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 set of claims received on 24 December 2024. Claims 1-20 are currently pending.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
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. Claims 16-19 appear to be directed toward the embodiment disclosed in Figures 28-39, and are dependent upon claim 11. Claim 11 appears to be directed toward the embodiments disclosed in Figures 15-27 and 44-47. There are no drawings showing a combination of these embodiments. Therefore, the combination of the embodiment of Figures 28-39 with the embodiments of Figures 15-27 and 44-47 (i.e. as required by claims 16-19) must be shown or the features canceled from the claims. 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.
The drawings are objected to because of the following:
In Figure 1, it appears that reference number 102 should be replaced with reference number 134 (see Figure 11, and paragraphs 0060-0061 of the current specification for support). Reference number 102 is not present in the current specification.
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.
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.
Claims 16-19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 16 recites the limitations a “set screw,” “foot engagement member,” and “threaded knob.” It appears that these limitations are directed toward the embodiment disclosed in Figures 28-39 (see paragraphs 0076-0077 and 0079-0081). Claim 11 recites the limitations a “first base system,” “first arm,” “second base system,” “second arm,” and “guide wire.” It appears that these limitations are directed toward the embodiment disclosed in Figures 15-27 and 44-47 (see paragraphs 0072-0075 and 0092-0098). Since claim 16 depends upon claim 11 and given the disclosure, it is unclear as to exactly how the “set screw” (i.e. understood as 522) is coupled to a “bone plate” (i.e. understood as 600) when the “first arm” (i.e. understood as 410) is coupled to the “first base system” (i.e. understood as 110 or 710). It is also unclear as to exactly how the “foot engagement member” (i.e. understood as 550) is coupled to the “second arm” (i.e. understood as 410) when the “guide wire” (i.e. 406) is inserted through the “second arm.” The examiner notes the statements of interchangeability as disclosed in paragraph 0100; however, as best understood by the examiner there is nothing in the disclosure to indicate how these specific embodiments work together. Since claims 17-19 are dependent upon claim 16, they contain the same issue.
Double Patenting
Statutory
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 3 and 13 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 2 and 14 of prior U.S. Patent No. 12,171,442. This is a statutory double patenting rejection.
Non-Statutory
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 1-2, 4, 11-12 and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 13 and 15-16 of U.S. Patent No. 12,171,442. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are merely broader than the patent claims.
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 1-2 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pincock (U.S. Patent 2,434,431).
Pincock discloses (as to claim 1) a device (10) capable of joint compression (see Note below, and column 1, lines 1-8) comprising a base system (i.e. system defined by portion of 11 from which 15, 16, and 18 extend; portion of 12 from which 11, and 14 extend; and 15, 16, and 18); and at least one arm (i.e. a first arm defined by portion of 11 to which 38 is connected, and a second arm defined by portion of 12 to which 33 is connected) coupled to the base system, wherein (as to claim 2) the base system comprises a first member (i.e. member defined by portion of 11 from which 15, 16, and 18 extend); a second member (i.e. member defined by portion of 12 from which 11, and 14 extend); at least one parallel member (15, 16, and 18) coupling the first member to the second member, wherein the second member translates along (e.g. via 13, 14 and 23) the at least one parallel member (see column 2, lines 12-40), and wherein (as to claim 4) the at least one parallel member comprises a screw (18) (see Figures 1-6, and column 1, line 1 – column 3, line 52).
Note: Regarding the effect of the preamble, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. Furthermore, a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention (see MPEP 2111.02(II)). Regarding functional language, "[a]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (see MPEP 2114(II)).
Claims 1-2 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Alvarez Cambras (U.S. Patent 4,624,249).
Alvarez Cambras discloses (as to claim 1) a device (see Figure 1) capable of joint compression (see Note above, and column 2, lines 18-24) comprising a base system (1); and at least one arm (9) coupled to the base system, wherein (as to claim 2) the base system comprises a first member (e.g. a first instance of 4 located along the right-most instance of 1 as best seen in Figure 1); a second member (i.e. a second instance of 4 located along the right-most instance of 1 as best seen in Figure 1); at least one parallel member (e.g. right-most instance of 1 as best seen in Figure 1) coupling the first member to the second member, wherein the second member translates along (i.e. via a threaded connection) the at least one parallel member (see claim 1), and wherein (as to claim 11) the base system comprises a first base system (i.e. right-most instance of 1 as best seen in Figure 1); a first arm (i.e. right-most instance of 9 as best seen in Figure 1) coupled to the first base system; a second base system (i.e. left-most instance of 1 as best seen in Figure 1); and a second arm (i.e. left-most instance of 9 as best seen in Figure 1) coupled to the second base system; and wherein the first base system is coupled to the second base system by a guide wire (16) inserted through the first arm on a first end (i.e. end of 9 adjacent the bone as best seen in Figure 1) and the second arm on a second end (i.e. end of 9 adjacent the bone as best seen in Figure 1) (see Figures 1-5, and column 2, line 61 – column 4, line 12).
Claim 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hergenroeder (U.S. Patent 4,968,316).
Hergenroeder discloses a surgical method comprising using a joint compression device (10) on at least one joint (i.e. ankle) of a patient, the joint compression device comprising a base system (i.e. system defined by 14 and 14’); and at least one arm (12 and 12’) coupled to (i.e. via 16, 16’, 18 and 18’) the base system; attaching the base system to the patient (see Figure 4); and applying compression across the at least one joint with the joint compression device to fuse the joint (see column 5, line 35 – column 6, line 7) (see Figures 1-4, and column 3, line 59 – column 6, line 7).
Allowable Subject Matter
Claim 5-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 16-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 5-10 and 16-19 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, the following:
Regarding claim 5, in combination with the limitations required by claims 1-3, no prior art reference could be found disclosing or making obvious wherein the at least one parallel member further comprises at least one bar.
Regarding at least claim 6, in combination with the limitations required by claims 1-3, no prior art reference could be found disclosing or making obvious wherein the at least one arm comprises a first arm coupled to the first member; and a second arm coupled to the second member..
Regarding at least claim 16, in combination with the limitations required by claims 1-2 and 11, no prior art reference could be found disclosing or making obvious wherein the joint compression device further comprises a set screw coupled to a bone plate; a foot engagement member coupled to the second arm; and a threaded knob rotatably coupled to the foot engagement member to secure the foot engagement member at a desired position.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DeVasConCellos (U.S. Patent 10,441,317) discloses a compression device comprising a base system and at least one arm coupled to the base system.
Cole (U.S. Patent 7,311,711) discloses a compression device comprising a base system and at least one arm coupled to the base system.
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).
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, 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.
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.
/LARRY E WAGGLE, JR/Primary Examiner, Art Unit 3775