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
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,144,496. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 1-8 of the current application and the invention of claims 1-15 of the patent lies in the fact that the invention of claims 1-15 of the patent includes more elements and is thus more specific. Thus the invention of claims 1-15 of the patent is in effect a "species" of the "generic" invention of claims 1-8 of the current 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 claims 1-8 are anticipated by claims 1-15, claims 1-8 are not patentably distinct from claims 1-15.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,666,317. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 1-8 of the current application and the invention of claims 1-20 of the patent lies in the fact that the invention of claims 1-20 of the patent includes more elements and is thus more specific. Thus the invention of claims 1-20 of the patent is in effect a "species" of the "generic" invention of claims 1-8 of the current 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 claims 1-8 are anticipated by claims 1-20, claims 1-8 are not patentably distinct from claims 1-20.
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.
Claim 8 is 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 8 lines 3-4 recite …wherein the housing is fixedly coupled to a portion of the housing such that the first component displaces relative to the second component when the cylindrical gear is rotated. Claim 8 lines 3-4 are unclear and the examiner is not sure how the applicant intends to limit the invention. Therefore, the examiner will treat claim 8 as best understood for examination purposes, i.e. …wherein the component is a first component for use in a medical procedure, the assembly further comprising a second component for use in the medical procedure.
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.
Claims 1-5 and 8 are rejected as best understood under 35 U.S.C. 102(a)(1) as being anticipated by a Koros (U.S. Patent 5,795,291).
Koros discloses a device (for example see Figure 6) comprising:
(claim 1) a component capable of being used in a medical procedure including
(claim 2) a panel assembly having
(claim 2) a first portion (150 and 152) configured to engage a portion of a patient’s ribcage
(claim 3) wherein the first portion of the panel assembly is an elongated support portion that extends from a proximal end to a distal end
(claim 2) a second portion (160 and 165)
(claim 3) wherein a portion of the second portion is a mounting post extending from the proximal end of the support portion
(claim 3) wherein the mounting post is configured to be removably coupled to a first portion of the indicator handle
(claim 4) wherein the support portion extends from the proximal end to the distal end along a support portion axis, i.e. a longitudinal axis
(claim 4) wherein the mounting post extends along an axis that is substantially normal, i.e. perpendicular, to the support portion axis (the post is circular and extends radially in a width dimension that is perpendicular to the longitudinal axis of element 150)
(claim 2) an indicator handle (18 and 19)
(claim 2) wherein a first portion (19) of the indicator handle is coupled to the second portion of the panel assembly
(claim 1) a linear rack (16 and 20) extending from a first end to a second end along a rack axis
(claim 1) the second end of the linear rack (16) being coupled to a first portion (15) of the component
(claim 5) wherein the second end of the linear rack is pivotably coupled to a first end portion of the component (18)
(claim 1) the linear rack including a plurality of teeth (27)
(claim 1) a housing (30) movably coupled to the linear rack including
(claim 1) a cylindrical gear (36) configured to rotate relative to a portion of the housing
(claim 1) a portion of the cylindrical gear engaging a portion of the plurality of teeth of the linear rack to displace the linear rack relative to the portion of the housing when the cylindrical gear is rotated
(claim 8) a second component (200) capable of being used in a surgical procedure
Allowable Subject Matter
Claims 6 and 7 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 and to overcome the obviousness double patenting rejection as discussed above.
The following is a statement of reasons for the indication of allowable subject matter: Claim 6 further includes a pawl and fixed indexing gear (see Figure 2A of the application) to rotationally lock the linear rack relative to the indicator handle. The examiner was unable to find a reference or a combination of references that disclose and/or teach the limitations of claim 6 as presented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for references the examiner felt were relevant to the application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas Woodall whose telephone number is (571) 272-5204. The examiner can normally be reached on Monday-Friday 8am to 5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS W WOODALL/Primary Examiner, Art Unit 3775