DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claim 9 is 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 9 recites the limitation "the bore axis" in line 5. There is insufficient antecedent basis for this limitation in the claim as claim 1 has been amended to delete the recitation “the bore having a bore axis.” For examination purposes, the Examiner is interpreting claim 9 as reciting “wherein the bore has a bore axis and further comprising…”
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1, 7, and 8 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Biedermann et al. (US 2010/0234902 A1).
Claim 1. Biedermann discloses a polyaxial bone anchoring device comprising:
a bone anchoring element (bone anchoring element 1) having a head (head 3) and a shaft (shaft 2) for anchoring to a bone;
a receiving part (receiving part body 5) for coupling the bone anchoring element to a rod, the receiving part having a head receiving portion (portion below U-shaped recess 13 and including accommodation space 19) with an accommodation space (accommodation space 19) for accommodating the head, and a rod receiving portion (portion with U-shaped recess 13) with a bore (bore 12) in communication with the accommodation space; and
a pressure member (pressure element 8) movable in the bore and comprising a first surface (surface defining hollow interior 85) for engaging the head and a second surface (surface defining U-shaped recess 83) for engaging a rod;
wherein when the bone anchoring element and the pressure member are in the receiving part, the pressure member is movable to a position (see Fig. 14) where the head is locked relative to the receiving part (see para. 0053) (Figs. 1-14; paras. 0040-0055).
Claim 7. Biedermann discloses wherein the pressure member is substantially cylindrical (see Fig. 6) (Figs. 1-14; paras. 0040-0055).
Claim 8. Biedermann discloses wherein the pressure member has a first end (adjacent first portion 81) and a second end (adjacent second portion 82), and a recess (hollow interior 85) at the second end with a spherical-segment shape (see Fig. 6) corresponding to a spherical-segment shaped surface portion (see Fig. 1) of the head of the bone anchoring element (see para. 0044) (Figs. 1-14; paras. 0040-0055).
Claims 1 and 9 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Doherty et al. (US 2005/0154391 A1).
Claim 1. Doherty discloses a polyaxial bone anchoring device comprising:
a bone anchoring element (bone anchor 14) having a head (head 16) and a shaft (shaft 18) for anchoring to a bone;
a receiving part (first section 42) for coupling the bone anchoring element to a rod, the receiving part having a head receiving portion (portion below recess 48 and including annular groove 72) with an accommodation space (annular groove 72) for accommodating the head, and a rod receiving portion (portion with recess 48) with a bore (bore 44) in communication with the accommodation space; and
a pressure member (compression member 80) movable in the bore and comprising a first surface (second surface 84) for engaging the head and a second surface (first surface 82) for engaging a rod;
wherein when the bone anchoring element and the pressure member are in the receiving part, the pressure member is movable to a position (position wherein closure mechanism 90 is fully tightened) where the head is locked relative to the receiving part (see para. 0054) (Figs. 1-14; paras. 0040-0063).
Claim 9. Doherty discloses a sleeve-like insert piece (second section 50) configured to be positioned around a spherical-segment shaped portion (hemispherically shaped distal surface 32) of the head, wherein the insert piece is configured to pivot in the accommodation space of the receiving part (see para. 0051), and wherein when the insert piece is seated in the receiving part and has a central axis (axis 46 – see Fig. 11) coaxial with the bore axis (axis 46 – see Fig. 8), a lower edge of the insert piece extends out of a lower opening of the receiving part (see Figs. 1 and 2) (Figs. 1-14; paras. 0040-0063).
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 and 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-9 of U.S. Patent No. 9,078,705 B2. Although the claims at issue are not identical, they are not patentably distinct from each other. The difference between the claims of the patent and those of the application are that claim 1 of the patent includes more elements than claim 1 of the application (the bore axis; the first position of the pressure member; and the engagement between the pressure member and the first portion of the inner wall of the receiving part). Thus, the invention of claims 1 and 7-9 of the patent is in effect a species of the generic invention of claims 1 and 7-9 of the application. It has been held that the generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Because claims 1 and 7-9 are anticipated by claims 1 and 7-9 of the patent, they are not patentably distinct from the patent claims.
Claims 1 and 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-9 of U.S. Patent No. 9,597,121 B2. Although the claims at issue are not identical, they are not patentably distinct from each other. The difference between the claims of the patent and those of the application are that claim 1 of the patent includes more elements than claim 1 of the application (the bore axis; the one-piece second section of the pressure member; the first position of the pressure member; and the engagement between the pressure member and the portion of the inner wall of the receiving part). Thus, the invention of claims 1 and 7-9 of the patent is in effect a species of the generic invention of claims 1 and 7-9 of the application. It has been held that the generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Because claims 1 and 7-9 are anticipated by claims 1 and 7-9 of the patent, they are not patentably distinct from the patent claims.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 10,335,204 B2. Although the claims at issue are not identical, they are not patentably distinct from each other. The difference between the claim of the patent and that of the application is that claim 1 of the patent includes more elements than claim 1 of the application (the radially outwardly extending projections of the pressure member; and the insert piece being an endless ring). Thus, the invention of claim 5 of the patent is in effect a species of the generic invention of claim 9 of the application. It has been held that the generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Because claim 9 is anticipated by claim 5 of the patent, it is not patentably distinct from the patent claim.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,058,462 B2. Although the claims at issue are not identical, they are not patentably distinct from each other. The difference between the claim of the patent and that of the application is that claim 1 of the patent includes more elements than claim 1 of the application (the bore axis; the first position of the pressure member; and the engagement between the pressure member and the vertical wall portion of the receiving part). Thus, the invention of claim 2 of the patent is in effect a species of the generic invention of claim 9 of the application. It has been held that the generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Because claim 9 is anticipated by claim 2 of the patent, it is not patentably distinct from the patent claim.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,193,712 B2. Although the claims at issue are not identical, they are not patentably distinct from each other. The difference between the claim of the patent and that of the application is that claim 1 of the patent includes more elements than claim 1 of the application (the outer surface of the pressure member; and the first position of the pressure member). Thus, the invention of claim 1 of the patent is in effect a species of the generic invention of claim 1 of the application. It has been held that the generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Because claim 1 is anticipated by claim 1 of the patent, it is not patentably distinct from the patent claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIANNA N HARVEY whose telephone number is (571)270-3815. The examiner can normally be reached Mon.-Fri. 8:00am-5:00pm EST.
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/JULIANNA N HARVEY/Primary Examiner, Art Unit 3773
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