patent includes more elements and is thus more specific. Thus the invention of claims 1-17 of the patent is in effect a "species" of the "generic" invention of claims 11-16 of the current application. It has been held that the generic invention is “anticipated” by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 11-16 are anticipated by claims 1-17, claims 11-16 are not patentably distinct from claims 1-17. The invention of claims 1-17 of the patent fails to disclose the device further including a module coupled to the second support. Paszicsnyek teaches a device comprising a first support (104 and 106), a second support (102), and a distraction mechanism (108, 110, 112, 114, 122, etc.), wherein the device further comprises a module (for example see paragraphs 109 and 115) including electronic circuitry and at least one sensor (202 or 204; for example see Figures 6-7) coupled to the second support configured to transmit data to a computer to display the data in real-time (for example see paragraphs 109 and 125) in order to measure medial and lateral forces on the device (for example see paragraph 109). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the second support of the patent with a module including electronic circuitry and at least one sensor in view of Paszicsnyek in order to measure medial and lateral forces on the device.
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.
Claims 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Cabot (U.S. Publication 2019/0110905) in view of Todorov (U.S. Publication 2016/0278754) and in view of Paszicsnyek (U.S. Publication 2019/0231252).
Cabot discloses a device (for example see Figures 1a-2) comprising:
(claim 11) a first distraction mechanism (17, 20, etc.)
(claim 11) wherein the first distraction mechanism is capable of simultaneously changing a height of a medial side and a lateral side of a joint by an equal amount
(claim 11) a first support (22)
(claim 11) wherein the first support is coupled to the first distraction mechanism
(claim 11) the first support including
(claim 11) a medial surface (a medial surface of 22) to contact a medial side of a joint
(claim 11) a lateral surface (a lateral surface of 22) to contact a lateral side of a joint
(claim 11) a second distraction mechanism (18, 21, etc.)
(claim 11) wherein the second distraction mechanism is capable of changing the height of the medial side of a joint
(claim 12) wherein the medial surface and the lateral surface lie on the same plane when the height of the medial side is varied by the second distraction mechanism
(claim 11) a third distraction mechanism (16, 19, etc.)
(claim 11) wherein the third distraction mechanism is capable of changing the height of the lateral side of a joint
(claim 11) a second support (12, 13, 15, etc.) coupled to the second and third distraction mechanisms
(claim 13) wherein the second distraction mechanism couples to the second support at a first pivot point (element 15 couples to element 18 via a bore which is interpreted as a pivot point, i.e. rotation is pivoting)
(claim 13) wherein the third distraction mechanism couples to the second support at a second pivot point (element 13 couples to element 16 via a bore which is interpreted as a pivot point, i.e. rotation is pivoting)
(claim 14) wherein the device is configured to be inserted into a joint such that the first support and the second support are placed in the joint and wherein the first distraction mechanism is capable of increasing the height of the medial and lateral sided of the joint
Cabot fails to disclose the device wherein the distraction mechanisms include motors and the device including a module coupled to the second support.
Regarding the distraction mechanisms including motors, Todorov teaches a device comprising a first support (22, 24, 42, 44, etc.), a second support (12), and a distraction mechanism (131, 131a, etc.) configured to change the height between the first support and the second support, wherein the distraction mechanism further includes a motor (126; for example see paragraph 93 and 121) in order to allow for wireless control of the distraction mechanism (paragraph 125). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the distraction mechanisms of the patent with motors in view of Todorov in order to allow for wireless control of the distraction mechanisms.
Regarding the device further comprising a module coupled to the second support, Paszicsnyek teaches a device comprising a first support (104 and 106), a second support (102), and a distraction mechanism (108, 110, 112, 114, 122, etc.), wherein the device further comprises a module (for example see paragraphs 109 and 115) including electronic circuitry and at least one sensor (202 or 204; for example see Figures 6-7) coupled to the second support configured to transmit data to a computer to display the data in real-time (for example see paragraphs 109 and 125) in order to measure medial and lateral forces on the device (for example see paragraph 109). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the second support of the patent with a module including electronic circuitry and at least one sensor in view of Paszicsnyek in order to measure medial and lateral forces on the device.
The device of Cabot as modified by Todorov as further modified by Paszicsnyek discloses a device wherein the first support, the second support, and the module are configured to be inserted into a joint of a patient.
Allowable Subject Matter
Claims 1-10 and 17-20 are allowable over the prior art. However, the claims have been rejection under non-statutory double patenting as discussed above.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1:
Cabot (U.S. Publication 2019/0110905) discloses a device comprising:
(claim 1) a first distraction mechanism
(claim 1) wherein the first distraction mechanism is capable of distracting a first side and a second side of a joint
(claim 1) wherein the first distraction mechanism includes
(claim 1) a base (20) including
(claim 1) a distraction lead screw opening (the opening that receives element 17)
(claim 1) a distraction lead screw (17) coupled through the distraction lead screw opening of the base
(claim 1) a second distraction mechanism (16, 19, etc.)
(claim 1) wherein the second distraction mechanism is capable of changing the height of a first side of a joint
(claim 1) a third distraction mechanism (18, 21, etc.)
(claim 1) wherein the third distraction mechanism is capable of changing the height of a second side of a joint
Cabot fails to disclose the device wherein the distraction mechanisms include motors, wherein the base includes a medial anterior opening, a lateral anterior opening, a medial posterior opening, and a lateral posterior opening, a first support holder having a threaded opening, a medial opening, and a lateral opening, and the distraction lead screw coupled to the threaded opening of the first support holder wherein rotating the distraction lead screw moves the first support holder relative to the base along a trajectory.
Todorov teaches a device comprising a first support (22, 24, 42, 44, etc.), a second support (12), and a distraction mechanism (131, 131a, etc.) configured to change the height between the first support and the second support, wherein the distraction mechanism further includes a motor (126; for example see paragraph 93 and 121) in order to allow for wireless control of the distraction mechanism (paragraph 125).
The examiner was unable to find a reference or a combination of references that disclose and/or teach all the limitations of claim 1 as presented.
Regarding claim 17:
Cabot (U.S. Publication 2019/0110905) discloses a device comprising:
(claim 17) a first distraction mechanism
(claim 17) wherein the first distraction mechanism is capable of distracting a first side and a second side of a joint
(claim 17) wherein the first distraction mechanism includes
(claim 17) a base (20) including
(claim 17) a distraction lead screw opening (the opening that receives element 17)
(claim 17) a distraction lead screw (17) coupled through the distraction lead screw opening of the base
(claim 17) a second distraction mechanism (16, 19, etc.)
(claim 1) wherein the second distraction mechanism is capable of changing the height of a first side of a joint
(claim 17) a third distraction mechanism (18, 21, etc.)
(claim 1) wherein the third distraction mechanism is capable of changing the height of a second side of a joint
Cabot fails to disclose the device wherein the third distraction mechanisms includes a motor, wherein the base includes a medial anterior opening, a lateral anterior opening, a medial posterior opening, and a lateral posterior opening, a first support holder having a threaded opening, a medial opening, and a lateral opening, and the distraction lead screw coupled to the threaded opening of the first support holder wherein rotating the distraction lead screw by the motor moves the first support holder relative to the base along a trajectory.
Todorov teaches a device comprising a first support (22, 24, 42, 44, etc.), a second support (12), and a distraction mechanism (131, 131a, etc.) configured to change the height between the first support and the second support, wherein the distraction mechanism further includes a motor (126; for example see paragraph 93 and 121) in order to allow for wireless control of the distraction mechanism (paragraph 125).
The examiner was unable to find a reference or a combination of references that disclose and/or teach all the limitations of claim 17 as presented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited references the examiner felt were relevant to the application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas Woodall whose telephone number is (571) 272-5204. The examiner can normally be reached on Monday-Friday 8am to 5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS W WOODALL/Primary Examiner, Art Unit 3775
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