1. Claims 8, 9, 11, 19, and 20 are objected to for inconsistent terminology, i.e. reciting “set screw” vs. “setscrew.” The Examiner may recommend selecting “set screw” since there are more search hits for “set screw” than “setscrew.”
Claim 18 is objected due to a typographical error. The term “the first bone” in line 4 should be “the first vertebra” to accord with claim 12.
2. The specification is objected to for inconsistent terminology, i.e. reciting “set screw” and “setscrew.” The Examiner may recommend using “set screw” throughout since there are more search hits for “set screw” than “setscrew.”
3. 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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of O’Connell et al. (US 9795370; “O’Connell” herein) in view of Woolley et al. (US 2011/0130793; “Woolley” herein).
Claim 1 of O’Connell discloses a surgical retractor for maintaining an access corridor to a surgical site in which a surgical procedure is performed, the surgical retractor comprising: a retractor body having a first arm and a second arm; a first blade coupled to the first arm and adapted to be attached to a first bone anchor configured to be inserted into a first bone; a second blade coupled to the second arm and adapted to be attached to a second bone anchor configured to be inserted into a second bone.
Claim 1 of O’Connell does not disclose the arms are spaced from each other.
Woolley discloses arms (e.g. 26) and (e.g. 28) that are spaced apart (e.g. Fig. 1) thereby providing a region to access anatomy (e.g. Fig. 103).
It is considered obvious to have applied the teaching of arms being spaced apart, per Woolley, to the arms of claim 1 of O’Connell in order to provide a region to access anatomy.
Claim 1 of O’Connell further does not disclose the coupling of each blade to an arm being a detachable coupling.
Woolley discloses a first blade (e.g. 14) detachably coupled (e.g. via 176) to a first arm (e.g. 26) and a second blade (e.g. 16) detachably coupled (e.g. via 206) to a second arm (e.g. 28).
It is considered obvious to have applied the teaching of a first blade detachably coupled to a first arm and a second blade detachably coupled to a second arm, per Woolley, to the first blade, the first arm, the second blade, and the second arm in order to increase modularity to facilitate actions such as cleaning, repairing, or upgrading.
4. 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.
Claims 7 and 18 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 7 lacks antecedent basis for the terms “the first foot” and “the second foot.”
Claim 18 lacks antecedent basis for the terms “the first foot” and “the second foot.”
5. The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Woolley et al. (US 2011/0130793; “Woolley” herein).
Regarding claim 1, Woolley discloses a surgical retractor (e.g. 10) for maintaining an access corridor to a surgical site in which a surgical procedure is performed, the surgical retractor comprising: a retractor body having a first arm (e.g. 26) and a second arm (e.g. 28) spaced from (e.g. Fig. 3) the first arm; a first blade (e.g. 14) detachably coupled (e.g. via 176) to the first arm and adapted to be attached to a first bone anchor (e.g. 7) configured to be inserted into a first bone; and a second blade (e.g. 16) detachably coupled (e.g. 206) to the second arm and adapted to be attached to a second bone anchor (e.g. 7) configured to be inserted into a second bone.
Regarding claim 12, Woolley discloses a surgical retractor (e.g. 10) for maintaining an access corridor to a spinal surgical site in which a spinal surgical procedure is performed, the surgical retractor comprising: a retractor body having a first arm (e.g. 26) and a second arm (e.g. 28) spaced from (e.g. Fig. 3) the first arm, the first and second arms being movable (e.g. via moveable rack members 58, 60) relative to the retractor body; a first blade (e.g. 14) detachably (e.g. via 176) and pivotably (e.g. Fig. 56; para. [00241]) coupled to the first arm and adapted to be attached to a first pedicle screw (e.g. 7) configured to be inserted into a first vertebra; and a second blade (e.g. 16) detachably (e.g. via 206) and pivotably (e.g. Fig. 56; para. [00241]) coupled to the second arm and adapted to be attached to a second pedicle screw (e.g. 7) configured to be inserted into a second vertebra. The first and second arms of the surgical retractor are configured to distract an intervertebral space between the first and second vertebrae (e.g. Fig. 105).
6. Claims 2-11 and 13-20 are objected to, or would be after resolution of all applicable matters in Secs 1-5 above, 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.
7. The following is an examiner’s statement of reasons for the indication of allowable subject matter: The claims distinguish over closest prior art cited in the 892. In an exemplary prior art reference, Woolley discloses an apparatus involving surgical retractor (e.g. 10) comprising a first arm (e.g. 26), a second arm (e.g. 28), a first blade (e.g. 14), and a second blade (e.g. 16), but fails to disclose at least a capture element configured to form a center aperture, and relationships thereof as claimed; foots extending from a blade body, and relationships thereof as claimed; and/or a first foot configured to rotated in a plane parallel to a width of the first blade, and relationships thereof as claimed. There would have been no obvious reason(s) to modify the Woolley apparatus to satisfy at least this/these and/or each of applicant’s claimed limitations without an application of impermissible hindsight reasoning. In a related patent of applicant, claim 1 of US 9795370 discloses an apparatus involving a surgical retractor comprising a retractor body having a first arm, a second arm, a first blade, and a second blade, but fails to disclose at least a capture element configured to form a center aperture, and relationships thereof as claimed; foots extending from a blade body, and relationships thereof as claimed; and/or a first foot configured to rotated in a plane parallel to a width of the first blade, and relationships thereof as claimed. There would have been no obvious reason(s) to modify the apparatus of claim 1 of US 9795370 to satisfy at least this/these and/or each of applicant’s claimed limitations without an application of impermissible hindsight reasoning. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAN A. SEVILLA whose telephone number is (571)270-5621. The examiner can normally be reached on Monday through Thursday, 8:00 am to 5:00 pm. If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, KEVIN T. 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.
/CHRISTIAN A SEVILLA/ Primary Examiner, Art Unit 3775
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