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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include DD2 mentioned in the specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12144744.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the only difference between the claims of the present application and the patented claims is that the patented claims include more features and are thus more specific. Thus, the invention of the patented claims is in effect a “species” of the “generic” invention of the claims of the present 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 the claims of the present application are anticipated by the patented claims, they are not patentably distinct from the patented claims.
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 8 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(s) 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. In claim 8, the recitation “..contact surface is configured to receive a cannula” is not described in Applicant’s disclosure. Applicant’s disclosure, as originally filed, describes the cannula to be placed in the funnel for dispensing material.
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 1-20 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.
In claims 1, 18 and 19, the recitation “at least a portion of the plunger” renders the claim vague and indefinite because it implies that the entire plunger can be received through the back opening and the front opening. Applicant’s disclosure describes “…a stopper 42 that is configured to prevent the plunger from passing entirely through the first and second openings of the housing when the plunger is translated in the direction of the distal end of the housing.”
In claim 8, the recitation “..wherein the contact surface, the funnel or both the contact surface and the funnel are configured to receive a cannula” renders the claim vague and indefinite because it is unclear how the contact surface is configured to receive the cannula.
In claim 19, the recitation “…optionally stabilizing the funnel by engaging a portion of the funnel with the front opening…” renders the claim vague and indefinite due to the word “optionally” because the method of dispensing requires the funnel or cannula to be engaged to the housing.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-9 and 11-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deridder et al. (US 20200008853 A1).
Regarding claims 1 and 18, Derrider et al. disclose a bone material dispensing device including a housing (Fig. 2) having a proximal end, a distal end, and a longitudinal axis, the proximal end having a first opening and the distal end comprising a frame having a front wall, and a back wall, the back wall having a back opening and the front wall having a second opening such that the first opening, the back opening and the second opening are configured to slidably receive a portion of a plunger, the front wall including a generally flat contact surface configured to engage a funnel 176 such that a portion of the funnel is connected to the housing. As shown in Figs. 3 and 4, and para [0062], when tubular member 84 is detached from the housing, the front surface of the housing is generally flat. (Fig. 2-4, paras [0048]-[0062]. Also, see marked up Fig. 2 on the following page).
Regarding claim 2, the frame includes a top end having a generally flat top surface (Fig. 6).
Regarding claim 3, the frame includes a tapered end opposing the top end along a longitudinal axis of the frame (see marked up Fig. 2 below).
Regarding claim 4, the frame includes several edges of which a first edge and a second edge oppose each other along a horizontal axis, for e.g. the longitudinal axis (Fig. 2).
Regarding claim 5, the frame includes a first edge and a second edge opposing each other along a horizontal axis and joined together at an apex of the tapered end (see marked up Fig.2 on the following page).
Regarding claim 6, the contact surface has a front opening configured to engage a portion of the funnel (Fig. 3, when tubular member 84 is detached).
Regarding claim 7, the distal frame is monolithic with the housing (see marked up Fig. 2).
Regarding claims 8 and 9, the contact surface, the funnel or both the contact surface and the funnel are configured to receive a cannula wherein the cannula is a folding cannula (Fig. 2).
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Regarding claim 11, the funnel is configured to enclose the second opening 32 (Fig. 2 and Fig. 3 ).
Regarding claim 12, the funnel 176 includes a proximal portion, a funnel body and a distal end along a central axis (see marked up Fig. 2 above).
Regarding claims 13 and 16, the proximal portion of the funnel has a generally conical shape having an inner surface and a decreasing diameter toward the funnel body (see marked up Fig. 2 above).
Regarding claims 14 and 17, the inner surface of the conical shape has a slope forming an angle with the central axis (Fig. 2).
Regarding claim 15, the funnel body has a proximal end (bottom of the conical portion connected to the funnel body in marked up Fig. 2 above) and a distal end (top of the conical portion connected to the housing in marked up Fig. 2 above), the proximal end and distal end each having a diameter, the diameter of the proximal end being smaller than the diameter of the distal end (see marked up Fig. 2 above).
Regarding claim 19, Derrider disclose a method of loading a bone material dispensing device with the bone material via a funnel and/or a cannula, the bone material dispensing device comprising a housing having a proximal end, a distal end,
and a longitudinal axis, the proximal end having a first opening and the distal end having a frame comprising a second opening, and a back opening, the first opening, the back opening and the second opening configured to slidably receive at least a portion of a plunger, and a funnel such that a portion of the funnel is connected to the housing, the housing configured to engage a portion of the funnel, aligning the funnel with the second opening and the back opening of the frame and stabilizing the funnel by engaging a portion of the funnel with the front opening, and the funnel to receive a portion of the plunger to dispense the bone material (Figs. 8-10, para [0005], [0007]- [0008], paras [0084]-[0089] and para [0100]).
Regarding claim 20, Derrider discloses loading the bone material dispensing device with the bone material via a funnel and/or a cannula wherein the cannula is engaged with a tray, adding the bone material to the cannula and inserting the cannula into the funnel (para [0089]).
Conclusion
Non application of prior art to claim 10 indicates allowable subject matter provided the double-patenting rejections are overcome.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anu Ramana whose telephone number is (571)272-4718. The examiner can normally be reached 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached on (571)272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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January 23, 2026
/Anu Ramana/Primary Examiner, Art Unit 3775