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
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) and 365(c) as follows:
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 disclosures of the prior-filed applications, Application No.’s 63/197,192, 63/209,987, and PCT/US2022/031709, fail 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. None of the prior filed applications provide support for an embodiment as claimed in claims 4 and 5, wherein the intermediary member includes at least one flat portion about an inner surface therof in addition to a radial seal including a first tab and a second tab positioned on an opposite side of the seal from the first tab. The prior filed applications provide support for an embodiment having an intermediary member with a seal with opposing tabs and for a separate embodiment having an intermediary member with flats and a seal, but not for the combination of the intermediary member with the flats and the seal with the opposing tabs. Therefore, the claims receive a priority date of 12/7/2022, which is the filing date of the 18008830 application.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the intermediary member including at least one flat portion about an inner surface thereof in addition to a radial seal including a first tab and a second tab positioned on an opposite side of the seal from the first tab (claims 4 and 5) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
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: The specification fails to provide support for an embodiment as claimed in claims 4 and 5, wherein the intermediary member includes at least one flat portion about an inner surface thereof in addition to a radial seal including a first tab and a second tab positioned on an opposite side of the seal from the first tab. The specification provides support for an embodiment having an intermediary member with a seal with opposing tabs and for a separate embodiment having an intermediary member with flats and a seal, but not for the combination of the intermediary member with the flats and the seal with the opposing tabs.
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 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 and 8-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schwardt et al. (Pub. No. US 2019/0015138 A1).
Regarding claims 1 and 8-16, Schwardt et al. discloses an adjustable implant 300 comprising: a housing 304; an adjustable member 302 at least partially positioned within the housing 304 and configured to translate relative to the housing (figure 3), the adjustable member including at least one flat portion 372 (figure 6); and an intermediary member 370 positioned between the housing 304 and the adjustable member 302 (figure 5 and 6), the intermediary member 370 including at least one flat portion 374 configured to mate with or engage the at least one flat portion 372 of the adjustable member 302 (figure 6). The at least one flat portion 374 of the intermediary member includes two flat portions and wherein the at least one flat portion 372 of the adjustable member includes two flat portions (figure 6). Interaction between the at least one flat portion 372 on the outer surface of the adjustable member 302 and the at least one flat portion 374 of the intermediary member 370 resists intrusion of fluid to a space between the adjustable member and the housing (figure 3, 5, and 6). Interaction between the at least one flat portion 372 on the outer surface of the adjustable member 302 and the at least one flat portion 374 of the intermediary member 370 controls rotation of the adjustable member 302 relative to the housing 304 and provides both a static and dynamic seal for ingress protection (figures 3, 5, and 6). The intermediary member 370 is a lug (figure 6). The intermediary member 370 substantially surrounds the adjustable member 302 (figure 5 and 6). The housing 304 substantially surrounds the intermediary member 370 (figures 3, 5, and 6). The intermediary member 370 is an endcap of the housing (figures 5 and 6). An end of the housing 304 is crimped or pressed to retain at least one of the intermediary member 370 or an additional seal (this is a product by process limitation. The end of the housing could be crimped or pressed to retain the intermediary member, so it meets the claimed limitations). An end of the housing 304 includes an extension 378 extending from an end of the housing inward toward the adjustable member 302, the extension 378 retaining at least one of the intermediary member 370 or an additional seal (paragraph 0037, figures 5 and 6).
Claim(s) 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Giroux et al. (Pub. No. FR 2726460).
Regarding claims 17-19, Giroux et al. discloses an adjustable implant 23 (figure 4A-4C) comprising: a housing 24; an adjustable member 25 at least partially positioned within the housing 24 and configured to translate relative to the housing (figure 4C); and an intermediary member 27 positioned between the housing 24 and the adjustable member 25, configured to mate with or engage the adjustable member 25 (figure 4C). The intermediary member 27 includes: a first groove 26 facing an outer surface of the adjustable member 25; and a second groove “threading” facing an inner surface of the housing 24 (figure 4C). The second groove “threading” is configured to receive an o-ring, a radial seal or a retainer therein (the second groove receives threading from the housing, which is considered a retainer because it retains the intermediary member within the housing, figure 4C).
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giroux et al. (Pub. No. FR2726460) in view of Schwardt. et al. (Pub. No. US 2019/0015138 A1).
Regarding claims 1-3 and 6, Giroux et al. discloses an adjustable implant 23 (figures 4A-4C) comprising: a housing 24; an adjustable member 25 at least partially positioned within the housing 24 and configured to translate relative to the housing 24 (figure 4C); and an intermediary member 27 positioned between the housing 24 and the adjustable member 25 (figure 4C). The intermediary member 27 includes: a first groove 26 facing an outer surface of the adjustable member 25; and a second groove 26 facing an inner surface of the housing 24 (figure 4C). The second groove “threading” is configured to receive an o-ring, a radial seal or a retainer therein (the second groove receives threading from the housing, which is considered a retainer because it retains the intermediary member within the housing, figure 4C). The housing 24 includes a third groove “threading” extending about the inner surface of the housing, the third groove configured to complement the second groove “threading” facing the inner surface of the housing (figure 4C).
Giroux et al. discloses the claimed invention except wherein the adjustable member 25 including at least one flat portion, the intermediary member 27 including at least one flat portion configured to mate with or engage the at least one flat portion of the adjustable member.
Schwardt et al. teaches wherein the adjustable member including at least one flat portion 372 (figure 6); the intermediary member 370 including at least one flat portion 374 configured to mate with or engage the at least one flat portion 372 of the adjustable member 302 (figure 6).
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to modify the adjustable implant disclosed by Giroux et al. such that the adjustable member 25 including at least one flat portion, the intermediary member 27 including at least one flat portion configured to mate with or engage the at least one flat portion of the adjustable member, as taught by Schwardt et al., in order to maintain the alignment between the adjustable member and the housing.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giroux et al. (Pub. No. FR 2726460) in view of Schwardt. et al. (Pub. No. US 2019/0015138 A1) and further in view of Pool et al. (Pat. No. US 8,449,543 B2).
Regarding claim 4, Giroux et al. as modified by Schwardt et al. discloses the claimed invention, including wherein the first groove 26 includes a substantially circular radial seal positioned therein (figure 4C), but fails to disclose the radial seal including a first tab positioned on an opposing side of the radial seal from a second tab.
Pool et al. teaches wherein a radial seal 169 comprises a plurality of opposing tabs 171 which cooperate with a plurality of grooves 166 on the adjustable member 114 in order to provide a seal between the adjustable member and the housing (figure 4A and 4B).
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to modify the radial seal disclosed by Giroux et al. to comprise a first tab positioned on an opposing side of the radial seal from a second tab, as taught by Pool et al., in order to provide a seal between the adjustable member and the housing.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schwardt et al. (Pub. No. US 2019/0015138 A1) in view of Pool et al. (Pat. No. US 8,449,543 B2) .
Regarding claim 7, Schwardt et al. discloses the claimed invention except wherein the at least one flat portion of the intermediary member includes four flat portions and wherein the at least one flat portion of the adjustable member includes four flat portions.
Pool et al. teaches wherein anti-rotation means 166 between an adjustable member 114 and an intermediary member 169 comprise at least four grooves 166 (figure 4A and 4B).
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to modify the flat portions (anti-rotation means) disclosed by Schwardt et al. to comprise four flat portions on the adjustable member and the intermediary member, as taught by Pool et al., since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giroux et al. (Pub. No. FR 2726460) in view of Pool et al. (Pat. No. US 8,449,543 B2).
Regarding claim 20, Giroux et al. discloses the claimed invention, including wherein the first groove 26 includes a substantially circular radial seal positioned therein (figure 4C), but fails to disclose the radial seal including a first tab positioned on an opposing side of the radial seal from a second tab.
Pool et al. teaches wherein a radial seal 169 comprises a plurality of opposing tabs 171 which cooperate with a plurality of grooves 166 on the adjustable member 114 in order to prevent the adjustable member from rotating relative to the housing (figure 4A and 4B).
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to modify the radial seal disclosed by Giroux et al. to comprise a first tab positioned on an opposing side of the radial seal from a second tab, as taught by Pool et al., in order to prevent the adjustable member from rotating relative to the housing.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11986223. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus more specific. Thus the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lynnsy Summitt whose telephone number is (571)270-78567856. The examiner can normally be reached on Monday through Thursday from 8am until 5pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eduardo Robert, at (571) 272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LYNNSY M SUMMITT/Primary Examiner, Art Unit 3773
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