DETAILED ACTION
The following is a non-final office action is response to communications received on 11/30/2023. Claims 1-20 are currently pending and addressed below.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,844,696. The elements of the instant application are to be found in the Patent and therefore are anticipated. Although the conflicting claims are not identical, they are not patentably distinct from each other because the Patent and the instant application all recite the same basic structure with a permutation of similar elements throughout.
Regarding Claims 1, 2, 4, 5, 7, 9 & 10, patent claim 1 recites the same limitations.
Regarding Claim 3, patent claim 2 recites the same limitations.
Regarding Claim 6, patent claim 3 recites the same limitations.
Regarding Claim 8, patent claim 4 recites the same limitations.
Regarding Claims 11, 12, 14, 15, 17 & 19, patent claim 5 recites the same limitations.
Regarding Claim 13, patent claim 6 recites the same limitations.
Regarding Claim 16, patent claim 7 recites the same limitations.
Regarding Claim 18, patent claim 8 recites the same limitations.
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 20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 11,844,696. This is a statutory double patenting rejection.
Claim Objections
Claim 11 is objected to because of the following informalities: Lines 4-6 state “pressing the first exterior surface against the second exterior surface such that the first a first uneven texture of the first exterior surface interlocks with a second uneven texture of the second exterior surface.” The examiner assumes the limitation should read:
and pressing the first exterior surface against the second exterior surface such that . Appropriate correction is required.
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 11-19 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.
Claim 11 recites the limitation "the first" in line 4. There is insufficient antecedent basis for this limitation in the claim.
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 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) 1-6 & 11-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown et al. (US 8,197,550).
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Regarding Claim 1, Brown teaches a system (Fig 8) comprising: a first implant (10f) comprising a first exterior surface (72); and a second implant (52) comprising a second exterior surface (70); wherein the first exterior surface comprises a first uneven texture that is configured to interlock with a second uneven texture of the second exterior surface (Col 5: lines 18-39).
Regarding Claim 11, Brown teaches a method (Fig 8) comprising: implanting a first implant (10f) comprising a first exterior surface (72); and implanting a second implant (52) comprising a second exterior surface (70); pressing the first exterior surface against the second exterior surface (Fig 8) such that a first uneven texture of the first exterior surface interlocks with a second uneven texture of the second exterior surface (Col 5: lines 18-39).
Regarding Claims 2 & 12, Brown teaches wherein: the first implant comprises an acetabular cup; the second implant comprises an augment securable to the acetabular cup (Fig 8).
Regarding Claims 3 & 13, Brown teaches wherein the system further comprises an augment-securing mechanism (Col 5: lines 33-39) configured to secure the acetabular cup to the augment.
Regarding Claims 4 & 14, Brown teaches wherein each of first uneven texture and the second uneven texture comprises an uneven porous texture (Col 5: lines 18-20).
Regarding Claims 5 & 15, Brown teaches wherein the first uneven texture comprises a first web of rods (interpreted as the struts comprising the porous texture).
Regarding Claims 6 & 16, Brown teaches wherein the rods of the web of rods define a generally stochastic pattern (Fig 8).
Claim(s) 1, 5, 7-11, 15 & 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vogt et al. (US 10,588,755).
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Regarding Claims 1 & 11, Vogt teaches a system comprising: a first implant (1) comprising a first exterior surface (mushrooms 5); and a second implant (2) comprising a second exterior surface (voids housing mushrooms 5); wherein the first exterior surface comprises a first uneven texture that is configured to interlock with a second uneven texture of the second exterior surface (Fig 4).
Regarding Claims 5 & 15, Vogt teaches wherein the first uneven texture comprises a first web of rods (5).
Regarding Claims 7 & 17, Vogt teaches wherein the second exterior surface comprises second protrusions (5) that extend into interstitial spaces between the rods of the first web of rods (Fig 4).
Regarding Claims 8 & 18, Vogt teaches wherein the protrusions extend generally perpendicular to the second exterior surface (Fig 4).
Regarding Claims 9 & 19, Vogt teaches wherein the second uneven texture further comprises a second web of rods; and the first uneven texture further comprises first protrusions that extend into interstitial spaces between the rods of the second web of rods (Fig 4).
Regarding Claim 10, Vogt teaches wherein the first uneven texture and the second uneven texture are configured such that the second protrusions enter the interstitial spaces in response to pressure urging the first exterior surface and the second exterior surface together (Col 13: lines 35-37).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Schultz et al. (US 2005/0080487) and Kalpakci et al. (US 2019/0021862) teach a system comprising: a first implant comprising a first exterior surface; and a second implant comprising a second exterior surface; wherein the first exterior surface comprises a first uneven texture that is configured to interlock with a second uneven texture of the second exterior surface.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN AINSLEY DUKERT whose telephone number is (571)270-3258. The examiner can normally be reached Mon-Fri 6am-4pm.
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, Melanie Tyson can be reached at (571)272-9062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN A DUKERT/Primary Examiner, Art Unit 3774
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