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 .
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the drawings are gray-scale and difficult to read details. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
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, 13-15 and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13-15, 21 and 25 of copending Application No. 18/653,439 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Independent claim 1 recites all of the elements of claim 13 (which depends from claim 1) of the reference application. The difference between independent claim 1 of the application and claim 13 of the reference application lies in the fact that the reference application claim recites “wherein said drive block includes left and right-side guides to facilitate in maintaining a longitudinal position of said top and bottom endplates relative to said drive block as said top and bottom endplates move between a fully closed and a fully expanded position.” and the application recites “said drive block includes left and right-side slide guides to facilitate in causing a longitudinal position of said drive block to move relative to said top and bottom endplates as said top and bottom endplates move between a fully closed and a fully expanded position”. Both limitations are similar in that they are both reciting wherein the drive block includes left and right-side slide guide to facilitate in causing and maintaining a longitudinal position between the drive block and the top and bottom endplates as the top and bottom endplates move between positions. Since claim 1 of the application is anticipated by respective claim 13 of the reference application, it is not patently distinct from claim 13.
Furthermore, claim 13 of the reference application recites “wherein said drive block includes left and right-side guides to facilitate in maintaining a longitudinal position of said top and bottom endplates relative to said drive block as said top and bottom endplates move between a fully closed and a fully expanded position”, thus reciting all of the elements of claim 13 of the application.
Furthermore, claim 14 of the reference application recites “wherein said top endplate includes left and right side flanges; and wherein said left side flange is configured to move along and adjacent to said left guide of said drive block when said top endplate moves between a fully closed and a fully expanded position; and wherein said right side flange is configured to move along and adjacent to said right guide of said drive block when said top endplate moves between a fully closed and a fully expanded position”, thus reciting all of the elements of claim 14 of the application.
Furthermore, claim 15 of the reference application recites “wherein said bottom endplate includes left and right side flanges; and wherein said left side flange is configured to move along and adjacent to said left guide of said drive block when said bottom endplate moves between a fully closed and a fully expanded position; and wherein said right side flange is configured to move along and adjacent to said right guide of said drive block when said bottom endplate moves between a fully closed and a fully expanded position”, thus reciting all of the elements of claim 15 of the application.
Independent claim 22 recites all of the elements of claim 25 (which depends from claim 21) of the reference application. The difference between independent claim 22 of the application and claim 25 of the reference application lies in the fact that the reference application claim recites “left and right side guides” and the application recites “left and right side slide guides”. Since claim 22 of the application is anticipated by respective claim 25 of the reference application, it is not patently distinct from claim 25.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. It is also noted that reference application 18/653,439 has received an Issue Notification filed on 01/28/2026 specifying the projected patent number as Patent No.12544239 and an issue date of 02/10/2026.
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 13-15 and 31 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 13 recites the limitation " wherein said drive block includes left and right-side guides to facilitate in maintaining a longitudinal position of said top and bottom endplates relative to said drive block as said top and bottom endplates move between a fully closed and a fully expanded position”. Similarly, claim 1 (which claim 13 depends from) recites “said drive block includes left and right-side slide guides to facilitate in causing a longitudinal position of said drive block to move relative to said top and bottom endplates as said top and bottom endplates move between a fully closed and a fully expanded position”. Claim 13 does not appear to be further limiting, as both limitations disclose wherein the drive block includes left and right-side slide guides to facilitate in causing and maintaining a longitudinal position between the drive block and the top and bottom endplates as the top and bottom endplates move between positions.
Claim 31, line 19 recites in part “rotating said first and/or second drive screws”. The phrase “and/or” renders the claim indefinite. It is unclear as to whether rotating said first drive screw or rotating said second drive screw is being claimed.
Appropriate corrections are required.
Allowable Subject Matter
Claim 31 is allowed, once the rejection under 35 U.S.C. 112(b) disclosed above has been corrected/addressed.
Claim 31 in the instant application has not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose, or suggest, the claimed combination of limitations recited in independent claim 31. In particular, none of the cited references teach or suggest a method for using an expandable interbody device comprising: providing the expandable interbody device; wherein said interbody device comprises a first upper left side linkage, and a first lower left side linkage; said first upper left side linkage is rotatably or pivotally connected to said first left side slide; said first upper left side linkage engages said top endplate; said first lower left side linkage is rotatably or pivotally connected to said first left side slide; said first lower left side linkage engages said bottom endplate; said second drive arrangement includes a second drive screw, a first right side slide, a first upper right side linkage, and a first lower right side linkage; said first upper right side linkage is rotatably or pivotally connected to said first right side slide; said first upper right side linkage engages said top endplate; said first lower right side linkage is rotatably or pivotally connected to said first right side slide; said first lower right side linkage engages said bottom endplate. Claim 31 further recites a drive block that includes left and right-side slide guides; wherein said left and right-side slide guides to facilitate in causing a longitudinal position of said drive block to move relative to said top and bottom endplates as said top and bottom endplates move between a fully closed and a fully expanded position.
Claims 2-12, 17-21 and 23-30 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. It is noted that claims 2-12. 17-21 and 23-30 depend from independent claims 1 and 22, wherein a provisional nonstatutory double patenting rejection has been applied.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Altarac et al. U.S. Publication No.2022/0183854 A1
Medina U.S. Publication No.2014/0194992 A1
Perrow U.S. Publication No.2014/0277473 A1
Barreiro et al. U.S. Publication No.2014/0107788 A1
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