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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8-10, 12-15 of U.S. Patent No. 11058556. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus much specific. Thus the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. 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 application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-15 of U.S. Patent No. 11653935. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus much specific. Thus the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. 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 application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
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) 1-3, 5, 6, 12, 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Song et al. (U.S. Publication No. 2007/0233131).
Song et al. discloses a surgical instrument for creating an implant-receiving void, comprising: an elongated shaft (24) having a distal end and a proximal end; a handle (20) disposed at the proximal end of the elongated shaft; an abrading head (Figure 4) disposed at the distal end of the elongated shaft, the abrading head comprising: a pair of abrading surfaces disposed in opposing relation to one another (Figure 4, upper and lower surfaces), each abrading surface having teeth, barbs, blades, ridges, slots, or broaches (Figure 4) configured to abrade sacrum and ilium bones within the sacroiliac joint (considered capable of performing); a pair of lateral sides (Figure 4) disposed in opposing relation to one another, wherein the lateral sides connect the pair of abrading surfaces, collectively enclosing an interior void (Figure 13), and wherein terminal edges of the abrading surfaces and the lateral sides collectively form a contiguous cutting edge having an oblong perimeter (oblong meaning, “deviating from a square, circular, or spherical form by elongation in one dimension”) and configured to cut a cortical layer of the sacrum and ilium bones within the sacroiliac joint; and a pair of openings (32) disposed in each of the lateral sides providing ingress into and egress from the interior void, thereby enabling dislodged bone tissue to exit the interior void via the pair of openings (paragraph 37).
Regarding claim 2, the surgical instrument further comprising a protrusion (26) disposed on the elongated shaft configured to operatively engage a complementary groove, recess, channel, or indent of a working channel providing access to the sacroiliac joint (considered capable).
Regarding claim 3, the surgical instrument further comprising a groove, recess, channel, or indent (18) disposed on the elongated shaft configured to operatively engage a complementary protrusion disposed on a working channel providing access to the sacroiliac joint (Considered capable).
Regarding claim 5, the proximal end of the shaft extends beyond the handle, thereby providing an impaction surface configured to be struck by a mallet. For claim 5, it can be considered that the handle is the are between element 26 and 20, where 20 is the shaft that extends beyond the handle capable of being impacted by a mallet.
Regarding claim 6, the surgical instrument further comprising a stop (26) configured to abut against a working channel, thereby preventing over penetration of the abrading head into the sacroiliac joint.
Regarding claim 12, the shaft is cylindrical (Figure 3).
Regarding claim 13, the abrading surfaces are wider than the shaft (Figure 3).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 4, 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (U.S. Publication No. 2007/0233131).
Regarding claim 4, Song et al. discloses the claimed invention except for the oblong perimeter having rounded corners. It would have been an obvious matter of design choice to one skilled in the art to construct the oblong perimeter of Song et al. with rounded corners, since applicant has not disclosed that such solve any stated problem or is anything more than one of numerous shapes or configurations a person ordinary skill in the art would find obvious for the purpose of providing a shape for an abrading instrument. In re Dailey and Eilers, 149 USPQ 47 (1966).
Regading claims 9 and 10, Song et al. discloses the claimed invention except for the pair of openings having an oblong shape with rounded sides. It would have been an obvious matter of design choice to one skilled in the art to construct the pair of openings of Song et al. having an oblong shape with rounded sides, since applicant has not disclosed that such solve any stated problem or is anything more than one of numerous shapes or configurations a person ordinary skill in the art would find obvious for the purpose of providing a shape for collecting bone debris. In re Dailey and Eilers, 149 USPQ 47 (1966).
Regarding claim 11, Song et al. discloses the claimed invention except at least some of the teeth or the barbs of the abrading surfaces have a square pyramidal shape in the embodiment shown in Figures 12 and 13. Figure 6 however shows a square pyramidal shape. It would have been an obvious matter of design choice to one skilled in the art to construct the teeth or barbs of Song et al. with at least some of the teeth or the barbs of the abrading surfaces have a square pyramidal shape, since applicant has not disclosed that such solve any stated problem or is anything more than one of numerous shapes or configurations a person ordinary skill in the art would find obvious for the purpose of providing a shape for abrading bone as shown in figures 5-13. In re Dailey and Eilers, 149 USPQ 47 (1966).
Claim(s) 1, 7, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frey et al. (U.S. Patent No. 5019082) in view of McCue (U.S. Patent No. 5788701).
Frey et al. discloses discloses a surgical instrument for creating an implant-receiving void, comprising: an elongated shaft (6) having a distal end (7) and a proximal end (upper end of shaft, of Figure 1); a handle (it can be construed that the upper end can be gripped as a handle)) disposed at the proximal end of the elongated shaft; an abrading head (1) disposed at the distal end of the elongated shaft, the abrading head comprising: a pair of abrading surfaces disposed in opposing relation to one another (Figure 2, upper and lower surfaces), each abrading surface having teeth, barbs, blades, ridges, slots, or broaches (Figure 2) configured to abrade sacrum and ilium bones within the sacroiliac joint (considered capable of performing); a pair of lateral sides (Figure 2) disposed in opposing relation to one another, wherein the lateral sides connect the pair of abrading surfaces, collectively enclosing an interior void (Figure 2), and wherein terminal edges of the abrading surfaces and the lateral sides collectively form a contiguous cutting edge having an oblong perimeter (oblong meaning, “deviating from a square, circular, or spherical form by elongation in one dimension”) and configured to cut a cortical layer of the sacrum and ilium bones within the sacroiliac joint; and a pair of openings (10) disposed in each of the lateral sides providing ingress into and egress from the interior void (figure 2, 3), thereby enabling dislodged bone tissue to exit the interior void via the pair of openings. Frey et al. provides all the claimed structure, thus the language regarding use is considered as be capable of being performed by Frey et al.
Regarding claim 7, Frey et al. fails to disclose the handle is operatively connected to the shaft such that when the handle is moved relative to the shaft the handle causes a force to be exerted onto the abrading head to dislodge the abrading head from the sacroiliac joint. McCue teaches a surgical instrument (31) for creating an implant-receiving void that is coupled to a shaft (14). Shaft 14 has a handle (12) operatively connected to the shaft, such that when the handle is moved relative to the shaft, the handle causes a force to be exerted on the tool (31) to dislodge it from a void (Column 4, lines 25-30). The use of such a universal handle reduces amount of tools required and thus saves time and money (Column 2, Lines 8-11). Furthermore, regarding claim 8, it can be construed that the handle is able to rotate around the shaft.
It would have been obvious to one skilled in the art to construct the device of Frey et al. with the universal handle of McCue thus providing the claimed invention so that less tools would be required for method of Frey et al.
Allowable Subject Matter
Claims 14-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art alone or in combination fails to disclose a method of creating an implant receiving void in the sacroiliac joint where the instrument has an abrading head inserted into the sacroiliac joint, the abrading head comprising all the features as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW YANG whose telephone number is (571)272-3472. The examiner can normally be reached 9:00 - 9:00 M-F.
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/ANDREW YANG/Primary Examiner, Art Unit 3775