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.
Claim(s) 1 and 10-12 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1, 5-6, 11 of U.S. Patent No. 11,793,651 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The table below shows the application claims and the patent claims side by side for direct comparison, with the differences between the claims are highlighted below by bolding all the limitations that differ, italicizing additional limitations, and underlining limitations that will be addressed below.
Application Claims:
Patent Claims:
1. An implant, comprising:
a first endplate and second endplate;
a base disposed between the first endplate and the second endplate, wherein the base is formed with one or more adjustment arm cavities; and
a drive assembly rotatably disposed in the base between a first adjustment arm cavity of the one or more adjustment arm cavities and a second adjustment arm cavity of the one or more adjustment arm cavities, wherein the drive assembly comprises a height drive gear that causes height adjustments to the endplates and a lordosis drive gear that causes lordotic adjustments to the endplates.
1. An implant, comprising:
a first endplate and second endplate each have an inner face, wherein the inner faces of the endplates are spaced apart by a separation distance that is expandable with respect to the inner faces of the endplates; a base disposed between the first endplate and the second endplate, wherein the base is formed with one or more adjustment arm cavities and the one or more adjustment arm cavities have a top side covered by the first endplate and a bottom side covered by the second endplate when the endplates are in an unexpanded position; a drive assembly rotatably disposed in the base between a first adjustment arm cavity of the one or more adjustment arm cavities and a second adjustment arm cavity of the one or more adjustment arm cavities; wherein the drive assembly comprises a height drive gear that causes height adjustments to the endplates and a lordotic drive gear that causes lordotic adjustments to the endplates; a plurality of adjustment arms each having a first end attached to the first endplate and a second end attached to the second endplate, wherein actuating the drive assembly urges at least a first of the adjustment arms to increase the separation distance between the first and second endplate attached to the first adjustment arm when the endplates are moved toward an expanded position; and a plurality of pins disposed on at least one of the first endplate and the second endplate; wherein the plurality of adjustment arms are rotatably connected to a plurality of hubs that are axially slidable on at least some of the plurality of pins.
10. The implant of claim 1, wherein actuating the drive assembly to make the height adjustments causes the endplates to expand in a parallel alignment.
5. The implant of claim 1, wherein actuating the drive assembly to make the height adjustments causes the endplates to expand in a parallel alignment, with the separation distance being even across the inner faces of the endplates.
11. The implant of claim 1, wherein actuating the drive assembly to make the lordotic adjustments causes the endplates to move into a non-parallel alignment.
6. The implant of claim 1, wherein actuating the drive assembly to make the lordotic adjustments causes the endplates to move into a non-parallel alignment, with the separation distance being uneven across the inner faces of the endplates.
12. An implant, comprising:
a first endplate and a second endplate; a base disposed between the first endplate and the second endplate, wherein the base comprises a first plurality of side walls that define a border of a first adjustment arm cavity and a second plurality of side walls that define a border of a second adjustment arm cavity; and a plurality of adjustment arms, including a plurality of height adjustment arms and a plurality of lordosis adjustment arms, wherein the height adjustment arms are retained within the border of the first adjustment arm cavity and the lordosis adjustment arms are retained within the border of the second adjustment arm cavity.
11. An implant, comprising:
a first endplate and a second endplate, wherein each of the end plates has an inner surface facing an interior portion of the implant; a base disposed between the first endplate and the second endplate, wherein the base comprises a first plurality of side walls that define a border of a first adjustment arm cavity and a second plurality of side walls that define a border of a second adjustment arm cavity; a plurality of adjustment arms, including a plurality of height adjustment arms and a plurality of lordotic adjustment arms, wherein the height adjustment arms are retained within the border of the first adjustment arm cavity and the lordotic adjustment arms are retained within the border of the second adjustment arm cavity; one or more hub pairs formed on the inner surface of each of the endplates; a pin connecting between each hub of the one or more hub pairs; and a pivot hub rotatably disposed on each of the pins; wherein each end of the height adjustment arms and the lordotic adjustment arms is rotatably connected to one of the pivot hubs.
As is evident from the table above, Patent claim 1 discloses all of the elements of application claim 1 with additional claim limitations not present in application claim 1; and Patent claim 11 discloses all of the elements of application claim 12 with additional claim limitations not present in application claim 12.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 10-13, 16-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jimenez et al. (U.S. Pub. No. 2015/0272743 A1, hereinafter “Jimenez”).
Jimenez discloses, regarding claim 1, an implant (100, see Fig. 11), comprising: a first endplate (107a) and second endplate (107b); a base (122b) disposed between the first endplate and the second endplate (see Fig. 16), wherein the base is formed with one or more adjustment arm cavities (see annotated Fig. 14 below); and a drive assembly (120a, 120b) rotatably disposed in the base between a first adjustment arm cavity of the one or more adjustment arm cavities and a second adjustment arm cavity of the one or more adjustment arm cavities (see annotated Fig. 14 below), wherein the drive assembly comprises a height drive gear (120a) that causes height adjustments to the endplates (see paras. [0065]-[0066]) and a lordosis drive gear (120b) that causes lordotic adjustments to the endplates (see paras. [0065]-[0066]).
PNG
media_image1.png
395
550
media_image1.png
Greyscale
Regarding claim 2, the implant of claim 1, further comprising a plurality of adjustment arms (110a-c, see Fig. 11, see para. [0057]) each having a first end (see annotated Fig. 16 below) attached to the first endplate (via 113 and 105) and a second end (see annotated Fig. 16 below) attached to the second endplate (via 113 and 105), wherein actuating the drive assembly extends at least a first of the adjustment arms out of the base to urge the endplates away from the base (see Figs. 11 and 17A-B, see also para. [0065]).
PNG
media_image2.png
676
790
media_image2.png
Greyscale
Regarding claim 3, the implant of claim 2, wherein the plurality of adjustment arms include a pair of height adjustment arms (110a) and a pair of lordosis adjustment arms (110c, see para. [0066]).
Regarding claim 4, the implant of claim 3, further comprising: a height drive block (122a) connected to the height drive gear (via 126), wherein the height drive block is configured to receive (via bores 128) a height adjustment pin (114) that attaches the pair of height adjustment arms to the height drive block (see annotated Fig. 16 above); and a lordosis drive block (122c) connected to the lordosis drive gear (via 126), wherein the lordosis drive block is configured to receive (via bores 128) a lordosis adjustment pin (114) that attaches the pair of lordosis adjustment arms to the lordosis drive block (see annotated Fig. 16 above).
Regarding claim 10, the implant of claim 1, wherein actuating the drive assembly to make the height adjustments causes the endplates to expand in a parallel alignment (see Fig. 19A, see paras. [0065]-[0066]).
Regarding claim 11, the implant of claim 1, wherein actuating the drive assembly to make the lordotic adjustments causes the endplates to move into a non-parallel alignment (see Figs. 17A and 18A, see paras. [0065]-[0066]).
Jimenez discloses, regarding claim 12, an implant (100, see Fig. 11), comprising: a first endplate (107a) and a second endplate (107b); a base (122b-c) disposed between the first endplate and the second endplate (see Fig. 16), wherein the base comprises a first plurality of side walls that define a border of a first adjustment arm cavity (see annotated Fig. 14 below) and a second plurality of side walls that define a border of a second adjustment arm cavity (see annotated Fig. 14 below); and a plurality of adjustment arms (110b-c and 114, see Fig. 11, see para. [0057]), including a plurality of height adjustment arms (110b and 114) and a plurality of lordosis adjustment arms (110c and 114, see para. [0066]), wherein the height adjustment arms are retained within the border of the first adjustment arm cavity (see Fig. 16, see also para. [0061], note that 114 of the arms are retained within the first adjustment arm cavity 128) and the lordosis adjustment arms are retained within the border of the second adjustment arm cavity (see Fig. 16, see also para. [0061], note that 114 of the arms are retained within the second adjustment arm cavity 128).
PNG
media_image3.png
466
565
media_image3.png
Greyscale
Regarding claim 13, wherein the first adjustment arm cavity is parallel to the second adjustment arm cavity (see Figs. 14 and 16).
Regarding claim 16, further comprising a drive assembly (120a, 120b) rotatably disposed in the base between the first adjustment arm cavity and the second adjustment arm cavity (see annotated Fig. 14 above), wherein the drive assembly is retained within a channel defined by a first side wall of the first adjustment arm cavity and a first side wall of the second adjustment arm cavity (see annotated Fig. 14 above).
Regarding claim 17, wherein the drive assembly comprises: a height drive assembly comprising a height drive gear (120a) connected to a height drive block (122b), wherein the height drive block is configured to receive a height adjustment pin (114) that extends through the first side wall of the first adjustment arm cavity (see Fig. 16); and a lordosis drive assembly comprising a lordosis drive gear (120b) connected to a lordosis drive block (122c), wherein the lordosis drive block is configured to receive a lordosis adjustment pin (114) that extends through the first side wall of the second adjustment arm cavity (see Fig. 16).
Regarding claim 18, wherein at least one side wall of the first adjustment arm cavity is formed with a height pin slot (128) configured to receive a height adjustment pin (114) that passes through the height pin slot and the plurality of height adjustment arms (see Fig. 16) and wherein at least one side wall of the second adjustment arm cavity is formed with a lordosis pin slot (128) configured to receive a lordosis adjustment pin (114) that passes through the lordosis pin slot and the plurality of lordosis adjustment arms (see Fig. 16).
Jimenez discloses, regarding 19, an implant (100, see Fig. 11), comprising:
a first endplate (107a) and second endplate (107b); a base (122b-c) disposed between the first endplate and the second endplate (see Fig. 11), wherein the base comprises a first plurality of side walls that define a border of a first adjustment arm cavity (see annotated Fig. 14 below) and a second plurality of side walls that define a border of a second adjustment arm cavity (see annotated Fig. 14 below); a plurality of adjustment arms (110a-c), including a plurality of height adjustment arms (110a) and a plurality of lordosis adjustment arms (110c), wherein the height adjustment arms are retained within the border of the first adjustment arm cavity and the lordosis adjustment arms are retained within the border of the second adjustment arm cavity (see Fig. 16, see also para. [0061], note that 114 of the arms are retained within the adjustment arm cavities 128); and a drive assembly (120a-b) rotatably disposed in the base between the first adjustment arm cavity and the second adjustment arm cavity (see annotated Fig. 14 below); wherein the drive assembly comprises a height drive gear (120a) that causes height adjustments to the endplates (see paras. [0065]-[0066]) and a lordosis drive gear (120b) that causes lordosis adjustments to the endplates (see paras. [0065]-[0066]).
PNG
media_image4.png
466
565
media_image4.png
Greyscale
Regarding claim 20, further comprising: a height adjustment pin (114) that passes through the height adjustment arms and a height pin slot (128) formed in a side wall of the first adjustment arm cavity (see annotated Fig. 14 above); a lordosis adjustment pin (114) that passes through the lordosis adjustment arms and a lordosis pin slot (128) formed in a side wall of the second adjustment arm cavity (see annotated Fig. 14 above); a height drive block (122b) connected to the height drive gear (see Fig. 16), wherein the height drive block is configured to receive the height adjustment pin to attach the height adjustment arms to the height drive block see Fig. 16); and a lordosis drive block (122c) connected to the lordosis drive gear (see Fig. 16), wherein the lordosis drive block is configured to receive the lordosis adjustment pin to attach the lordosis adjustment arms to the lordosis drive block (see Fig. 16).
Allowable Subject Matter
Claim(s) 5-9 and 14-15 is/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.
The following is a statement of reasons for the indication of allowable subject matter: The claims in the instant application have not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose, or suggest,
An implant, comprising: a first endplate, second endplate and a base disposed between, wherein the base is formed with one or more adjustment arm cavities; and a drive assembly, wherein the drive assembly comprises a height drive gear that causes height adjustments to the endplates and a lordosis drive gear that causes lordotic adjustments to the endplates; and as per claim 5, wherein the plurality of adjustment arms further comprises a pair of cross-brace arms positioned perpendicular to the pair of height adjustment arms and the pair of lordosis adjustment arms; and as per claim 6, further comprising a height locking screw, wherein the height locking screw is configured to be threaded into locking threads formed on the base; and as per claim 8, further comprising a lordosis locking screw, wherein the lordosis locking screw is configured to be threaded into locking threads formed on the height drive gear.
An implant comprising: a first endplate, a second endplate and a base disposed between; and a plurality of adjustment arms, including a plurality of height adjustment arms and a plurality of lordosis adjustment arms, wherein the height adjustment arms are retained within the border of the first adjustment arm cavity and the lordosis adjustment arms are retained within the border of the second adjustment arm cavity; and as per claim 14, further comprising a plurality of cross-brace arms retained in a third adjustment arm cavity formed in the base.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
The following references disclose expandable implants:
PNG
media_image5.png
264
608
media_image5.png
Greyscale
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michelle C. Green whose telephone number is (571)270-7051. The examiner can normally be reached on Monday-Friday between 9am-5pm.
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, Eduardo C. Robert, at (571) 272-4719. 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.
/M.C.G/ Examiner, Art Unit 3773 /EDUARDO C ROBERT/ Supervisory Patent Examiner, Art Unit 3773