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, 2 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 9 and 10 of U.S. Patent No. 11,497,614. Although the claims at issue are not identical, they are not patentably distinct from each other.
Independent claim 1 recites all of the elements of claim 10 of the patent (including the elements of independent claim 1, and claims 2 and 9 from which claim 10 depends from). The
difference between independent claim 1 of the application and claim 10 of the patent
lies in the fact that the patent claim further recites “at least one gap formed between every two adjacent lateral members of the at least two lateral members; and a through hole extending through the first endplate, the coupling member, and the second endplate” (see claim 1, col.19, ll.63-67 of the patent), “wherein the at least two lateral members further comprise: a posterior portion coupled to and extending between the first endplate and the second endplate; a first lateral side coupled to and extending between the first endplate and the second endplate, and wherein the first lateral side is coupled to the posterior portion along a length of the first lateral side and the posterior portion; and a second lateral side coupled to and extending between the first endplate and the second endplate, and wherein the second lateral side is coupled to the posterior portion along a length of the second lateral side and the posterior portion” (see claim 2 of the patent), and “wherein the at least two lateral members extend across an anterior side of the interbody spacer, down a first lateral side of the interbody spacer, across a posterior side of the interbody spacer, and down a second lateral side of the interbody spacer forming a square shaped lateral member” (see claim 9 of the patent). Thus, the invention of claim 10 of the patent is in affect a “species of the generic” invention of claim 1 of the 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 claim 1 of the application is anticipated by respective claim 10 of the patent, they are not patentably distinct from each other.
Furthermore, dependent claims 2 and 8 of the application recite all of the elements of
dependent claims 2 and 9 of the patent.
Claim 2 of the patent recites “wherein the at least two lateral members further
comprise: a posterior portion coupled to and extending between the first endplate and the second
endplate; a first lateral side coupled to and extending between the first endplate and the second
endplate, and wherein the first lateral side is coupled to the posterior portion along a length of the
first lateral side and posterior portion; and a second lateral side coupled to and extending
between the first endplate and the second endplate, and wherein the second lateral side is coupled
to the posterior portion along a length of the second lateral side and posterior portion”, thus
reciting all of the elements of claim 2 of the application.
Claim 9 of the patent recites “wherein the at least two lateral members extend across an anterior side of the interbody spacer, down a first lateral side of the interbody spacer, across a posterior side of the interbody spacer, and down a second lateral side of the interbody spacer forming a square shaped lateral member”, thus reciting all of the elements of claim 8 of the application.
Allowable Subject Matter
Claims 15-20 are allowed.
Claims 15-17 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 claimed combination of limitations recited in independent claim 15. In particular, none of the cited references teach or suggest an interbody spacer comprising a first endplate having a rectangular shape, and a second endplate having a rectangular shape, wherein the first endplate is positioned parallel to the second endplate, and a coupling member coupled to and extending between the first and second endplates, the coupling member comprising at least one first longitudinal member extending from the first endplate on an anterior side of the interbody spacer; and at least one second longitudinal member extending from the second endplate on an anterior side of the interbody spacer, as required by claim 15.
Claims 18-21 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 claimed combination of limitations recited in independent claim 18. In particular, none of the cited references teach or suggest wherein the at least one intermediate cage may be coupled to the second endplate of the first cage on a first end and the first endplate of the second cage on a second end; inserting the first cage and second cage into a patient between two vertebral bodies; and inserting the at least one intermediate cage between the first cage and the second cage, as required by claim 18.
Claims 3-7, 10-14 and 21 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 3 and 7 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 claimed combination of limitations recited in claim 3. In particular, none of the cited references teach or suggest wherein the first lateral side and the second lateral side extend away from the posterior portion towards an anterior side of the interbody spacer, as required by claim 3.
Claims 4-6 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 claimed combination of limitations recited in claim 4. In particular, none of the cited references teach or suggest wherein each of the first lateral side and the second lateral side comprise a free end, as required by claim 4.
Claims 10-12 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 claimed combination of limitations recited in claim 10. In particular, none of the cited references teach or suggest at least one tab positioned perpendicular to at least one of the first endplate and the second endplate, as required by claim 10.
Claim 13 in in the instant application has 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 claim 10. In particular, none of the cited references teach or suggest at wherein the at least one gap is formed by a first surface and a second surface, and wherein the first surface and the second surface extend parallel to each other, as required by claim 13.
Claim 14 in the instant application has 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 claim 10. In particular, none of the cited references teach or suggest wherein the at least one gap is formed by a first surface and a second surface, and wherein the first surface and the second surface diverge from each other as the first surface and the second surface extend from a posterior surface of the interbody spacer to an anterior surface of the interbody spacer, as required by claim 14.
Claim 21 in the instant application has 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 claim 10. In particular, none of the cited references teach or suggest a first anterior member extending from the first endplate; and a second anterior member extending from the second endplate, wherein the first anterior member extends towards the second anterior member and wherein the first anterior member does not directly connect to the second anterior member, as required by claim 21.
Response to Arguments
Applicant’s arguments, filed 04/20/2026, with respect to the rejections of claims 1, 2, 8 and 15-20 under 35 U.S.C. 102(a)(1) as being anticipated by Tescony et al. (U.S. Publication No.2012/0277748 A1) have been fully considered and are persuasive. The amendments made to the claims overcome the prior art of Tescony. Therefore, the rejection has been withdrawn. However, upon further consideration, claims 1, 2 and 8 continue to stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 9 and 10 of U.S. Patent No. 11,497,614, as discussed above.
Conclusion
THIS ACTION IS MADE FINAL. 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 Christina Negrelli whose telephone number is 571-270-7389. The examiner can normally be reached on Monday-Friday, between 8:00am to 4:00pm. If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eduardo Robert, 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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/CHRISTINA NEGRELLI/
Examiner, Art Unit 3773
/EDUARDO C ROBERT/Supervisory Patent Examiner, Art Unit 3773
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