DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is responsive to the amendments received after a Non-Final Rejection on 22 January 2026. Claims 1-20 are currently pending.
Claim Objections
Claim 1 is objected to because of the following informality:
In line 6, it appears that the phrase “the body” should read “the body portion” (see line 5 for antecedent basis).
Claim 11 is objected to because of the following informalities:
In line 5, it appears that the phrase “the first vertebral body” should read “a first vertebral body.”
In line 6, it appears that the phrase “the second vertebral body” should read “a second vertebral body.”
In line 8, it appears that the phrase “the body” should read “the body portion” (see line 7 for antecedent basis).
In line 16, it appears that the phrase “the body” should read “the body portion” (see line 7 for antecedent basis).
Appropriate correction is required.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,083,024 in view of Glerum et al. (U.S. Patent Application Publication 2012/0265309).
Regarding claims 1-10, claim 8 discloses the claimed invention except for wherein (as to the remainder of claim 1) the translation member is capable of being received in a central opening of the body portion, wherein (as to claim 2) the translation member has at least three expansion portions, wherein (as to claim 3) the at least three expansion portions are angled surfaces capable of engaging grooved portions of the first endplate and the second endplate, wherein (as to claim 4) a bridge portion connects the at least three expansion portions, wherein (as to claim 5) each angled surface is a different angle from each of the other angled surface, wherein (as to claim 6) the body portion includes a first end and a second end, and wherein the first end includes at least one aperture, wherein (as to claim 7) each aperture is capable of receiving a stabilization member, wherein (as to claim 8) the body portion includes an interference nut, wherein (as to claim 9) the interference nut is removable from the body portion, and wherein (as to claim 10) the interference nut is not removable from the body portion.
Glerum et al. disclose a vertebral insert (10) capable of being implanted between a first vertebral body (2) and a second vertebral body (3), comprising a first endplate (14) capable of engaging the first vertebral body; a second endplate (16) capable of engaging the second vertebral body; a body portion (12) disposed between the first endplate and the second endplate; a translation member (18) capable of being received in a central opening (i.e. opening defined by 12) of the body portion (see paragraph 0105); and an actuation member (20) capable of cooperating with the translation member to move at least one of the first endplate and the second endplate to increase a height of the vertebral insert (see paragraph 0109), wherein the translation member has at least three expansion portions (51, 52 and 54), wherein the at least three expansion portions are angled surfaces capable of engaging grooved portions of the first endplate and the second endplate (see paragraph 0104), wherein a bridge portion (56) connects the at least three expansion portions (see paragraph 0104), wherein each angled surface is a different angle from each of the other angled surface (see paragraph 0104), wherein the body portion includes a first end (24) and a second end (26), and wherein the first end includes at least one aperture (402 and 404), wherein each aperture is capable of receiving a stabilization member (422 and 424), wherein the body portion includes an interference nut (410), wherein the interference nut is removable from the body portion (see paragraph 0108), and wherein the interference nut is not removable from the body portion (see paragraph 0108) (see Figures 26-27, and paragraphs 0102-0109).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the invention of claim 8 with wherein the translation member is capable of being received in a central opening of the body portion, wherein the translation member has at least three expansion portions, wherein the at least three expansion portions are angled surfaces capable of engaging grooved portions of the first endplate and the second endplate, wherein a bridge portion connects the at least three expansion portions, wherein each angled surface is a different angle from each of the other angled surface, wherein the body portion includes a first end and a second end, and wherein the first end includes at least one aperture, wherein each aperture is capable of receiving a stabilization member, wherein the body portion includes an interference nut, wherein the interference nut is removable from the body portion, and wherein the interference nut is not removable from the body portion in view of Glerum et al. in order to provide a well-known, obvious configuration allowing for a more stream-lined insert profile prior to being installed to yield predictable results.
Regarding claims 11-20, claim 8 discloses the claimed method except for (as to the remainder of claim 11) inserting the vertebral insert between two vertebral bodies while the vertebral insert is in a collapsed configuration, wherein the translation member is capable of being received in a central opening of the body portion; and expanding the vertebral insert to an expanded configuration such that the height of the vertebra insert is increased, wherein (as to claim 12) the translation member has at least three expansion portions, wherein (as to claim 13) the at least three expansion portions are angled surfaces capable of engaging grooved portions of the first endplate and the second endplate, wherein (as to claim 14) a bridge portion connects the at least three expansion portions, wherein (as to claim 15) each angled surface is a different angle from each of the other angled surface, wherein (as to claim 16) the body portion includes a first end and a second end, and wherein the first end includes at least one aperture, wherein (as to claim 17) each aperture is capable of receiving a stabilization member, wherein (as to claim 18) the body portion includes an interference nut, wherein (as to claim 19) the interference nut is removable from the body portion, and wherein (as to claim 20) the interference nut is not removable from the body portion.
Glerum et al. disclose a method of installing an expandable vertebral insert (10), the method comprising inserting the vertebral insert between two vertebral bodies (2 and 3) while the vertebral insert is in a collapsed configuration (see paragraph 0066), wherein the vertebral insert includes a first endplate (14) capable of engaging a first vertebral body (2); a second endplate (16) capable of engaging a second vertebral body (3); a body portion (12) disposed between the first endplate and the second endplate; a translation member (18) capable of being received in a central opening (i.e. opening defined by 12) of the body portion (see paragraph 0105); and an actuation member (20) capable of cooperating with the translation member to move at least one of the first endplate and the second endplate to increase a height of the vertebral insert (see paragraph 0109); and expanding the vertebral insert to an expanded configuration such that the height of the vertebral insert is increased (see paragraph 0067), wherein the translation member has at least three expansion portions (51, 52 and 54), wherein the at least three expansion portions are angled surfaces capable of engaging grooved portions of the first endplate and the second endplate (see paragraph 0104), wherein a bridge portion (56) connects the at least three expansion portions (see paragraph 0104), wherein each angled surface is a different angle from each of the other angled surface (see paragraph 0104), wherein the body portion includes a first end (24) and a second end (26), and wherein the first end includes at least one aperture (402 and 404), wherein each aperture is capable of receiving a stabilization member (422 and 424), wherein the body portion includes an interference nut (410), wherein the interference nut is removable from the body portion (see paragraph 0108), and wherein the interference nut is not removable from the body portion (see paragraph 0108) (see Figures 26-27, and paragraphs 0066-0067 and 0102-0109).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the invention of claim 8 with inserting the vertebral insert between two vertebral bodies while the vertebral insert is in a collapsed configuration, wherein the translation member is capable of being received in a central opening of the body portion; and expanding the vertebral insert to an expanded configuration such that the height of the vertebra; insert is increased, wherein the translation member has at least three expansion portions, wherein the at least three expansion portions are angled surfaces capable of engaging grooved portions of the first endplate and the second endplate, wherein a bridge portion connects the at least three expansion portions, wherein each angled surface is a different angle from each of the other angled surface, wherein the body portion includes a first end and a second end, and wherein the first end includes at least one aperture, wherein each aperture is capable of receiving a stabilization member, wherein the body portion includes an interference nut, wherein the interference nut is removable from the body portion, and wherein the interference nut is not removable from the body portion in view of Glerum et al. in order to provide a well-known, obvious configuration allowing for a more stream-lined insert profile capable of being expanded once installed to yield predictable results
Response to Arguments
The applicant’s arguments with respect to claims 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 LARRY E WAGGLE, JR whose telephone number is (571)270-7110. The examiner can normally be reached TEAP: Monday - Friday (7:45am - 3:45pm).
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/LARRY E WAGGLE, JR/Primary Examiner, Art Unit 3775