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.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,150,745. Although the claims at issue are not identical, they are not patentably distinct from each other because the present application is directed to a method for stabilizing a spine while the patent is directed to a spinal system. The method of the present application is directed to providing a spinal system, the spinal system including all of the same structures as the spinal system of the patent. The method of the present application cannot be performed with a materially different structure and therefore is not distinct from the system of the patent. Independent claim 1 corresponds to claim 1 of the patent, while dependent claims 2-11 correspond to dependent claims 2-11, respectively, of the patent.
Claim Objections
Claims 1-11 are objected to because of the following informalities: claim 1 states “stabilizing a spinal” which should state “stabilizing a spine” in line 1, “a spinal system” should state “a spinal system” in line 2. The wherein clause which begins on line 12 should end with a comma. 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 1-11 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 recites the limitation "the bone" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the subject" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "said reflector" in line 4-5. There is insufficient antecedent basis for this limitation in the claim. Examiner suggests amending the limitation to state “said at least one reflector”.
Claim 1 recites the limitation "the structure" in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the reflector" in lines 9, 11 and 14. There is insufficient antecedent basis for this limitation in the claim. Examiner suggests amending the limitation to state “the at least one reflector”.
Claim 1 recites the limitation "the characteristic frequency range" in line 11. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "the reflector" in line 1. There is insufficient antecedent basis for this limitation in the claim. Examiner suggests amending the limitation to state “the at least one reflector”.
Regarding claim 4, it is unclear as to whether “at least two reflectors” are further defining “at least one reflector” of claim 1 or are additional reflectors.
Regarding claim 5, it is unclear as to whether the “different reflectors” are further defining “at least one reflector” of claim 1 or are additional reflectors.
Claim 6 recites the limitation "said reflector" in line 4. There is insufficient antecedent basis for this limitation in the claim. Examiner suggests amending the limitation to state “said at least one reflector”.
Regarding claim 6, it is unclear as to whether “a reflected signal on said reflector” is the same as “a reflected signal corresponding to a reflection, on the reflector” or an additional reflected signal.
Claim 10 recites the limitation "the reflector" in line 1. There is insufficient antecedent basis for this limitation in the claim. Examiner suggests amending the limitation to state “the at least one reflector”.
Regarding claim 11, it is unclear as to whether “at least one reflector” in line 2 is the same as “at least one reflector” set forth in claim 1 or an additional at least one reflector.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROCHELLE DEANNA TURCHEN whose telephone number is (571)270-7104. The examiner can normally be reached Mon - Fri 6:30-2:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Koharski can be reached at (571)272-7230. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROCHELLE D TURCHEN/Primary Examiner, Art Unit 3797