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 .
Priority
This application claims priority from Provisional application 62/935,952, filed 11/15/2019.
Status of Claims
Claims 16-35 are pending.
Claims 1-15 have been cancelled
Information Disclosure Statement
The Information Disclosure Statements filed on 12/13/2024 (x9), 07/02/2025, and 10/22/2025 have been considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: missing/outdated priority information. Since the filing of this application at least one of the parent applications have been issued patent numbers. The priority information within the first line of the specification must be amended to disclose these patent numbers.
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 16, 19-27, and 29-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 16-20 of U.S. Patent No. 12,102,535. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus much specific. Thus, the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
Patent Claim 16 is substantially similar to and anticipates Pending Claim 16. However, Patented Claim 1 defines the structure as further comprising truss and planer truss units. The additional structures are more specific and therefore reads on the broader language of the pending claim. Additionally, the Patented claim further defines the coating composition as comprising ceramic and a conductive dopant, but the Pending claim is silent as to these materials. The narrowed Patented claim anticipates the broader Pending claim. Additionally, Pending claim 16 further requires a physical property of the struts formed of the Piezoelectric hydroxyapatite to be predetermined before implantation and that the struts undergo a minimum change in length when contacted with bone. This is not considered to differentiate the pending claim, because every strut of every implant can be described as having predetermined physical properties. If the implant is in its final form prior to implantation all physical properties are known or can be determined. With regards to the minimal shortening. The dimensions and materials are the same so they will have the same properties. The shortening is an inherent property of the implant so this limitation also fails to differentiate the pending claim from the patented claim.
Pending Claim 19 is anticipated by Patented claim 16, because the Patented claim already defines the ceramic material in the independent claim.
Patent Claim 18 anticipates Pending claim 20 because both are identical lists of ceramic materials.
Patent Claim 19 anticipates Pending claim 21 because both define the same material.
Patent Claim 17 anticipates Pending claim 22 because both define the same material.
Pending Claim 23 is anticipated by Patented claim 16, because the Patented claim already defines the dopant material in the independent claim.
Patent Claim 20 anticipates Pending claim 24 because both define the same list of materials.
Pending claims 25 and 26 are anticipated by Patent claim 16 because as explained above the physical properties of all struts of all implants preformed are predetermined with respect to all effects. They have known dimensions and materials, so their physical properties are all known or calculable.
Pending Claim 27 is anticipated by Patented claim 16, because the Patented claim already defines the truss and truss units in the independent claim.
Patented Claim 10 is substantially similar to Pending claim 29. However Patented claim 10 is narrowed by providing intended use limitation saying it is configured to interface with bone. Additionally Patented Claim 10 defines the Piezoelectric hydroxyapatite as a coating and inclusion of a dopant and Pending claim 29 broadly requires the struts formed in part from Piezoelectric hydroxyapatite. Since the Patented claim is narrower than the pending claim it is deemed to anticipate it. Additionally, Pending claim 29 further requires a physical property of the struts formed of the Piezoelectric hydroxyapatite to be predetermined before implantation and that the struts undergo a minimum change in length when contacted with bone. This is not considered to differentiate the pending claim, because every strut of every implant can be described as having predetermined physical properties. If the implant is in its final form prior to implantation all physical properties are known or can be determined. With regards to the minimal shortening. The dimensions and materials are the same so they will have the same properties. The shortening is an inherent property of the implant so this limitation also fails to differentiate the pending claim from the patented claim. Finally, Pending claim builds on these inherent properties and defines the step of allowing the struts to undergo the physically predetermined changes. Since these are physically predetermined and inherent properties, the Patented claim is inherently performing the same final step. Once the implant of the patented claim is coupled to the bone it will inherently begin this step.
Patent Claim 16 is substantially similar to and anticipates Pending Claim 30. However, Patented Claim 1 defines the structure as further comprising truss and planer truss units. The additional structures are more specific and therefore reads on the broader language of the pending claim. Additionally, the Patented claim further defines the coating composition as comprising ceramic and a conductive dopant, but the Pending claim is silent as to these materials. The narrowed Patented claim anticipates the broader Pending claim. Additionally, Pending claim 30 further requires a physical property of a portion of some struts have a physical property with a first value that is different from second value of a second physical property of a second portion of some struts that is not required by Patent claim 16. However, this limitation is so broad that it is inherently met by every implant. The claim merely requires two different portions to have different values that react differently. The portions could be identified as substantially longer and shorter sections, inner and outer sections, or even different shaped portions of the implant that when the piezoelectric effect happens, they cannot physically react with the same values because they are substantially different shaped and/or sized.
Pending claim 31 is anticipated by Patent claim 16 because as explained above the physical properties of all struts of all implants preformed are predetermined with respect to all effects. They have known dimensions and materials, so their physical properties are all known or calculable.
Pending Claim 32 is anticipated by Patented claim 16, because the Patented claim already defines the ceramic material in the independent claim.
Patent Claim 17 anticipates Pending claim 33 because both define the same material.
Pending Claim 34 is anticipated by Patented claim 16, because the Patented claim already defines the dopant material in the independent claim.
Patent Claim 20 anticipates Pending claim 35 because both define the same list of materials.
Allowable Subject Matter
Claims 17, 18, and 28 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.
The most relevant prior art is identified below, but the prior art fails to disclose the combination of the struts and nodes combined with the piezoelectric hydroxyapatite composition including a hydroxyapatite and a piezoelectric effect enhancing material.
5,858,513
2005/0100578
2011/0118852
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER D PRONE whose telephone number is (571)272-6085. The examiner can normally be reached Monday-Friday 10 am - 6 pm (HST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melanie R Tyson can be reached at (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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/Christopher D. Prone/Primary Examiner, Art Unit 3774
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