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, 11-14, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,178,667. 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, 10-14, and 18-20 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, 11-14, and 18-20 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, 11-14, and 18-20 are anticipated by claims 1-20, claims 1, 11-14, and 18-20 are not patentably distinct from claims 1-20.
Application 18/973185
U.S. Patent 12,178,667
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11
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20
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5, 7-10, 12-17, and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lopez Del Pueyo (U.S. Publication 2022/0125496).
Regarding claims 1-3, 5, 7-10, 12, and 13:
Lopez Del Pueyo discloses a device comprising:
(claim 1) a first clamp jaw (1.1) including
(claim 1) a first engagement surface (the surface with elements 11)
(claim 8) a planar profile
(claim 1) a second clamp jaw (2 and 4.3) including
(claim 1) a second engagement surface (the surface with elements 11)
(claim 12) wherein the first engagement surface and the second engagement surface face each other
(claim 13) wherein the first engagement surface and the second engagement surface each comprise teeth (11) configured to pierce into and grip bone
(claim 1) wherein the second jaw clamp is couple to the first jaw clamp at a fixed pivot (1.3)
(claim 1) a linear driver including
(claim 1) a shaft (4; paragraphs 98-99) configured to linearly translate
(claim 1) wherein the second clamp jaw is coupled to the shaft at a moving pivot (pivot between 4.3 and 4.1; see Figures 1-3 showing the pivot point moving)
(claim 1) wherein the linear driver is configured to linearly translate the shaft in a first direction to pivot the second engagement surface towards the first engagement surface
(claim 1) wherein the linear driver is configured to linearly translate the shaft in a second direction to pivot the second engagement surface away from the first engagement surface
(claim 2) a frame (1)
(claim 2) wherein the first clamp jaw is integrally formed with the frame
(claim 2) wherein the frame supports the fixed pivot
(claim 3) wherein the frame supports the linear driver
(claim 5) wherein the shaft is configured to tilt (see Figures 4 and 5) relative to the frame in response to the linear translation of the shaft by the linear driver
(claim 7) wherein the frame supports the first engagement surface
(claim 7) wherein the fixed pivot is located on the frame in a region between the first engagement surface and the linear driver (for example see Figure 1)
(claim 8) wherein the frame includes a frame portion including
(claim 8) an interior edge facing a region between the first engagement surface and the second engagement surface
(claim 8) wherein a portion of the interior edge has a linear profile that extends along a first axis (the straight edge shown in the figure below)
(claim 8) wherein the planar profile extends along a second axis substantially perpendicular to the first axis (the planar profile extends in a width direction perpendicular to the first axis/straight edge)
(claim 9) wherein the frame portion and the first engagement surface form a substantially curved L-shape or substantially J-shape (for example see Figure 1)
(claim 10) an extension arm (the nuts and rod elements between frame 1 and receiver 9.1)
(claim 10) wherein the extension arm is configured to support a navigation tracker (the male portion connected to 9.1; for example see paragraphs 91-93)
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Regarding claims 14-17:
Lopez Del Pueyo discloses a device comprising:
(claim 14) an extension arm (the nuts and rod elements between frame 1 and receiver 9.1) including
(claim 14) a first end
(claim 14) a second end
(claim 14) an attachment interface (9.1 and 9.2; see paragraphs 91-93)
(claim 14) wherein the attachment interface is coupled to the first end of the extension arm
(claim 14) wherein the attachment interface is configured to detachable couple to a navigation tracker
(claim 14) a clamp assembly
(claim 14) wherein the clamp assembly is coupled to the second end of the extension arm
(claim 16) wherein the extension arm extends along an arm axis (such as the longitudinal axis of the device)
(claim 14) wherein the clamp assembly includes
(claim 14) a first clamp jaw (1.1) including
(claim 14) a first engagement surface
(claim 17) wherein the first engagement surface includes a planar profile
(claim 14) a second clamp jaw (2) including
(claim 14) a second engagement surface
(claim 14) wherein the second jaw clamp is couple to the first jaw clamp at a fixed pivot (1.3)
(claim 14) a linear drive including
(claim 14) a shaft (4) configured to linearly translate
(claim 14) wherein the second clamp jaw is coupled to the shaft at a moving pivot (pivot between 4.3 and 4.1; see Figures 1-3 showing the pivot point moving)
(claim 14) wherein the linear driver is configured to linearly translate the shaft in a first direction to pivot the second engagement surface towards the first engagement surface
(claim 14) wherein the linear driver is configured to linearly translate the shaft in a second direction to pivot the second engagement surface away from the first engagement surface
(claim 15) a frame (1)
(claim 15) wherein the first clamp jaw is integrally formed with the frame
(claim 15) wherein the frame supports the fixed pivot
(claim 15) wherein the frame supports the linear drive
(claim 16) wherein the frame includes a frame portion including
(claim 16) an interior edge facing a region between the first engagement surface and the second engagement surface
(claim 16) wherein a portion of the interior edge has a linear profile that extends along a first axis substantially parallel with the arm axis (the straight edge shown in the figure above)
(claim 17) wherein the planar profile extends along a second axis substantially perpendicular to the first axis and the arm axis (the planar profile extends in a width direction perpendicular to the first axis/straight edge)
Regarding claim 20:
Lopez Del Pueyo discloses a device comprising:
(claim 20) a navigation tracker (paragraphs 91-93)
(claim 20) an extension arm (the nuts and rod elements between frame 1 and receiver 9.1) including
(claim 20) a first end
(claim 20) a second end
(claim 20) an attachment interface (9.1 and 9.2; see paragraphs 91-93)
(claim 20) wherein the attachment interface is coupled to the first end of the extension arm
(claim 20) wherein the attachment interface is configured to detachable couple to a navigation tracker
(claim 20) a clamp assembly
(claim 20) wherein the clamp assembly is coupled to the second end of the extension arm
(claim 20) wherein the clamp assembly includes
(claim 20) a first clamp jaw (1.1) including
(claim 20) a first engagement surface
(claim 20) a second clamp jaw (2) including
(claim 20) a second engagement surface
(claim 20) wherein the second jaw clamp is couple to the first jaw clamp at a fixed pivot (1.3)
(claim 20) a linear drive including
(claim 20) a shaft (4) configured to linearly translate
(claim 20) wherein the second clamp jaw is coupled to the shaft at a moving pivot (pivot between 4.3 and 4.1; see Figures 1-3 showing the pivot point moving)
(claim 20) wherein the linear driver is configured to linearly translate the shaft in a first direction to pivot the second engagement surface towards the first engagement surface
(claim 20) wherein the linear driver is configured to linearly translate the shaft in a second direction to pivot the second engagement surface away from the first engagement surface
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.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Lopez Del Pueyo (U.S. Publication 2022/0125496) in view of Hufner (U.S. Publication 2008/0221625).
Lopez Del Pueyo discloses the invention as claimed except for the attachment interface being configured to adjustably rotate about an axis of the extension arm and lock in one of a plurality of discrete positions. Hufner teaches a device comprising an attachment interface (53) including a first portion (54) coupled to a first end of an extension arm and a second portion (55) that supports a connector (the rod connecting 55 to 51) for a navigation tracker (51), wherein the second portion is configured to adjustably rotate relative the first portion and lock, i.e. hold, in one of a plurality of discrete positions (there are a plurality of positions element 55 can be held relative to elements 54) relative to the first portion in order to orient the navigation tracker in a desired position (for example see paragraphs 45-46). 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 Lopez Del Pueyo wherein the attachment interface includes a first portion and a second portion in view of Hufner in order to orient the navigation tracker in a desired position.
The device of Lopez Del Pueyo as modified by Hufner discloses a device wherein the attachment interface is configured to adjustably rotate about an axis of the extension arm and lock in one of a plurality of discrete positions relative to the first end of the extension arm.
Allowable Subject Matter
Claims 4, 6, and 11 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. However, claim 11 is also rejected under non-statutory double patenting as discussed above.
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
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