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 .
DETAILED ACTION
This is in response to Application filed May 20, 2024, in which claim(s) 21-24, 27-29, 31-32, 34-37, and 40-42 is/are presented for examination.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/7/2026 has been entered.
Status of Claims
Claim(s) 21-24, 27-29, 31-32, 34-37, and 40-42 is/are pending of which Claim(s) 21 and 40 is/are presented in independent form.
All references relied up on and not cited in the current Form 892 may be found in previous 892's or IDS'.
Double Patenting
Examiner notes that the previous terminal disclaimer filed April 6, 2026 included the wrong patent number (10669683) which was then subsequently approved. This was due to the previous examiner stating the number wrong in prior double patenting rejections. However, the correct patent number should be 10,660,683. A corrected double patenting rejection
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 21-24, 31, 32 and 34-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 10,660,683.
Regarding claims 21-24 and 34-37, although the claims at issue are not identical, they are not patentably distinct from each other because the claims 1-5 of the ‘683 patent anticipate the claims 21-25 and 34-37 of the present application. It is apparent that the present application claims 21-25 and 34-37 differ from the ‘683 patent claims 1-5 in that the ‘683 patent claims 1-5 are more specific. The patent claims and the present application claims are not patentably distinct from one another because the more specific patent claims anticipate the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding claims 31 and 32, the ‘683 patent claims do not recite “configuring the first tube includes forming the first tube of a rigid material” and “configuring the second tube includes forming the second tube of a rigid material.” However, it is old and well known in the relevant art to provide a double-tube configured container that has first and second tubes which are formed from rigid material such as plastic or glass. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the ‘683 patent claims by having incorporated “configuring the first tube includes forming the first tube of a rigid material” and “configuring the second tube includes forming the second tube of a rigid material” in order to provide a sturdy container which will protect the K-wire and cap, and in order to make use of old and well known materials for making the first and second tubes.
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.
Claims 40-42 are 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 40 recites the limitation "the flexible strip" in line 3. There is insufficient antecedent basis for this limitation in the claim. Examiner suggests moving the “wherein configuring the flexible strip…..the first tube” to after “configuring a flexible strip…..the first tube” in line 7.
Dependent claims are rejected for depending from rejected claims.
Claim Objections
Claim 42 is objected to because of the following informalities: the dependency should be changed to 41 instead of 40 to improve clarity and avoid 112 issues. “wherein facilitating” in Claim 42 is clearer being dependent from Claim 41 which introduces “includes facilitating”. Appropriate correction is required.
Claim Status & Prior Art
Upon resolving the issues above, the application will be in condition for allowance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA K KINSAUL whose telephone number is (571)270-1926. The examiner can normally be reached Monday-Friday 8:30am-5pm.
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, Jonathan Moffat can be reached at 571-272-4390. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANNA K KINSAUL/Supervisory Patent Examiner, Art Unit 3731
Prosecution Insights