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 .
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.
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 18-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,963,880. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1 of the present application, the ‘880 patent teaches a cannulated bone implant, comprising: a proximal body portion (i.e., claimed “proximal portion”) extending from a proximal end of the implant (i.e., claimed “proximal end”), the proximal body portion comprising one or more threads configured to secure the proximal body portion within a first bone of a patient (i.e., claimed “a threaded portion positioned along the proximal portion between the proximal end and the transition portion”); a distal body portion (i.e., claimed “distal portion”) extending from a distal end of the implant (i.e., claimed “distal end”), the distal body portion configured to be secured within a second bone of the patient (i.e., claimed “finned portion positioned along the distal portion between the transition portion and the distal end”); a central passage extending linearly from the proximal end of the implant to the distal end of the implant and defining a third longitudinal axis (e.g., claimed “central passage extending linearly from the proximal end of the implant, through the angled transition portion and to the distal end of the implant”), wherein the third longitudinal axis is straight along the entire length of the implant at a non-zero angle relative to at least one of the first longitudinal axis and the second longitudinal axis (e.g., claimed “the central passage is at a non-zero angle relative to the proximal portion and the distal portion of the implant”).
While the ‘880 patent claims do not expressly state “the proximal body portion defining a first longitudinal axis extending from the proximal end” and “the distal body portion defining a second longitudinal axis extending from the distal end,” “the second longitudinal axis intersecting the first longitudinal axis at a non-zero angle,” such features are anticipated by the ‘880 patent requiring, “an angled transition portion positioned between the proximal portion and the distal portion.”
Moreover, while at least the independent claim of the present application does not positively require all of the claim features of the independent claim(s) of the ‘880 patent, such as the finned portion or both the proximal and distal portions being at a non-zero angle relative to the central passage, species anticipates genus. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus, the patent claims are not patentably distinct from the present application claims.
With regard to the present application claim 19, see patent claim 2.
With regard to the present application claim 20, see patent claim 3.
With regard to the present application claim 21, see patent claim 4.
With regard to the present application claim 22, see patent claim 5.
With regard to the present application claim 23, see patent claim 6.
With regard to the present application claim 24, see patent claim 7.
With regard to the present application claim 25, see patent claim 8.
With regard to the present application claim 26, see patent claim 12.
With regard to the present application claim 27, see patents claims 9 and 11.
With regard to the present application claims 28 and 29, see patent claim 10.
With regard to the present application claim 30, see patent claim 13.
With regard to the present application claim 31, see patent claim 14.
With regard to the present application claim 32, see patent claim 15.
With regard to the present application claim 33, see patent claim 16.
With regard to the present application claim 34, see patent claim 17.
With regard to the present application claim 35, see patent claim 1.
With regard to the present application claim 36, see patent claim 20.
Allowable Subject Matter
Claims 18-36 would be allowable if the non-statutory double patenting rejection, set forth in this Office action, is overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCIA LYNN WATKINS whose telephone number is (571)270-1456. The examiner can normally be reached Mon. & Tues. 3-8pm and Thurs. 12-6pm.
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, the examiner’s supervisor, Jerrah Edwards can be reached at (408)918-7557. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARCIA L WATKINS/Primary Examiner, Art Unit 3774
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