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 .
Election/Restrictions
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 5th, 2026.
Applicant's election with traverse of Group I, claims 1-13 in the reply filed on May 5th, 2026 is acknowledged. The traversal is on the ground(s) that there would not be a serious search burden on the Examiner. This is not found persuasive because the invention of Group I, does not require the same searching as that of Groups II and III, respectively. The search for Group I requires searching within A61F2/4606 which is not required for searching Group II. The search for Group II requires searching within A61F2/42+ which is not required for searching Group I. Lastly, the search of Group III does require searching in both of these areas, but also needs searching in additional areas outside of A61F2/+ and in areas of A61B17/17, A61B17/7091, etc. and are exclusive to the method.
The requirement is still deemed proper and is therefore made FINAL.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Applicant is reminded to avoid using the phrase “are disclosed”.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 7-13 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 7-12 of prior U.S. Patent No. 12,207,827. This is a statutory double patenting rejection.
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shemwell et al. (US 2015/0142066). Regarding claim 1, Shemwell et al. disclose an implant insertion and removal system, comprising an insertion instrument (2600, figure 35A), comprising a body portion, comprising a handle portion (516) at a first end of the body portion (2605); and a coupling member (2680 + 2657) extending away from the handle portion to a second end of the body portion (see figure below); and an engagement member (2602) rotatably coupled to the coupling member (¶114).
Regarding claim 2, Shemwell et al. disclose the coupling member comprises a base portion (2680) extending away from a second end portion of the handle portion (see figure below); a protrusion (2651) extending circumferentially around the base portion between the second end portion of the handle portion and a second end of the base portion (see figure below); and at least one tooth (see figure below) positioned on and extending away from the protrusion.
Regarding claim 3, Shemwell et al. disclose the at least one tooth is two teeth with a first tooth (see figure below) positioned on the protrusion opposite a second tooth (see figure below, figure 35A).
Regarding claim 4, Shemwell et al. disclose the coupling member further comprises a first opening segment (2612) extending into the coupling member from the second end of the body portion towards a first end along a longitudinal axis of the body portion (considered the central longitudinal axis of the body portion).
PNG
media_image1.png
387
678
media_image1.png
Greyscale
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 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Shemwell et al. (US 2015/0142066). Regarding claim 5, Shemwell et al. disclose in a first embodiment the handle portion comprises a top surface (see figure above), wherein the top surface is planar (figure 35A) and extends from the first end toward the second end portion.
However, Shemwell et al. fail to expressly teach or disclose within the first embodiment a bottom surface opposite the top surface the bottom surface is planar and extends from the first end toward the second end; and a neck portion positioned at the second end portion; and wherein the neck portion includes tapered surfaces extending from the planar top and bottom surfaces to the second end portion.
In an alternative embodiment Shemwell et al. disclose a handle portion (516, figure 32A) wherein the handle comprises a top surface (see figure below); a bottom surface (see figure below) opposite the top surface, wherein the top surface and the bottom surface are planar (figure 32A) and extend from the first end toward the second end portion; and a neck portion (1518) positioned at the second end portion; and wherein the neck portion includes tapered surfaces extending from the planar top and bottom surfaces to the second end portion (figure 32A).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have constructed the handle of the embodiment figure 35A to have a planar bottom surface and a neck portion that tapers from the top and bottom surfaces as disclosed in the embodiment of figure 32A as it is a known alternative handle shape and would perform equally well with the tapered neck and planar bottom surface.
Regarding claim 6, Shemwell et al. disclose the handle portion further comprises a second opening segment (2652) extending into the handle portion from a first end portion to the second end portion along a longitudinal axis (figure 35A). As it is a known alternative handle shape and would perform equally well with the tapered neck and planar bottom surface.
PNG
media_image2.png
371
561
media_image2.png
Greyscale
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW JAMES LAWSON whose telephone number is (571)270-7375. The examiner can normally be reached Mon - Fri 6:30-3:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at 571-270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW J LAWSON/Primary Examiner, Art Unit 3619
Prosecution Insights