,14,15 DETAILED ACTION
The following is a non-final office action is response to communications received on 07/22/2024. Claims 1-19 are currently pending and addressed below.
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 .
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.
Claim 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,083,018. The elements of the instant application are to be found in the Patent and therefore are anticipated. Although the conflicting claims are not identical, they are not patentably distinct from each other because the Patent and the instant application all recite the same basic structure with a permutation of similar elements throughout.
Regarding Claims 1-6, patent claims 1-6 respectively recite the same limitations.
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) 1-3, 7-10 & 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Davenport et al. (UA 9,763,806).
PNG
media_image1.png
492
769
media_image1.png
Greyscale
PNG
media_image2.png
466
885
media_image2.png
Greyscale
Regarding Claim 1, the examiner notes that the rim plate and acetabular shell are never positively claimed. Therefore, the structures and limitations directed to both the rim plate and the acetabular shell are given little weight. Applicant is reminded that, per MPEP 2114, apparatus claims must be structurally distinguishable from the prior art. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.
Davenport teaches an acetabular shell insertion tool (20) comprising:
an outer shaft (40) having an anti-rotation projection (78) fully capable of being shaped to be received by an anti-rotation recess having a predetermined shape disposed around a center hole of a rim plate configured to rest on an acetabular shell, wherein the anti-rotation projection has the predetermined shape (Figs 1-3) fully capable of preventing rotation of the outer shaft relative to the rim plate and the acetabular shell; and
an inner shaft (22) disposed in the outer shaft (Fig 2) and having a threaded (28) tip (26) fully capable of being threaded into internal threading of the center hole of the acetabular shell to lock the insertion tool to the acetabular shell,
wherein the rim plate is fully capable of comprising a threaded center hole fully capable of threadably receiving the threaded tip of the insertion tool.
Regarding Claim 2, Davenport teaches wherein the anti-rotation recess (of the non-positively claimed rim plate) is fully capable of including a round recess and a plurality of uniformly spaced cavities extending radially from a central axis of the center hole.
Regarding Claim 3, Davenport teaches wherein the anti-rotation recess (of the non-positively claimed rim plate) is fully capable of including a square-shaped recess.
Regarding Claim 7, Davenport teaches wherein: the rim plate (non-positively claimed) is fully capable of including a plurality of anti-rotation tabs; the acetabular shell (non-positively claimed) is fully capable of including a plurality of anti-rotation recesses that mate with corresponding anti-rotation tabs of the rim plate.
Regarding Claim 8, the examiner notes that the acetabular shell is never positively claimed. Therefore, the structures and limitations directed to both the rim plate and the acetabular shell are given little weight. Applicant is reminded that, per MPEP 2114, apparatus claims must be structurally distinguishable from the prior art. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.
Davenport teaches an acetabular shell insertion tool (20) comprising:
an outer shaft (40) having an anti-rotation projection (78) fully capable of being shaped to be received by an anti-rotation recess having a predetermined shape disposed around a center hole of an acetabular shell, wherein the anti-rotation projection has the predetermined shape (Figs 1-3) fully capable of preventing rotation of the outer shaft relative to the acetabular shell;
an inner shaft (22) disposed in the outer shaft (Fig 2) and comprising a threaded (28) tip (26) at a distal end and an impactor head (48) extending out of the outer shaft at a proximal end, wherein the threaded tip is fully capable of being threaded into internal threading of the center hole of the acetabular shell to lock the insertion tool to the acetabular shell,
wherein the inner shaft (22) is captured in the outer shaft (40) by a pin (shown) housed within an annular recess defined by two stops (shown) along the distal end of the inner shaft.
Regarding Claim 9, Davenport teaches wherein the anti-rotation recess (of the non-positively claimed acetabular shell) is fully capable of including a round recess and a plurality of uniformly spaced cavities extending radially from a central axis of the center hole.
Regarding Claim 10, Davenport teaches wherein the anti-rotation recess (of the non-positively claimed acetabular shell) is fully capable of including a square-shaped recess.
Regarding Claim 13, Davenport teaches wherein a distal end of the insertion tool (20) is fully capable of passing through a rim plate (not positively claimed), wherein the rim plate is fully capable of resting on an acetabular shell, and wherein the rim plate is fully capable of comprising a threaded center hole adapted to threadably receive the threaded tip of the inner shaft of the insertion tool.
Regarding Claim 14, Davenport teaches wherein the rim plate (not positively claimed) is fully capable of including a plurality of anti-rotation tabs, and the acetabular shell is fully capable of including a plurality of anti-rotation recesses that mate with corresponding anti-rotation tabs of the rim plate.
Regarding Claim 15, Davenport teaches an acetabular shell insertion system (Figs 103) comprising:
an acetabular shell (72) including:
a center hole (shown) having an internal threading (Col 3: lines 6-7);
an anti-rotation recess (concave aspect of the shell) disposed around the center hole and having a predetermined shape;
an insertion tool (20) including:
an outer shaft (40) having an anti-rotation projection (shown) shaped to be received by an anti-rotation recess having a predetermined shape disposed around a center hole of an acetabular shell, wherein the anti-rotation projection has the predetermined shape so as to prevent rotation of the outer shaft relative to the acetabular shell (as it is threaded);
an inner shaft (22) disposed in the outer shaft (Figs 1-3) and comprising a threaded tip (26/28) at a distal end and an impactor head (48) extending out of the outer shaft at a proximal end, wherein the threaded tip is adapted to be threaded into internal threading of the center hole of the acetabular shell (Figs 2-3) to lock the insertion tool to the acetabular shell,
wherein the inner shaft is captured in the outer shaft by a pin (shown) housed within an annular recess defined by two stops (shown) along the distal end of the inner shaft.
Claim(s) 1 & 4-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WITT et al. (US 2014/0228854).
PNG
media_image3.png
483
643
media_image3.png
Greyscale
PNG
media_image4.png
675
559
media_image4.png
Greyscale
Regarding Claim 1, the examiner notes that the rim plate and acetabular shell are never positively claimed. Therefore, the structures and limitations directed to both the rim plate and the acetabular shell are given little weight. Applicant is reminded that, per MPEP 2114, apparatus claims must be structurally distinguishable from the prior art. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.
Witt teaches an acetabular shell insertion tool (Fig 4) comprising:
an outer shaft (220) having an anti-rotation projection (222) fully capable of being shaped to be received by an anti-rotation recess having a predetermined shape disposed around a center hole of a rim plate configured to rest on an acetabular shell, wherein the anti-rotation projection has the predetermined shape (Fig 4) fully capable of preventing rotation of the outer shaft relative to the rim plate and the acetabular shell; and
an inner shaft (240) disposed in the outer shaft (Figs 4-6) and having a threaded (284) tip fully capable of being threaded into internal threading of the center hole of the acetabular shell to lock the insertion tool to the acetabular shell,
wherein the rim plate is fully capable of comprising a threaded center hole fully capable of threadably receiving the threaded tip of the insertion tool.
Regarding Claim 4, WITT teaches wherein the tool (Fig 4) further comprises a spring (226) disposed between the outer shaft and the inner shaft (Figs 5-6) to provide a bias to urge the inner shaft proximally away from the center hole of the acetabular shell.
Regarding Claim 5, WITT teaches wherein: the outer shaft (220) includes a stop (shown) disposed around the inner shaft; the inner shaft includes an annular stop (shown) disposed inside the outer shaft, the outer shaft stop and the annular stop defining a channel within which the spring is disposed (Fig 5).
Regarding Claim 6, WITT teaches wherein the inner shaft includes an impaction head (246) at its proximal end.
Allowable Subject Matter
Claims 11-12 & 16-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN AINSLEY DUKERT whose telephone number is (571)270-3258. The examiner can normally be reached Mon-Fri 6am-4pm.
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, Melanie Tyson can be reached at (571)272-9062. 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.
/BRIAN A DUKERT/Primary Examiner, Art Unit 3774
Prosecution Insights