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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 26, 2025 has been entered.
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.
Claim 11 is 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 “a insertion configuration” (lines 1-2) and “a deployed configuration” (lines 2-3). However, claim 1 already recites “an insertion configuration and a deployed configuration” (lines 5-6). Thus, it is unclear whether the recitations in claim 11 are intended to refer to a second, or additional, insertion configuration and a second, or additional, deployed configuration or are intended to refer to the insertion configuration and the deployed configuration recited in claim 1. For examination purposes, the Examiner is interpreting claim 11 as reciting “the insertion configuration” (lines 1-2) and “the deployed configuration” (lines 2-3).
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.
Claims 1, 7, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Farris (US 2007/0135814 A1).
Claim 1. Farris discloses a spinal implant system, comprising:
a facet implant member (intermediate section 30) for positioning in a facet joint (see para. 0018); and
a lateral mass fixation portion (first section 21 and second section 22) comprising two tabs (first section 21 and second section 22) extending from the facet implant member wherein the tabs transition between an insertion configuration (see Figs. 5A-5B) and a deployed configuration (see Figs. 2-4) and in the deployed configuration, the tabs contact lateral masses of adjacent vertebrae (see Fig. 4) (Figs. 2-5B; paras. 0016-0021).
Claim 7. Farris discloses wherein the tabs have one or more holes (apertures 23) formed therethrough to receive one or more fixation devices (screws 41) configured to secure the tabs to the lateral masses of adjacent vertebrae (see para. 0016) (Figs. 2-5B; paras. 0016-0021).
Claim 11. Farris discloses wherein the tabs are moveable from the insertion configuration for delivery of the system in a patient to the deployed configuration for attachment to lateral masses of adjacent vertebrae, wherein the tabs are positioned at a first angle (as shown in Figs. 5A-5B) relative to the implant member in the insertion configuration and at a second angle (as shown in Figs. 2-3) relative to the implant member in the deployed configuration and the first angle and the second angle are different (Figs. 2-5B; paras. 0016-0021).
Claim 12. Farris discloses a guide member (tube 80) for guiding the facet implant member to a spine for attachment thereto (see para. 0019) (Figs. 2-5B; paras. 0016-0021).
Response to Arguments
Applicant’s arguments with respect to claim 1 and McCormack have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIANNA N HARVEY whose telephone number is (571)270-3815. The examiner can normally be reached Mon.-Fri. 8:00am-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eduardo Robert can be reached 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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/JULIANNA N HARVEY/Primary Examiner, Art Unit 3773