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 .
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 21-23, 25-27, 29, 31-36, 39-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-47 of U.S. Patent No. 9,186,253 hereafter (‘253). For example current claim 21 recites:
“21.(New) A mosaic cartilage composition comprising a cartilage sheet and a bone
substrate, wherein the cartilage sheet further comprises a plurality of interconnected cartilage tiles that are separated by channels formed in the cartilage sheet.”
Pat. 253 claims 1 and 4 recite:
“1. A mosaic cartilage composition comprising: a cartilage sheet comprising a plurality of interconnected cartilage tiles that are separated by channels formed in the cartilage sheet, each channel having a respective depth that is less than the maximum thickness of the cartilage sheet; and a biocompatible carrier.”
“4. The mosaic cartilage composition of claim 1, wherein at least a portion of the cartilage sheet is combined with demineralized bone.”
It is obvious to one having ordinary skill in the art that the limitations of current claim 21 are recited with in pat. ‘253 claims 1 and 4 and claim 1 of the patent further recites more limitations.
Regarding claim 22, see pat. ‘253 claims 1 and 4 recite demineralized bone which is broad and may encompass cortical bone substrate, demineralized cortical bone substrate, cancellous bone substrate, demineralized cancellous bone substrate, or any combination thereof.
Regarding claim 23, see pat. ‘253 claims 1 and 4.
Regarding claim 25, see pat. ‘253 claims 1 and 25.
Regarding claim 26, see pat. ‘253 claims 1 and 26.
Regarding claim 27, see pat. ‘253 claims 1 and 2.
Regarding claim 29, see pat. ‘253 claims 1 and 22.
Regarding claim 31, see pat. ‘253 claims 1 and 5.
Regarding claim 32 , see pat. ‘253 claim 1.
Regarding claim 33, see pat. ‘253 claims 1 and 46.
Regarding claim 34, see pat. ‘253 claims 1 and 3.
Regarding claim 35, see pat. ‘253 claims 1 and 19.
Regarding claim 36, see pat. ‘253 claims 6 and 14.
Regarding claim 39, see pat. ‘253 claim 16.
Regarding claim 40, see pat. ‘253 claims 1, 13 and 18.
Claims 22 and 37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-47 of U.S. Patent No. 9,186,253 hereafter (‘253) in view of Shi 2010/0124776.
Claim 21 has been disclosed supra however does not recite the use of cortical bone as recited in claims 22 and 37. Shi teaches that cortical bone for implantable substrates [0112; 0122]. It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the patent ‘253 and incorporate the use of cortical bone substrate, demineralized cortical bone substrate, cancellous bone substrate, demineralized cancellous bone substrate in order to assist with regeneration of surrounding tissues upon implantation.
Claims 24 and 38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-47 of U.S. Patent No. 9,186,253 hereafter (‘253) in view of Kinnane et al. 2010/0129415 (hereafter ‘415).
Claims 21 and 36 have been disclosed however do not recite the mosaic cartilage composition is combined with the demineralized bone matrix at a ratio from about 4:1 to about 1:1 of demineralized bone matrix mosaic cartilage. ‘415 teaches implantable bone derived material such as DBM or partially demineralized bone matrix that may have a ratio of (1:1 to 1:200 see [0079]. It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the patent ‘253 because pat. claim 4 does not limit the about of demineralized bone that may be utilized in the matrix.
Claims 21, 23, 25-28, 31-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-43 of U.S. Patent No. 9,700,415 (‘415). For example current claim 21 recites:
“21.(New) A mosaic cartilage composition comprising a cartilage sheet and a bone
substrate, wherein the cartilage sheet further comprises a plurality of interconnected cartilage tiles that are separated by channels formed in the cartilage sheet.”
It is obvious to one having skill in the art that pat. ‘415 claims the limitations in a varied manner.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Suzette Gherbi whose telephone number is (571)272-
4751. The examiner can normally be reached on Monday-Friday 7:00am-3:00pm. 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:/Avww.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Melanie Tyson can be reached on 571-272-9062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUZETTE J GHERBI/Primary Examiner, Art Unit 3774 August 4, 2026
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