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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-14 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-14 of prior U.S. Patent No. 10,342,590. This is a statutory double patenting rejection.
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 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,413,081. 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 fulcrum for use in a bone realignment procedure. The fulcrum comprises a body configured to be inserted in an intermetatarsal space between adjacent metatarsals, and a handle operatively connected to the body, wherein the handle projects at a non-zero degree angle from the body to define a tissue retraction space between the handle and the body.
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.
Claims 15, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2009/0216089 to Davidson.
As to Claim 15, Davidson discloses a fulcrum (100) for use in a bone realignment procedure [0057-0058]. The fulcrum comprises a body (including 110, 130) configured to be inserted in an intermetatarsal space (Fig. 19) between adjacent metatarsals [0058], and a handle (120) operatively connected to the body. The handle projects at a non-zero degree angle from the body to define a tissue retraction space between the handle and the body (angle seen in Fig. 2).
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As to Claim 17, Davidson discloses a fulcrum wherein the body (including 110, 130) defines an axis (P1) extending along the length of the body, the handle defines a handle axis (forming angle seen above) projecting at the non-zero degree angle from the body, and an angle between the axis of the body and the handle axis ranges from 20 degrees to 75 degrees (see Fig. 2 above).
As to Claim 18, Davidson discloses a fulcrum wherein the angle ranges from 35 degrees to 55 degrees (see Fig. 2 above).
Claims 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2013/0331850 to Bojarski et al.
As to Claim 19, Bojarski discloses a multidimensional fulcrum (250, Figs. 9-10, [0059]). The fulcrum comprises a fulcrum body (seen in Figs. 9 and 10) having a length extending from a first end (255) to a second end (260), a width (width of minor axis of Fig. 9), and a thickness (seen in cross section of Fig. 10, [0059]), wherein the first end (255) of the fulcrum has a first thickness and is configured to be inserted into an intermetatarsal space between adjacent metatarsals [0032] of a first size (differing thickness described in [0059]), the second end (260) of the fulcrum has a second thickness and is configured to be inserted into an intermetatarsal space between adjacent metatarsals [0032] of a second size (differing thickness described in [0059]), and the second thickness is greater than the first thickness [0059].
As to Claim 20, Bojarski discloses a multidimensional fulcrum wherein the first thickness and the second thickness each fall within a range from 1 millimeter to 10 millimeters, and the second thickness is at least 1 millimeter greater than the first thickness (thicknesses of Table 2).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2009/0216089 to Davidson in view of U.S. Patent No. 6,416,465 to Brau.
As to Claim 16, Davidson discloses a fulcrum wherein the handle includes a distal portion (124) and a handle body (near ref. 120, Fig. 1) positioned between the body of the fulcrum (110) and the distal portion (124, Figs. 1-2).
Ad to Claim 16, Davidson discloses the claimed invention except for wherein the handle includes a grip portion.
Brau discloses a surgical retractor (10, Fig. 1) wherein a handle (15) includes a grip portion (18) in order to provide stability as the device is held by the practitioner (Col. 5, Lines 52-58).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the tool of Davidson with the grip modification of Brau in order to provide stability as the device is held by the practitioner.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J BECCIA whose telephone number is (571)270-7391. The examiner can normally be reached Mon - Fri 8:30-5:00.
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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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/CHRISTOPHER J BECCIA/Primary Examiner, Art Unit 3775
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