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 .
Drawings
The drawings are objected to because of some of the drawings are very light making details difficult to decipher. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 claims 1-18 of U.S. Patent No. 12208017.
Pending claim 1 recites fewer elements than patented claim 1 while each of pending dependent claims 2-10 are identical in scope to each of dependent patented claims 2-10.
Pending claims 11 and 12 recite fewer elements than patented claim 11, while each of pending dependent claims 3-19 are identical to each of patented dependent claims 12-18.
Pending claim 20 recites fewer elements than patented claim 10.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the only difference between claims of the present application and the patented claims is that the patented claims are more specific. Thus, the invention of the patented claims is in effect a “species” of the “generic” invention of the claims of the present 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 the claims of the present application are anticipated by the patented claims, they are not patentably distinct from the patented claims.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 10-11 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Errico et al. (US 7632281).
Regarding claims 1 and 11, Errico et al. disclose a bi-directional holder or driver including: an extension or inner driver 204 extending from a proximal end to a distal end, wherein the inner driver includes a handle 202 disposed at the proximal end of the inner driver (Fig. 2k); an inner driver tip disposed at the distal end of the inner driver; and a shaft 208 extending from the handle to the inner driver tip; a sleeve or outer driver extending from a proximal end to a distal end, wherein the outer driver includes a handle portion 219 disposed at the proximal end of the outer driver; an outer driver tip (interpreted to mean an extremity since no specific structure is being claimed) disposed at the distal end of the outer driver; and a tubular shaft extending from the handle portion to the outer driver tip; and a rotational constraint system which couples the inner and outer drivers, the rotational constraint system including recesses 228 on the outer surface of inner driver 204 the rotational constraint system configured to releasably prevent relative rotation between the inner and outer drivers by means of a spring plunger 232 received in a recess 228 (Figs. 2a-2k, col. 21, lines 11-67 and col. 22, lines 1-44).
Regarding claim 11, Errico et al. disclose rotation of sleeve or outer driver 206 in either a clockwise (first) direction or counterclockwise (second) direction wherein when a spring plunger 232 engages a recess 228 (first configuration) rotation is prevented and when enough force is applied, the spring plunger 232 backs out the recess 228, sleeve will rotate and when the spring plunger 232 engages a recess 228 again (second configuration) rotation in the first direction or the second direction is prevented (col. 22, lines 14-44).
Regarding claims 10 and 20, Errico et al. disclose the holder or driver can be used to manipulate the trial or any suitably configured orthopedic device, for e.g. a spacer having a compressible cylindrical trunk 106 (Figs. 1a-f that is capable of expanding or contracting when placed in an intervertebral space). No specific structure or engagement is being claimed to distinguish over the Errico et al. device.
Allowable Subject Matter
Non application of prior art to claims 2-9 and 12-19 indicates allowable subject matter provided the double-patenting rejections made in this office action are overcome.
Reasons for indicating allowable subject matter: the closest prior art cited in the attached PTO-892 and in the related parent applications cite some features of Applicant’s claimed invention , either singly or in combination. However, no references or a reasonable combination thereof, could be found which disclose all the elements of Applicant’s claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anu Ramana whose telephone number is (571)272-4718. The examiner can normally be reached 8:00 am-5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached at (571)272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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February 18, 2026
/Anu Ramana/Primary Examiner, Art Unit 3775