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 .
Allowable Subject Matter
Claims 21-40 are allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
Most pertinent prior art, including U.S. Patent Pub. No. 2016/0270772 to Beale et al., U.S. Patent Pub. No. 2005/0080418 to Simonson et al. and U.S. Patent No. 9,498,397 to Hight et al. disclose a method of performing spinal surgery on a patient's spine. The method comprises providing a structure to position a patient on a patient-positioning system, including a telescoping patient support system, articulating the patient between at least a first position and a second position, accessing a first portion of the patient via a first incision or incisions and accessing a second portion of the patient via a second incision or incisions, manipulating the first portion of the patient using a first surgical pathway via the first incisions or incisions, and manipulating the second portion of the patient using a second surgical pathway via the second incisions or incisions. Manipulation of the first portion and the second portion of the patient can occur simultaneously by different surgeons to afford parallel performance of two different surgical work-flows by the different surgeons, and implanting a spinal implant between the first vertebral body and the second vertebral body.
The prior art fails to teach or disclose, however, wherein the method includes one of telescopically moving the second portion relative to the first portion of the telescoping beam portion to move the thorax-support portion relative to the leg-support portion and the pelvic-support portion, and articulating the leg-support portion, the pelvic-support portion, and the thorax-support portion of the support portions to generally articulate the patient's spine to manipulate a first vertebral body and a second vertebral body of the patient's spine, contacting the first vertebral body with a first instrument inserted via the first incision or incisions, contacting the second vertebral body with a second instrument inserted via the first incision or incisions, and further manipulating the first vertebral body and the second vertebral body using at least one of the first instrument and the second instrument.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,213,923. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present application and granted patent disclose a method of performing spinal surgery on a patient's spine. The method includes supporting a patient on support portions of a patient-positioning system. The patient-positioning system includes at a head-support portion, a thorax-support portion, and a leg-support portion. The support portions include articulating portions and the method includes articulating the patient into position. The method includes accessing a first portion of the patient's spine via a first incision or incisions and accessing a second portion of the patient's spine via a second incision or incisions, contacting the first vertebral body with a first instrument inserted via the first incision or incisions, contacting the second vertebral body with a second instrument inserted via the first incision or incisions, further manipulating the first vertebral body and the second vertebral body using at least one of the first instrument and the second instrument, and inserting a spinal implant through the second incision or incisions, and implanting the spinal implant between the first vertebral body and the second vertebral body.
Conclusion
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/CHRISTOPHER J BECCIA/Primary Examiner, Art Unit 3775
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