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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1-2 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 15 of prior U.S. Patent No. 12137951B2. This is a statutory double patenting rejection.
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.
Claim 3 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12137951B2 (referred herein as Pat ‘951). Although the claims at issue are not identical, they are not patentably distinct from each other because: Pat. ‘951 recites a bone fixation system. Specifically in regards to claim 3, Pat. 951 recites a bone plate that defines an outer surface, a bone-facing surface opposite the outer surface, and an interior surface that defines a hole extending from the outer surface to the bone-facing surface along a central hole axis [claim 18 lines 42-47], wherein the interior surface further defines: plate threads extending between the outer surface and the bone-facing surface [claim 18 lines 47-49]; first, second, and third columns sequentially located about the central hole axis [claim 18 lines 50-51]; a first corner extending tangentially from a first side of the second column to a second side of the first column [claim 18 ln 52-54]; a second corner extending tangentially from a second side of the third column to a first side of the first column, wherein the first corner and the second corner are substantially equidistantly spaced from the central hole axis at a first distance measured along a radial direction perpendicular to the central hole axis, and the plate threads extend across the first, second, and third columns and across the first corner and the second corner [claim 18 ln 55-63]; a recess located between the second and third columns and facing the first column, wherein an apex of the recess is spaced from the central hole axis at a second distance that is greater than the first distance, such that the recess circumferentially interrupts at least a portion of a thread-form of at least one of the plate threads; and an instrument having a distal mounting portion, wherein the distal mounting portion includes a first formation configured to mate with the hole, and a protrusion extending outwardly from the first formation, wherein the protrusion and the recess define complimentary geometries, such that the protrusion is configured to mate with the recess in a manner securing the first formation with the hole [claim 18 ln 64- column 19 ln 14].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELA I SHIRSAT whose telephone number is (571)270-5269. The examiner can normally be reached M-F 9:00am-5:30pm MST.
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/MARCELA I. SHIRSAT/ Primary Examiner, Art Unit 3775