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 .
Specification
The disclosure is objected to because of the following informalities: on paragraph [0001] the corresponding patent number for the parent application must be added.
Appropriate correction is required.
Election/Restrictions
Applicant’s election without traverse of Invention I (claims 1-14) in the reply filed on 11/24/25 is acknowledged.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/24/25.
Applicant’s election of Group a (delivery member) Species vi (Fig. 35-40) and Group b (suture anchor) Species ix (Fig. 35-40) in the reply filed on 11/24/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/24/25.
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 1-12 and 14 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 1 recites the limitation "the distal end of said motor shaft" in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "a suture anchor" in line 9. It is unclear if this is the same suture anchor as the one previously introduced in claim 1 or if it is a different suture anchor.
Claim 1 recites the limitation "a suture anchor" in line 13. It is unclear if this is the same suture anchor as the one previously introduced in claim 1 or if it is a different suture anchor.
Claim 4 recites the limitation "a plurality of electrical connectors" in line 6. It is unclear if this is the same plurality of electrical connectors as the one previously introduced in line 4-5 of claim 4 or if it is a different plurality of electrical connectors.
Claim 12 recites the limitation "a coil member" in line 2. It is unclear if this is the same coil member as the one previously introduced in claim 1 or if it is a different coil member.
Claim 14 recites the limitation "a suture anchor" in line 2. It is unclear if this is the same suture anchor as the one previously introduced in claim 1 or if it is a different suture anchor.
Claim 14 recites the limitation "a coil member" in line 2. It is unclear if this is the same coil member as the one previously introduced in claim 1 or if it is a different coil member.
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 1-12 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-10, and 14 of U.S. Patent No. 12,035,904. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the structural limitation recited in the claims of the instant application are also recited in the claims 1-4, 6-10, and 14 of U.S. Patent No. 12,035,904. The difference in the terminology used would be obvious to one of ordinary skill in the art.
Specifically, the claimed limitations of claim 1 are found in claim 1 of U.S. Patent No. 12,035,904. The claimed limitations of claims 2-4 are found in claims 1-3 of U.S. Patent No. 12,035,904, respectively. The claim limitations of claim 5 are found in the combination of claims 1 and 4 of U.S. Patent No. 12,035,904. The claimed limitations of claims 6-11 are found in claims 6, 4, and 7-10 of U.S. Patent No. 12,035,904, respectively. The claimed limitations of claims 12 and 14 are found in claims 1 and 13 of U.S. Patent No. 12,035,904, respectively.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art teaches a coil anchor delivered by a motor however the cited prior art does not appear to teach the micro motor at the distal end of the elongated shaft member with a rotatable motor shaft with a coupling assembly at the distal end that releasably engages a suture anchor in conjunction with the rest of the claimed limitations.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANNE DORNBUSCH whose telephone number is (571)270-3515. The examiner can normally be reached Monday-Wednesday 9 am-3 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at (571) 272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DIANNE DORNBUSCH/Primary Examiner, Art Unit 3771