DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is responsive to the amendments received after a Non-Final Rejection on 19 March 2026. Claims 1-10 are currently pending.
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.
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Claims 5-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,201,324 in view of Mehl et al. (U.S. Patent 10,932,838).
Claims 1-6 disclose the following (see Note below previously recited in the Non-Final Rejection mailed on 22 January 2026):
Claim Mapping Table
Current Application – 18/983,517
U.S. Patent No. 12,201,324
Claim 5: a method for fusing a joint between a first bone and a second bone using a nested screw assembly that comprises: a cannulated outer screw; and an externally threaded inner screw, wherein, the outer screw comprises a first end and a second end, the cannulation communicating between the first end and the second end with at least a portion of a length of the outer screw being externally threaded and at least a portion of a length of the cannulation being defined by an internal thread adjacent the first end, such that the external thread of the outer screw, the internal thread of the outer screw, and the external thread of the inner screw have the same thread pitch, whereby the inner screw may threadedly engage the first end of the cannulation to form the nested screw assembly, the method comprising: (a) drilling a hole through the joint in the first bone and the second bone; (b) threading the outer screw into the hole in the first bone up to the joint; (c) threading the inner screw into the hole in the second bone from an opposite side until the inner screw engages with the internal thread of the outer screw from the first end of the outer screw, and tightening to compress the joint while holding the outer screw from turning; and (d) driving the outer screw further into the hole toward and across the joint to maintain compression of the joint.
Claim 1: a method for fusing a joint between a first bone and a second bone using a nested screw assembly that comprises: a cannulated outer screw; and an inner screw, wherein, the outer screw comprises a tubular body having a first end and a second end defining a length between the two ends, and a canal extending through the length of the outer screw, at least a portion of the length of the outer screw is externally threaded and at least a portion of a length of the canal is internally threaded near the first end, the inner screw is externally threaded, and the external thread of the outer screw, the internal thread of the outer screw, and the external thread of the inner screw all have the same thread pitch, whereby the inner screw can be threaded into the first end of the canal of the outer screw to form the nested screw assembly, the method comprising: (a) pre-drilling a hole into the first bone and the second bone through the joint; (b) threading the outer screw into the hole in the first bone up to the joint; (c) threading the inner screw into the hole in the second bone from an opposite side until the inner screw engages with the internal thread of the outer screw from the first end of the outer screw, and tightening to compress the joint while holding the outer screw from turning; and (d) driving the outer screw further into the hole toward and across the joint to maintain compression of the joint.
Claim 6: wherein the outer screw comprises a driving feature provided inside the cannulation near the second end, and the outer screw is threaded into the hole in (b) by engaging the driving feature with a driving tool.
Claim 2: wherein the outer screw comprises a driving feature provided inside the canal near the second end, and the outer screw is threaded into the hole in step (b) by engaging the driving feature with a driving tool.
Claim 7: wherein the outer screw is held in step (c) using the driving feature.
Claim 3: wherein the outer screw is held in step (c) using the driving feature.
Claim 8: wherein the inner screw comprises an oval head portion and threading the inner screw in (c) is accomplished using a screwdriver that engages the oval head portion.
Claim 4: wherein the inner screw comprises an oval head portion and threading the inner screw in step (c) is accomplished using a screwdriver that engages the oval head portion.
Claim 9: wherein the inner screw comprises a threaded head portion and threading the inner screw in (c) is accomplished using a compression sleeve that engages the threaded head portion.
Claim 5: wherein the inner screw comprises a threaded head portion and threading the inner screw in step (c) is accomplished using a compression sleeve that engages the threaded head portion.
Claim 10: wherein after (c) but before (d), the threaded head portion of the inner screw is buried into the second bone by driving the inner screw out of the compression sleeve.
Claim 6: wherein after step (c) but before step (d), the threaded head portion of the inner screw is buried into the second bone by driving the inner screw out of the compression sleeve.
Claims 1-6 disclose the claimed invention except for wherein the inner screw is prevented from turning while the outer screw is driven further into the hole.
Mehl et al. teach a method for fusing a joint between a first bone (e.g. 200) and a second bone (e.g. 300) using a nested screw assembly (10) that comprises a cannulated outer screw (14); and an externally threaded inner screw (12), wherein the outer screw comprises an external thread (19) and an internal thread (26), whereby the inner screw may engage the outer screw to form (i.e. via the interaction between 18 and 19) the nested screw assembly, the method comprising threading the inner screw into the second bone (see column 7, lines 51-64); threading the outer screw into the first bone (see column 7, lines 51-64), wherein the outer screw is driven further into the first bone to maintain compression while preventing the inner screw from turning (see column 7, lines 51-64) (see Figures 1 and 2, and column 5, line 63 – column 7, line 64).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the method of claims 1-6 with wherein the inner screw is prevented from turning while the outer screw is driven further into the hole in view of Mehl et al. in order to provide a well-known, obvious step for providing a desired amount of compression between the first and second bones after insertion of the inner and outer screws.
Note: Application claim 5 recites the phrase "an externally threaded inner screw, wherein, the outer screw comprises a first end and a second end, the cannulation communicating between the first end and the second end with at least a portion of a length of the outer screw being externally threaded and at least a portion of a length of the cannulation being defined by an internal thread adjacent the first end." Patent claim 1 recites the phrase "an inner screw, wherein, the outer screw comprises a tubular body having a first end and a second end defining a length between the two ends, and a canal extending through the length of the outer screw, at least a portion of the length of the outer screw is externally threaded and at least a portion of a length of the canal is internally threaded near the first end, the inner screw is externally threaded." While there are slight differences in the wording of these phrases, it is the examiner's position that there is not enough of a difference to constitute a different invention. Structurally, the claims are not patentably distinct.
Allowable Subject Matter
Claims 1-4 are allowed.
Claims 1-4 in the instant application have not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose, or suggest, in combination with the underlined limitations below, a nested screw assembly comprising a cannulated outer screw; and an inner screw, wherein the outer screw comprises a tubular structure having a first end and a second end defining a length between the two ends, and a canal extending through the length of the outer screw, at least a portion of the length of the outer screw is externally threaded and at least a portion of a length of the canal is internally threaded near the first end, the inner screw is externally threaded, and the external thread of the outer screw, the internal thread of the outer screw, and the external thread of the inner screw all have the same thread pitch, whereby the inner screw can be threaded into the first end of the canal of the outer screw to form the nested screw assembly such that the outer screw can advance through a bone at the same rate as the outer screw threads advance over the inner screw and further whereby, when the inner screw is prevented from turning, the outer screw can be driven further into the bone toward and across a joint while maintaining compression of the joint.
Note: Mehl et al. (U.S. Patent 10,932,838) disclose an invention closely resembling that of the current application; however, fail to explicitly disclose the claimed invention.
Response to Arguments
The applicant’s arguments with respect to claims 5-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY E WAGGLE, JR whose telephone number is (571)270-7110. The examiner can normally be reached TEAP: Monday - Friday (7:45am - 3:45pm).
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/LARRY E WAGGLE, JR/Primary Examiner, Art Unit 3775
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