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 .
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 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, 8, 9, 12, 23, 25, 26 and 35-37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abu-Mulaweh et al. (2020/0237409; cited by Applicant).
Regarding claim 1, Abu-Mulaweh et al. discloses a bone anchoring device (e.g., Figs. 10 and 12) comprising:
an anchoring element 304 (Fig. 10) having a shank (id.) for anchoring to bone and a monolithic head 324 comprising an outer surface with a spherical segment-shaped portion that extends substantially uninterruptedly over a majority of the head (id.) and a first position indication surface (e.g., the upper edge surface) that deviates from the spherical segment-shaped portion (Figs. 10 and 12); and
a receiving part 308 having a central axis defining a coaxial passage configured to pivotably receive the head 324 of the anchoring element 304, such that the shank can assume a plurality of angular positions relative to the receiving part 308 (Fig. 12); and
a pressure member 320 movable in the passage, the pressure member comprising an inner surface with a spherical segment-shaped first portion 374 (Fig. 11; para. 0068) that defines a head 324 receiving recess for directly contacting the head to clamp the head in the receiving part 308, and a second portion (annotated Fig. 11, below) that extends from the first portion 374 in a direction away from the central axis, wherein a transition between the first and second portions forms a second position indication surface (id.);
wherein the first position indication surface (supra) is configured to engage the second position indication surface (annotated Fig. 11, below) when the shank assumes a first angular position from among the plurality of angular positions relative to the receiving part 308, and is configured to disengage from the second position indication surface when then shank is adjusted away from the first angular position (Fig. 12).
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Regarding claim 8, the head receiving recess (defined by the spherical segment-shaped first portion 374; supra) of the pressure member 320 is configured to hold the head by friction prior to locking (e.g., prior to final tightening).
Regarding claim 9, the second position indication surface is formed by adjacent grooves (annotated Fig. 11, supra) defining the second position indication surface.
Regarding claim 12, the first position indication surface (e.g., the upper edge surface; supra; Fig. 10) is rotationally symmetrical.
Regarding claim 23, the second portion of the pressure member 320 further extends at least partially axially away from the first portion (see annotated Fig. 11, supra; arrow showing component of axial extent of a comparable second portion).
Regarding claim 25, an edge at the second position indication surface (annotated Fig. 11, supra) is formed at the transition between the first portion 374 and the second portion (id.) of the inner surface of the pressure member 320.
Regarding claim 26, the second portion of the inner surface can be characterized as a cut-out that extends away from the first portion 374 of the inner surface (see annotated Fig. 11, supra).
Regarding claim 35, Abu-Mulaweh et al. disclose a bone anchoring device (e.g., Figs. 10 and 12) comprising:
an anchoring element 304 (Fig. 10) having a shank (id.) for anchoring to bone and a monolithic head 324 comprising an outer surface with a spherical segment-shaped portion and a recessed portion (e.g., the upper edge surface) that is recessed from the spherical segment-shaped portion and that defines a first position indication surface (Fig. 12); and
a coupling device 308, 320 for coupling the anchoring element to a rod, the coupling device comprising:
a receiving part 308 having a central axis defining a coaxial passage configured to pivotably receive the head of the anchoring element, such that the shank can assume a plurality of angular positions relative to the receiving part 308 (Fig. 12), with the plurality of angular positions restricted to being within one or more distinct planes (para. 0070 and Fig. 12, e.g., planes at opposing extents of angular rotation of the shank; cf. also para. 0081); and
a pressure member 320 configured to be assembled to the receiving part 308 and to be adjusted relative to the receiving part to clamp the head 324 in the receiving part, wherein the pressure member 320 comprises a rod contacting surface 380 (Fig. 11) for engaging the rod 312 (Fig. 9);
wherein the coupling device 308, 320 comprises a second position indication surface (annotated Fig. 11, supra) configured to engage the first position indication surface (e.g., the upper edge surface; supra) when the shank assumes a first angular position from among the plurality of angular positions relative to the receiving part 308 (Fig. 12), and is configured to disengage from the second position indication surface when the shank is adjusted away from the first angular position.
Regarding claim 36, the pressure member 320 is movable in the passage of the receiving part 308 and directly engageable with the head 324 (Figs. 10, 12, 13).
Regarding claim 37, the second position indication surface (annotated Fig. 11, supra) is formed on the pressure member 320 (id.).
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Abu-Mulaweh et al. (2020/0237409; cited by Applicant) in view of Hawkes et al. (2008/0249576).
Abu-Mulaweh et al. disclose the claimed invention including a receiving part 308 having a first end (top) and a second end (bottom), a recess for receiving a rod 312 at the first end (Fig. 9), and an opening 348 (Fig. 10) at the second end, but does not disclose wherein the head 324 is insertable through the opening into the receiving part.
Hawkes et al. disclose a bone anchoring device (Fig. 3) and teach that a receiving part 100 can be configured with a retaining ring 310 to allow the head 340 of an anchoring element 180 to be insertable through the opening 325 of the receiving part 100 (para. 0043). This configuration facilitates the surgical procedure by allowing the anchoring element to be inserted into bone before the receiving part where necessary or desired (para. 0031).
It would have been obvious to a person having ordinary skill in the art before the effective filing date to configure the receiving part of Mulaweh et al. (supra) with a retaining ring such that the head 324 is insertable through the opening into the receiving part, in view of Hawkes et al., to facilitate the surgical procedure by allowing the anchoring element to be inserted into bone before the receiving part where necessary or desired.
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, 8, 9, 12, 13 and 23-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8, 9 and 11 of U.S. Patent No. 12,207,846 (of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences amount to minor changes in the arrangement or phraseology of the claim limitations.
Regarding independent application claim 1, patent claim 1 discloses a bone anchoring device comprising:
an anchoring element having a shank for anchoring to bone and a monolithic head (e.g., a head having a monolithic feature) comprising an outer surface with a spherical segment-shaped portion that extends substantially uninterruptedly over a majority of the head and a first position indication surface that deviates from the spherical segment-shaped portion; and
a receiving part having a central axis defining a coaxial passage configured to pivotably receive the head of the anchoring element, such that the shank can assume a plurality of angular positions relative to the receiving part; and
a pressure member movable in the passage, the pressure member comprising an inner surface with a spherical segment-shaped first portion that defines a head receiving recess for directly contacting the head to clamp the head in the receiving part, and a second portion that extends from the first portion in a direction away from the central axis, wherein a transition between the first and second portions forms a second position indication surface;
wherein the first position indication surface is configured to engage the second position indication surface when the shank assumes a first angular position from among the plurality of angular positions relative to the receiving part, and is configured to disengage from the second position indication surface when then shank is adjusted away from the first angular position.
The claims of this application are mapped to the claims of the issued patent as follows:
Appl. 19/001,939
Pat. 12,207,846
1
1
2 (canceled)
3 (canceled)
4 (canceled)
5 (canceled)
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Allowable Subject Matter
Claims 28-34 are allowable over the prior art of record.
Reasons for Allowance
The claims in the instant application indicated as being allowable have not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose or suggest the claimed combination of limitations recited in independent claim 28. In particular, none of the cited references teach or suggest a curved portion having a radius of curvature that is smaller than the first radius of curvature, and a transition between the spherical segment-shaped portion and the curved portion that forms a first position indication surface; wherein the coupling device comprises a second position indication surface configured to engage the first position indication surface when the shank assumes a first angular position from among the plurality of angular positions relative to the receiving part, and is configured to disengage from the second position indication surface when the shank is adjusted away from the first angular position, as required by claim 28.
Response to Arguments
Applicant’s arguments, see Remarks pages 7-9, filed 15 April 2026, with respect to the double patenting rejection over U.S. Pat. No. 11,464,546, and with respect to the outstanding rejection under 35 U.S.C. 102, have been fully considered and are persuasive. Accordingly, those rejections have been withdrawn. However, new grounds of rejection under 35 U.S.C. 102 and under 35 U.S.C. 103 are set forth above in response to the amended and newly presented claims. It is noted that the double patenting rejection over U.S. Pat. No. 12,207,846 remains applicable to certain claims, as set forth above.
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 DAVID C COMSTOCK whose telephone number is (571)272-4710. The examiner can normally be reached M-F 9:00-5:00 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eduardo Robert can be reached at 571-272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID C. COMSTOCK
Examiner
Art Unit 3773
/DAVID C COMSTOCK/Examiner, Art Unit 3773 /EDUARDO C ROBERT/Supervisory Patent Examiner, Art Unit 3773
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