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
Newly submitted claims 21-27 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Applicant originally elected the method claims and not the apparatus claims.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-27 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Drawings
The drawings are objected to because:
In Fig. 5A, the fifth hole form the bottom labeled “34” should be changed to “44” in order to match the rest of the specification/drawings.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 32 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 30. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claim 4 is 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 4 requires at least one of the middle section screw holes to be oval. However, the specification fails to teach this limitation. The middle section screw holes 34 are only circular, while holes 44 and 56 are oblong/oval (Figs. 5A-5D; paragraph [0052]).
Claim Rejections - 35 USC § 102
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) 28-33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gonzalez-Hernandez (US 2014/0172020; “Hernandez”).
Claim 28, Hernandez discloses a method for affixing a fracture plate to a bone (abstract; Fig. 5), comprising: providing a fracture plate (Fig. 4) comprising a proximal plate portion (82), a distal plate portion (88), and an intermediate plate portion (90) forming an anatomical bend between the proximal plate portion and the distal plate portion (Fig. 4); positioning the fracture plate on the bone such that the anatomical bend extends about a portion of the bone between the proximal plate portion and the distal plate portion (Fig. 5); inserting at least one distal fastener (Fig. 5; 194, 196, etc.; paragraphs [0042]-[0051]) through the distal plate portion into a shaft portion of the bone (Fig. 5; paragraphs [0042]-[0051]); and inserting at least one proximal fastener (Fig. 5; 140; paragraphs [0042]-[0051]) through the proximal plate portion into a proximal portion of the bone (Fig. 5; paragraphs [0042]-[0051]); wherein the positioning of the anatomical bend of the fracture plate offsets the proximal plate portion from the distal plate portion avoiding an anatomical feature connected to the bone (Fig. 5).
Claim 29, Hernandez discloses the method of claim 28, wherein the anatomical feature comprises a muscle insertion site (Fig. 5; paragraphs [0042]-[0051], while Hernandez does not directly state this feature, the drawings clearly show that the shape of the plate and how it connects are nearly identical to the current invention, so the same anatomical features will be attached to and avoided).
Claim 30, Hernandez discloses the method of claim 28, wherein the anatomical bend extends anteriorly from the proximal plate portion to the distal plate portion (Fig. 5).
Claim 31,Hernandez discloses the method of claim 28, wherein the proximal portion of the bone comprises a humeral head and the anatomical bend extends between the proximal portion of the bone and the shaft portion of the bone avoiding the deltoid tuberosity (Fig. 5; paragraphs [0023]-[0051]).
Claim 32, Hernandez discloses the method of claim 28, wherein the anatomical bend extends anteriorly from the proximal plate portion to the distal plate portion (Fig. 5).
Claim 33, Hernandez discloses the method of claim 28, further comprising inserting an intermediate fastener (Fig. 5; paragraphs [0042]-[0051]) through the intermediate plate portion avoiding a muscle insertion site (Fig. 5; paragraphs [0042]-[0051]).
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 1-4, 11, 14, 17, and 28-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10238438 in view of Gonzalez-Hernandez (US 2014/0172020; “Hernandez”).
The patent has claims geared towards the same embodiment. Any missing features from the patent claims are taught by Hernandez as noted above.
Claims 1-4, 11, 14, 17, and 28-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10966766 in view of Gonzalez-Hernandez (US 2014/0172020; “Hernandez”).
The patent has claims geared towards the same embodiment. Any missing features from the patent claims are taught by Hernandez as noted above.
Claims 1-4, 11, 14, 17, and 28-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12023077 in view of Gonzalez-Hernandez (US 2014/0172020; “Hernandez”).
The patent has claims geared towards the same embodiment. Any missing features from the patent claims are taught by Hernandez as noted above.
Response to Arguments
Applicant’s argument regarding the amendment of claim 1 is persuasive. Arguments to the new claims are addressed in the action above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Zade Coley whose telephone number is (571)270-1931. The examiner can normally be reached M-F (9-5) PT.
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, Kevin Truong can be reached at (571)272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Zade Coley/Primary Examiner, Art Unit 3775
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