DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of the species of Figs. 2-2C in the reply filed on February 13, 2026 is acknowledged.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “means for applying the force” in claim 6.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Objections
Applicant is advised that should claim 14 (see the 35 U.S.C. 112 rejection below for the interpretation of claim 14) be found allowable, claim 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claim 14 is 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. Claim 14 recites the limitation "the head position of the bone screw" in line 4. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the Examiner is interpreting “the head position” as “the head portion.”
Claims 17-20 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. Claim 17 recites that “the retainer is biased toward the lower end of the housing by the retainer via a force exerted through the spacer.” It is unclear how the retainer is biased, even in part, by itself (see “by the retainer” in the aforementioned recitation). Claims 18-20 are rejected because they depend from claim 17. For examination purposes, claim 17 is being interpreted as reciting “the retainer is biased toward the lower end of the housing against the retainer.”
Claim 22 is 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. Claim 22 recites the limitation "the force" in line 4. There is insufficient antecedent basis for this limitation in the claim as none of claims 16, 21, or 22 recite a force.
Claim 23 is 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. Claim 23 recites the limitation "the head position of the bone screw" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the Examiner is interpreting “the head position” as “the head portion.”
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3, 6-8, 10, 11, 14-19, 23, and 24 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Alvarez (US 2007/0288004 A1).
Claim 1. Alvarez discloses a polyaxial bone anchor comprising:
a housing (tulip 6) having an upper end (see Fig. 9 inset), a lower end (see Fig. 9 inset) and a bore (see Fig. 9 inset) extending through the housing from the upper end to the lower end, the bore opening out at the lower end at a lower opening (see Fig. 9 inset), the housing including a channel (defined by notches 7) configured for receiving an elongate stabilization member (bar 8) therethrough which extends from a first side surface of the housing to a second side surface of the housing opposite the first side surface transverse to the bore;
a retainer (rosette 3’) positioned into the bore of the housing and having an outermost diameter (see Fig. 9 inset) greater than a diameter of the lower opening (see Fig. 9 inset), the retainer including a plurality of alternating tabs (slats 5) and slots (see Fig. 10 inset) circumferentially arranged to define a cavity (see Fig. 10 inset) therein;
a bone screw (screw 1) including a head portion (head 2) and a shank (portion of screw 1 extending downward from head 2 as shown in Fig. 1) extending from the head portion, the head portion of the bone screw positionable in the cavity of the retainer with the shank extending from the lower end of the housing by deflecting the tabs radially outward to enlarge a lower opening (see Fig. 10 inset) of the retainer into the cavity from a diameter less than a diameter of the head portion to a diameter greater than or equal to the diameter of the head portion (head 2 must necessarily be inserted into rosette 3’ through the lower opening as head 2 cannot be moved past the portion of rosette 3’ having upper promontory 4); and
means for applying a force (bushing 30) to move and bias the retainer toward the lower end of the housing (see para. 0093) (Figs 1-10; paras. 0073-0098).
Claim 2. Alvarez discloses wherein the retainer is moved toward the upper end of the housing while being positioned in the bore in order to insert the head portion of the bone screw into the cavity of the retainer (rosette 3’ must necessarily be positioned toward the upper end of tulip 6 in order to insert head 2 into rosette 3’ otherwise lower conical wall 27 of tulip 6 would not allow slats 5 to flex as needed – see para. 0097) (Figs 1-10; paras. 0073-0098).
Claim 3. Alvarez discloses wherein the retainer is insertable into the bore of the housing without the head portion of the bone screw positioned in the cavity of the retainer (see Fig. 2), yet with the head portion of the bone screw positioned in the cavity of the retainer, the retainer is prevented from being removed from the bore of the housing (para. 0097 states that lower conical wall 27 of tulip 6 acts on slats 5 to capture head 2) (Figs 1-10; paras. 0073-0098).
Claim 6. Alvarez discloses wherein the means for applying the force comprises a spacer (rosette 3’) positioned within the retainer, the spacer including a first portion (see Fig. 10 inset) extending from the retainer toward the upper end of the housing which is configured to engage the elongate stabilization member disposed in the channel of the housing (see para. 0097) and a second portion (see Fig. 10 inset) extending into a bore (opening 29) of the retainer which is configured to engage the head portion of the bone screw (Figs 1-10; paras. 0073-0098).
Claim 7. Alvarez discloses wherein the housing includes an annular rim (see Fig. 9 inset) defining the lower opening, wherein the diameter of the lower opening at the annular rim is less than a diameter of the bore (see Fig. 9 inset) of the housing toward the upper end of the housing from the annular rim (Figs 1-10; paras. 0073-0098).
Claim 8. Alvarez discloses wherein the retainer includes a lower beveled surface (conical section 37) which contacts the annular rim of the housing, thereby preventing the tabs of the retainer from deflecting radially outward in order to secure the head portion of the bone screw in the cavity of the retainer (see para. 0097) (Figs 1-10; paras. 0073-0098).
Claim 10. Alvarez discloses wherein the retainer is insertable into the bore of the housing from the lower end of the housing by passing the retainer through the lower opening with the tabs of the plurality of alternating tabs and slots deflected radially inward (rosette 3’ must necessarily be insertable through the lower opening due to the interaction between cylindrical upper section 32 of rosette 3’ and the shoulders of tulip 6, which are located adjacent teeth 16 and prevent further upward movement of rosette 3’) (Figs 1-10; paras. 0073-0098).
Claim 11. Alvarez discloses wherein the retainer is movable in the bore of the housing between a first position (see Fig. 2) and a second position (see Fig. 9), the retainer being closer to the lower end of the housing in the first position and closer to the upper end of the housing in the second position, wherein the head portion of the bone screw is insertable into the cavity of the retainer from the lower end of the housing when the retainer is in the second position (rosette 3’ must necessarily be positioned toward the upper end of tulip 6 in order to insert head 2 into rosette 3’ otherwise lower conical wall 27 of tulip 6 would not allow slats 5 to flex as needed – see para. 0097), but is not removable from the cavity of the retainer when the retainer is in the first position (see para. 0097) (Figs 1-10; paras. 0073-0098).
Claim 14. Alvarez discloses wherein an annular rim (see Fig. 9 inset) defining the lower opening of the housing contacts a lower beveled surface (conical section 37) of the retainer to prevent radially outward deflection of the tabs of the plurality of tabs and slots of the retainer in order to secure the head position of the bone screw in the cavity of the retainer (see para. 0097) (Figs 1-10; paras. 0073-0098).
Claim 15. Alvarez discloses wherein an annular rim (see Fig. 9 inset) defining the lower opening of the housing contacts a lower beveled surface (conical section 37) of the retainer to prevent radially outward deflection of the tabs of the plurality of tabs and slots of the retainer in order to secure the head portion of the bone screw in the cavity of the retainer (see para. 0097) (Figs 1-10; paras. 0073-0098).
Claim 16. Alvarez discloses an assembly comprising:
a housing (tulip 6) having an upper end (see Fig. 9 inset), a lower end (see Fig. 9 inset) and a bore (see Fig. 9 inset) extending through the housing from the upper end to the lower end, the bore opening out at the lower end at a lower opening (see Fig. 9 inset), the housing including a channel (defined by notches 7) configured for receiving an elongate stabilization member (bar 8) therethrough which extends from a first side surface of the housing to a second side surface of the housing opposite the first side surface transverse to the bore;
a retainer (rosette 3’) positioned into the bore of the housing and having an outermost diameter (see Fig. 9 inset) greater than a diameter of the lower opening (see Fig. 9 inset), the retainer including a plurality of alternating tabs (slats 5) and slots (see Fig. 10 inset) circumferentially arranged to define a cavity (see Fig. 10 inset) therein;
a spacer (bushing 30) extending into a bore (opening 29) of the retainer, the retainer and spacer movable in the bore of the housing between a first position (see Fig. 2) and a second position (see Fig. 9), the retainer and spacer being closer to the lower end of the housing in the first position and closer to the upper end of the housing in the second position; and
a bone screw (screw 1) including a head portion (head 2) and a shank (portion of screw 1 extending downward from head 2 as shown in Fig. 1) extending from the head portion, the head portion of the bone screw positionable in a cavity (at bevel 31) of the spacer with the shank extending from the lower end of the housing;
wherein the head portion of the bone screw is insertable into the bore of the retainer from the lower end of the housing by deflecting the tabs of the plurality of alternating tabs and slots radially outward when the retainer and spacer are in the second position (rosette 3’ must necessarily be positioned toward the upper end of tulip 6 in order to insert head 2 into rosette 3’ otherwise lower conical wall 27 of tulip 6 would not allow slats 5 to flex as needed – see para. 0097), but is not removable from the retainer when the retainer and spacer are positioned in the first position (see para. 0097) (Figs 1-10; paras. 0073-0098).
Claim 23. Alvarez discloses wherein an annular rim (see Fig. 9 inset) defining the lower opening of the housing contacts a lower beveled surface (conical section 37) of the retainer to prevent radially outward deflection of the tabs of the plurality of alternating tabs and slots in order to secure the head position of the bone screw in the cavity of the retainer (see para. 0097) (Figs 1-10; paras. 0073-0098).
Claim 24. Alvarez discloses wherein the retainer is insertable into the bore of the housing from the lower end of the housing by passing the retainer through the lower opening with the tabs of the plurality of alternating tabs and slots deflected radially inward (rosette 3’ must necessarily be insertable through the lower opening due to the interaction between cylindrical upper section 32 of rosette 3’ and the shoulders of tulip 6, which are located adjacent teeth 16 and prevent further upward movement of rosette 3’) (Figs 1-10; paras. 0073-0098).
Claim 17. Alvarez discloses a method of assembling a polyaxial bone anchor comprising:
providing a housing (tulip 6) having an upper end (see Fig. 9 inset), a lower end (see Fig. 9 inset) and a bore (see Fig. 9 inset) extending through the housing from the upper end to the lower end, the bore opening out at the lower end at a lower opening (see Fig. 9 inset), the housing including a channel (defined by notches 7) configured for receiving an elongate stabilization member (bar 8) therethrough which extends from a first side surface of the housing to a second side surface of the housing opposite the first side surface transverse to the bore;
inserting a retainer (rosette 3’) into the bore of the housing from the lower end of the housing by passing the retainer through the lower opening (rosette 3’ must necessarily be inserted through the lower opening due to the interaction between cylindrical upper section 32 of rosette 3’ and the shoulders of tulip 6, which are located adjacent teeth 16 and prevent further upward movement of rosette 3’), the retainer having an outermost diameter (see Fig. 9 inset) greater than a diameter of the lower opening (see Fig. 9 inset), the retainer including a plurality of alternating tabs (slats 5) and slots (see Fig. 10 inset) formed therein providing the retainer with sufficient flexibility to be urged through the lower opening from the lower end of the housing by radially compressing the retainer;
inserting a spacer (bushing 30) within the retainer;
inserting a head portion (head 2) of a bone screw (screw 1) into a cavity (see Fig. 10 inset) of the retainer from the lower end of the housing by moving the retainer toward the upper end of the housing allowing the tabs of the plurality of alternating tabs and slots to splay radially outward to accommodate passage of the head portion of the bone screw in the cavity of the retainer (rosette 3’ must necessarily be positioned toward the upper end of tulip 6 in order to insert head 2 into rosette 3’ otherwise lower conical wall 27 of tulip 6 would not allow slats 5 to flex as needed – see para. 0097); and
urging the retainer, with the head portion of the bone screw positioned in the cavity of the retainer, back toward the lower end of the housing to retain the head portion of the bone screw in the cavity of the retainer (see para. 0097);
wherein the retainer is biased toward the lower end of the housing by the retainer via a force exerted through the spacer (see para. 0097) (Figs 1-10; paras. 0073-0098).
Claim 18. Alvarez discloses wherein an annular rim (see Fig. 9 inset) defining the lower opening of the housing contacts a lower beveled surface (conical section 37) of the retainer to prevent radially outward deflection of the tabs of the plurality of alternating tabs and slots of the retainer in order to secure the head portion of the bone screw in the cavity of the retainer (see para. 0097) (Figs 1-10; paras. 0073-0098).
Claim 19. Alvarez discloses wherein the head portion of the bone screw is not removable from the cavity of the retainer when the retainer is moved toward the lower end of the housing (see para. 0097) (Figs 1-10; paras. 0073-0098).
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Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1 and 9 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Harvey et al. (US 2010/0145394 A1) in view of Hammill et al. (US 2010/0125302 A1).
Claim 1. Harvey discloses a polyaxial bone anchor comprising:
a housing (anchor seat 126) having an upper end (see Fig. 9B inset), a lower end (see Fig. 9B inset) and a bore (bore 154) extending through the housing from the upper end to the lower end, the bore opening out at the lower end at a lower opening (lower opening 152), the housing including a channel (channel 136) configured for receiving an elongate stabilization member (see para. 0089) therethrough which extends from a first side surface of the housing to a second side surface of the housing opposite the first side surface transverse to the bore;
a retainer (collet 128) positioned into the bore of the housing and having an outermost diameter (see Fig. 9B inset) greater than a diameter of the lower opening (see Fig. 9B inset), the retainer including a plurality of alternating tabs (fingers 169a) and slots (see Fig. 10A inset) circumferentially arranged to define a cavity (defined by inner surfaces 155) therein;
a bone screw (see Fig. 9B inset) including a head portion (see Fig. 9B inset) and a shank (see Fig. 9B inset) extending from the head portion, the head portion of the bone screw positionable in the cavity of the retainer with the shank extending from the lower end of the housing by deflecting the tabs radially outward to enlarge a lower opening (see Fig. 10A inset) of the retainer into the cavity from a diameter less than a diameter of the head portion to a diameter greater than or equal to the diameter of the head portion (see para. 0091) (Figs 9A-10B; paras. 0085-0092).
Claim 9. Harvey discloses wherein an upper portion of the retainer includes first and second legs (see Fig. 10A inset) defining a channel (see Fig. 10A inset) therebetween aligned with the channel of the housing for receiving an elongate stabilization member therethrough (Figs 9A-10B; paras. 0085-0092).
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Harvey fails to disclose means for applying a force to move and bias the retainer toward the lower end of the housing (claim 1).
However, Harvey discloses that the retainer (collet 128) includes upwardly-facing surfaces (defined by upper surfaces of lips 159) that interact with a downwardly-facing surfaces (defined by recesses 161) of the housing (anchor seat 126) (Figs 9A-10B; paras. 0085-0092).
Hammill teaches a housing (upper connector member 31 and lower connector member 33, in combination) having a downwardly-facing surface (defined by pocket 100) and a lower end (adjacent lower opening 50 as shown in Fig. 5); a retainer (upper retaining ring 42 and lower retaining ring 40, in combination) including an upwardly-facing surface (defined by pocket 98); and means for applying a force (springs 102) to move and bias the retainer toward the lower end of the housing (see para. 0100), wherein the means for applying the force interacts with the downwardly-facing surface of the housing and the upwardly-facing surface of the retainer to bias the retainer toward the lower end of the housing (see para. 0100)(Figs. 1-21H; paras. 0097-0106).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the bone anchor of Harvey to include means for applying a force to move and bias the retainer toward the lower end of the housing (claim 1), as suggested by Hammill, as such means would provide a provisional locking force to the head portion of the bone screw prior to a full locking force achieved by inserting an elongate stabilization member into the housing.
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 1-3, 7-11, 14, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-9, and 12 of U.S. Patent No. 9,198,695 B2. Although the claims at issue are not identical, they are not patentably distinct from each other. The claims of the present application correspond to the patent claims as follows:
Present Application
Patent
1
1
2
2
3
3
7
5
8
6
9
7
10
8
11
9
14
12
15
12
The difference between the claims of the present application and those of the patent is that claim 1 of the patent specifies that the means for applying a force to move and bias the retainer (see claim 1 of the present application) is a portion of the retainer having circumferential or helical slots (see claim 1 of the patent). Thus, claim 1 of the patent is more specific than claim 1 of the present application and claim 1 of the patent is in effect a species of the generic invention of claim 1 of the present application. It has been held that the generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Because claim 1 of the present application is anticipated by claim 1 of the patent, it is not patentably distinct from the patent claim. Because claims 2, 3, 7-11, 14, and 15 of the present application correspond to claims 2, 3, 5-9, and 12 of the patent, they are not patentably distinct from the patent claims.
Allowable Subject Matter
Claim 21 is 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. Regarding Alvarez, the retainer (rosette 3’) cannot be reasonably modified such that it includes first and second legs as recited in claim 21 (see Fig. 9 of Alvarez). Regarding Harvey and Hammill, the spacer (springs 102) cannot receive a head portion of a bone screw in a cavity of the spacer as recited in claim 16.
Conclusion
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/JULIANNA N HARVEY/Primary Examiner, Art Unit 3773