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 .
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/848,299, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior-filed application does not provide support for the embodiment of the device that includes at least one telescoping guide member (claims 7 and 18; for example see Figures 8-9).
The disclosure of the prior-filed application, Application No. 16/722,944, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior-filed application does not provide support for the disclosed embodiments of the device, such as the threaded jack/screw jack having indicia.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 lines 12-13 recite …the slide assembly including … and wire lock assembly. Claim 1 line 13 recites …the slide assembly including a wire lock assembly. This appears to be a duplication of the limitation.
Claim 12 is objected to because of the following informalities:
Claim 12 lines 13-14 recite …the slide assembly including … and wire lock assembly. Claim 12 lines 15-16 recite …the slide assembly including a wire lock assembly. This appears to be a duplication of the limitation.
Appropriate correction is required.
Claim 14 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 12. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim 12 lines 11-12 recite …the jack member including a forward guide for supporting a side surface of the guide wire to increase the column strength of the guide wire. Claim 14 lines 2-3 recite …wherein the jack member includes a forward guide for supporting a side surface of the guide wire to increase the column strength of the guide wire.
Specification
The disclosure is objected to because of the following informalities: Page 10 line 30 recites …the slide assembly may be provided with a stem (Figs. 1 and 7B). Figure 7B is not the correct figure for showing element 162. Element 162 is shown in Figure 1 and Figure 7A.
Appropriate correction is required.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claim 7 line 2 recites …wherein the slide assembly including at least one telescoping guide member. Page 9 line 30 to page 10 line 12 of the specification discloses the at least one telescoping guide member being part of the jack member.
Claim 18 line 2 recites …wherein the slide assembly including at least one telescoping guide member. Page 9 line 30 to page 10 line 12 of the specification discloses the at least one telescoping guide member being part of the jack member.
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.
Claims 1-22 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-22 of prior U.S. Patent No. 11,399,877. This is a statutory double patenting rejection.
Allowable Subject Matter
Claims 1-22 are allowable over the prior art. However, the claims rejected under statutory double patenting as discussed above.
Regarding claim 1 and dependent claims 2-11:
Aebi discloses a device (for example see Figure 1A) comprising:
(claim 1) a cannulated hand grip (210; for example see Figure 2B) including
(claim 1) a first end (200; Figure 1A)
(claim 1) wherein the first end is removably attached to a proximal end of a second cannulated member (320)
(claim 1) wherein the second cannulated member includes a shaped driving tool (310) on a distal end thereof
(claim 1) a second end (400; Figure 1A)
(claim 1) wherein the second end includes a barrel (450)
(claim 1) wherein the barrel includes helical threads extending at least partially around an inner surface of the barrel (best shown in Figure 4G and Figure 5A)
(claim 1) a jack member including
(claim 1) a threaded shank portion (440)
(claim 1) wherein the threaded shank portion is sized to cooperate with conjugate threads of the barrel (see Figure 5A)
(claim 1) a head portion (480)
(claim 1) a bore (shown in Figure 4A)
(claim 1) wherein the bore is sized to slidably cooperate with a stem portion of a slide assembly (the cylindrical proximal portion of element 410)
(claim 1) a slide assembly including
(claim 1) a slide head (the tapered distal portion of element 410)
(claim 1) a stem portion (the cylindrical proximal portion of element 410)
(claim 1) a wire lock assembly (420, 430, etc.)
(claim 1) wherein the wire lock assembly is for securing a guide wire within the slide assembly such that the slide assembly and the guidewire are moveable longitudinally and rotationally with respect to the jack member (elements 410 and 510 are fully capable of moving longitudinally and rotationally relative to element 440)
(claim 1) a guide wire (510)
(claim 1) wherein the guide wire is constructed from a material having sufficient column strength for penetrating a bone (element 510 is capable of penetrating a bone, i.e. passing through a bore or hole in a bone)
(claim 1) wherein the guide wire extends through the jack member, the cannulated hand grip, and the second cannulated member (for example see Figure 1A)
Aebi fails to disclose the invention wherein the head portion of the jack member is unthreaded, wherein rotation of the jack member in a first direction lengthens the overall length of the surgical tool and rotation of the jack member in a second direction shortens the overall length of the surgical tool without rotation of the slide assembly and the guide wire, and wherein a top surface of the unthreaded head portion cooperates with a bottom surface of the slide head to retract the guide wire through the cannulated hand grip and the second cannulated member when rotated in the first direction.
Regarding claim 12 and dependent claims 13-22:
Aebi discloses a device (for example see Figure 1A) comprising:
(claim 12) a cannulated hand grip (210; for example see Figure 2B) including
(claim 12) a first end (200; Figure 1A)
(claim 12) wherein the first end is attached to a proximal end of a second cannulated member (320)
(claim 12) wherein the second cannulated member includes a shaped driving tool (310) on a distal end thereof
(claim 12) a second end (400; Figure 1A)
(claim 12) wherein the second end includes a barrel (450)
(claim 12) wherein the barrel includes helical threads extending at least partially around an inner surface of the barrel (best shown in Figure 4G and Figure 5A)
(claim 12) a jack member including
(claim 12) a threaded shank portion (440)
(claim 12) wherein the threaded shank portion is sized to cooperate with threads of the barrel (see Figure 5A)
(claim 12) a head portion (480)
(claim 12) a bore (shown in Figure 4A)
(claim 12) wherein the bore is sized to slidably cooperate with a stem portion of a slide assembly (the cylindrical proximal portion of element 410)
(claim 12) a slide assembly including
(claim 12) a slide head (the tapered distal portion of element 410)
(claim 12) a stem portion (the cylindrical proximal portion of element 410)
(claim 12) a wire lock assembly (420, 430, etc.)
(claim 12) wherein the wire lock assembly is for securing a guide wire within the slide assembly to move within the device (the guide wire is capable of moving within the device)
(claim 12) wherein the slide assembly is constructed and arranged so that the slide assembly and the guide wire are linearly and rotationally moveable within the bore of the jack member (elements 410 and 510 are fully capable of linear and rotational movement in the bore of element 440)
(claim 12) wherein the jack member controls forward movement and retraction of the slide assembly and the guide wire through the cannulated hand grip and the second cannulated member (rotation of element 440 within the threaded bore of element 450 controls movement of element 410 in element 210 and the movement of element 510 in the element 320)
(claim 12) a guide wire (510)
(claim 12) wherein the guide wire is constructed from a material having sufficient column strength for penetrating a bone (element 510 is capable of penetrating a bone, i.e. passing through a bore or hole in a bone)
(claim 12) wherein the guide wire extends through the jack member, the cannulated hand grip, and the second cannulated member (for example see Figure 1A)
Aebi fails to disclose the device wherein jack member includes a forward guide for supporting a side surface of the guide wire to increase the column strength of the guide wire and wherein linear positioning of the jack member with respect to the cannulated hand grip changes the length of the device without rotation of the slide assembly and the guide wire.
The examiner was unable to find a reference or a combination of references that disclose and/or teach the limitations of the independent claims as presented.
Regarding the rejection of claims 1-5, 9-16, and 20-22 in the PCT written opinion filed on October 12, 2023, the written opinion recites U.S. Publication 2020/0305944 to reject claims 1-5, 9-16, and 20-22. U.S. Publication 2020/0305944 is owned by the same assignee (Integrity Implants Inc.) and does not qualify as prior art due to the exceptions of prior art under 102(a), i.e. the disclosure has a publication date of less than 1 year from the effective filing date and is from the same inventor or joint inventor (see MPEP 2153.01).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited references the examiner felt were relevant to the application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas Woodall whose telephone number is (571) 272-5204. The examiner can normally be reached on Monday-Friday 8am to 5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571)272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS W WOODALL/Primary Examiner, Art Unit 3775