Bone foot
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 .
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, 4, 5-7, 10-13, and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16 and 17 of copending Application No. 17/986,994 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both cases disclose a method of implanting a midfoot replacement in an adult human foot comprising: removing at least a portion of at least one midfoot bone from the adult human foot; and inserting a midfoot replacement into the adult human foot such that a proximal side of the midfoot replacement engages at least one of a calcaneus and a talus of the adult human foot, and a distal side of the midfoot replacement engages at least one of a first metatarsal and a fourth metatarsal of the adult human foot; and inserting a first fixating fastener through the midfoot replacement from the proximal side to the distal side, and affixing the first fixating fastener in the talus and the first metatarsal.
Regarding claims 6, and 11, the “metatarsal other than the first metatarsal” can be interpreted as the fourth metatarsal.
Regarding claim 19, the definition of the word: “beaming” or beaming fastener” refers to a technique used to stabilize and fuse the bones in the midfoot. The whole purpose of this Application is to stabilize and fuse the midfoot, therefore, the reference reads on the claimed subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 9, 13-16 and 18 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.
Regarding claim 9, the limitation: “a metatarsal other than the first metatarsal” makes the claim indefinite. For example, claim 9 depends on claim 8 and claim 8 depends on claim 7. Claim 7 positively claims the first metatarsal and the fourth metatarsal, claim 8 positively claim a different metatarsal “an additional metatarsal”. The “additional metatarsal” can be interpreted as the second, the third or the fifth metatarsals, therefore, the “metatarsal other than the first metatarsal” (claim 9) can be interpreted as the “additional metatarsal” since, the metatarsal claimed in claim 9 can be either the second, the third or the fifth metatarsals making claim 9 ambiguous.
The Examiner suggests to add the following in claim 9 to overcome the rejection: “in the calcaneus and a metatarsal other than the first, the fourth and the additional metatarsals.”
Claim 13 recites the limitation "the fourth metatarsal" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 14, the limitation “an additional metatarsal” is indefinite, since, the “additional metatarsal” includes the “at least one other metatarsal” in claim 11. In order to avoid ambiguity, the Applicant’s representative must clarify that the “additional metatarsal” is different than the “at least one other metatarsal”. The Examiner suggests to add the following: “other than the first metatarsal and the at least one other metatarsal.”
Regarding claims 15 and 16, the limitation: “other than the first metatarsal and the additional metatarsal” is indefinite since the “additional metatarsal” also includes the “at least one other metatarsal” in claim 11. In order to overcome the rejection, the Examiner suggests the following: “other than the first metatarsal, the at least one other metatarsal and the additional metatarsal.”
Regarding claim 18, the limitation: “engages the first metatarsal and the additional metatarsal…” is indefinite since the “additional metatarsal” also includes the “at least one other metatarsal” in claim 11. In order to overcome the rejection, the Examiner suggests the following: “engages the first metatarsal, the at least one other metatarsal and the additional metatarsal of the adult human foot.”
Allowable Subject Matter
Claims 3, 8, 17 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 ALVIN J STEWART whose telephone number is (571)272-4760. The examiner can normally be reached Monday-Friday 8:30AM-6PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Barrett can be reached at 571-272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALVIN J STEWART/Primary Examiner, Art Unit 3799 1/29/26