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
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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Claims 1, 3-9 and 11 are rejected on the ground of nonstatutory double patenting as being anticipated by claims 1-9 and 20 of U.S. Patent No. 10335207. 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 many more elements and are thus much more specific as shown below (see underlined and/or bolded text for comparable elements):
Invention: 18/910224
US Patent 10335207
1. A kit, comprising: a lock pin; a pin plate including a first central aperture and a pin plate interior surface, a first plurality of spikes extending from the pin plate interior surface, and a pin receptacle disposed within the pin plate and configured to receive the lock pin; a lock plate including second central aperture, a lock plate interior surface, and a second plurality of spikes extending from the lock plate interior surface; a pivoting lock mechanism including a pivoting lock configured to be received in the second central aperture of the lock plate, the pivoting lock having a connector shaft passage; and a connector shaft configured to extend from the pin plate to the lock plate and pass through the first central aperture and the second central aperture, the connector shaft including a pin side configured to receive the lock pin; and the connector shaft also including a lock side opposite the shaft side, the lock side configured to be positioned in the connector shaft passage of the pivoting lock at different positions of the lock side and operatively engage the pivoting lock mechanism.
Claims 1-9:
1. A spinous process plate fixation assembly, comprising: a pin plate including a first central aperture and a pin plate interior surface, and a first plurality of spikes extending from the pin plate interior surface; a lock plate including a second central aperture and a lock plate interior surface opposing the pin plate interior surface, and a second plurality of spikes extending from the lock plate interior surface; a pin receptacle disposed within the pin plate, the pin receptacle configured to receive a lock pin; a pivoting lock mechanism disposed within the lock plate, wherein the pivoting lock mechanism includes: a threaded channel disposed within a top surface of the lock plate; a lock chamber disposed within the lock plate; a pivoting lock disposed within the lock chamber and including a lock slot in communication with the threaded channel, wherein the pivoting lock includes a connector shaft passage configured to receive the lock side of the connector shaft, wherein the pivoting lock includes a compression slot proximal to the lock slot and opposite from a compression flat configured for orientation when the pivoting lock is compressed; and a connector shaft extending from the pin plate to the lock plate and passing through the first central aperture and the second central aperture, the connector shaft including: a pin side configured to receive the lock pin so as to secure the pin side within the pin receptacle; and a lock side opposite the shaft pin side, the lock side configured to operatively engage the pivoting lock mechanism so as to pivotally secure the lock side with the pivoting lock mechanism.
Claim 20:
20. A spinous process plate fixation assembly comprising a pin plate comprising a pin plate interior surface, and a first plurality of spikes extending from the pin plate interior surface;
a lock plate including a lock plate aperture and a lock plate interior surface opposing the pin plate interior surface, and a second plurality of spikes extending from the lock plate interior surface; a pivoting lock mechanism disposed within the lock plate, wherein the pivoting lock mechanism includes: a threaded channel disposed within a top surface of the lock plate; a lock chamber disposed within the lock plate; a pivoting lock disposed within the lock chamber and including a lock slot in communication with the threaded channel, wherein the pivoting lock includes a connector shaft passage configured to receive the lock side of the connector shaft, wherein the pivoting lock includes a compression slot proximal to the lock slot and opposite from a compression flat configured for orientation when the pivoting lock is compressed; and a connector shaft extending from the pin plate to the lock plate and passing through the lock plate aperture, the connector shaft including: a pin side secured to the pin plate; and a lock side opposite the pin side, the lock side configured to operatively engage the pivoting lock mechanism so as to pivotally secure the lock side with the pivoting lock mechanism; wherein the pin plate comprises a pin plate aperture, and the connector shaft passes within the pin plate aperture; wherein the pin plate comprises a pin receptacle disposed within the pin plate, the pin receptacle configured to receive a lock pin, wherein the pin side of the connector shaft is configured to receive the lock pin so as to secure the pin side within the pin receptacle.
3. The kit of claim 1, wherein the pivoting lock mechanism includes: a threaded channel disposed within a top surface of the lock plate; a lock chamber defined by the second central aperture of the lock plate; and the pivoting lock disposed within the lock chamber and including a lock slot in communication with the threaded channel.
Claims 1-9, see bolded sections of claim 1 above
Claim 20- see bolded section in claim 20 above
4. The kit of claim 3, comprising a lock flange configured to secure the pivoting lock within the lock chamber.
2. The spinous process plate fixation assembly of claim 1, further comprising a lock flange configured to secure the pivoting lock within the lock chamber.
5. The kit of claim 3, wherein the pivoting lock includes a compression slot proximal to the lock slot and opposite from a compression flat configured for orientation when the pivoting lock is compressed.
Claims 1-9: see bolded sections of claim 1 above
Claim 20- see bolded sections above
6. The kit of claim 5, wherein the compression slot is configured to be reduced when the pivoting lock is compressed.
4. The spinous process plate fixation assembly of claim 1, wherein the compression slot is configured to be reduced when the pivoting lock is compressed.
7. The kit of claim 1, the pin plate and the lock plate each include at least two staggered flat portions.
6. The spinous process plate fixation assembly of claim 1, wherein each of the pin plate and the lock plate include at least two offset flat portions including the first plurality of spikes and the second plurality of spikes, respectively.
8. The spinous process plate fixation assembly of claim 1, each of the pin plate and the lock plate include at least two staggered flat portions.
8. The kit of claim 1, wherein each of the pin plate and the lock plate include an exterior face opposite of the pin plate interior surface and the lock plate interior surface, respectively, and each of the exterior faces include at least two compressor alignment slots disposed on opposite sides of the connector shaft.
9. The spinous process plate fixation assembly of claim 1, wherein each of the pin plate and the lock plate include an exterior face opposite of the pin plate interior surface and the lock plate interior surface, respectively, and each of the exterior faces include at least two compressor alignment slots disposed on opposite sides of the connector shaft.
9. The kit of claim 1, wherein the pivoting lock includes a compression slot configured to enable the pivoting lock to secure the connector shaft disposed within the connector shaft passage.
Claims 1-9 and 20, see the bolded sections of claims 1 and 20 above.
11. The kit of claim 1, wherein the pivoting lock is a compressible lock configured to be reduced when the pivoting lock is compressed so as to grab and engage the connector shaft.
4. The spinous process plate fixation assembly of claim 1, wherein the compression slot is configured to be reduced when the pivoting lock is compressed.
Thus, the invention of US Patent 10335207, claims 1-9 and 20, respectively, 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.
Reasons for Allowance
The following is a statement of reasons for the indication of allowable subject matter:
The claims in the instant application have not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose, or suggest, the claimed combination of limitations recited in independent claim 1. In particular, none of the cited references teach or suggest the pivoting lock having a connector shaft passage; and a connector shaft configured to extend from the pin plate to the lock plate and pass through the first central aperture and the second central aperture, the connector shaft including a pin side configured to receive the lock pin; and the connector shaft also including a lock side opposite the shaft side, the lock side configured to be positioned in the connector shaft passage of the pivoting lock at different positions of the lock side and operatively engage the pivoting lock mechanism, as required by claims 1-11.
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.”
Allowable Subject Matter
Claims 2 and 10 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.
Response to Arguments
In view of the amendment to the claims, entered on 3/10/2026, the USC 112b rejection made to claims 3-6 is withdrawn.
In view of the amendment to the claims, entered on 3/10/2026, the objection to claim 4 is withdrawn.
In view of the amendment to the claims, entered on 3/10/2026, the Double Patenting rejection made to claims 1 and 3-8 is maintained (note that Applicant has not presented any arguments regarding this rejection). Additionally, newly presented claims 9 and 11 have been included in this rejection as presented in the Double Patenting rejection above.
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 Tara Carter whose telephone number is (571) 272-3402. The examiner can normally be reached on M-F 7am-3pm.
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/TARA ROSE E CARTER/Examiner, Art Unit 3773 /EDUARDO C ROBERT/Supervisory Patent Examiner, Art Unit 3773
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