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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 7, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Farris (US 2007/0135814 A1) in view of Mitchell et al. (US 2006/0241597 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 only the tabs transition between an insertion configuration (see Figs. 5A-5B) and a deployed configuration (see Figs. 2-4) (note that the configuration of intermediate section 30 does not change as first section 31 and second section 32 remain in the overlapping configuration in both the insertion configuration shown in Figs. 5A-5B and the deployed configuration shown in Figs. 2-3; therefore, intermediate section 30 does not transition, or change configuration, between the insertion configuration and the deployed configuration) 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).
Farris fails to disclose wherein said member comprises teeth on at least one surface (claim 1).
Mitchell teaches a spinal implant system comprising: a facet implant member (spacer 2810) for positioning in a facet joint, said member comprising teeth (protrusions 2807) on at least one surface, wherein the teeth resist slippage of the facet implant member when deployed in the facet joint (see para. 0149); and a lateral mass fixation portion (lateral mass plates 2820 and 2850) comprising two tabs (lateral mass plates 2820 and 2850) extending from the facet implant member (Fig. 41C; para. 0149).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the spinal implant system of Farris such that said member comprises teeth on at least one surface (claim 1), as suggested by Mitchell, as such teeth resist slippage of the facet implant member when deployed in the facet joint.
Response to Arguments
Applicant's arguments filed July 13, 2026 have been fully considered but they are not persuasive. Applicant argues that Farris fails to teach that only the tabs transition between an insertion configuration and a deployed configuration because first section 31 and second section 32 of intermediate section 30 overlap and thus the entire device folds for deliver (see pg. 4). The Examiner disagrees. The claim recites that only the tabs transition between an insertion configuration and a deployed configuration. As stated in the rejection above, the configuration of intermediate section 30 does not change as first section 31 and second section 32 remain in the overlapping configuration in both the insertion configuration shown in Figs. 5A-5B and the deployed configuration shown in Figs. 2-3. Thus, intermediate section 30 does not transition, or change configuration, between the insertion configuration and the deployed configuration.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JULIANNA N HARVEY whose telephone number is (571)270-3815. The examiner can normally be reached Mon.-Fri. 8:00am-5:00pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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