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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 16, 2026 has been entered.
Allowable Subject Matter
Claims 1-20 are allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach or disclose wherein the tip tie tube moves proximally over a distal portion of the stylet as the expandable member expands, and wherein a protective sleeve is configured to be slidably displaceable over the outer tube and the expandable member.
The prior art fails to teach or disclose wherein the protective sleeve is disposed around the expandable member when the bone displacement device is in a package state, and is releaseably coupled to the handle when the bone displacement device is in a ready state, and wherein a distal end of the protective sleeve comprises a funnel shape.
The prior art fails to teach or disclose further comprising displacing the protective sleeve proximally from a bone displacement device package state where the protective sleeve surrounds the expandable member to a bone displacement device ready state where the protective sleeve is releasably coupled to the handle, and wherein a distal end of the protective sleeve comprises a funnel shape.
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 1-19 of U.S. Patent No. 11,986,229. Although the claims at issue are not identical, they are not patentably distinct from each other because both the granted patent and present application disclose a bone displacement device. The device comprises an elongate outer tube, an elongate stylet coaxially disposed within the outer tube, wherein the stylet comprises a tubular shaft and a plurality of pull wires disposed within a lumen of the shaft, the plurality of pull wires are configured to be pulled proximally. The device comprises a handle coupled to a proximal portion of the outer tube and the stylet, wherein the handle comprises a rotatable grip, wherein the plurality of pull wires are coupled to a pull member disposed within the rotatable grip, and wherein the rotatable grip engages with threads of the pull member to displace the pull member proximally and distally. The device includes an expandable member disposed adjacent a distal end of the outer tube, and a tip tie tube disposed within the expandable member and coupled to a distal end of the expandable member and slidably disposed over a distal portion of the stylet, wherein the tip tie tube is displaced proximally relative to the distal portion of the stylet when the expandable member is expanded, and is displaced distally relative to the distal portion of the stylet when the expandable member is contracted.
Both the granted patent and present application disclose a bone displacement system. The system comprises a bone displacement device that comprises an elongate outer tube, an elongate stylet coaxially disposed within the outer tube, wherein the stylet comprises a tubular shaft and a plurality of pull wires disposed within a lumen of the shaft, the plurality of pull wires are configured to be pulled proximally, a handle coupled to a proximal end of the outer tube and the stylet, wherein the handle comprises a rotatable grip, wherein the plurality of pull wires are coupled to a pull member disposed within the rotatable grip, and wherein the rotatable grip engages with threads of the pull member to displace the pull member proximally or distally. The system includes an expandable member disposed adjacent a distal end of the outer tube, and a tip tie tube disposed within the expandable member and coupled to a distal end of the expandable member and slidably disposed over a distal portion of the stylet, wherein the tip tie tube is displaced proximally relative to the distal portion of the stylet when the expandable member is expanded, and is displaced distally relative to the distal portion of the stylet when the expandable member is contracted, and a protective sleeve configured to be slidably displaceable over the outer tube.
Both the granted patent and present application disclose a method of displacing bone that comprises obtaining a bone displacement device that comprises an elongate outer tube, an elongate stylet coaxially disposed within the outer tube, wherein the stylet comprises a tubular shaft and a plurality of pull wires disposed within a lumen of the shaft, the plurality of pull wires are configured to be pulled proximally. The device includes a handle coupled to a proximal end of the outer tube and the stylet, wherein the handle comprises a rotatable grip, wherein the plurality of pull wires are coupled to a pull member disposed within the rotatable grip, and wherein the rotatable grip engages with threads of the pull member to displace the pull member proximally or distally. The device includes an expandable member disposed adjacent a distal end of the outer tube, and a tip tie tube disposed within the expandable member and coupled to a distal end of the expandable member and slidably disposed over a distal portion of the stylet, wherein the tip tie tube is displaced proximally relative to the distal portion of the stylet when the expandable member is expanded, and is displaced distally relative to the distal portion of the stylet when the expandable member is contracted, inserting a distal portion of the bone displacement device into a bone, articulating a distal portion of the stylet, and expanding the expandable member.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J BECCIA whose telephone number is (571)270-7391. The examiner can normally be reached Mon - Fri 8:30-5:00.
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/CHRISTOPHER J BECCIA/Primary Examiner, Art Unit 3775
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