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, 2, 4 and 6-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 9, 21, 27, 28, 31 and 34-39 of U.S. Patent No. 11,457,910 B1. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 8 of the patent (including all elements of independent claim 1 from which claim 8 depends from) recites all of the elements of independent claim 1 of the application. The difference between claim 8 of the patent and independent claim 1 of the application lies in the fact that the patent further recites “a length defining a midline axis” (claim 1, line 2 of the patent), wherein a path from the proximal opening to the distal opening “extends along a guide axis oblique to the midline axis” (claim 1, lines 10-11 of the patent), and “a K-wire extending through the guide along the path” (claim 1, line 14 of the patent). Thus the invention of claim 8 of the patent is in effect a "species" of the “generic” invention of claim 1 of the 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 1 of the application is anticipated by respective claim 8 of the patent, it is not patentably distinct from claim 8 of the patent.
Furthermore, claim 8 of the patent (including all elements of independent claim 1 from which it depends from) recites all of the elements of dependent claim 2 of the application. Claim 1, line 15 of the patent recites “a K-wire extending through the guide along the path”, thus reciting all of the elements of claim 2 of the application.
Furthermore, claim 9 of the patent (including all elements of independent claim 1 and claim 8 from which claim 9 depends from) recites all of the elements of dependent claims 10-12 of the application. Claim 9 of the patent recites “wherein the barb is the only barb of the shim; wherein the barb has a proximal side extending parallel to a guide axis of the guide; wherein the proximal side of the barb has a steeper slope than a distal side of the guide; and wherein a maximum height of the barb above the front surface of the shim is the same as a maximum height of the guide above the front surface of the shim”, thus reciting all of the elements of claims 10-12 of the application.
Claim 19 of the patent (including all elements of independent claim 16 from which claim 19 depends from) recites all of the elements of independent claim 13 of the application. The difference between claim 19 of the patent and independent claim 13 of the application lies in the fact that the patent further recites “making available for use a surgical shim and a retractor having a retractor blade” (claim 16, lines 2-3 of the patent). Thus the invention of claim 19 of the patent is in effect a "species" of the “generic” invention of claim 13 of the 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 13 of the application is anticipated by respective claim 19 of the patent, it is not patentably distinct from claim 19 of the patent.
Claim 27 of the patent (including all elements of independent claim 21 from which claim 27 depends from) recites all of the elements of independent claim 1 of the application. The difference between claim 27 of the patent and independent claim 1 of the application lies in the fact that the patent further recites “wherein the guide includes: a proximal wall; a distal wall; and a roof spanning at least a portion of the proximal wall and at least a portion of the distal wall; and wherein the roof covers at least a portion of the back opening” (claim 21, lines 13-19 of the patent). Thus the invention of claim 27 of the patent is in effect a "species" of the “generic” invention of claim 1 of the 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 1 of the application is anticipated by respective claim 27 of the patent, it is not patentably distinct from claim 27 of the patent.
Furthermore, claim 27 of the patent (including all elements of independent claim 21 from which claim 27 depends from) recites all of the elements of dependent claim 6 of the application. Claim 21, lines 13-17 of the patent recite “wherein the guide includes: a proximal wall; a distal wall; and a roof spanning at least a portion of the proximal wall and at least a portion of the distal wall”, thus reciting all of the elements of claim 6 of the application.
Furthermore, claim 27 of the patent (including all elements of independent claim 21 from which claim 27 depends from) recites all of the elements of dependent claim 7 of the application. Claim 21, lines 18-19 of the patent recite “wherein the roof covers at least a portion of the back opening”, thus reciting all of the elements of claim 7 of the application.
Furthermore, claim 28 of the patent (including all elements of independent claim 21 and claim 27 from which claim 28 depends from) recites all of the elements of dependent claims 10-12 of the application. Claim 28 of the patent recites “wherein the barb has a proximal side extending parallel to a guide axis of the guide; wherein the proximal side of the barb has a steeper slope than a distal side of the guide; and wherein a maximum height of the barb above the front surface of the shim is the same as a maximum height of the guide above the front surface of the shim”, thus reciting all of the elements of claims 10-12 of the application. It is noted that claims 10, 11 and 12 of the application recite wherein the surgical shim has: one or more features (claim 10), two or more features (claim 11), or three or more features (claim 12) selected from a group of features, such as the features disclosed above. Claims 10-12 recite an additional feature in the group of features that is not disclosed in claim 28: “the barb being the only barb of the shim”. However, since claim 28 discloses the three other features in the group of features recited in claims 10-12, and claims 10-12 only require the surgical shim to have one, two, or three features from the group of features recited in claim 28, then claim 28 reads on claims 10-12.
Claim 31 of the patent recites all of the elements of independent claim 1 of the application. The difference between claim 31 of the patent and independent claim 1 of the application lies in the fact that the patent further recites “wherein the barb is the only barb of the shim; wherein the barb has a proximal side extending parallel to a guide axis of the guide; wherein the proximal side of the barb has a steeper slope than a distal side of the guide; and wherein a maximum height of the barb above the front surface of the shim is the same as a maximum height of the guide above the front surface of the shim” (claim 31, lines 16-23 of the patent). Thus the invention of claim 31 of the patent is in effect a "species" of the “generic” invention of claim 1 of the 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 1 of the application is anticipated by respective claim 31 of the patent, it is not patentably distinct from claim 31 of the patent.
Furthermore, claim 31 of the patent recites “wherein the barb is the only barb of the shim; wherein the barb has a proximal side extending parallel to a guide axis of the guide; wherein the proximal side of the barb has a steeper slope than a distal side of the guide; and wherein a maximum height of the barb above the front surface of the shim is the same as a maximum height of the guide above the front surface of the shim” (claim 31, lines 16-23), thus reciting all of the elements of claims 10-12 of the application.
Furthermore, claim 34 of the patent (including all elements of independent claim 31 from which claim 34 depends from) recites all of the elements of dependent claim 4 of the application. Claim 34of the patent recites “wherein the guide further defines a front opening”, thus reciting all of the elements of claim 4 of the application.
Furthermore, claim 36 of the patent (including all elements of independent claim 31 and claim 35 from which claim 36 depends from) recites all of the elements of dependent claim 4 of the application. Claim 36 of the patent recites “wherein the guide further includes: a proximal wall; and a distal wall, wherein the roof spans at least part of the proximal wall and the distal wall”, thus reciting all of the elements of claim 6 of the application.
Furthermore, claim 37 of the patent (including all elements of independent claim 31 and claims 35-36 from which claim 37 depends from) recites all of the elements of dependent claim 7 of the application. Claim 37 of the patent recites “wherein the roof covers a portion of the back opening”, thus reciting all of the elements of claim 7 of the application.
Furthermore, claim 38 of the patent (including all elements of independent claim 31 and claims 35-36 from which claim 38 depends from) recites all of the elements of dependent claim 8 of the application. Claim 38 of the patent recites “wherein at least a portion of a floor of the guide between the proximal wall and the distal wall is not covered by the roof”, thus reciting all of the elements of claim 8 of the application.
Furthermore, claim 39 of the patent (including all elements of independent claim 31 and claims 35-36 from which claim 39 depends from) recites all of the elements of dependent claim 9 of the application. Claim 39 of the patent recites “wherein no portion of the guide along the path is covered by both a floor and the roof when viewed from the front”, thus reciting all of the elements of claim 9 of the application.
Claims 1, 3 and 10-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9-12 of U.S. Patent No. 12,161,313 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 9 of the patent (including all elements of independent claim 1 from which claim 9 depends from) recites all of the elements of independent claim 1 of the application. The difference between claim 9 of the patent and independent claim 1 of the application lies in the fact that the patent further recites “wherein the proximal opening is non-perpendicular to the from surface” (claim 1, lines 12-13 of the patent). Thus the invention of claim 9 of the patent is in effect a "species" of the “generic” invention of claim 1 of the 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 1 of the application is anticipated by respective claim 9 of the patent, it is not patentably distinct from claim 9 of the patent.
Furthermore, claim 9 of the patent (including all elements of independent claim 1 from which claim 9 depends from) recites all of the elements of dependent claim 3 of the application. Independent claim 1 of the patent recites “wherein the proximal opening is non-perpendicular to the front surface” (claim 1, lines 12-13 of the patent), thus reciting all of the elements of claim 3 of the application.
Furthermore, claim 10 of the patent (including all of the elements of independent claim 1 and claim 9 from which claim 10 depends from) recites all of the elements of dependent claim 10 of the application. Claim 10 if the patent recites “wherein the surgical shim has one or more features from a group of features consisting of: the barb is the only barb of the shim; the barb having a proximal side extending parallel to a guide axis of the guide; the barb having a proximal side with a steeper slope than a distal side of the guide; and a maximum height of the barb above the front surface of the shim is the same as a maximum height of the guide above the front surface of the shim”, thus reciting all of the elements of claim 10 of the application.
Furthermore, claim 11 of the patent (including all of the elements of independent claim 1 and claim 9 from which claim 11 depends from) recites all of the elements of dependent claim 11 of the application. Claim 11 if the patent recites “wherein the surgical shim has two or more features from a group of features consisting of: the barb is the only barb of the shim; the barb having a proximal side extending parallel to a guide axis of the guide; the barb having a proximal side with a steeper slope than a distal side of the guide; and a maximum height of the barb above the front surface of the shim is the same as a maximum height of the guide above the front surface of the shim”, thus reciting all of the elements of claim 11 of the application.
Furthermore, claim 12 of the patent (including all of the elements of independent claim 1 and claim 9 from which claim 12 depends from) recites all of the elements of dependent claim 12 of the application. Claim 12 if the patent recites “wherein the surgical shim has three or more features from a group of features consisting of: the barb is the only barb of the shim; the barb having a proximal side extending parallel to a guide axis of the guide; the barb having a proximal side with a steeper slope than a distal side of the guide; and a maximum height of the barb above the front surface of the shim is the same as a maximum height of the guide above the front surface of the shim”, thus reciting all of the elements of claim 12 of the application.
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 9 and 16 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 9 recites the limitation "when viewed from the front" in line 2. There is insufficient antecedent basis for this limitation in the claim. Furthermore, “the front” is a relative term such that the front may be defined as any direction or point of view (i.e. a spacer can be turned around such that what was previously defined as the back can now be considered the front).
Claim 16 recites the limitation "past a back opening" in line 5. It is unclear whether “a backing opening” is referring to the back opening in lines 11-12 of claim 13, or if a new back opening is being claimed. For the purpose of examining the claim, “past a back opening” in line 5 of claim 16 will be interpreted as “past the back opening”.
Appropriate corrections are required.
Allowable Subject Matter
Claims 5 and 14-16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Publication No.2013/0190575 A1 Mast et al.
U.S. Publication No.2013/0237767 A1 Nunley et al.
U.S. Patent No.7,905,840 B2 Pimenta et al.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christina Negrelli whose telephone number is 571-270-7389. The examiner can normally be reached on Monday-Friday, between 8:00am to 4:00pm. If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eduardo 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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/CHRISTINA NEGRELLI/
Examiner, Art Unit 3773
/EDUARDO C ROBERT/Supervisory Patent Examiner, Art Unit 3773