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 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 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 (claim 6 includes the limitations of claims 1, 2, and 5) of U.S. Patent No. 11,628,114 (“Lim et al”). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application method is the use of the device of Claim 6 of Lim et al, the device of Lim et al is detailed to be usable in the manner of the method claimed by the instant application.
Instant Application
Lim et al
Claim 21- A method of attachment of a shoulder hold-down to a surgical frame or table and a patient supported by the surgical frame or table, the method comprising:
inserting an expandable shaft portion of the shoulder hold-down into an aperture formed on the surgical frame or table; at least one of rotating the expandable shaft portion relative to the aperture, and moving the expandable shaft portion inwardly and outwardly relative to the aperture to adjust a position of a shoulder-contacting structure of the shoulder hold-down relative to the patient;
contacting a portion the shoulder-contacting structure to a shoulder portion of the patient to maintain a portion of a torso of the patient in position relative to the surgical frame or table;
expanding a first portion of the expandable shaft portion relative to a second portion of the expandable shaft portion against an interior surface of the aperture formed on the surgical frame or table to maintain the expandable shaft portion in position relative to the aperture expandable by:
moving a handle portion from an unactuated position to an actuated position to cause corresponding pivotable movement of a spring portion attached to the handle portion from a first position to a second position;
moving at least a portion of the first portion of the expandable shaft portion out of a channel formed in the second portion of the expandable shaft portion via the pivotal movement of the spring portion from the first position to the second position; and
forcing a contact surface of the first portion of the expandable shaft portion against the interior surface of the aperture;
after the expandable shaft portion is maintained in position relative to the aperture formed on the surgical frame or table, resisting movement of the handle portion from the actuated position to the unactuated position by flexion of the spring portion.
Claim 2- The locking mechanism of claim 1 used as part of a shoulder hold- down for use in securing at least a shoulder of a patient in position relative to a surgical frame,
Claim 2- and including an aperture extending therethrough, the aperture of the base portion including an interior surface and being configured to receive portions of the first shaft portion and the second shaft portion therein
Claim 2- the shoulder engaging portion being attached to the first end of the support shaft portion, and including a shoulder contacting structure configured to contact at least the shoulder of the patient
Claim 1- movement of the one of the second rod and the second fastener toward the one of the first rod and the first fastener causing the second shaft portion to move at least partially out of the channel in the first shaft portion to expand the first shaft portion and the second shaft portion relative to one another
Claim 1- wherein movement of the handle portion from an unactuated position to an actuated position causes pivotal movement of the first portion and the second portion of the spring portion about the one of the first rod and the first fastener
Claim 1- movement of the one of the second rod and the second fastener toward the one of the first rod and the first fastener causing the second shaft portion to move at least partially out of the channel in the first shaft portion to expand the first shaft portion and the second shaft portion relative to one another
Claim 5- impingement of the first exterior surface of the first shaft portion and the second exterior surface of the second shaft portion against the interior surface of the aperture in the base portion to hold the arm portion in position relative to the base portion;
Claim 6- when the handle portion is unactuated, the first shaft portion and the second shaft portion are unexpanded with respect to one another, and the first shaft portion and the second shaft portion are capable of linear and rotational movement in the aperture formed in the base portion
With respect to claim 30, Examiner notes that a rejection under Double Patenting was considered with respect to Lim et al, but Lim et al is silent on “moving at least a first inclined surface formed on the first portion of the expandable shaft portion relative to at least a second inclined surface formed on the second portion of the expandable shaft portion via the pivotable movement of the spring portion” as required by the claim.
With respect to claim 37, Examiner notes that a rejection under Double Patenting was considered with respect to Lim et al, but Lim et al is silent on “moving at least a portion of the first portion of the expandable shaft portion out of a channel formed in the second portion of the expandable shaft portion via the movement between the at least a first inclined surface of the first portion relative to the at least a second inclined surface of the second portion of the expandable shaft portion” as required by the claim.
Claim Objections
Claim 21 is objected to because of the following informalities: Claim 21 line 6 is suggested to recite “aperture[[,]] and moving the expandable shaft portion inwardly and outwardly”. Appropriate correction is required.
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 26, 27, and 35-40 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 26 recites the limitation "the base portion" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 27 recites the limitation "the first side portion of the spring portion" in line 3 of page 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 35 recites the limitation "the base portion" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 36 recites the limitation "the first side portion of the spring portion" in lines 7-8. There is insufficient antecedent basis for this limitation in the claim.
Claim 37 recites the limitation "the spring portion" in line 8 of page 7. There is insufficient antecedent basis for this limitation in the claim.
Claims 38-40 are indefinite for depending on claim 37 and not remedying the deficiencies of claim 37.
Claim 40 recites the limitation " the spring portion from first position to the second position" in lines 4-5. There is insufficient antecedent basis for this limitation in the claim.
Allowable Subject Matter
Claims 22-25 and 28-34 as presented in the claims filed April 21, 2025, would be allowed over the prior art of record; claim 21 would be allowable if the Applicant filed a Terminal Disclaimer or amended the claim to overcome the Double Patenting rejection above; and claims 26, 27, 35-40, if amended to overcome the current 112 rejections above, would be in condition for allowance. Applicant must either amend claim 21 to overcome the Double Patenting Rejection above or submit a Terminal Disclaimer. The following is Examiner’s reason for indicating allowability:
Claim 21 would be allowable because the closest prior art of record fails to disclose A method of attachment of a shoulder hold-down to a surgical frame or table and a patient supported by the surgical frame or table, the method comprising:
inserting an expandable shaft portion of the shoulder hold-down into an aperture formed on the surgical frame or table;
at least one of rotating the expandable shaft portion relative to the aperture, and moving the expandable shaft portion inwardly and outwardly relative to the aperture to adjust a position of a shoulder-contacting structure of the shoulder hold-down relative to the patient;
contacting a portion the shoulder-contacting structure to a shoulder portion of the patient to maintain a portion of a torso of the patient in position relative to the surgical frame or table;
expanding a first portion of the expandable shaft portion relative to a second portion of the expandable shaft portion against an interior surface of the aperture formed on the surgical frame or table to maintain the expandable shaft portion in position relative to the aperture expandable by:
moving a handle portion from an unactuated position to an actuated position to cause corresponding pivotable movement of a spring portion attached to the handle portion from a first position to a second position;
moving at least a portion of the first portion of the expandable shaft portion out of a channel formed in the second portion of the expandable shaft portion via the pivotal movement of the spring portion from the first position to the second position; and
forcing a contact surface of the first portion of the expandable shaft portion against the interior surface of the aperture;
after the expandable shaft portion is maintained in position relative to the aperture formed on the surgical frame or table, resisting movement of the handle portion from the actuated position to the unactuated position by flexion of the spring portion.
The closest prior art of record is US 2,463,400 (“Lowe”) which discloses A method of attachment of a shoulder hold-down to a surgical frame or table and a patient supported by the surgical frame or table (Fig 1, col 1 ll 15-20, shoulder device shown), the method comprising:
inserting an expandable shaft portion of the shoulder hold-down into an aperture formed on the surgical frame or table (Fig 3, shaft 18 in aperture 17, shaft allows for vertical expansion relative to the aperture so interpreted as expandable);
at least one of rotating the expandable shaft portion relative to the aperture, and moving the expandable shaft portion inwardly and outwardly relative to the aperture to adjust a position of a shoulder-contacting structure of the shoulder hold-down relative to the patient (col 2 ll 15-20, ll 30-45, shaft moved vertically relative to the aperture 17 to align with the bed and shoulder);
contacting a portion the shoulder-contacting structure to a shoulder portion of the patient to maintain a portion of a torso of the patient in position relative to the surgical frame or table (col 2 ll 15-20, user held in place).
Lowe, alone or in combination, is silent on expanding a first portion of the expandable shaft portion relative to a second portion of the expandable shaft portion against an interior surface of the aperture formed on the surgical frame or table to maintain the expandable shaft portion in position relative to the aperture expandable by:
moving a handle portion from an unactuated position to an actuated position to cause corresponding pivotable movement of a spring portion attached to the handle portion from a first position to a second position;
moving at least a portion of the first portion of the expandable shaft portion out of a channel formed in the second portion of the expandable shaft portion via the pivotal movement of the spring portion from the first position to the second position; and
forcing a contact surface of the first portion of the expandable shaft portion against the interior surface of the aperture;
after the expandable shaft portion is maintained in position relative to the aperture formed on the surgical frame or table, resisting movement of the handle portion from the actuated position to the unactuated position by flexion of the spring portion.
Claims 22-29 would be allowed due to their dependency on an allowable claim.
Claim 30 would be allowable because the closest prior art of record fails to disclose A method of attachment of a shoulder hold-down to a surgical frame or table and a patient supported by the surgical frame or table, the method comprising:
contacting a portion of a shoulder-contacting structure to a shoulder portion of the patient to maintain a portion of a torso of the patient in position relative to the surgical frame or table;
inserting an expandable shaft portion of the shoulder hold-down into an aperture formed on the surgical frame or table;
expanding a first portion of the expandable shaft portion relative to a second portion of the expandable shaft portion against an interior surface of the aperture formed on the surgical frame or table to maintain the expandable shaft portion in position relative to the aperture expandable by:
moving a handle portion from an unactuated position to an actuated position to cause corresponding pivotable movement of a spring portion attached to the handle portion from a first position to a second position;
moving at least a first inclined surface formed on the first portion of the expandable shaft portion relative to at least a second inclined surface formed on the second portion of the expandable shaft portion via the pivotable movement of the spring portion;
moving at least a portion of the first portion of the expandable shaft portion out of a channel formed in the second portion of the expandable shaft portion via the movement between the at least a first inclined surface of the first portion relative to the at least a second inclined surface of the second portion of the expandable shaft portion; and
forcing a contact surface of the first portion of the expandable shaft portion against the interior surface of the aperture;
after the expandable shaft portion is maintained in position relative to the aperture formed on the surgical frame or table, resisting movement of the handle portion from the actuated position to the unactuated position by flexion of the spring portion.
The closest prior art of record is Lowe which discloses A method of attachment of a shoulder hold-down to a surgical frame or table and a patient supported by the surgical frame or table (Fig 1, col 1 ll 15-20, shoulder device shown), the method comprising:
contacting a portion of a shoulder-contacting structure to a shoulder portion of the patient to maintain a portion of a torso of the patient in position relative to the surgical frame or table (col 2 ll 15-20, ll 30-45, shaft moved vertically relative to the aperture 17 to align with the bed and shoulder);
inserting an expandable shaft portion of the shoulder hold-down into an aperture formed on the surgical frame or table (Fig 3, shaft 18 in aperture 17, shaft allows for vertical expansion relative to the aperture so interpreted as expandable);
Lowe, alone or in combination, is silent on-
expanding a first portion of the expandable shaft portion relative to a second portion of the expandable shaft portion against an interior surface of the aperture formed on the surgical frame or table to maintain the expandable shaft portion in position relative to the aperture expandable by:
moving a handle portion from an unactuated position to an actuated position to cause corresponding pivotable movement of a spring portion attached to the handle portion from a first position to a second position;
moving at least a first inclined surface formed on the first portion of the expandable shaft portion relative to at least a second inclined surface formed on the second portion of the expandable shaft portion via the pivotable movement of the spring portion;
moving at least a portion of the first portion of the expandable shaft portion out of a channel formed in the second portion of the expandable shaft portion via the movement between the at least a first inclined surface of the first portion relative to the at least a second inclined surface of the second portion of the expandable shaft portion; and
forcing a contact surface of the first portion of the expandable shaft portion against the interior surface of the aperture;
after the expandable shaft portion is maintained in position relative to the aperture formed on the surgical frame or table, resisting movement of the handle portion from the actuated position to the unactuated position by flexion of the spring portion.
Claims 31-36 would be allowable to their dependency on an allowable claim.
Claim 37 would be allowable because the closest prior art of record fails to disclose A method of attachment of a shoulder hold-down to a surgical frame or table and a patient supported by the surgical frame or table, the method comprising:
contacting a portion of a shoulder-contacting structure to a shoulder portion of the patient to maintain a portion of a torso of the patient in position relative to the surgical frame or table;
inserting an expandable shaft portion of the shoulder hold-down into an aperture formed on the surgical frame or table;
expanding a first portion of the expandable shaft portion relative to a second portion of the expandable shaft portion to contact an interior surface of the aperture formed on the surgical frame or table by:
moving a handle portion from an unactuated position to an actuated position to correspondingly cause movement of at least a first inclined surface formed on the first portion of the expandable shaft portion relative to at least a second inclined surface formed on the second portion of the expandable shaft portion;
moving at least a portion of the first portion of the expandable shaft portion out of a channel formed in the second portion of the expandable shaft portion via the movement between the at least a first inclined surface of the first portion relative to the at least a second inclined surface of the second portion of the expandable shaft portion; and
forcing a contact surface of the first portion of the expandable shaft portion against the interior surface of the aperture;
after the expandable shaft portion is maintained in position relative to the aperture formed on the surgical frame or table, resisting movement of the handle portion from the actuated position to the unactuated position by flexion of the spring portion.
The closest prior art of record is Lowe which discloses A method of attachment of a shoulder hold-down to a surgical frame or table and a patient supported by the surgical frame or table (Fig 1, col 1 ll 15-20, shoulder device shown), the method comprising:
contacting a portion of a shoulder-contacting structure to a shoulder portion of the patient to maintain a portion of a torso of the patient in position relative to the surgical frame or table (col 2 ll 15-20, ll 30-45, shaft moved vertically relative to the aperture 17 to align with the bed and shoulder);
inserting an expandable shaft portion of the shoulder hold-down into an aperture formed on the surgical frame or table (Fig 3, shaft 18 in aperture 17, shaft allows for vertical expansion relative to the aperture so interpreted as expandable);
Lowe, alone or in combination, is silent on- expanding a first portion of the expandable shaft portion relative to a second portion of the expandable shaft portion to contact an interior surface of the aperture formed on the surgical frame or table by:
moving a handle portion from an unactuated position to an actuated position to correspondingly cause movement of at least a first inclined surface formed on the first portion of the expandable shaft portion relative to at least a second inclined surface formed on the second portion of the expandable shaft portion;
moving at least a portion of the first portion of the expandable shaft portion out of a channel formed in the second portion of the expandable shaft portion via the movement between the at least a first inclined surface of the first portion relative to the at least a second inclined surface of the second portion of the expandable shaft portion; and
forcing a contact surface of the first portion of the expandable shaft portion against the interior surface of the aperture;
after the expandable shaft portion is maintained in position relative to the aperture formed on the surgical frame or table, resisting movement of the handle portion from the actuated position to the unactuated position by flexion of the spring portion.
Claims 38-40 would be allowable due to their dependency on an allowable claim.
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.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM D BAKER whose telephone number is (571)270-3333. The examiner can normally be reached Monday-Friday 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachael E Bredefeld can be reached at (571)270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM BAKER/Primary Examiner, Art Unit 3786