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 .
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, or 365(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/551379, fails to provide adequate support or enablement in the manner provided by the first paragraph of 35 U.S.C. 112 for claims 1-20 of this application. It is noted that the claimed subject matter has been presented for the first time in this application and is not supported in the prior-filed applications. For example, independent claims 1 recite the limitations of "a lock at the distal end of the elongate body.” The prior-filed applications also lack any reference to lock that is able to actuate between first and second positions as recited.
Accordingly, the effective filing date for the claimed subject matter in the current application is 08/28/2018 and will be treated as such for examination purposes.
Claim Objections
Claims 13 and 17 are objected to because of the following informalities:
In claim 13, line 7, change “coupleable” to –couple--.
In claim 17, line 8, change “coupleable” to –couple--. 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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 10,905,474 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences between claims 1-20 of the application and claim 19 of the patent lies in the fact that the patent claims include the recitation of more elements and are thus more specific. Accordingly, the invention of claim 19 of the patent is in effect a “species” of the “generic” invention of claims 1-20 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 claims 1-20 of the application are anticipated by claim 19 of the patent, they are not patentably distinct from claim 19 of the patent.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Mickiewicz et al. (U.S. 2019/0069934 A1).
Concerning claim 1, Mickiewicz et al. disclose a system for manipulating implants coupled by a cord, the system comprising: a counter tensioner to guide the cord from a tensioner to an implant, the counter tensioner comprising: an elongate body with a proximal end and a distal end (see Fig. 2A, element 200), with a longitudinal axis of the elongate body defined through the proximal end and the distal end; and a lock at the distal end of the elongate body, the lock being releasably coupleable to a head of the implant such that the distal end of the elongate body is releasably coupleable to a head of an implant enabling translation of the implant relative to another implant implanted in an adjacent or nearby vertebrae, wherein the lock is able to actuate between a first position and a second position (see par. 0086), wherein the lock is engaged with the head of the implant when in the first position,
wherein the lock is disengaged from the head of the implant when in the second position, wherein the distal end of the lock is a first distance from the longitudinal axis through the elongate body when the lock is in the first position, wherein the distal end of the lock is a second distance from the longitudinal axis through the elongate body when the lock is in the second position, and wherein the second distance is greater than the first distance (see Figs. 6A-6D).
Concerning claim 2, the counter tensioner further comprising: a lumen (see Fig. 3A, element 208) disposed within the elongate body and extending from the proximal end to the distal end thereof along the longitudinal axis through the elongate body, wherein a set screw engageable with the head of the implant to fix the cord within the head of the implant is deliverable through the lumen (see par. 0073).
Concerning claim 3, the counter tensioner further comprising: a handle at the proximal end of the elongate body, wherein actuation of the handle (see Fig. 2B, element 204) promotes the engagement of the lock to the proximal end of the head of the implant (see par. 0074).
Claim(s) 13 and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McBride, Jr. et al. (U.S. 2016/0089188 A1).
Concerning claim 13, McBride, Jr. et al. disclose a system for manipulating implants coupled by a cord, the system comprising: a counter tensioner to guide the cord from a tensioner to an implant, the counter tensioner comprising: an elongate body with a proximal end and a distal end (see Fig. 1A); and
an outwardly biasable arm (see Fig. 1C below) at the distal end of the elongate body, wherein a lock (see Fig. 1C below) is at a distal end of the outwardly biasable arm, the lock being able to actuate between a first position (see Fig. 1D) and a second position (see Fig. 1C) to releasably couple to a head of the implant (see Fig. 1D, element 24) such that the distal end of the elongate body is releasably coupleable to a head of the implant enabling translation of the implant relative to another implant implanted in an adjacent or nearby vertebrae; and a lock extension (see Fig. 1D below) located within a lock extension channel (see Fig. 1D below) in the elongate body, wherein the lock extension is engageable with the outwardly biasable arm, wherein, when the lock is in the first position (see Fig. 1D below), the lock extension engages the outwardly biasable arm in a first state to cause the lock to engage with the head of the implant and urge the outwardly biasable arm into secure engagement with the head of the implant, and wherein, when the lock is in the second position (see Fig. 1C), the lock extension engages the outwardly biasable arm in a second state to cause the lock to disengage from the head of
the implant and allow the outwardly biasable arm to release from the head of the implant.
[AltContent: arrow][AltContent: textbox (Visible Portion of Inner Sleeve)][AltContent: textbox (Lock Extension Channel )][AltContent: arrow][AltContent: connector][AltContent: textbox (Lock Extension )][AltContent: connector][AltContent: textbox (Lock)][AltContent: connector][AltContent: textbox (Outwardly Biasable arm)]
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Concerning claim 17, McBride, JR. et al. disclose a system for manipulating implants coupled by a cord, the system comprising: a counter tensioner to guide the cord from a tensioner to an implant, the counter tensioner comprising: an elongate body with a proximal end and a distal end (see Fig. 1A), the elongate body comprising an outer sleeve (96) and an inner sleeve (94) located within the outer sleeve; and a lock (see Fig. 1C above) at a distal end of an outwardly biasable arm (see Fig. 1C above) at a distal end of the inner sleeve (94), the lock being able to actuate between a first position (see Fig. 1D) and a second position (see Fig. 1C) to releasably couple to a head of the implant (24) such that the distal end of the elongate body is releasably coupleable to a head of the implant enabling translation of the implant relative to another implant implanted in an adjacent or nearby vertebrae, wherein, when the lock is in the first position (see Fig. 1D), the outer sleeve (96) engages the outwardly biasable arm (see above) in a first state to cause the lock (see above) to engage with the head of the implant (24) and urge the outwardly biasable arm into secure engagement with the head of the implant (see Fig. 1D), and
wherein, when the lock is in the second position (see Fig. 1C above), the outer sleeve (96) disengages from the outwardly biasable arm (see above) in a second state to cause the lock (see above) to disengage from the head of the implant and allow the outwardly biasable arm to release from the head of the implant.
Concerning claim 18, wherein the outwardly biasable arm includes the distal end and a proximal end, wherein the lock (see above) at the distal end of the outwardly biasable arm and the head of the implant (receiving feature in element 24) include engageable cooperating features.
Concerning claim 19, wherein the outwardly biasable arm is pivotable at a location (see Fig. 1A below) along the outwardly biasable arm that is closer to the proximal end than the distal end of
the outwardly biasable arm.
[AltContent: arrow][AltContent: textbox (Pivotable location )]
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Concerning claim 20, wherein a portion of the inner sleeve (see Fig. 1C above) is visible relative to a portion of the outer sleeve (96) when the lock is in the second position (see Fig. 1C), and wherein the portion of the inner sleeve (see Fig. 1C) is covered by the portion of the outer sleeve when the lock is in the first position (see Fig. 1D).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN HAMMOND whose telephone number is (571)270-3819. The examiner can normally be reached Monday-Friday 8 - 4 PM .
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eduardo C. 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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/ELLEN C HAMMOND/Primary Examiner, Art Unit 3773