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 Objections
This office action is responsive to the amendment filed on 08/10/2026. As directed by the amendment: claims 3, 10, 13, 14 and 22 have been amended, no claims have been cancelled, and no new claims have been added. Thus, claims 1-22 are presently pending in this application, and currently examined in the Office Action.
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 1-22 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.
Regarding claims 1, 6 and 7, claim 1 sets forth the parameter of “a connecting piece between the legs is formed in an articulated matter and interacts elastically with the legs so that a frame is formed”, on lines 9-10, and further sets forth the parameter of “the legs are designed in a skeletal construction with multiple adjacent disk segments separated by slots, and arranged on the frame via webs”, on the last 3 lines of the claim; however based on these parameters, it is found to be confusing what actual structure is considered “the frame” and “the legs”. Specifically, it is not clear if “the frame” encompass/includes just the connecting piece and the webs, or if it also includes the legs; and is the structure of “the legs” just the “multiple adjacent disk segments” or does it also include the connecting pieces and/or the webs and/or the bridge as well. This issue with what structure “the frame” and “the legs” comprise in claim 1, further causes confusion with other claims such as claims 6 and 7, for example. Seemingly, according to claim 1 “the legs” comprise the multiple adjacent disk segments, and “the frame” comprises connecting piece and the webs/bridge, since it is stated the legs have multiple disk segments arranged on the frame with webs; however, then in claim 7 it states the “the inner walls on the legs and the disk segments are solid”, indicating that “the legs” are a separate part/portion from “the disk segments”. Moreover, the structure of “the legs” it is further found to be unclear due to the term “skeletal construction”, specifically it is not clear how this structurally limits/defines the structure of “the legs”; which, according to claim 1, seem to be multiple disk segments separated by slots. The term “skeletal construction” merely seems to add confusion to the claim language, without actually imparting any actual structure limitation on the final structure of the device/legs. For these reasons, one having ordinary skill in the art would not reasonably be apprised of the scope of the invention.
Regarding claim 10, which sets forth, on the last line, the parameter of “the fastening hole has a solid perforated sheath” (emphasis added); however, this parameter is found to be confusing since it is not clear how something can be solid and perforated. In the response dated 08/10/2026, Applicant argues that “throughout the specification, “solid” denotes a non-porous material (e.g., “solid, i.e. non-porous, edges 50” at paragraph 66), so a “solid perforated sheath” is a non-porous, rigid lining that lines the fastening-hole perforation for stiffening”. However, Examiner still finds the term “solid perforated” confusing, along with part of Applicant’s explanation. Firstly, the term “solid” is used multiple times in the specification without indicating/denoting that it’s a non-porous material, and specifically in the case of the term “solid perforated” there is no indication that solid denotes non-porous. Furthermore, in Applicant’s explanation of the term “solid perforated sheath” it is stated that the sheath would be “a non-porous, rigid lining that lines the fastening-hole perforation for stiffening” (emphasis added), however this further confuses what exactly the structure of the “solid perforated sheath” is; specifically, is/are the perforation(s) in/part of the sheath, as it would seem based on the term “solid perforated sheath”, or is/are the perforation(s) in/part of the fastening-hole, as it seems Applicant is stating in the response dated 08/10/2026. Thus, one having ordinary skill in the art would not reasonably be apprised of the scope of the invention, thereby rendering the claim indefinite.
Double Patenting
Claims 1, 2 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/684,187 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims disclose a disk-shaped augment for filling bone defects comprising first and second sides/proximal and distal sides; an outer sheath on lateral sides, wherein the outer sheath is designed as a porous structure which promotes bone/bony ingrowth; and an inner wall for a through-opening running from the first side to the second side for an anchoring keel of an endoprosthesis arranged on the second side, wherein the augment is C-shaped with two legs flanking the through-opening, wherein a connecting piece between the legs is formed in an articulated manner and interacts elastically with the legs so that a frame is formed, and when the legs are compressed an outwardly directed restoring force is generated, wherein the legs are designed in a skeletal construction with multiple adjacent disk segments separated by slots, and arranged on the frame via webs, and the frame is an outer edge which encloses at least half of the legs/disk segments and on an outside of which the outer sheath is arranged.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 08/10/2026, regarding the Double Patenting rejection have been fully considered but they are not persuasive. Applicant argues that since the Double Patenting rejection is provisional, “the claims of Application No. 18/684,187 have not been patented. A terminal disclaimer is therefore premature, and none is needed to place Claims 1, 2, 8 and 9 in condition for allowance”. Examiner respectfully disagrees with Applicant’s assertion. MPEP 1504.06 states “A provisional double patenting rejection will be converted into a double patenting rejection when the first application, which is the basis for the rejection, publishes as an application publication or issues as a patent” (emphasis added); and Application No. 18/684,187 has been published as US PG Pub. 2025/0114207. Furthermore, MPEP 804 section B.1. states “A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional” (emphasis added). Thus, a terminal disclaimer would not be premature, and would be needed to place claims 1, 2 and 9 in condition for allowance.
Applicant further argues that claim 1, of the current application at hand, does not recite many of the features set forth in claim 8 of Application No. 18/684,187, such as the disk segments are “arranged on the frame via flexile webs, wherein the frame is an outer edge which encloses at least half of the legs and on an outside of which the outer sheath is arranged” and “the outer sheath is designed as a porous structure which promotes bone ingrowth”. Again, Examiner respectfully disagrees with Applicant’s assertion. In the Double Patenting rejection, claim 8 (which includes all the limitations set forth in independent claim 1 from which it depends) of Application No. 18/684,187 is used to teach all the structural parameters set forth in claims 1, 2 and 9 of the current application at hand; thereby making claims 1, 2 and 9 unpatentable, since claim 8 of Application No. 18/684,187teaches all the structural limitations set forth in the above mentioned claims of the current application at hand. Furthermore, the limitation of the disk segments being arranged on the frame via flexile webs is set forth on the last line of claim 1, of the current application at hand, the limitation of the frame being an outer edge which encloses at least half of the legs and on an outside of which the outer sheath is arranged is set forth in claim 9, of the current application at hand, and the limitation of the outer sheath being designed as a porous structure which promotes bone ingrowth is set forth in claim 2, of the current application at hand. Moreover, even if claim 8 of Application No. 18/684,187 discloses additional structure which wasn’t set forth in claims 1, 2 and 9 of the current application at hand, that does not take away from the fact that claim 8 still teaches/discloses all the structural limitations set forth in claims 1, 2 and 9, thereby rendering them unpatentable. Thus, the Double Patenting rejection stands and would be needed in order to place claims 1, 2 and 9 in condition for allowance.
Conclusion
THIS ACTION IS MADE FINAL. 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 DINAH BARIA whose telephone number is (571)270-1973. The examiner can normally be reached Monday - Friday 10am - 5pm.
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/DINAH BARIA/Primary Examiner, Art Unit 3774
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