CTNF 19/028,402 CTNF 88249 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 08-34 AIA Claim s 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-11 and 13-19 of U.S. Patent No. 12,268,360 B2 to Wilson . Although the claims at issue are not identical, they are not patentably distinct from each other because all elements in the application claims are covered by the patented claims. Except for a minor difference in terminology, it is clear that all elements of claims 1-18 are found in claims 1-11 and 13-19 of the patent. The difference between the claims of the application and the claims of the patent lies in the fact that the patent claims include more elements and is, thus, more specific. The invention of claims 1-11 and 13-19 of the patent is in effect a “species” of the “generic” invention of claims 1-18 of the application. It has been held that the generic invention is “anticipated” by the “species”. See In re Gooodman , 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-18 are anticipated by claims 1-11 and 13-19 of the patent, they are not patentably distinct from the patented claims . Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1, 10 and 19 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Wilson et al. (US 2014/0066701 A1) . Regarding claim 1, Wilson discloses a surgical alignment device (102; Fig. 1; par. [0045]) comprising: a base (108; Fig. 1; par. [0075]); a guide (Fig. 1- unlabeled plate at the top of 102, on top of which 101 is disposed); at least one linear actuator (303; Figs. 3 and 5; par. [0046] and [0051]) each extending between the base and the guide, the at least one linear actuator (303) including first ends (503 at lower end of 303; Figs. 5A-5B) connected to the base (108) at a base joint (Figs. 3-4) and a second end (503 and upper end of 303; Figs. 5A-5B) connected to the guide at a guide joint (Fig. 3); and a locking arrangement (107/900/901/905; Figs. 6 and 9A-9B; par. [0052-0053] and [0056]-[0057]) configured to lock the base joint or lock the guide joint (par. [0057]- coupling mechanism 900 can be a disk that attaches to all 6 cables 90 simultaneously to lock/unlock 107). Regarding claim 10, Wilson discloses the surgical alignment device of claim 1, wherein the guide defines an aperture (Figs. 1, 2 and 9) at a center thereof configured to receive a surgical instrument (101; Figs. 1 and 2) for guiding the surgical instrument to a surgical site. Regarding claim 19, Wilson discloses a method of using a surgical alignment device, the method comprising: positioning a base (108; Fig. 1; par. [0075]) relative to a subject (301; Fig. 3; par. [0046]); moving a guide (Fig. 1- unlabeled plate at the top of 102, on top of which 101 is disposed) relative to the base (108) using a plurality of linear actuators (303; Figs. 3 and 5; par. [0046] and [0051]) coupled between the base and the guide; and simultaneously locking (via 107/900/901/905; Figs. 6 and 9A-9B; par. [0052- 0053] and [0056]-[0057]) the plurality of linear actuators (303) at a connection portion between the base or the guide (par. [0057]- coupling mechanism 900 can be a disk that attaches to all 6 cables 90 simultaneously to lock/unlock 107) . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. 07-21-aia AIA Claim (s) 1-9 and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Elhawary et al. (US 2014/0350572 A1) in view of Lacher (US 4620813) in view of Wilson et al. (US 2014/0066701 A1) . Regarding claim 1, Elhawary discloses a surgical alignment device (Fig. 6A-6C) comprising: a base (602; Fig. 6A; par. [0049]); a guide (604; Fig. 6A; par. [0049]); a plurality of linear actuators (606; Fig. 6A; par. [0049]) each extending between the base and the guide, the plurality of linear actuators (606) including first ends connected to the base (602) at base joints (Figs. 6A-6C – unlabeled joints on 602) and second ends connected to the guide (604) at guide joints (Figs. 6A-6C – unlabeled joints on 604). However, Elhawary does not specifically disclose a locking arrangement configured to simultaneously lock all of the base joints or simultaneously lock all of the guide joints. Lacher teaches a locking mechanism (32/14/18; Figs. 1-3; col. 3, ll. 1-15 and 48-59) that locks the position of a sphere and associated members indefinitely until a new position is provided by opening the locking mechanism. It would have been obvious to one having ordinary skill in the art to provide the locking mechanism of Lacher in the base and guide joints of Elhawary in order to lock the position of the ball on the ends of the linear actuators in position in order to prevent inadvertent movement of the device. Wilson teaches an analogous device having a locking arrangement (107/900/901/905; Figs. 6 and 9A-9B; par. [0052-0053] and [0056]-[0057]) configured to simultaneously lock all of the base joints or simultaneously lock all of the guide joints (par. [0057]- coupling mechanism 900 can be a disk that attaches to all 6 cables 90 simultaneously to lock/unlock 107). It would have been obvious to one having ordinary skill in the art to provide a coupling mechanism including a disk having cables that attach to all of base and guide locking mechanisms of modified Elhawary, in order to simultaneously lock and unlock the base joints or guide joints, respectively, as taught by Wilson. Regarding claim 2, Elhawary in view of Lacher in view of Wilson disclose the surgical alignment device of claim 1, wherein the locking arrangement includes a base locking arrangement (Lacher: 32/14/18; Wilson: 900/901/905) configured to simultaneously lock all of the base joints (joints on 602; Fig. 6A), and a guide locking arrangement (Lacher: 32/14/18; Wilson: 900/901/905) configured to simultaneously lock all of the guide joints (joints on 604; Fig. 6A). Regarding claim 3, Elhawary in view of Lacher in view of Wilson disclose the surgical alignment device of claim 1, wherein the locking arrangement includes a base locking arrangement (Lacher: 32/14/18; Wilson: 900/901/905) at the base (602), the base locking arrangement including base brakes (Lacher: 32/14/18) at each one of the base joints (joints on 602), the base brakes simultaneously movable to simultaneously lock each one of the base joints (Lacher: 32/14/18; Wilson: 900/901/905). Regarding claim 4, Elhawary in view of Lacher in view of Wilson disclose the surgical alignment device of claim 3, further comprising a base locking ring (Wilson: par. [0057] – rotatable disk; Fig. 6B), rotation of the base locking ring in a first direction simultaneously moves the base brakes into cooperation with base spheres of the base joints to simultaneously lock the base joints (Wilson: par. [0057]; Fig. 6B), and rotation of the base locking ring in a second direction opposite to the first direction simultaneously releases the base brakes from cooperation with the base spheres to simultaneously unlock the base joints (Wilson: par. [0057]; Fig. 6B). Regarding claim 5, Elhawary in view of Lacher in view of Wilson disclose the surgical alignment device of claim 1, wherein the locking arrangement includes a guide locking arrangement (Lacher: 32/14/18; Wilson: 900/901/905) at the guide (604), the guide locking arrangement including guide brakes (Lacher: 32/14/18) at each one of the guide joints (joints on 604), the guide brakes simultaneously movable to simultaneously lock each one of the guide joints (Lacher: 32/14/18; Wilson: 900/901/905). Regarding claim 6, Elhawary in view of Lacher in view of Wilson disclose the surgical alignment device of claim 5, further comprising a guide locking ring (Wilson: par. [0057] – rotatable disk; Fig. 6B), rotation of the guide locking ring in a first direction simultaneously moves the guide brakes into cooperation with guide spheres of the guide joints to simultaneously lock the guide joints (Wilson: par. [0057]; Fig. 6B), and rotation of the guide locking ring in a second direction opposite to the first direction simultaneously releases the guide brakes from cooperation with the guide spheres to simultaneously unlock the guide joints (Wilson: par. [0057]; Fig. 6B). Regarding claim 7, Elahwary in view of Lacher in view of Wilson disclose the surgical alignment device of claim 1, wherein each one of the plurality of linear actuators (606) is configured to extend and contract (Figs. 6A-6C; par. [0049]-[0050]). Regarding claim 8, Elahwary in view of Lacher in view of Wilson disclose the surgical alignment device of claim 7, wherein the plurality of linear actuators (606), the base joints (Figs. 6A-6C – unlabeled joints on 602), and the guide joints Figs. 6A-6C – unlabeled joints on 604) are configured to together provide six degrees of freedom movement of the guide relative to the base (par. [0049] – Stewart platforms are well-known to have six degrees of freedom). Regarding claim 9, Elahwary in view of Lacher in view of Wilson disclose the surgical alignment device of claim 1, wherein the plurality of linear actuators (606) includes six linear actuators (par. [0049] – Stewart platforms are well-known to have six actuators). Regarding claim 11, Elhawary discloses a surgical alignment device (Fig. 6A-6C) comprising: a base (602; Fig. 6A; par. [0049]); a guide (604; Fig. 6A; par. [0049]); a plurality of linear actuators (606; Fig. 6A; par. [0049]) each extending between the base and the guide, the plurality of linear actuators (606) including first ends connected to the base (602) at base joints (Figs. 6A-6C – unlabeled joints on 602) and second ends connected to the guide (604) at guide joints (Figs. 6A-6C – unlabeled joints on 604). However, Elhawary does not specifically disclose base brakes at each one of the base joints; guide brakes at each one of the guide joints; or a locking arrangement configured to simultaneously lock all of the base joints or all of the guide joints. Lacher teaches a locking mechanism (32/14/18; Figs. 1-3; col. 3, ll. 1-15 and 48-59) that locks the position of a sphere and associated members indefinitely until a new position is provided by opening the locking mechanism. It would have been obvious to one having ordinary skill in the art to provide the locking mechanism of Lacher in the base and guide joints of Elhawary in order to lock the position of the ball on the ends of the linear actuators in position in order to prevent inadvertent movement of the device. Wilson teaches an analogous device having a locking arrangement (107/900/901/905; Figs. 6 and 9A-9B; par. [0052-0053] and [0056]-[0057]) configured to simultaneously lock all of the base joints or simultaneously lock all of the guide joints (par. [0057]- coupling mechanism 900 can be a disk that attaches to all 6 cables 90 simultaneously to lock/unlock 107). It would have been obvious to one having ordinary skill in the art to provide a coupling mechanism including a disk having cables that attach to all of base and guide locking mechanisms of modified Elhawary, in order to simultaneously lock and unlock the base joints or guide joints, respectively, as taught by Wilson. Accordingly, modified Elhawary discloses base brakes (Lacher: 32/14/18) at each one of the base joints (joints on 602); guide brakes (Lacher: 32/14/18) at each one of the guide joints (joints on 604); a base locking ring (Wilson: par. [0057] – rotatable disc; Fig. 6B) included with the base (602) and in cooperation with the base brakes (Lacher: 32/14/18) such that rotation of the base locking ring in a first direction (Wilson: par. [0057]; Fig. 6B) moves the base brakes (Lacher: 32/14/18) into engagement with the plurality of linear actuators (606) to lock the base joints, and rotation of the base locking ring in a second direction opposite to the first direction releases the base brakes from engagement with the plurality of linear actuators to unlock the base joints (Wilson: par. [0057]; Fig. 6B); and a guide locking ring (Wilson: par. [0057] – rotatable disc; Fig. 6B )included with the guide (604) and in cooperation with the guide brakes (Lacher: 32/14/18) such that rotation of the guide locking ring in a first direction (Wilson: par. [0057]; Fig. 6B) moves the guide brakes (Lacher: 32/14/18) into engagement with the plurality of linear actuators (606) to lock the guide joints, and rotation of the guide locking ring in a second direction opposite to the first direction releases the guide brakes from engagement with the plurality of linear actuators to unlock the guide joints (Wilson: par. [0057]; Fig. 6B). Regarding claim 12, Elhawary in view of Lacher in view of Wilson disclose the surgical alignment device of claim 11, wherein the locking arrangement includes a base locking ring (Wilson: par. [0057] – rotatable disc; Fig. 6B) included with the base (602) and in cooperation with the base brakes (Lacher: 32/14/18) such that rotation of the base locking ring in a first direction (Wilson: par. [0057]; Fig. 6B) moves the base brakes (Lacher: 32/14/18) into engagement with the plurality of linear actuators (606), and rotation of the base locking ring in a second direction opposite to the first direction releases the base brakes from engagement with the plurality of linear actuators to unlock the base joints (Wilson: par. [0057]; Fig. 6B); and a guide locking ring (Wilson: par. [0057] – rotatable disc; Fig. 6B )included with the guide (604) and in cooperation with the guide brakes (Lacher: 32/14/18) such that rotation of the guide locking ring in a first direction (Wilson: par. [0057]; Fig. 6B) moves the guide brakes (Lacher: 32/14/18) into engagement with the plurality of linear actuators (606) to lock the guide joints, and rotation of the guide locking ring in a second direction opposite to the first direction releases the guide brakes from engagement with the plurality of linear actuators to unlock the guide joints (Wilson: par. [0057]; Fig. 6B). Regarding claim 13, Elhawary in view of Lacher in view of Wilson disclose the surgical alignment device of claim 12, wherein the plurality of linear actuators (606), the base joints (joints on 602), and the guide joints (joints on 604) are configured to together provide six degrees of freedom movement of the guide relative to the base (par. [0049]-0050] – Stewart platform; Wilson: par. [0046] - the frame 102 can include a hexapod that can allow for six degrees of freedom; par. [0052]). Regarding claim 14, Elhawary in view of Lacher in view of Wilson disclose the surgical alignment device of claim 11, wherein the guide (604) defines an aperture (610; Fig. 6A; par. [0049]) at a center thereof configured to receive a surgical instrument for guiding the surgical instrument to a surgical site. Regarding claim 15, Elhawary in view of Lacher in view of Wilson disclose the surgical alignment device of claim 11, wherein each one of the base brakes (Lacher: 32/14/18) and each one of the guide brakes (Lacher: 32/14/18) includes: a receptacle (Lacher: interior of 14) configured to receive a sphere of each one of the base joints and each one of the guide joints respectively, the receptacle including a friction promoting insert or surface treatment (Lacher: 26/28; Fig. 1); and a curved surface opposite to the receptacle (Lacher: exterior of 14). Allowable Subject Matter Claims 16-18 are objected to as being dependent upon a rejected base claim, but would be allowable if: 1) a terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) is timely filed; and 2) if claim 16 is rewritten in independent form including all of the limitations of the base claim and any intervening claims. As stated in the for reasons for allowance of claim 17 in parent patent U.S. 12,268,360, the prior art of record does not specifically disclose, or otherwise render obvious, the surgical alignment device wherein: the base locking ring includes a plurality of base ramps, each one of the plurality of base ramps is in cooperation with one of the curved surfaces of one of the base brakes; and the guide locking ring includes a plurality of guide ramps, each one of the plurality of guide ramps is in cooperation with one of the curved surfaces of one of the guide brakes. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYNAE E BOLER whose telephone number is (571)270-3620. The examiner can normally be reached Mon - Fri 9:00-5:00. 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, Anhtuan Nguyen can be reached at 571-272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /RYNAE E BOLER/Examiner, Art Unit 3795 /ANHTUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795 6/12/26 Application/Control Number: 19/028,402 Page 2 Art Unit: 3795 Application/Control Number: 19/028,402 Page 3 Art Unit: 3795 Application/Control Number: 19/028,402 Page 4 Art Unit: 3795 Application/Control Number: 19/028,402 Page 6 Art Unit: 3795 Application/Control Number: 19/028,402 Page 7 Art Unit: 3795 Application/Control Number: 19/028,402 Page 8 Art Unit: 3795 Application/Control Number: 19/028,402 Page 9 Art Unit: 3795 Application/Control Number: 19/028,402 Page 10 Art Unit: 3795 Application/Control Number: 19/028,402 Page 11 Art Unit: 3795 Application/Control Number: 19/028,402 Page 12 Art Unit: 3795 Application/Control Number: 19/028,402 Page 13 Art Unit: 3795 Application/Control Number: 19/028,402 Page 14 Art Unit: 3795
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