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.
Claim(s) 1 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1 of U.S. Patent No. 11,871,968 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The table below shows the application claims and the patent claims side by side for direct comparison, with the differences between the claims are highlighted below by bolding all the limitations that differ, italicizing additional limitations, and underlining limitations that will be addressed below.
Application Claims:
Patent Claims:
1. A spinal joint access device for accessing a spinal joint via a posterior access approach, the device comprising a body having a proximal portion and a distal portion; and a chamfered or beveled end feature positioned at the distal portion of the body and configured for insertion at the spinal joint.
1. A spinal fixation access and delivery system for accessing the cervical facet joint via a posterior access approach, the system comprising an access device comprising a body having a proximal portion and a distal portion; and a chamfered or beveled end feature positioned at the distal portion of the body and configured for insertion at the cervical facet joint, a guide device having access device engagement features; and a spinal fixation member, wherein the access device includes at least one guide device receiving feature complementary to or keyed to the engagement feature of the guide device, and the guide device comprises at least one spinal fixation member engagement feature, and the spinal fixation member includes at least one guide device receiving feature complementary to or keyed to the engagement feature of the guide device.
As is apparent from the table above, while Patent claim 1 discloses a system, the system includes all of the features of the access device in application claim 1, as well as additional limitations (e.g. a guide device and spinal fixation device) that are not in the application claims.
Claim(s) 1 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/380371 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The table below shows the application claims and the patent claims side by side for direct comparison, with the differences between the claims are highlighted below by bolding all the limitations that differ, italicizing additional limitations, and underlining limitations that will be addressed below.
Application Claims:
Patent Claims:
1. A spinal joint access device for accessing a spinal joint via a posterior access approach, the device comprising a body having a proximal portion and a distal portion; and a chamfered or beveled end feature positioned at the distal portion of the body and configured for insertion at the spinal joint.
1. A spinal joint access device for accessing a spinal joint via a posterior access approach, the access device comprising an elongated tubular body defining a longitudinal axis therethrough, the body having a proximal portion and a distal portion; and a chamfered or beveled end feature positioned at the distal portion of the body and configured for insertion at the spinal joint, wherein said end feature extends from the distal portion of the body in a same plane or in a parallel plane relative to the longitudinal axis of the body.
As is apparent from the table above, while Patent claim 1 all of the features of application claim 1, as well as additional limitations that are not in the application claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
(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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marik et al. (U.S. Pub. No. 2012/0277801 A1, hereinafter “Marik”).
Marik discloses regarding claim 1, a spinal joint access device (10, see Fig. 3) for accessing a spinal joint (FJ) via a posterior access approach (see Fig. 3), the device comprising a body having a proximal portion and a distal portion (see annotated Fig. 9 below); and a chamfered or beveled end feature (17) positioned at the distal portion of the body (see Fig. 9) and configured for insertion at the spinal joint (see para. [0036]).
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michelle C. Green whose telephone number is (571)270-7051. The examiner can normally be reached on Monday-Friday between 9am-5pm.
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, 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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/M.C.G/ Examiner, Art Unit 3773 /EDUARDO C ROBERT/ Supervisory Patent Examiner, Art Unit 3773
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