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 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)(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 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by D’Agostino et al., U.S. Pre Grant Publication 2020/0315672.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, D’Agostino discloses a composite comprising a degradable matrix and at least one reinforcing element [abstract and 0131]. Reference claim 65 discloses a plurality of fibers arranged in bundles disposed in a degradable matrix. Paragraph 0289 discloses that the fibers are biodegradable. Paragraph 0539 discloses that the matrix material is a biodegradable and bioabsorbable polymer. Figure 9 shows an envelope defined by a perimetric geometry. Paragraph 0173 discloses that the composite is an implant and can have various geometries such as pins, screws or nails.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of co-pending Application No. 18/389,114 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The claims in both co-pending applications recite
A composite comprising: a degradable and bioabsorbable polymeric matrix material, and a plurality of fiber bundles dispersed in the polymeric matrix material, the plurality of fiber bundles including a plurality of degradable fibers; wherein the polymeric matrix material, the degradable fibers, or both are configured to be degradable according to a predetermined degradation profile and wherein the composite occupies an envelope defined at least partially by a perimetric surface geometry and/or a volume of the composite; optionally wherein the composite is employed as an implant or other application; optionally wherein the composite fails in the ductile mode starting from at least an initial use of the composite.
Please note that U.S. Patent Application 18/389,114 corresponds to U.S. Pre Grant Application US 20250001046 A1.
Conclusion
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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789