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
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, more than one hole (implied by the recitation “at least one hole) (claim 11) and “the plurality of holes” (claim 12) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: on page 1, the status of copending application, 18/138649, which has since issued as a patent, must be updated.
Appropriate correction is required.
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-9 of U.S. Patent No. 10898245.
Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference between the claims of the present application and the patented claims is that the patented claims include more elements and are thus more specific. Thus, the invention of the patented claims is in effect a “species” of the “generic” invention of the claims of the present application. It has been held that the generic invention is “anticipated” by the “species.” See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the claims of the present application are anticipated by the patented claims, they are not patentably distinct from the patented claims.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-20 of U.S. Patent No. 11666364.
Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference between the claims of the present application and the patented claims is that the patented claims include more elements and are thus more specific. Thus, the invention of the patented claims is in effect a “species” of the “generic” invention of the claims of the present application. It has been held that the generic invention is “anticipated” by the “species.” See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the claims of the present application are anticipated by the patented claims, they are not patentably distinct from the patented claims.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11-13 and 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In claim 11, the recitation “at least one hole” is inconsistent with Applicant’s disclosure which only shows one hole. In claim 12, the recitation “..the end plate portion has a plurality of holes.” is inconsistent with Applicant’s disclosure which shows only one hole. In claims 21 and 22, the recitation “at most one hole adapted to receive one of the plurality of bone anchors” seeks to introduce new matter because Applicant’s disclosure, as originally filed, states “One or more plug members 4 may be provided for connecting the plate members instead of using the connector members 2, 2′, 2″.”
Appropriate correction is required.
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 1-22 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.
In claim 1, the recitation “…width in said plane…” renders the claim vague and indefinite because “said plane” lacks antecedent basis. It is unclear whether “said plane” refers to the top plane, the bottom plane or some other plane.
In claim 2, the recitation “..the projection width of the first projection in a circumferential direction around the first hole is less than a half of a circumference of the first hole” renders the claim vague and indefinite because it is inconsistent with Applicant’s disclosure which states “In a circumferential direction, the projection 14 has a width that is less than a quarter circle of a circumference of the first hole 12.” It is unclear what dimensional relationship is being claimed. Applicant’s disclosure does not adequately describe the dimensional relationship to understand the scope of Applicant’s claimed invention.
In claim 3, the recitation “lug-like shape” renders the claim vague and indefinite because it is unclear what shape is being referred to by “lug-like.” Applicant’s disclosure does not describe this shape to understand the scope of Applicant’s invention. It is suggested that Applicant amend the claim to recite “the first projection is formed as a lug” to overcome this rejection.
In claims 1 and 4, the recitation “projection width” is confusing and inconsistent with Applicant’s disclosure which only recites “a width.” For examination purposes, it is assumed that Applicant intended to recite “width.”
In claim 6, the recitation “..the seat of the connector members configured to accommodate the head of the bone anchor and the passage of the connector members has a size for guiding through the shank of the bone anchor” renders the claim vague and indefinite because it appears to imply that the plurality of connector members share a seat and a passage. It is suggested that Applicant recite that each bone anchor is received in each connector member wherein a seat of a connector member is configured to accommodate a head of each bone anchor and the passage of each connector member is configured to receive the shank of the bone anchor.
In claim 8, the recitation “..groove width defined by sidewalls” is incomplete. It is unclear what structure defines the sidewalls.
In claim 9, the recitation “…common shape” renders the claim vague and indefinite because it is unclear what “common shape” refers to. Applicant’s disclosure does not describe this term to understand the scope of Applicant’s invention.
In claim 10, the functional recitation “..including third hole that can overly either one of the first hole or the second hole.” is inconsistent with Applicant’s disclosure. It appears Applicant intended to recite plate member 1’ (Fig. 1 of Applicant’s disclosure). The second plate member has a third hole that can overly either one of the first holes of the first plate members (Fig. 1 of Applicant’s disclosure).
In claim 13, the recitation “..the third connection portion and end plate portion are angled out of plane from one another” renders the claim vague and indefinite because it is unclear what the reference plane is.
In claim 16, “…seat at the connector member at any of multiple angles” should be “..seat at the connector member at any one of multiple angles” for clarity.
In claim 20, the recitation “at least one plug member that is adapted to be inserted into two overlapping first plate members at the first hole and the second hole of the overlapping first plate members..” renders the claim vague and indefinite because only one plug member can be received in either the first hole or the second hole.
Appropriate correction is required.
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.
Claim(s) 1, 3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Woodburn et al. (US 10166054).
Regarding claim 1, Woodburn et al. disclose a member 32 (Fig. 3A) for a modular bone plate 26 (Fig. 2A), the member including: a top surface defining a top plane; a bottom surface defining a bottom plane; and a first connection portion including a first hole 54 with a center axis that intersects the top plane and the bottom plane, the first hole having an edge, wherein a first portion of the edge of the first hole is provided with a first projection (defined by insertion member 40, Fig. 3A) forming a first free end of the member and wherein a second portion of the edge of the first hole is provided with a first channel or groove 57 that extends substantially transverse to the center axis of the first hole 54 and that is configured to accommodate a second projection of another member of the modular bone plate, the first groove 57 having a groove width defined by sidewalls, wherein the first projection and the first groove are arranged on opposite sides from the hole (Fig. 3B) and wherein the first projection extends in a plane substantially transverse to the center axis of the first hole 54 and wherein the first projection has a projection width in said plane that is smaller than a greatest width of the member in said plane (Fig. 3A, col. 4, lines 1-67, cols. 5-6 and col. 7, lines 1-48. Also, see marked up Fig. 3A on the following page).
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Regarding claim 3, the first projection 40 has a lug-like shape (see marked up Fig. 3A above).
Regarding claim 5, the sidewalls form opposing stops such that the groove width is less than a width across the first connection portion (see marked up Fig. 3B below).
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Claim(s) 1 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Leuenberger et al. (US 20100305569 A1).
Regarding claim 1, Leuenberger et al. disclose a link or member 105 (Fig. 1F) for a modular bone plate 100, the member including: a top surface defining a top plane; a bottom surface defining a bottom plane; and a portion or first connection portion including an aperture or hole 110 with a center axis that intersects the top plane and the bottom plane, the first hole having an edge 111, wherein a first portion of the edge of the first hole is provided with a first tongue or projection 114 (para [0045]) forming a first free end of the member and wherein a second portion of the edge of the first hole is provided with an opening or groove 117 that extends substantially transverse to the center axis of the first hole 54 and that is configured to accommodate a second projection of another member of the modular bone plate (Fig. 1F), the first groove 117 having a groove width defined by sidewalls, wherein the first projection and the first groove are arranged on opposite sides from the hole (Fig. 1F) and wherein the first projection extends in a plane substantially transverse to the center axis of the first hole 110 and wherein the first projection has a projection width in said plane that is smaller than a greatest width of the member in said plane (Fig. 1F).
Regarding claim 3, projection 114 has a lug-like shape (Fig. 1F).
Regarding claim 4, the width of groove 117 is greater than a width of the first projection 114 (Fig. 1F).
Regarding claim 5, the sidewalls of groove 117 form opposing stops such that the groove width is less than a width across the connection portion (see marked up Fig. 1F on the following page).
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Allowable Subject Matter
Non application of prior art to claims 2 and 6-22 indicates allowable subject matter provided the double-patenting rejections and rejections under 35 USC 112(a) and 112 (b) are overcome.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art cited in the attached PTO-892 and in related parent applications 18/138649; 17/141497; and 15/809267 cite some features of Applicant’s claimed invention, either singly or in combination. However, no references or a reasonable combination thereof, could be found which disclose all the elements of Applicant’s claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anu Ramana whose telephone number is (571)272-4718. The examiner can normally be reached 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached at (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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February 3, 2026
/Anu Ramana/Primary Examiner, Art Unit 3775