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 .
Election/Restrictions
Applicant’s election without traverse of Species 6, shown in Figs. 81-89 in the reply filed on 11/18/2025 is acknowledged. Claims 1-20 are pending.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Claim 9 includes the recitation of a first and second aperture included in the second support that define a translational axis within the second support that is parallel to a longitudinal axis of the expandable implant, wherein the first coupling feature of the first control member is configured to extend into the first aperture and translate within the first aperture in a single plane and along the translational axis as the implant expands, and wherein a second coupling feature of a second control member is configured to extend into the first aperture and translate within the second aperture in the single plane and along the translational axis as the implant expands. The recited structure does not read on the elected embodiment shown in Figs. 81-89. It is noted that the only identified aperture of the elected species is element 1043, the control aperture of the first control member 1042, and the control aperture 1045 of the second control member 1044. Furthermore, the specification lacks any detailed description of a second coupling feature of a second control member that is configured to extend into a first aperture and translate within a second aperture in a single plane and along a translational axis as the implant expands.
Claim 15 includes the recitation of a second support movable relative to a first support along a first direction, a first control member configured to slidingly interface with a first groove of the first support along the translational axis a distance more than a point in a second direction; and a second control member configured to slidingly interface a second groove in the first support along the translational axis a distance more than a point in a third direction, wherein the third direction is opposite the second direction and perpendicular to the first direction. The specification lacks any detailed description of the claimed directions or points. It is unclear how the elected species could possibly read on the claim.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 21-25 of U.S. Patent No. 12,042,395 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences between claims 1-20 of the application and claims 1-13 and 21-25 of the patent lies in the fact that the patent claims include the recitation of more elements and are thus more specific. Accordingly, the invention of claims 1-20 of the patent is in effect a “species” of the “generic” invention of claims 1-13 and 21-25 of the application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-20 of the application are anticipated by claims 1-13 and 21-25 of the patent, they are not patentably distinct from claims 1-20 of the patent.
Regarding claim 1, see claims 1 of the patent.
Regarding claim 2, see claim 2 of the patent.
Regarding claim 3, see claim 3 of the patent.
Regarding claim 4, see claim 4 of the patent.
Regarding claim 5, see claim 5 of the patent.
Regarding claim 6, see claim 6 of the patent.
Regarding claim 7, see claim 7 of the patent.
Regarding claim 8, see claim 8 of the patent.
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 5-8 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.
In claim 1, line 10, Applicant recites a coupling feature of the second support. The recited coupling feature interface with the control member. However, in claim 5, Applicant recites that “the second support comprises a first coupling feature and a second coupling feature.” It is unclear if Applicant intends to recites a second and third coupling feature of the second support, or if Applicant is referring back to the recited coupling feature of claim 1.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Levy et al. (U.S. 9,463,099 B2).
Concerning claim 1, Levy et al. discloses an expandable implant comprising: a first support (see below) configured to engage a first portion of bone; a second support (see below) coupled to the first support and configured to engage a second portion of bone; a first pivoting support (see below) rotatably movable relative to the first support; a second pivoting support (see below) coupled to the first pivoting support and rotatably movable relative to the second support; a control assembly comprising: a control member (20) configured to engage the first support and the second support
and interface with a coupling feature (22) of the second support; and a control shaft (24 – see col. 4, lines 64-65) configured to be received by the control member (20), wherein manipulation of the control shaft causes relative movement between the first support and the second support (see col. 5, lines 1-6).
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[AltContent: connector][AltContent: textbox (2nd support)][AltContent: connector][AltContent: textbox (Second pivoting support)][AltContent: connector][AltContent: textbox (1st pivoting support)][AltContent: connector][AltContent: textbox (1st support)]
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Concerning claim 2, Levy et al. discloses an expandable implant comprising: a first support (see below) configured to engage a first portion of bone; a second support (see below) coupled to the first support and configured to engage a second portion of bone; a first pivoting support (see below) rotatably movable relative to the first support; a second pivoting support (see below) coupled to the first pivoting support and rotatably movable relative to the second support; a control assembly comprising: a control member (168, 170 and 172) configured to engage the first support and the second support and interface with a coupling feature (see below) of the second support; and a control shaft (164) configured to be received by the control member (20), wherein manipulation of the control shaft causes relative movement between the first support and the second support (see col. 5, lines 34-48), wherein the control shaft (164) is threadingly received by the control member (element 168 of the control member).
[AltContent: connector][AltContent: connector][AltContent: textbox (Coupling Feature)][AltContent: connector][AltContent: connector][AltContent: textbox (Control Member)][AltContent: connector][AltContent: connector][AltContent: connector][AltContent: connector][AltContent: textbox (2nd pivoting support)][AltContent: textbox (1st pivoting support)][AltContent: textbox (Second Support)][AltContent: textbox (1st Support)]
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Concerning claim 3, wherein the manipulation of the control shaft (24) causes the control member (20) to move towards a second control member (28), thereby causing the first support to move away from the second support.
Concerning claim 4, wherein the first support and the second support are movable relative to each other between a collapsed position and an expanded position (see col. 5, lines 34-48), wherein in the collapsed position (see Fig. 1E), the control member (see Fig. 1E below) defines a proximal end of the implant and a second control member (see Fig. 1E below) is positioned proximal at least a portion of the first support.
[AltContent: connector][AltContent: textbox (Portion of the 1st Support)][AltContent: connector][AltContent: textbox (2nd Control Member)][AltContent: connector][AltContent: connector][AltContent: connector][AltContent: textbox (Coupling Feature)][AltContent: textbox (Control Member)][AltContent: connector][AltContent: connector][AltContent: connector][AltContent: connector][AltContent: textbox (2nd pivoting support)][AltContent: textbox (1st pivoting support)][AltContent: textbox (Second Support)][AltContent: textbox (1st Support)]
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Concerning claim 5, as best understood, wherein the second support comprises a first coupling feature (22) and a second coupling feature (see Fig. 1D below), wherein the first coupling feature is angled towards the second coupling feature.
[AltContent: arrow][AltContent: textbox (Second Coupling Feature)]
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited art is directed to implants that expand and/or articulate after implantation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN HAMMOND whose telephone number is (571)270-3819. The examiner can normally be reached Monday-Friday 8 - 4 PM .
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eduardo C. Robert, 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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/ELLEN C HAMMOND/ Primary Examiner, Art Unit 3773