DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This Office action is in response to the amendment/request for reconsideration filed 05/08/2026. Claims 1-20 remain pending.
Terminal Disclaimer
The terminal disclaimer filed on 0528/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,918,479 B2 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 (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.
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim(s) 1-20 is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Yu et al. (U.S. 2008/0027547 A1).
The applied reference has a common inventor with the instant application. Based upon the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art. This rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or if the same invention is not being claimed, by an appropriate showing under 37 CFR 1.131(a).
Concerning claim 1, Yu et al. disclose a prosthetic system for implantation between upper and lower vertebrae, the system comprising: an upper joint component (see Fig. 21, element 622) comprising an upper contact surface for engaging a resected lower surface of the upper vertebrae and a generally concave upper articulation surface (see par. 0053); a lower joint component (624) comprising a first lower contact surface for engaging a resected upper surface of the lower vertebrae and a generally convex lower articulation surface (see Fig. 24, element 681) configured to movably engage the generally concave upper articulation surface to form an articulating joint (see par. 0120), wherein the articulating joint is adapted for implantation within a disc space between the upper and lower vertebrae, allowing the upper and lower vertebrae to move relative to one another; and a bridge component (see Fig. 21, element 636) extending posteriorly from the lower joint component and from the disc space, the bridge component having a second lower contact surface configured for engaging a resected bone surface of a pedicle of the lower vertebrae (see Fig. 5), wherein the distal end of the bridge component comprises a connection component (see Fig. 22, element 640) adapted to receive a first fastener (74).
[AltContent: textbox (Upper Posterior Limiter Surface)][AltContent: arrow][AltContent: textbox (Second Lower Contact Surface)][AltContent: arrow][AltContent: textbox (First Lower Contact Surface)][AltContent: arrow]
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Concerning claim 2, wherein at least a portion of the second lower contact surface comprises a textured surface (see par. 0055).
Concerning claim 3, wherein at least a portion of the second lower contact surface comprises an osteoconductive material (see par. 0055).
Concerning claim 4, wherein at least a portion of the second lower contact surface comprises an osteoinductive material (see par. 0055).
Concerning claim 5, wherein the first lower contact surface is substantially parallel to the second lower contact surface (see Fig. 21 above).
Concerning claim 7, wherein the upper joint component further comprises an upper anterior limiter surface (see Fig. 5 below) and the lower joint component further comprises a lower anterior limiter surface (see Fig. 5 below), wherein the generally convex lower articulation surface is positioned between the lower anterior limiter surface and the bridge component.
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Concerning claim 8, wherein the first fastener comprises a bone screw (74).
Concerning claims 9 and 10, wherein the upper joint component further comprises an upper posterior limiter surfaced (see Fig. 22 above) and the lower joint component further comprises a lower posterior limiter surface (see Fig. 22, element 682), wherein the lower posterior limiter surface is positioned between the generally convex lower articulation surface and the distal end of the bridge component.
Concerning claim 11, wherein the upper and lower posterior limiter surfaces are spaced apart when the upper and lower anterior limiter surfaces are engaged together (articulation of device forward – away from bridge).
Concerning claim 12, wherein the upper and lower anterior limiter surfaces are spaced apart when the upper and lower posterior limiter surfaces are engaged together (articulation of the device backward – toward bridge).
Concerning claim 13, wherein a medial-lateral width of the upper joint component is substantially equal to a medial-lateral width of the lower joint component (see Figs. 21-22).
Concerning claim 14, wherein the upper contact surface further comprises an upwardly extending keel (see Fig. 21) extending along at least a portion of the upper contact surface.
Concerning claim 15, wherein the first lower contact surface further comprises a downwardly extending keel (see Fig. 5, element 52) extending along at least a portion of the first lower contact surface.
Concerning claim 16, Yu et al. disclose a prosthetic system (see Figs. 21-24 and 5-7) for implantation between upper and lower vertebrae, the system comprising a first articulating component and a second articulating component, the first articulating component being substantially identical in construction to the second articulating component, each of the first and second articulating components comprising: an upper joint component comprising an upper contact surface for engaging a resected lower surface of the upper vertebrae and a generally concave upper articulation surface; a lower joint component comprising a first lower contact surface for engaging a resected upper surface of the lower vertebrae and a generally convex lower articulation surface configured to movably engage the generally concave upper articulation surface to form an articulating joint, wherein the articulating joint is adapted for implantation within a disc space between the upper and lower vertebrae, allowing the upper and lower vertebrae to move relative to one another; and a bridge component extending posteriorly from the lower joint component and from the disc space, the bridge component having a second lower contact surface configured for engaging a resected bone surface of a pedicle of the lower vertebrae, wherein the distal end of the bridge component comprises a connection component adapted to receive a first fastener (see annotated Figs. 21, 22 and 5 above).
Concerning claim 17, wherein each of the first and second articulating components further comprises an upper anterior limiter surface on the upper joint component and a lower anterior limiter surface on the lower joint component, wherein the generally convex lower articulation surface is positioned between the lower anterior limiter surface and the bridge component (see Fig. 5 above).
Concerning claim 18, wherein each of the first and second articulating components further comprises an upper posterior limiter surface on the upper joint component (see Fig. 22 above) and a lower posterior limiter surface (see Fig. 22, element 682) on the lower joint component, wherein the lower posterior limiter surface is positioned between the generally convex lower articulation surface and the distal end of the bridge component.
Concerning claim 19, wherein the upper and lower posterior limiter surfaces of each of the first and second articulating components are spaced apart when the upper and lower anterior limiter surfaces are engaged together (articulation of device forward – away from bridge).
Concerning claim 20, wherein the upper and lower anterior limiter surfaces of each of the first and second articulating components are spaced apart when the upper and lower posterior limiter surfaces are engaged together (articulation of device backward – toward the bridge).
Concerning claim 6, Yu et al. disclose a prosthetic system for implantation between upper and lower vertebrae, the system comprising: an upper joint component (see Fig. 5, element22) comprising an upper contact surface for engaging a resected lower surface of the upper vertebrae and a generally concave upper articulation surface (see par. 0053); a lower joint component (24) comprising a first lower contact surface for engaging a resected upper surface of the lower vertebrae and a generally convex lower articulation surface configured to movably engage the generally concave upper articulation surface to form an articulating joint, wherein the articulating joint is adapted for implantation within a disc space between the upper and lower vertebrae, allowing the upper and lower vertebrae to move relative to one another; and a bridge component (see Fig. 5, element 36) extending posteriorly from the lower joint component and from the disc space, the bridge component having a second lower contact surface configured for engaging a resected bone surface of a pedicle of the lower vertebrae (see Fig. 5), wherein the distal end of the bridge component comprises a connection component (see Fig. 6, element 34) adapted to receive a first fastener (74), wherein the second lower contact surface includes a recessed portion (within element 66) that accommodates a portion of the first fastener.
Response to Arguments
In view of the accepted terminal disclaimer, the rejection of claims 1 and 6-15 on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,918,479 B2, and the rejection of claims 2-5 and 16-20 on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,918,479 B2 in view of Yu et al. (U.S. 2008/0027547 A1), have been withdrawn.
Applicant's arguments filed 05/28/2026 have been fully considered but they are not persuasive. Applicant argues that Yu et al. is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) because Yu et al. and the present application were wholly owned by, and under an obligation of assignment to, Warsaw Orthopedic, Inc. at the time the claimed invention was made (Remarks, p. 2). The examiner respectfully disagrees. Claims 1-20 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Yu et al., and no rejection under pre-AIA 35 U.S.C. 103(a) relying on Yu et al. has been made. Pre-AIA 35 U.S.C. 103(c) applies only to subject matter relied upon in a rejection under pre-AIA 35 U.S.C. 103(a). It does not apply to or affect subject matter applied in a rejection under 35 U.S.C. 102. See MPEP § 2146. If the rejection is anticipation under pre-AIA 35 U.S.C. 102(e), (f), or (g), pre-AIA 35 U.S.C. 103(c) cannot be relied upon to disqualify the subject matter in order to overcome or prevent the anticipation rejection. See MPEP § 2146.01. Therefore, although applicant’s statement of common ownership has been noted, it does not overcome the rejection of claims 1-20 under pre-AIA 35 U.S.C. 102(e).
Applicant does not otherwise dispute the examiner’s findings regarding the disclosure of Yu et al. Accordingly, the rejection of claims 1-20 under pre-AIA 35 U.S.C. 102(e) is maintained.
The examiner further notes that applicant’s remarks identify July 1, 2006 as both the filing date of Application No. 11/757,084 and “the date the claimed invention was made.” Application No. 11/757,084 was filed on 06/20/2007. To the extent applicant intends to rely on a date of invention earlier than the July 27, 2006 effective U.S. filing date of Yu et al., such a date must be established by an appropriate showing under 37 CFR 1.131(a). It is further noted that the assignee of Yu et al. is Warsaw Orthopedic, and the assignee of the current application is 3Spine.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited art relates to posterior spinal arthroplasty devices having an articulating anterior joint within the disc space and a bridge extending posteriorly from the disc space to a connection component that receives a pedicle screw: Humphreys et al. (U.S. 2005/0154466 A1).
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN HAMMOND whose telephone number is (571)270-3819. The examiner can normally be reached Monday-Friday 8 - 4 PM .
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.
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/ELLEN C HAMMOND/ Primary Examiner, Art Unit 3773
