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 .
This is the initial Office action for the 18/927,238 application. Claims 1-18 are pending.
Claim Rejections - 35 USC § 112
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 7-8, 12-13 and 17-18 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 1 includes the recitation that each of the plurality of fenestrations in each of the plurality of faces has a fixed-size and a fixed-shape. Claim 7, which depends from claim 1, recites that the fenestrations have different sizes. Claim 7 contradicts the fixed-size and fixed-shape recitation in claim 1.
Claim 9 includes the recitation of a plurality of fixed-size and fixed-shape fenestrations. Claim 12, which depends from claim 9, recites that the fenestrations have different sizes. Claim 12 contradicts the fixed-size and fixed-shape recitation in claim 9.
Claim 14 includes the recitation of a plurality of fixed-size and fixed-shape fenestrations. Claim 17, which depends from claim 14, recites that the fenestrations have different sizes. Claim 17 contradicts the fixed-size and fixed-shape recitation in claim 14.
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(s) 1-18 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,161,374 in view of Savage et al. (U.S. Pub. No. 2008/0161927 A1, hereinafter “Savage”) as cited in the IDS filed 01/17/2025.
Regarding claim 1, see patent claim 1. Patent claim 1 fails to disclose an apex strut disposed along the longitudinal axis of the elongate body, or that each of the plurality of fenestrations in each of the plurality of faces has a fixed-size and a fixed-shape.
Savage discloses an implant comprising an apex strut disposed along a longitudinal axis of the implant elongate body, and comprising a plurality of fenestrations having a fixed-size and a fixed-shape (see Figs. 1 and 4B below) in order to provide the implant with durability and strength (see para. [0109]) and provide a scaffold for permitting bone in-growth and fusion (see para. [0078]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to include an apex strut disposed along the longitudinal axis of the elongate body, and to include a plurality of fenestrations of fixed-size and a fixed-shape to claim 1, the concept of which is disclosed by Savage in order to provide the implant with durability and strength and provide a scaffold for permitting bone in-growth and fusion.
Regarding claim 2, see claim 2 of the patent.
Regarding claim 3, see claim 3 of the patent.
Regarding claim 4, see claim 4 of the patent.
Regarding claim 5, see claim 5 of the patent.
Regarding claim 6, see claim 6 of the patent.
Regarding claim 7, see claim 7 of the patent.
Regarding claim 8, see claim 8 of the patent.
Regarding claim 9, see claim 9 of the patent. Claim 9 of the patent does not disclose that the fenestrations are of fixed-size and fixed-shape.
Savage discloses an implant comprising a plurality of fenestrations having a fixed-size and a fixed-shape (see Figs. 1 and 4B below) in order to provide the implant with durability and strength (see para. [0109]) and provide a scaffold for permitting bone in-growth and fusion (see para. [0078]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to include a plurality of fenestrations of fixed-size and fixed-shape to claim 1, the concept of which is disclosed by Savage in order to provide the implant with durability and strength and provide a scaffold for permitting bone in-growth and fusion.
Regarding claim 10, see claim 10 of the patent.
Regarding claim 11, see claim 11 of the patent.
Regarding claim 12, see claim 12 of the patent.
Regarding claim 13, see claim 13 of the patent.
Regarding claim 14, see patent claim 14. Patent claim 14 fails to disclose an apex strut disposed along the longitudinal axis of the elongate body, or that each of the plurality of fenestrations in each of the plurality of faces has a fixed-size and a fixed-shape.
Savage discloses an implant comprising an apex strut disposed along a longitudinal axis of the implant elongate body, and comprising a plurality of fenestrations having a fixed-size and a fixed-shape (see Figs. 1 and 4B below) in order to provide the implant with durability and strength (see para. [0109]) and provide a scaffold for permitting bone in-growth and fusion (see para. [0078]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to include an apex strut disposed along the longitudinal axis of the elongate body, and to include a plurality of fenestrations of fixed-size and a fixed-shape to claim 1, the concept of which is disclosed by Savage in order to provide the implant with durability and strength and provide a scaffold for permitting bone in-growth and fusion.
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Regarding claim 15, see claim 15 of the patent.
Regarding claim 16, see claim 16 of the patent.
Regarding claim 17, see claim 17 of the patent.
Allowable Subject Matter
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, an implant for the fixation or fusion of a sacroiliac joint, as recited in claims 1 and 14, comprising a plurality of apex struts disposed between a proximal end and a distal end of an elongate body and along the longitudinal axis of the elongate body, wherein each apex strut of the plurality of apex struts is part of a first pair of apex struts with a first circumferentially adjacent apex strut, and is part of a second pair of apex struts with a second circumferentially adjacent apex strut, and a plurality of fenestrations having a fixed-size and a fixed-shape. Additionally, no references, or reasonable combination thereof, could be found which disclose, or suggest, an implant for the fixation or fusion of a sacroiliac joint, as recited in claim 9, comprising a plurality of apex struts parallel with the longitudinal axis and disposed between a proximal end and a distal end of an elongate body, wherein each apex strut of the plurality of apex struts is part of a first pair of apex struts with a first circumferentially adjacent apex strut, and is part of a second pair of apex struts with a second circumferentially adjacent apex strut, and a plurality of fenestrations having a fixed-size and a fixed-shape
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN HAMMOND whose telephone number is (571)270-3819. The examiner can normally be reached Monday-Friday 8 - 4 PM .
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eduardo C. Robert, at 571 272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELLEN C HAMMOND/Primary Examiner, Art Unit 3773