DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1, 27, 29, 30, 38, 41, 43 and 44 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Lourdel et al., U.S. PG-Pub 2004/0097933 (IDS filed 1/14/26).
Regarding claim1, Lourdel et al. discloses a bone anchoring device comprising: a bone anchoring element (3) comprising a shank (16) for anchoring to bone and a head (15); a receiving part (4) for coupling a rod (10) to the bone anchoring element, the receiving part having a first end, a second end, and a central axis extending between the first and second ends, and comprising a rod receiving portion defining a U-shaped recess (7) for receiving the rod, the recess extending from the first end towards the second end to form two free legs (5 and 6), and a head receiving portion (via opening 11) at the second end for pivotably accommodating the head of the bone anchoring element; and a ring (21) assembled to the head receiving portion from the second end of the receiving part, the ring comprising an outer surface that faces away from the central axis when the ring is assembled to the head receiving portion and a thread (24) formed on at least part of the outer surface; wherein when the ring is assembled to the head receiving portion, the head is connectable to the head receiving portion from the second end of the receiving part, and the bone anchoring device is configured to assume a locking position where a compressive force (via 20) is exerted on the head to lock the head relative to the receiving part (Figs. 1-2).
Regarding claims 27, 29 and 30, Lourdel et al. discloses wherein the ring (21) comprises a closed ring that is configured to extend circumferentially entirely around the central axis; the thread (24) forms an engagement structure for engagement with a tool; and an axial position of the ring relative to the receiving part is adjusted to assume the locking position (moves axially towards the first end of the receiving part 4 as it is threaded into bore 11) (Figs. 1-2).
Regarding claim 38, Lourdel et al. discloses a bone anchoring device comprising: a bone anchoring a bone anchoring device comprising: a bone anchoring element (3) comprising a shank (16) for anchoring to bone and a head (15); a receiving part (4) for coupling a rod (10) to the bone anchoring element, the receiving part having a first end, a second end, and a central axis extending between the first and second ends, and comprising a rod receiving portion defining a U-shaped recess (7) for receiving the rod, the recess extending from the first end towards the second end to form two free legs (5 and 6), and a head receiving portion (via opening 11) at the second end for pivotably accommodating the head of the bone anchoring element; and a ring (21) configured to be assembled to the head receiving portion the ring comprising an outer surface that faces away from the central axis when the ring is assembled to the head receiving portion and a thread (24) formed on at least part of the outer surface; wherein when the ring is assembled to the head receiving portion, the head is connectable to the head receiving portion form the second end to a position where a portion of the head having a greatest diameter is positioned axially higher than at least part of the ring (largest diameter portion of head 15 sits axially higher than the inferior-most portion of ring 21 which cradles the bottom of head 15) where a compressive force is exerted on the head (via 20) to lock the head relative to the receiving part (Figs. 1-2).
Regarding claims 41, 43 and 44, Lourdel et al. discloses wherein the ring (21) comprises a closed ring that is configured to extend circumferentially entirely around the central axis; the thread (24) forms an engagement structure for engagement with a tool; and an axial position of the ring relative to the receiving part is adjusted to assume the locking position (moves axially towards the first end of the receiving part 4 as it is threaded into bore 11) (Figs. 1-2).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 and 25-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-10, 13, 20, and 22-25 of U.S. Patent No. 12,096,962 in view of Schlaepfer et al., U.S. PG-Pub 2009/0149887.
Regarding claims 1 and 25-30, claims 1, 3-10 and 13 of U.S. Patent No. 12,096,962 recite the claims invention except for wherein the ring is assembled to the head receiving portion from the second end of the receiving part; and wherein when the head is connected to the receiving part, the head is held in a seat, and wherein a surface of the seat for contacting the head is configured to be spaced apart from the ring.
Schlaepfer et al. discloses a bone anchoring element device having a bone anchoring element with a head (22) and a head (12), a receiving part (20), and a ring (32) assembled to a head receiving portion (44) from a second end of the receiving part; wherein when the head is connected to the receiving part, the head is held in a seat (50), wherein a surface of the seat (interior surface contacting head 22) is configured to be spaced apart from the ring (Figs. 11 and 12) in order to tightly clamp the bone anchoring element firmly within the receiving part (paragraph [0086]).
It would have been obvious to one having ordinary skill in the art before the invention was made to modify claims 1, 3-10 and 13 of U.S. Patent No. 12,096,962 such that the ring is assembled to the head receiving portion from the second end of the receiving part; and wherein when the head is connected to the receiving part, the head is held in a seat, and wherein a surface of the seat for contacting the head is configured to be spaced apart from the ring in view of Schlaepfer et al. to permit tightly clamping the head of the bone anchoring element firmly within the head receiving portion of the receiving part.
Regarding claims 31-37, claims 20 and 22-25 of U.S. Patent No. 12,096,962 recite the claimed invention except for a bone anchoring element comprising a shank for anchoring to bone and a head; wherein the head is connectable to the head receiving portion form the second end of the receiving part; and wherein the ring comprises a closed ring that is configured to extend circumferentially entirely around the central axis.
Schlaepfer et al. discloses a bone anchoring element device having a bone anchoring element comprising a shank (12) for anchoring to bone and a head (22); wherein the head is connectable to a receiving portion (44) from the second end of a receiving part (20); and a closed ring (32) configured to extend circumferentially entirely around a central axis (41) (Figs. 11-12) in order to tightly clamp the bone anchoring element firmly within the receiving part and to anchor the bone anchoring device to bone (paragraph [0086]).
It would have been obvious to one having ordinary skill in the art before the invention was made to modify claims 20 and 22-25 of U.S. Patent No. 12,096,962 to include a bone anchoring element comprising a shank for anchoring to bone and a head such that the head is connectable to the head receiving portion form the second end of the receiving part and the ring comprises a closed ring that is configured to extend circumferentially entirely around the central axis in view of Schlaepfer et al. to permit tightly clamping the bone anchoring element firmly within the receiving part and to permit anchoring the bone anchoring device to bone.
Regarding claims 38-44, claims 1, and 3-13 of U.S. Patent No. 12,096,962 recite the claimed invention except for wherein when the head is connected to the receiving part, the head is held in a seat, and wherein a surface of the seat for contacting the head is configured to be spaced apart from the ring.
Schlaepfer et al. discloses a bone anchoring element device having a bone anchoring element with a head (22) and a head (12), a receiving part (20), and a ring (32) assembled to a head receiving portion (44) from a second end of the receiving part; wherein when the head is connected to the receiving part, the head is held in a seat (50), wherein a surface of the seat (interior surface contacting head 22) is configured to be spaced apart from the ring (Figs. 11 and 12) in order to tightly clamp the bone anchoring element firmly within the receiving part (paragraph [0086]).
It would have been obvious to one having ordinary skill in the art before the invention was made to modify claims 1, and 3-13 of U.S. Patent No. 12,096,962 such that when the head is connected to the receiving part, the head is held in a seat, and wherein a surface of the seat for contacting the head is configured to be spaced apart from the ring in view of Schlaepfer et al. to permit tightly clamping the head of the bone anchoring element firmly within the receiving part.
Allowable Subject Matter
Claims 25, 26, 28, 39, 40 and 42 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 and with the filing of a terminal disclaimer to overcome the non-statutory double patenting rejections set forth above.
Claims 31-37 would be allowable with the filing of a terminal disclaimer to overcome the non-statutory double patenting rejection set forth above.
Response to Arguments
Applicant’s arguments, see Remarks, filed 14 January 2026, with respect to the objection of claim 1 have been fully considered and are persuasive. The objection of claim 1 has been withdrawn.
Applicant’s arguments, see Remarks, filed 14 January 2026, with respect to interpretation of claim 1 under 35 U.S.C. 112(f) have been fully considered and are persuasive. The interpretation of claim1 under 35 U.S.C. 112(f) has been withdrawn.
Applicant’s arguments with respect to claim(s) 1 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 Eric Gibson whose telephone number is (571)270-5274. The examiner can normally be reached Monday-Thursday ~6:00 A.M. to 4:00 P.M. (CST).
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571) 272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC S GIBSON/ Primary Examiner, Art Unit 3775