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 .
Election/Restrictions
Applicant’s election without traverse of Species E in the reply filed on March 27th, 2026 is acknowledged.
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.
Claim 64 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 19/020,842. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claim 64 of the current application and the invention of claims 1 and 7 of the copending application lies in the fact that the invention of claims 1 and 7 of the copending application includes more elements and is thus more specific. Thus the invention of claims 1 and 7 of the copending application is in effect a "species" of the "generic" invention of claim 64 of the current application. It has been held that the generic invention is “anticipated” by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 64 is anticipated by claims 1 and 7, claim 64 is not patentably distinct from claims 1 and 7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 69 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Paragraph 121 of the specification discloses that a pedometer is a type of device that uses sensors, such as accelerometers, to collect clinical data. The specification does not disclose a pedometer as being a type of sensor. Furthermore, it is well known in the art that a pedometer is a device having a plurality of sensors for collecting data and is not a type of sensor. Therefore, the amendment to claim 69 introduces new matter that is not supported by the original disclosure. Therefore, the examiner is going to interpret claim 69 as being directed to the sensor being an accelerometer based on the specification and is therefore the accelerometer of claim64 with the functional limitations of claim 69 for examination purposes.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 64-69 and 71-73 are rejected under 35 U.S.C. 103 as being unpatentable over Roy (U.S. Publication 2002/0049394) in view of Navarro (U.S. Publication 2005/0273170).
Roy discloses a device (for example see Figures 17-18) comprising:
(claim 64) a body (902)
(claim 64) wherein the body is configured to be implanted in an intervertebral disc space
(claim 64) wherein the body includes
(claim 64) an opening (the opening of the internal cavity that receives 950) at a first end of the body
(claim 64) a cavity (the inner cavity; paragraph 92) that extends through the body from the opening towards a second end of the body
(claim 64) at least one sensor (42) within the cavity
(claim 64) wherein the at least one sensor is configured to generate data
(claim 68) wherein the sensor is a pressure sensor configured to generate data representative of force on the device
(claim 64) a processor (see Figure 18) within the cavity (element 950 includes the processor and is on the end of element 932 that extends into the cavity when attached to the body)
(claim 64) wherein the processor is electrically coupled to the sensor
(claim 64) wherein the process is configured to collect the data generated by the at least one sensor (see paragraphs 94-95)
(claim 72) wherein the processor is configured to collect the data at scheduled times (the processor is fully capable of performing this function)
(claim 64) an antenna (970) configured to send the data
(claim 73) a memory (it is well known in the art that micro-processors include memory for storing instructions and other data; the reference is silent on how the memory in the electronics is used)
Roy fails to disclose the device wherein the at least one sensor includes a position sensor (claim 65), a vibration sensor (claim 66), a contact sensor (claim 67), a strain gauge (claim 71), and an accelerometer (claim 64) and wherein the memory is configured to store data collected by the processor.
Regarding the at least one sensor including a position sensor, a vibration sensor, a contact sensor, a strain gauge, or an accelerometer, Navarro teaches a device comprising a body, a processor, an antenna, and at least one sensor (for example see Figures 7 and 9), wherein the at least one sensor (for example 912) includes a combination of a strain gauge with an accelerometer, a position sensor, a vibration sensor, and/or a contact sensor in order to collect data corresponding to physical and/or electrical data of the device (for example see paragraph 72). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Roy wherein the at least one sensor, i.e. the strain gauge, further includes a position sensor, a vibration sensor, a contact sensor, or an accelerometer in view of Navarro in order to collect data corresponding to physical and/or electrical data of the device.
The device of Roy as modified by Navarro discloses a device comprising a body, a processor, an antenna, and at least one sensor having an accelerometer and a position sensor, vibration sensor, contact sensor (current is known to be used to measure the contact between and an implant and tissue), and/or a strain gauge configured to generate data representative of the different forces, i.e. acceleration, strain, compression, etc., on the device.
Regarding the memory being configured to store the data collected by the processor, Navarro teaches a device comprising a body, a processor, an antenna, at least one sensor, and memory coupled to the processor, wherein the memory is configured to store data collected by the processor in order to allow selective access to the data with timestamps from an external source (for example see abstract). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Roy as modified by Navarro wherein the memory associated with the processor is configured to store the data collected by the processor in view of Navarro in order to allow selective access to the data with timestamps from an external source.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited references the examiner felt were relevant to the application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas Woodall whose telephone number is (571) 272-5204. The examiner can normally be reached on Monday-Friday 8am to 5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571. 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.
/NICHOLAS W WOODALL/Primary Examiner, Art Unit 3775
Prosecution Insights