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 Objections
The objection to claim(s) 1 in the previous Office Action for informalities is hereby withdrawn in view of Applicant’s Amendment.
Claim Rejections - 35 USC § 112
The rejection of claim(s) 1-9 in the previous Office Action under this section, 2nd paragraph (pre-AIA ) or subsection (b) (AIA ), for being indefinite is hereby withdrawn in view of Applicant’s Amendment.
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.
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Claims 1-3 and 5-9 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-8 of U.S. Patent No. 11,950,774. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader than, and thus are “anticipated by”, the claims of ‘774 as follows with respect to the column/line numbers of the printed ‘774 patent:
Regarding current claim 1, ‘774 claim 3 recites: 1. An anchoring system for securing tissue to bone (C19L44), comprising an implant comprising a body having longitudinal axis (C19L46) a longitudinally extending lumen extending within at least a portion of the body (C19L61-64), a suture eyelet extending transversely through the body (C19L47-48) with at least a portion of the suture eyelet being in fluid communication with the longitudinally extending lumen (C19L61-64), and a first suture pinch slit (C19L50-51) and a second suture pinch slit (C19L55), each of the first and second suture pinch slits positioned at a proximal end of the suture recess (C19L50-56), wherein the first suture pinch slit is non parallel to the longitudinal axis (C19L53-55) and is also non parallel to the second suture pinch slit (C19L56-57).
Further, there is correspondence between current dependent claims 2-3 and 5-9 with ‘774 patent claims as follows:
Current claim #
2
3
5
6
7
8
9
‘774 patent claim #
3
3
4
5
6
7
8
Claims 1 and 4 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 11,950,774 in view of US 2013/0103081 A1 to Wolf.
Regarding current claim 1, ‘774 claim 1 recites: 1. An anchoring system for securing tissue to bone (C19L44), comprising an implant comprising a body having longitudinal axis (C19L46) ), a suture eyelet extending transversely through the body (C19L47-48), and a first suture pinch slit (C19L50-51) and a second suture pinch slit (C19L55), each of the first and second suture pinch slits positioned at a proximal end of the suture recess (C19L50-56), wherein the first suture pinch slit is non parallel to the longitudinal axis (C19L53-55) and is also non parallel to the second suture pinch slit (C19L56-57).
'774 claim 1 fails to specifically disclose a longitudinally extending lumen extending within at least a portion of the body, with at least a portion of the suture eyelet being in fluid communication with the longitudinally extending lumen. Wolf discloses (see abstract; Figs. 6A-B; and [0056]) an anchoring system for securing tissue to bone (see [0039]), comprising an implant (600) comprising a body (616a or otherwise diagonal line marked surfaces of Fig. 6B) having a longitudinal axis (inherent), a longitudinally extending lumen (620) extending within at least a portion of the body, a suture eyelet (608) extending transversely through the body with at least a portion of the suture eyelet being in fluid communication with the longitudinally extending lumen (see Figs. 6A-B and [0056]) in the same field of endeavor for the purpose of providing a suture pathway by allowing a suture to extend through the lumen of the anchor, pass through the bore/eyelet, wrap around the distal end of the anchor arm, and extend back through the lumen (see [0056]). It would have been obvious to one having ordinary skill in the art to have modified '774 claim 1's anchoring system with the lumen being in fluid communication with the eyelet, as taught by Wolf, in order to provide a suture pathway by allowing a suture to extend through the lumen of the anchor, pass through the bore/eyelet, wrap around the distal end of the anchor arm, and extend back through the lumen.
Further, current claim 4 corresponds to ‘774 claim 2.
Claims 1-2 and 4-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-9 of U.S. Patent No. 10,786,236 in view of US 2013/0103081 A1 to Wolf.
Regarding current claim 1, ‘236 claim 1 recites: 1. An anchoring system for securing tissue to bone (C19L46), comprising an implant comprising a body (C19L48) having a longitudinal axis (inherent), a suture eyelet extending transversely through the body (C19L48-49), and a first suture pinch slit (C19L52) and a second suture pinch slit (C19L61), each of the first and second suture pinch slits positioned at a proximal end of the suture recess (C19L54-56; C19L60-62), wherein the first suture pinch slit is non parallel to the longitudinal axis (C19L48-56, given the pinch slit having a distal end at the suture recess and a proximal end outside the suture recess and the suture recess extending along a portion of the length of the body, the first suture pinch slit would have to be non parallel to the long. axis) and is also non parallel to the second suture pinch slit (C19L60-63).
'236 claim 1 fails to specifically disclose a longitudinally extending lumen extending within at least a portion of the body, with at least a portion of the suture eyelet being in fluid communication with the longitudinally extending lumen. Wolf discloses (see abstract; Figs. 6A-B; and [0056]) an anchoring system for securing tissue to bone (see [0039]), comprising an implant (600) comprising a body (616a or otherwise diagonal line marked surfaces of Fig. 6B) having a longitudinal axis (inherent), a longitudinally extending lumen (620) extending within at least a portion of the body, a suture eyelet (608) extending transversely through the body with at least a portion of the suture eyelet being in fluid communication with the longitudinally extending lumen (see Figs. 6A-B and [0056]) in the same field of endeavor for the purpose of providing a suture pathway by allowing a suture to extend through the lumen of the anchor, pass through the bore/eyelet, wrap around the distal end of the anchor arm, and extend back through the lumen (see [0056]). It would have been obvious to one having ordinary skill in the art to have modified '236 claim 1's anchoring system with the lumen being in fluid communication with the eyelet, as taught by Wolf, in order to provide a suture pathway by allowing a suture to extend through the lumen of the anchor, pass through the bore/eyelet, wrap around the distal end of the anchor arm, and extend back through the lumen.
Further, there is correspondence between current dependent claims 2 and 4-9 with ‘236 patent claims as follows:
Current claim #
2
4
5
6
7
8
9
‘236 patent claim #
1
2
5
6
7
8
9
Prior Art
Note that no prior art is applicable to the claims for the same reasons as set forth in parent applications 16/021423 and 17/015992 – claim 1 recites first and second suture pinch slits which are not parallel to each other, which is neither taught nor suggested by US 2013/0103-83 to Baird, the closest prior art of record applied to the parent applications.
Response to Arguments
Applicant's arguments filed 11/24/25 have been fully considered but they are not persuasive.
Applicant alleges that neither double patenting reference patent recites that the first suture pinch slit is non parallel to the longitudinal axis. The Examiner respectfully disagrees. The ‘774 patent explicitly discloses at C19L53-55 that the first suture pinch slit is non parallel to the longitudinal axis. With respect to the ‘236 patent, at C19L46-56, given the pinch slit having a distal end at the suture recess and a proximal end outside the suture recess and the suture recess extending along a portion of the length of the body, the first suture pinch slit would have to be non parallel to the long. axis. Accordingly, Applicant’s arguments are not persuasive and the double patenting rejections remain.
Conclusion
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 SHAUN L DAVID whose telephone number is (571)270-5263. The examiner can normally be reached M-F 10AM-6:30PM.
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/SHAUN L DAVID/Primary Examiner, Art Unit 3771