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.
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Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,154,340. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present application and granted patent disclose a bone plate that comprises a body having a length defining a central longitudinal axis and a width defining an extent of the bone plate transverse to the central longitudinal axis, and wherein the body includes a top surface and a bone facing surface opposite the top surface, the bone facing surface including a first surface. The plate includes a first fixation hole extending through the body from the top surface to the bone facing surface, and a pad extending out a distance from the first surface at a location on the bone facing surface adjacent the first fixation hole.
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.
Claims 1-11 and 13-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2010/0069973 to Castaneda et al.
As to Claim 1, Castaneda discloses a bone plate (10, Fig. 1). The bone plate comprises a body (12) having a length (seen in Fig. 1) defining a central longitudinal axis (A, [0044]) and a width (W, Fig. 1) defining an extent of the bone plate transverse to the central longitudinal axis (Fig. 1), and wherein the body includes a top surface (opposite 28, Fig. 2) and a bone facing surface (28, [0044]) opposite the top surface (seen in Fig. 2), the bone facing surface including a first surface (26, Fig. 2, [0044]), a first fixation hole (18a, 18b) extending through the body from the top surface to the bone facing surface (Figs. 1-3, [0044]), and a pad (14) extending out a distance from the first surface (26, Fig. 2) at a location on the bone facing surface (28) adjacent the first fixation hole (Figs. 1 and 2, [0044-0045]).
As to Claim 2, Castaneda discloses a bone plate wherein the width of the body is greater at a location along the central longitudinal axis having the first fixation hole (at 14, Fig. 1) compared to the width of the body at a location remote from the first fixation hole (at 16, Fig. 1).
As to Claim 3, Castaneda discloses a bone plate wherein the location on the bone facing surface adjacent the first fixation hole (at 14) is defined between a perimeter of the first fixation hole and a width of the body (Fig. 1, [0044]).
As to Claim 4, Castaneda discloses a bone plate further comprising an attachment member (30) at least partially within the first fixation hole (18a, Fig. 3, [0045]).
As to Claim 5, Castaneda discloses a bone plate further comprising an attachment member (first member 30) at least partially within the first fixation hole (18a, Fig.3, [0045]) and a second attachment member (second member 30) at least partially within a second fixation hole (18b, Fig. 3, [0045]).
As to Claim 6, Castaneda discloses a bone plate further comprising a second fixation hole (18a, 18b) spaced from the first fixation hole along the central longitudinal axis (Fig. 1), the second fixation hole being separated from the first fixation hole by a region (16) configured to concentrate bending stresses [0044, 0046], and a pad (14) extending out a distance from the first surface at a location on the bone facing surface adjacent the second fixation hole (Fig. 2, [0044-0045]).
As to Claim 7, Castaneda discloses a bone plate wherein the width of the body increases at a location along the central longitudinal axis (A) having the second fixation hole (18b, width at 18b seen in Fig. 1).
As to Claim 8, Castaneda discloses a bone plate further comprising a channel (between opposing pad sections 14, along longitudinal axis A, Fig. 1) on the bone facing surface (28) extending along at least a portion of the central longitudinal axis (A) adjacent the second fixation hole (18b), and wherein the channel adjacent the second fixation hole (18b) is aligned along the central longitudinal axis (A) with a channel on the bone facing surface adjacent the first fixation hole (18a, Fig. 2, [0044]).
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As to Claim 9, Castaneda discloses a bone plate further comprising a third fixation hole (additional holes 18a, 18b, [0044], and Fig. 1) spaced from the second fixation hole along the central longitudinal axis (A), and a bridge (16) extending along the central longitudinal axis between the second fixation hole and the third fixation hole (Fig. 1, [0044]).
As to Claim 10, Castaneda discloses a bone plate wherein the pad (14) is adjacent a region (16) configured to concentrate bending stresses [0044].
As to Claim 11, Castaneda discloses a method of fixating a bone plate [0009]. The method comprises positioning a bone facing surface (28, [0044]) of the bone plate (10, Fig. 1, [0044]) in contact with a bone [0044], contacting the bone with a pad (14) that extends out a distance from a first surface (26, Fig. 2) of the bone facing surface at a location on the bone facing surface adjacent a first fixation hole (18a, Fig.3, [0045]), positioning a bridge (16) of the bone plate across a target area [0007, 0043], and inserting a first fastener (described in [0044], e.g. 620, Fig. 29) through the first fixation hole (18a) and into the bone [0044].
As to Claim 13, Castaneda discloses a method wherein positioning the bridge (16) of the bone plate across the target area comprises positioning the bridge across a bone fracture location [0045, 0047].
As to Claim 14, Castaneda discloses a method wherein positioning the bridge (16) of the bone plate across the target area comprises positioning the bridge across a bone misalignment location [0045].
As to Claim 15, Castaneda discloses a method wherein positioning the bridge (16) of the bone plate across the target area comprises positioning a portion of the bone plate having a width (at 16, Fig. 1) less than a width of a portion of the bone plate adjacent the first fixation hole (at 14, Fig. 1) across the target area [0044-0045].
As to Claim 16, Castaneda discloses a method further comprising contacting the bone with a pad (14) that extends out a distance from the first surface (26, Fig. 2) at a location on the bone facing surface (28) adjacent a second fixation hole (18b) spaced from the first fixation hole (18a, Fig. 1), and inserting a second fastener (e.g. 640, Fig. 31) through the second fixation hole and into the bone [0044].
As to Claim 17, Castaneda discloses a method further comprising contacting the bone with a first pad (14) extending out a distance from the first surface at a location on the bridge (adjacent 18a, Fig. 1).
As to Claim 18, Castaneda discloses a method further comprising contacting the bone with a second pad (second region 14) extending out a distance from the first surface at a location on the bridge spaced from the first pad (adjacent 18b, Fig. 1).
As to Claim 19, Castaneda discloses a method further comprising bending the bone plate such that the pad adjacent the first fixation hole contacts the bone (bending of plate described in [0045]).
As to Claim 20, Castaneda discloses a method further comprising configuring an attachment member (30) at least partially within the first fixation hole (18a, [0045]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2010/0069973 to Castaneda et al. in view of U.S. Patent No. 7,785,355 to Mohr et al.
As to Claim 12, Castaneda discloses the claimed invention except for wherein the bone plate has a helical curvature with a bend along a central longitudinal axis and a twist about the central longitudinal axis, positioning the bone facing surface of the bone plate comprises: positioning a bone facing surface of a distal region of the bone plate on a first surface of a first bone portion such that the distal region is positioned in a first plane, positioning a bone facing surface of a proximal region of the bone plate on a second surface of a second bone portion such that the proximal region is positioned in a second plane offset from the first plane both along and about the central longitudinal axis of the bone plate, and inserting the first fastener through the first fixation hole comprises inserting the first fastener through the first fixation hole in the distal region and further inserting a second fastener through a second fixation hole in the proximal region.
Mohr discloses a method of fixating a bone plate (150) wherein the bone plate (150) has a helical curvature with a bend along a central longitudinal axis (about 28) and a twist about the central longitudinal axis (formed by rotation seen as 170 and 172, Fig. 10, Col. 11, Lines 11-23), positioning the bone facing surface (analogous to surface facing 26, Fig. 1, Col. 3, Lines 40-61)) of the bone plate comprises positioning a bone facing surface of a distal region (near 172, Fig. 10) of the bone plate on a first surface of a first bone portion such that the distal region is positioned in a first plane (Col. 11, Lines 11-23, Col. 11 Lines 50-67 – Col. 12, Lines 1-9), positioning a bone facing surface of a proximal region (near 170, Fig. 10) of the bone plate on a second surface of a second bone portion such that the proximal region is positioned in a second plane offset from the first plane both along and about the central longitudinal axis of the bone plate (Col. 11, Lines 11-23, Col. 11 Lines 50-67 – Col. 12, Lines 1-9), and inserting the first fastener (34) through the first fixation hole (36) comprises inserting the first fastener (34) through the first fixation hole (36) in the distal region and further inserting a second fastener (34) through a second fixation hole (36) in the proximal region (Col. 3, Lines 56-61, Col. 10, Lines 26-45) in order to allow for the pate to be contoured along a curvature of the target bone (Col. 11 Lines 50-67 – Col. 12, Lines 1-9).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of fixating a bone plate of Castaneda with the helical curvature modification of Mohr in order to allow for the pate to be contoured along a curvature of the target bone.
Conclusion
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/CHRISTOPHER J BECCIA/Primary Examiner, Art Unit 3775
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