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 .
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 26 and 31 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.
Claims 26 and 31 require all the auxiliary cutting flutes to be in the distal region of the bur. However, claims 21 (lines 6-7) and claim 29 (lines 6-7) state that at least one of the auxiliary cutting flutes is located in the proximal region. Therefore, the dependent claims are contradictory to the parent claims.
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 21-25 and 27-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,064,126. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader than the parent claims (see the table below, where the underlined portions of the patent claim are the extra parts that are not in the current claim).
21. A surgical bur, comprising: a plurality of primary cutting flutes; and a plurality of auxiliary cutting flutes, wherein at least one auxiliary cutting flute of the plurality of auxiliary cutting flutes is disposed at a clock angle relative to one flute of the plurality of primary cutting flutes, wherein at least one auxiliary cutting flute of the plurality of auxiliary cutting flutes is discretely located on a proximal region of the surgical bur and at least one other auxiliary cutting flute of the plurality of auxiliary cutting flutes is discretely located on a distal region of the surgical bur, the proximal and distal regions of the surgical bur separated by a planar portion defined where a diameter of the surgical bur is at a maximum, and wherein each of the auxiliary cutting flutes of the plurality of auxiliary cutting flutes remains spaced relative to the planar portion in a respective region.
1. A surgical bur for use in cutting bone, comprising: a plurality of primary cutting flutes including (i) first clearance surfaces and (ii) first rake surfaces having first bone cutting edges; and a plurality of auxiliary cutting flutes including (i) second clearance surfaces and (ii) second rake surfaces having second bone cutting edges, wherein at least one of the plurality of auxiliary cutting flutes has a selected clock angle relative to one of the plurality of primary cutting flutes of at least 35°, and wherein at least a first auxiliary cutting flute of the plurality of cutting flutes is discretely located on a proximal region of the surgical bur and at least a second auxiliary cutting flute of the plurality of cutting flutes is discretely located on a distal region of the surgical bur, the proximal and distal regions of the surgical bur separated by a planar portion defined where a diameter of the surgical bur is at a maximum, and wherein each of the auxiliary cutting flutes of the plurality of auxiliary cutting flutes remains spaced relative to the planar portion in a respective region.
29. A surgical bur for use in cutting bone, comprising: a plurality of primary cutting flutes; and a plurality of auxiliary cutting flutes, wherein each auxiliary cutting flute of the plurality of auxiliary cutting flutes has a clock angle such that each auxiliary cutting flute of the plurality of auxiliary cutting flutes is centered between adjacent primary cutting flutes, and wherein at least one auxiliary cutting flute of the plurality of auxiliary cutting flutes is discretely located on a proximal region of the surgical bur and at least one other auxiliary cutting flute of the plurality of auxiliary cutting flutes is discretely located on a distal region of the surgical bur, the proximal and distal regions of the surgical bur separated by a planar portion defined where a diameter of the surgical bur is at a maximum, and wherein each of the auxiliary cutting flutes of the plurality of auxiliary cutting flutes remains spaced relative to the planar portion in a respective region.
7. A surgical bur for use in cutting bone, comprising: a plurality of primary cutting flutes including first rake surfaces having first bone cutting edges; and a plurality of auxiliary cutting flutes including second rake surfaces having second bone cutting edges, wherein each auxiliary cutting flute of the plurality of auxiliary cutting flutes has a clock angle such that each auxiliary cutting flute of the plurality of auxiliary cutting flutes is centered between adjacent primary cutting flutes, and wherein at least a first auxiliary cutting flute of the plurality of cutting flutes is discretely located on a proximal region of the surgical bur and at least a second auxiliary cutting flute of the plurality of cutting flutes is discretely located on a distal region of the surgical bur, the proximal and distal regions of the surgical bur separated by a planar portion defined where a diameter of the surgical bur is at a maximum, and wherein each of the auxiliary cutting flutes of the plurality of auxiliary cutting flutes remains spaced relative to the planar portion in a respective region.
The other claims that are the same are as follows (current claim vs patent claim):
22 and 1; 23 and 2; 24 and 3; 25 and 4; 27 and 5; 28 and 6.
Non double patented claims rationale:
Claims 26 and 31 because they are not part of the patent claims and have the 112 issue.
Claim 30 requires an auxiliary flute to be “centered” between a primary flute, from claim 29, which is in patent claim 7, and then claim 30 has the transition feature which is in patent claims 4 and 11-16, which are on different extensions than claim 7.
Allowable Subject Matter
Claims 21-31 are allowable over the prior art. However, the 112 issue must be addressed for claims 26 and 31, as well as the double patenting issues listed above.
Claims 21 and 29 are allowable for the similar reasons listed in the parent case 17029437. They contain the amended portion of “wherein at least one auxiliary cutting flute of the plurality of auxiliary cutting flutes is discretely located on a proximal region of the surgical bur and at least one other auxiliary cutting flute of the plurality of auxiliary cutting flutes is discretely located on a distal region of the surgical bur, the proximal and distal regions of the surgical bur separated by a planar portion defined where a diameter of the surgical bur is at a maximum” and then just cleaned up some of the other limitations in the claim that were either functional statements or somewhat inherent features of the device which are shown as underlined above. The removal of those limitations didn’t significantly change the scope of the claim and didn’t result in the prior art reading on the current claims.
The amended portion helps get over Bruneau (US 6579298) based on the locations of the auxiliary cutting flutes relative to the primary cutting flutes and the surgical bur itself. Figs. 2A-2C were focused on to teach the bur with the different types of flutes on different portions of the bur. However, none of the Bruneau embodiments teach the claim limitations. Applicant’s Figs. 3 and 4 are where the claimed limitations can best be seen.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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.
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/Zade Coley/Primary Examiner, Art Unit 3775