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.
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Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 12-20 of U.S. Patent No. 11,812,946. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Present Claim 1, Claim 1 of Pat ‘946 discloses a button-suture assembly to fix tissue to tissue, bone, or other member, comprising (Column 10, Lines 2-3):
a suspension device defining a first end and comprising a button and a locking element (locking pin in the patented claims), the button having a proximal facing surface, a distal facing surface configured to mate or fix to tissue, bone, or other member, a receiving surface configured to mate with the locking element, and first and second lateral openings positioned on opposite sides of at least one central opening, the locking element having a mating surface configured to mate with the receiving surface of the button (Column 10, Lines 4-13); and
at least one suture interacting with the suspension device, the at least one suture having a proximal end portion extending proximally from the suspension device, the at least one suture passing through the suspension device and forming a first loop portion extending distally from the suspension device, the first loop portion defining a second end configured to mate with tissue, bone, or other member, the at least one suture passing through the suspension device between the receiving surface of the button and the mating surface of the locking element (Column 10, Lines 14-24);
wherein the proximal end portion of the at least one suture comprises first and second suture ends, the first and second suture ends passing through the first and second lateral openings, respectively, immediately before passing between the receiving surface of the button and the mating surface of the locking element (Column 10, Lines 30-36).
Regarding Present Claim 2, Claim 1 of Pat ‘946 discloses the button-suture assembly of claim 1, wherein the button-suture assembly comprises a first state defining a first distance between the first and second ends and second state defining a second distance between the first and second ends, the second distance being less than the first distance (Column 10, Lines 25-29).
Regarding Present Claim 3, Claim 1 of Pat ‘946 discloses the button-suture assembly of claim 2, wherein the proximal end portion of the suture is configured to be pulled taut in the proximal direction when the first end of the button- suture assembly is mated with a first tissue and the second end of the button-suture assembly is mated with a second tissue, bone, or other member, thereby creating tension in the suture which causes the button-suture assembly to transition from the first state to the second state, where the second state is maintained via compression and friction applied to the suture between the receiving surface of the button and the mating surface of the locking element (Column 10. Lines 37-47).
Regarding Present Claim 4, Claim 2 of Pat ‘946 discloses the button-suture assembly of claim 1, wherein the other member is at least one of a base plate and a sleeve.
Regarding Present Claim 5, Claim 4 of Pat ‘946 discloses the button-suture assembly of claim 1 wherein the locking element comprises a beveled disc of generally rectilinear cross-section.
Regarding Present Claim 6, Claim 5 of Pat ‘946 discloses the button-suture assembly of claim 1 wherein the locking element comprises a beveled disc of generally trapezoidal cross-section.
Regarding Present Claim 7, Claim 3 of Pat ‘946 discloses the button-suture assembly of claim 1, wherein the other member has at least one opening.
Regarding Present Claim 8, Claim 12 of Pat ‘946 discloses the button-suture assembly of claim 1, wherein the at least one central opening comprises first and second central openings positioned on opposite sides of a central button portion.
Regarding Present Claim 9, Claim 13 of Pat ‘946 discloses the button-suture assembly of claim 8, wherein the locking element comprises first and second openings positioned on opposite sides of a central locking element portion (central pin portion in the patented claims), the first and second openings configured for alignment with the first and second central openings of the button.
Regarding Present Claim 10, Claim 14 of Pat ‘946 discloses the button-suture assembly of claim 9, wherein the at least one suture forms a second loop portion extending proximally from the first loop portion and passing through the first and second central openings of the button and the first and second openings of the locking element.
Regarding Present Claim 11, Claim 15 of Pat ‘946 discloses the button-suture assembly of claim 10, wherein the at least one suture forms a third loop portion extending distally from the second loop portion, the third loop portion configured to mate with at least one of tissue, bone, or other member at the second end.
Regarding Present Claim 12, Claim 16 of Pat ‘946 discloses the button-suture assembly of claim 11, wherein the at least one suture forms a fourth loop portion extending proximally from the third loop portion and passing through the first and second central openings of the button and the first and second openings of the locking element.
Regarding Present Claim 13, Claim 17 of Pat ‘946 discloses the button-suture assembly of claim 12, wherein the at least one suture forms a fifth loop portion extending distally from the fourth loop portion, the fifth loop portion configured to mate with at least one of tissue, bone, or other member at the second end.
Regarding Present Claim 14, Claim 18 of Pat ‘946 discloses the button-suture assembly of claim 11, wherein the other member is at least one of the third loop portion, a base plate, and a sleeve.
Regarding Present Claim 15, Claim 19 of Pat ‘946 discloses a method for securing bone, tissue or other fragments in place during surgical procedures with a button-suture assembly, comprising (Column 11, Lines 48-50):
providing a button suture-suture assembly, comprising (Column 11, Line 51):
a suspension device defining a first end and comprising a button and a locking element (locking pin in the patented claims), the button having a proximal facing surface, a distal facing surface configured to mate or fix to tissue, bone, or other member, a receiving surface configured to mate with the locking element, and first and second lateral openings positioned on opposite sides of at least one central opening (Column 11, Lines 51-67), the locking element having a mating surface configured to mate with the receiving surface of the button (Column 12, Lines 1-2);
at least one suture interacting with the suspension device, the at least one suture having a proximal end portion extending proximally from the suspension device, the at least one suture passing through the suspension device and forming a first loop portion extending distally from the suspension device, the first loop portion defining a second end configured to mate with tissue, bone, or other member, the at least one suture passing through the suspension device between the receiving surface of the button and the mating surface of the locking element (Column 12, Lines 3-12);
wherein the proximal end portion of the at least one suture comprises first and second suture ends, the first and second suture ends passing through the first and second lateral openings, respectively, immediately before passing between the receiving surface of the button and the mating surface of the locking element (Column 12, Lines 18-23);
manipulating the at least one suture through tissue, bone, or other member at the second end and the suspension device at the first end to create suture loops between the tissue, bone, or other member and the suspension device, wherein the first and second suture ends exit the suspension device away from the first end (Column 12, Lines 37-42);
applying tension in the proximal direction to the first and second suture ends causing the locking element to translate proximally relative to the button (Column 12, Lines 43-45); and
releasing the tension on the loose suture ends, wherein the tension stored in the suture loops causes the locking pin to translate distally and apply pressure to the at least one suture between the locking pin and button resulting in the suspension device locking in place and further resisting lengthening of the suture loops (Column 12, Lines 46-51).
Regarding Present Claim 16, Claim 20 of Pat ‘946 discloses the method of claim 15, wherein subsequently applying tension in the proximal direction of the locking element unlocks the locking element from the button and allows for loosening, re-tensioning or repositioning of the button-suture assembly.
Regarding Present Claim 17, Claim 19 of Pat ‘946 discloses the method of claim 15, wherein the button-suture assembly comprises a first state defining a first distance between the first and second ends and second state defining a second distance between the first and second ends, the second distance being less than the first distance (Column 12, Lines 13-17).
Regarding Present Claim 18, Claim 19 of Pat ‘946 discloses the method of claim 17, wherein the proximal end portion of the suture is configured to be pulled taut in the proximal direction when the first end of the button-suture assembly is mated with a first tissue and the second end of the button-suture assembly is mated with a second tissue, bone, or other member, thereby creating tension in the suture which causes the button-suture assembly to transition from the first state to the second state, where the second state is maintained via compression and friction applied to the suture between the receiving surface of the button and the mating surface of the locking element (Column 12, Lines 25-36).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED GAMIL GABR whose telephone number is (571)272-0569. The examiner can normally be reached M-F 9am-5pm.
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/MOHAMED G GABR/Primary Examiner, Art Unit 3771
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