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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12193682B2, referred herein as Pat. ‘682. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 and 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Pat. ‘682. Pat. ‘682 a surgical tool comprising: a humeral head cut guide configured to fit within a rotator interval of a subject in need of shoulder arthroplasty [claim 1 Col. 15 lines 55-57]; the cut guide further comprising: a top surface, a bottom surface, a front surface, a back surface, and at least two sides, each of the two sides defining a flat surface extending from the back surface to the front surface and from the top surface to the bottom surface [claim 1 Col. 15 lines 58-63]; at least two nonconverging pin holes, each pin hole extending transversely from an entry point located on a side of the cut guide to an exit point on the front surface of the cut guide [claim 1 Col. 15 lines 64-67]; and a receiving portion configured to permit reversible attachment of the cut guide to an attachment arm assembly and wherein the receiving portion terminates in a threaded opening that extends partially into the cut guide and is configured to further secure the cut guide to the attachment arm assembly [claim 1 Col. 16 lines 1-7].
Claims 2-7 and 9-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2-16 of Pat. ‘682 for reciting substantially similar limitations.
Claim 18-19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of Pat. ‘682. Pat. ‘682 recites a method for total shoulder arthroplasty using a surgical tool, the method comprising opening of a rotator interval and humeral head osteotomy through the rotator interval [claim 17 col. 16 lines 64-67], the surgical tool comprising: a humeral head cut guide configured to fit within the rotator interval of a subject in need of shoulder arthroplasty [claim 17 col. 17 line 1-3]; the cut guide further comprising: a top surface, a bottom surface, a front surface, a back surface, and at least two sides, each of the two sides defining a flat surface extending from the back surface to the front surface and from the top surface to the bottom surface [claim 17 col. 17 line 4-8]; at least two nonconverging pin holes, each pin hole extending transversely from an entry point located on a side of the cut guide to an exit point on the front surface of the cut guide [claim 17 col. 17 line 9-12]; and a receiving portion configured to permit reversible attachment of the cut guide to an attachment arm assembly and detachment of the cut guide from the attachment arm assembly and wherein the receiving portion terminates in a threaded opening that extends partially into the cut guide and is configured to further secure the cut guide to the attachment arm assembly [claim 17 col. 17 line 13-20].
Claims 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of Pat. ‘682 for reciting substantially similar limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELA I SHIRSAT whose telephone number is (571)270-5269. The examiner can normally be reached M-F 9:00am-5:30pm MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached on 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCELA I. SHIRSAT/ Primary Examiner, Art Unit 3775
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