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 .
Claim Interpretation
It is noted that Applicant uses the term “coil” in a manner inconsistent with its well known definition. In the disclosure, Applicant refers to elements 34 as coils. However, they do not have a helical form, nor are they concentric. They are simply curved members. Therefore, the office interprets the “coils” in the claims in the same manner as they are described in the disclosure- curved elements.
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) 1-5 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Colleran et al. (Pub. No. US 2008/0147125 A1).
Regarding claim 1, Colleran et al. discloses a spinal device 100 (figures 1-5), comprising: an implantable elongated member 124 (figure 3); and an implantable biasing device 108/110 coupled to said implantable elongated member 124 (figure 3), said implantable biasing device 108/110 including a series of connected partial coils 154a, 154b, 154c, 154d, 154e, 154f 154g, 154h extending partially and not completely around said implantable elongated member 124 (figure 3).
Regarding claim 2, said series of connected partial coils subtends an angle of less than 360° (figure 3).
Regarding claim 3, said series of connected partial coils includes pairs of connected neighboring coils 108, 110, and wherein said pairs of connected neighboring coils are circumferentially separated from one another by a circumferential gap (figure 3- the gap between coils 108 and 110).
Regarding claim 4, the device comprises: a polyaxial-joint attachment member 106 (figure 3), wherein said implantable elongated member 124 extends from said polyaxial-joint attachment member 106 (figure 3).
Regarding claims 5 and 7, the spinal device comprises a fastener affixing said implantable biasing device 108/110 to said implantable elongated member 124, wherein said implantable biasing device includes an end portion, and said fastener affixes said end portion of said implantable biasing device 108/110 to said implantable elongated member 124 (paragraph 0034 discloses that the implantable biasing device 108/110 comprises ends which are secured to the elongated member 124 via various mechanical, chemical, or thermal attachment means, including pinning, screws, adhesives, etc).
Claim Rejections - 35 USC § 103
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 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) 6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Colleran et al. (Pub. No. US 2008/0147125 A1) in view of Woods et al. (Pub. No. US 2007/0088359 A1).
Regarding claims 6 and 8, Colleran discloses the claimed invention, including wherein the fastener is a screw (paragraph 0034), but fails to disclose that the scew is a set screw.
Woods et al. teaches wherein a screw 28 that is used to affix a biasing device 18 to an elongated member 20 is a set screw (paragraph 0037; figure 13A).
It would have been obvious to a person having ordinary skill in the art at the time the invention effectively filed to modify the screw disclosed by Colleran et al. to be a set screw as taught by Woods et al., in order to provide a low profile screw for fastening the biasing device to the elongated member, thereby reducing damage to the nearby tissue.
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 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 9, 10, 11, 14, and 15 (see claim mapping below) of U.S. Patent No. 11723691 B2). 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 more 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.
Application claims
Patent claims
1
1, 9
2
1, 10
3
1, 11
4
4, 14, 15
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lynnsy Summitt whose telephone number is (571)270-78567856. The examiner can normally be reached on Monday through Thursday from 8am until 5pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eduardo Robert, at (571) 272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNNSY M SUMMITT/ Primary Examiner, Art Unit 3773
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