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, 12-14, 20 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walker et al. (2010/0241175).
Regarding claim 1, Walker et al. disclose a bone anchoring device (Fig. 1) comprising:
an anchoring element 10 having a shank 20 for anchoring in a bone and a head 24;
a receiving part 12 having a central axis 76 (Fig. 4) defining a coaxial passage (id.) configured to pivotably receive the head 24 of the anchoring element 10, such that the shank can assume a plurality of angular positions relative to the receiving part (para. 0036, “polyaxial movement”); and
a pressure member 16 (Fig. 1) movable in the passage, the pressure member defining a head receiving recess 70 for pivotably holding the head 24 therein and comprising a portion 48 configured to clamp the head 24 in the receiving part 12;
wherein the head comprises a first position indication structure 26 (e.g., parallel or crisscross threads; para. 0024) configured to engage a second position indication structure 52 (e.g., grooves; para. 0031; Fig. 5) of the pressure member 16 when the shank 20 assumes a first angular position from among the plurality of angular positions relative to the receiving part 12.
Regarding claim 8, the head receiving recess 70 is configured to hold an inserted head by friction prior to locking (para. 0006; e.g., during installation prior to final tightening of the set screw 18)
Regarding claim 9, at least one of the first or second position indication structures is formed by a groove (e.g., the second position indication structure 52; para. 0031; Fig. 5).
Regarding claim 12, at least one of the first or second position indication structures is rotationally symmetrical (e.g., the second position indication structure 52, i.e., the grooves; para. 0031; Fig. 5).
Regarding claim 13, the receiving part 12 has a first end (top) and a second end (bottom), a recess 50 (Fig. 7) for receiving a rod 14 (Fig. 8) at the first end, and an opening 30 (Fig. 3) at the second end, wherein the head 24 is insertable through the opening 30 into the receiving part 12 (para. 0025).
Regarding independent claim 14, Walker et al. disclose a bone anchoring device comprising:
an anchoring element 10 having a shank 20 for anchoring in bone and a head 24;
a receiving part 12 having a central axis 76 (Fig. 4) defining a coaxial passage (id.) configured to pivotably receive the head 24 of the anchoring element 10, such that the shank can assume a plurality of angular positions relative to the receiving part (para. 0036, “polyaxial movement”); and
a pressure member 16 (Fig. 1) movable in the passage to exert pressure on the head 24 to clamp the head 24 in the receiving part 12;
wherein the head comprises a first position indication structure 26 (e.g., parallel or crisscross threads; para. 0024) configured to engage a second position indication structure 52 (e.g., grooves; para. 0031; Fig. 5) of the pressure member 16 when the shank assumes a first angular position from among the plurality of angular positions relative to the receiving part 12, and wherein the first position indication structure 26 is formed on an outer surface of the head 24 (Fig. 2).
Regarding claim 20, Walker et al. disclose a bone anchoring device (Fig. 1) comprising:
an anchoring element 10 having a shank 20 for anchoring in bone and a head 24;
a receiving part 12 having a central axis 76 (Fig. 4) defining a coaxial passage (id.) configured to pivotably receive the head 24 of the anchoring element 10, such that the shank can assume a plurality of angular positions relative to the receiving part 12 (para. 0036, “polyaxial movement”); and
a pressure member 16 (Fig. 1) movable in the passage to exert pressure on the head 24 to clamp the head in the receiving part 12, the pressure member defining a spherical segment-shaped head receiving recess 70 for pivotably holding the head 24 therein;
wherein the head comprises a first position indication structure 26 (e.g., parallel or crisscross threads; para. 0024) configured to engage a second position indication structure 52 (e.g., grooves; para. 0031; Fig. 5) of the pressure member 16 when the shank 20 assumes a first angular position from among the plurality of angular positions relative to the receiving part 12.
Regarding claim 22, the first position indication structure 26 is formed by a groove (e.g., between the parallel threads; para. 0031) on an outer surface of the head (Fig. 5).
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, 12-14, 20 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3 and 6 of U.S. Patent No. 12,207,846. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims resides in the fact that the patent claims include more elements and are more specific (e.g., further claiming that the head comprises a spherical segment-shaped portion that extends substantially uninterruptedly over a majority of the head, and that the first position indicator structure (i.e., surface) is formed monolithically with the head). Thus, the invention of the patent claims is in effect a “species” of the “generic” invention of the application claims. 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 application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
Regarding independent application claim 1, patent claim 1 discloses a bone anchoring device comprising:
an anchoring element having a shank for anchoring in bone and a head;
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 defining a head receiving recess for pivotably holding the head therein and comprising a portion (e.g., the recess) configured to clamp the head in the receiving part;
wherein the head comprises a first position indication structure (i.e., surface) configured to engage a second position indication structure (i.e., surface) of the pressure member when the shank assumes a first angular position from among the plurality of angular positions relative to the receiving part.
Regarding independent application claim 14, patent claim 1 discloses a bone anchoring device comprising:
an anchoring element having a shank for anchoring in bone and a head;
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 to exert pressure on the head to clamp the head in the receiving part;
wherein the head comprises a first position indication structure (i.e., surface) configured to engage a second position indication structure (i.e., surface) of the pressure member when the shank assumes a first angular position from among the plurality of angular positions relative to the receiving part, and wherein the first position indication structure is formed on an outer surface of the head (i.e., “the head comprising an outer surface with a spherical segment-shaped portion that extends substantially uninterruptedly over a majority of the head and a monolithically formed first position indication surface that deviates from the spherical segment-shaped portion”).
Regarding independent application claim 20, patent claim 1 discloses a bone anchoring device comprising:
an anchoring element having a shank for anchoring in bone and a head;
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 to exert pressure on the head to clamp the head in the receiving part, the pressure member defining a spherical segment-shaped head receiving recess for pivotably holding the head therein (“pivotably holding the head therein” is established in the preceding clause because the head is pivotably received and then held or clamped by the spherical segment-shaped head receiving recess);
wherein the head comprises a first position indication structure configured to engage a second position indication structure of the pressure member when the shank assumes a first angular position from among the plurality of angular positions relative to the receiving part.
The claims of the present application, including the dependent claims, are mapped to the claims of the issued patent as set forth in the table below.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2/1 of U.S. Patent No. 11,464,546. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claim and the patent claims resides in the fact that the patent claims include more elements and are more specific (e.g., further reciting “when the head is held in the head receiving recess at a first axial position relative to the pressure member and . . . wherein the first and second position indicating structures are configured to be disengaged from one another while the head remains held in the head receiving recess at the first axial position relative to the pressure member when the shank is at an angular position different from the first angular position relative to the receiving part.”). Thus, the invention of the patent claims is in effect a “species” of the “generic” invention of the application claim. 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 application claim is anticipated by the patent claims, it is not patentably distinct from the patent claims.
Regarding independent application claim 1, patent claim 1 discloses a bone anchoring device comprising:
an anchoring element having a shank for anchoring in a bone and a head;
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 defining a head receiving recess for pivotably holding the head therein and comprising a portion configured to clamp the head in the receiving part;
wherein the head comprises a first position indication structure configured to engage a second position indication structure of the pressure member when the shank assumes a first angular position from among the plurality of angular positions relative to the receiving part.
The claims of the present application and the claims of the issued patents are mapped as follows:
Appl. 19/001,939
Pat. 12,207,846
Pat. 11,464,546
1
1
2/1
2 (canceled)
3 (canceled)
4 (canceled)
5 (canceled)
6 (canceled)
7 (canceled)
8
2
N/A
9
3
N/A
10 (canceled)
11 (canceled)
12
5
N/A
13
6
N/A
14
1
N/A
15 (canceled)
16 (canceled)
17 (canceled)
18 (canceled)
19 (canceled)
20
1
N/A
21 (canceled)
22
3
N/A
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
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