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 1-3, 7, 9, 14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,058,367. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 1-3, 7, 9, 14, and 16 of the current application and the invention of claims 1-19 of the patent lies in the fact that the invention of claims 1-19 of the patent includes more elements and is thus more specific. Thus the invention of claims 1-19 of the patent is in effect a "species" of the "generic" invention of claims 1-3, 7, 9, 14, and 16 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 1-3, 7, 9, 14, and 16 are anticipated by claims 1-19, claims 1-3, 7, 9, 14, and 16 are not patentably distinct from claims 1-19.
Claims 1-3, 7, 9, 14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,716,609. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 1-3, 7, 9, 14, and 16 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 1-3, 7, 9, 14, and 16 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 1-3, 7, 9, 14, and 16 are anticipated by claims 1-20, claims 1-3, 7, 9, 14, and 16 are not patentably distinct from claims 1-20.
Claims 1-3, 7, 9, 14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,617,608. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 1-3, 7, 9, 14, and 16 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 1-3, 7, 9, 14, and 16 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 1-3, 7, 9, 14, and 16 are anticipated by claims 1-20, claims 1-3, 7, 9, 14, and 16 are not patentably distinct from claims 1-20.
Claims 1, 2, 6, 7, 9, 14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 12,171,474. 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, 2, 6, 7, 9, 14, and 16 of the current application and the invention of claims 1-28 of the patent lies in the fact that the invention of claims 1-28 of the patent includes more elements and is thus more specific. Thus the invention of claims 1-28 of the patent is in effect a "species" of the "generic" invention of claims 1, 2, 6, 7, 9, 14, and 16 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, 2, 6, 7, 9, 14, and 16 are anticipated by claims 1-18, claims 1, 2, 6, 7, 9, 14, and 16 are not patentably distinct from claims 1-18.
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 14 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 14 recites the limitation "the channel" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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 1-3, 14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a first interpretation of Hammill (U.S. Publication 2011/0040336).
Regarding claims 1-3 and 14:
Hammill discloses a device (for example see Figure 6) comprising:
(claim 1) a receiving part (30) including
(claim 1) a first end
(claim 1) a second end
(claim 1) a central axis extending through the first end and the second end
(claim 1) a recess (49)
(claim 1) wherein the recess is for receiving a rod
(claim 1) an accommodation space (44)
(claim 1) wherein the accommodation space is for accommodating a head of a bone anchoring element
(claim 1) a retainer element (42)
(claim 1) the retainer element configured to be positioned at least partially in the accommodation space
(claim 1) the retainer element sized to at least partially encompass an inserted head
(claim 1) the retainer element including
(claim 1) at least one spring portion (102)
(claim 2) wherein the spring portion includes sections (the plurality of helical coils forming the spring) that extend in a meandering manner, i.e. helically, along a longitudinal axis that is substantially parallel to the central axis
(claim 3) wherein an outer contour and an inner contour of the spring portion is substantially cylinder segment-shaped
(claim 14) wherein the at least one spring portion includes two spring portions arranged on either side of the channel/recess for receiving the rod
(claim 12) a first end (the end that engages the rod)
(claim 12) a second end (the end that receives the screw head)
Regarding claim 16:
Hammill discloses the device as discussed above further comprising:
(claim 16) a bone anchoring element (12) including
(claim 16) a shank for anchoring to bone
(claim 16) a head
Claims 1-3, 6, 7, 9, 14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a second interpretation of Hammill (U.S. Publication 2011/0040336).
Regarding claims 1-3, 6, 7, 9, and 14:
Hammill discloses a device (for example see annotated figure below) comprising:
(claim 1) a receiving part (30) including
(claim 1) a first end
(claim 1) a second end
(claim 1) a central axis extending through the first end and the second end
(claim 1) a recess (49)
(claim 1) wherein the recess is for receiving a rod
(claim 1) an accommodation space (44)
(claim 1) wherein the accommodation space is for accommodating a head of a bone anchoring element
(claim 1) a retainer element (see below)
(claim 1) the retainer element configured to be positioned at least partially in the accommodation space
(claim 1) the retainer element sized to at least partially encompass an inserted head
(claim 1) the retainer element including
(claim 1) at least one spring portion (102)
(claim 2) wherein the spring portion includes sections (the plurality of helical coils forming the spring) that extend in a meandering manner, i.e. helically, along a longitudinal axis that is substantially parallel to the central axis
(claim 3) wherein an outer contour and an inner contour of the spring portion is substantially cylinder segment-shaped
(claim 14) wherein the at least one spring portion includes two spring portions arranged on either side of the channel/recess for receiving the rod
(claim 12) a first end (the end that connects with the pressure element)
(claim 12) a second end (the end that receives the screw head)
(claim 6) a pressure element (see below)
(claim 6) wherein the pressure element is configured to be position at least partially in the accommodation space
(claim 6) wherein the pressure element is configured to exert pressure onto a head (the pressure element indirectly exerts pressure onto the head through the retainer element
(claim 7) wherein at least one spring portion extends at least partially around the pressure element in a circumferential direction (each of elements 102 at partially extend around a portion of the pressure element)
(claim 9) wherein a stop (see below) is provided that prevents upward movement of the pressure element once it has been inserted into the receiving part
Regarding claim 16:
Hammill discloses the device as discussed above further comprising:
(claim 16) a bone anchoring element (12) including
(claim 16) a shank for anchoring to bone
(claim 16) a head
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Claim Rejections - 35 USC § 103
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over the first interpretation of Hammill (U.S. Publication 2011/0040336) in view of Biedermann (U.S. Patent 9,364,266).
Hammill discloses the invention as claimed (see above) except for the second end of the retainer element including a first slit, a second slit, and a third slit. Biedermann teaches a device comprising a retainer element (see Figure 24) including a second end having a first slit (700) spaced apart from the second end and extending at least partially around a longitudinal axis of the retainer element, a second slit (703) extending from the second end into the first slit, wherein the second slit is shorter than the first slit, and a third slit (701) extending opposite the first slit in order to form a split ring in the retainer element. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Hammill wherein the retainer includes a plurality of slits in view of Biedermann in order to provide a slit ring in the retainer element.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over the second interpretation of Hammill (U.S. Publication 2011/0040336) in view of Biedermann (U.S. Patent 9,364,266).
Hammill discloses the invention as claimed (see above) except for the second end of the retainer element including a first slit, a second slit, and a third slit. Biedermann teaches a device comprising a retainer element (see Figure 24) including a second end having a first slit (700) spaced apart from the second end and extending at least partially around a longitudinal axis of the retainer element, a second slit (703) extending from the second end into the first slit, wherein the second slit is shorter than the first slit, and a third slit (701) extending opposite the first slit in order to form a split ring in the retainer element. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Hammill wherein the retainer includes a plurality of slits in view of Biedermann in order to provide a slit ring in the retainer element.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited 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