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 under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, a second main body described in claims 10, 15 and 19 must be shown or the feature(s) canceled from the claim(s). As best understood in figs.1 and 15, the binding device of the instant application is divided into panels having a plurality of segments (104) and Applicant has not specifically designated which one would be considered a second main body. For the purpose of examination, the office has subdivided the panels to comprise a first and second main body as set forth in claim 10. No new matter should be entered.
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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites the limitation "the length" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter since claim 8 depends from claim 7 and therefore contain the same deficiencies.
Claim 9 recites the limitation "said second panel" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the second engagement feature" in line 6 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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.
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) 1-2, 7-14 and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Robins U.S. Patent No. (4,383,526).
With respect to claim 1, Robins discloses a binding device or splint (shown in figs.1-7) for localized binding of pelvic structures of a patient ([Col.2], lines 11-18, for use in immobilizing such as a broken femur or a hip dislocation, note: the hips are a part of the pelvis]), the binding device comprising:
a first main body or a base panel (10a, 10b and 10c, figs.1 and 3) comprising a plurality of panels (20a-c on the left and right side of the main panel or base panel as show in fig.1) and (16a-c on the left and right side of the main body or base panel (as shown in fig.1),
wherein the first main body (10a, 10b and 10c, figs.1 and 3) is configured to encircle at least part of the pelvic structure (as shown in figs.5-6) and ([Col.2], lines 11-18),
wherein a first engagement feature via slot (46, fig.1) and ([Col.6], lines 27-31, one segment can be nestably received within another segment and the two segments can be held fast to each other as by cravats extended through aligned apertures] and ([Col.3], lines 53-63) of the first main body is configured to engage with an elongated member or (cravat C, figs.3-4 and 6-7) and ([Col.3], lines 53-63); and
wherein a first panel of the plurality of panels is configured to fold against a second panel of the plurality of panels (as shown in figs.2-4).
With respect to claim 2, Robins discloses each panel of the plurality of panels is hingedly connected by a hinged connection via (fold lines 14 and 18, fig.1) and ([Col.3], lines 36-39) to an adjacent panel of the plurality of panels (as shown in fig.1).
With respect to claim 7, Robins discloses a proximal panel (16a-c on the left and right sides) of a plurality of panels of the first main body is configured to fold against a second panel (20a-c on the left and right sides) of the plurality of panels, thereby reducing the length (the horizontal length) of the first main body (as shown in figs.2-4).
With respect to claim 8, Robins discloses the first engagement feature comprises a primary engagement slot (46, fig.1) and ([Col.3], lines 53-63) defined by the primary panel (as shown in fig.1), the primary engagement slot being configured to receive a portion of the elongated member or cravat (c) and ([Col.3], lines 53-63).
With respect to claim 9, Robins discloses the second panel defines a secondary engagement slot that aligns with the primary engagement slot when the proximal panel is folded over the second panel ([Col.3], lines 47-52) and ([Col.6], lines 27-31, one segment can be nestably received within another segment and the two segments can be held fast to each other as by cravats extended through aligned apertures] and (figs.3-4).
With respect to claim 10, Robins discloses a second main body (as shown in the reproduced image of fig.1 below) coupled to the first main body, wherein: the first engagement feature is a first engagement slot (46, fig.1) that is defined by a proximal panel (16a-1 on the right side, as shown in fig.1) of the first main body, the first engagement slot (46) being configured to receive the elongated member or (cravat C, figs.3-4 and 6-7); and the second engagement feature is a second engagement slot (46) that is defined by a distal panel (20a-c on the left side) of a plurality of panels of the second main body, the second engagement slot (46) being configured to receive the elongated member or (cravat C, figs.3-4 and 6-7).
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With respect to claim 11, regarding the method step claimed, to the extent that the prior art apparatus meets the structural limitations of the apparatus as claimed (see rejection to claim 1 above), it will inherently perform the method steps as claimed. Furthermore, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of anticipation has been established. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986) and In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); (under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device) see MPEP 2112.01(1), as such, Robins discloses a method for localized binding of pelvic structures of a patient, the method comprising: encircling at least part of a pelvic structure with a first main body of a binding device; engaging an elongated member with a first engagement feature of the first main body; and constricting the elongated member.
With respect to claim 12, Robins discloses the first engagement feature is an engagement slot (46, fig.1) and ([Col.3], lines 53-63) defined by a proximal panel of the first main body, and wherein engaging the elongated member or cravat (c) and ([Col.3], lines 53-63) with the engagement slot (46) comprises extending the elongated member through the engagement slot (as shown in figs.3-4).
With respect to claim 13, Robins discloses moving the first main body from a stowable configuration, as for example, underneath a bed or sofa when not in use ([Col.1], lines 17-22, the primary object of the invention is to provide a traction splint for use as soon as it could be applied to a fractured femur and held in place until the orthopedic surgeon could take corrective measures. The time consumed might range anywhere from five minutes to five hours]. Note: stowed position is being interpreted as “when not in use” to a flat configuration (as shown in fig.1) and ([Col.2], lines 11-18), the proximal panel of the first main body being folded against a second panel of the first main body when the first main body is in the stowable configuration (as shown in figs.2-4).
With respect to claim 14, Robins discloses engaging the elongated member or cravat (c) with a second engagement feature or slot (46), the second engagement feature or slot (46) being an engagement slot defined by a distal end of the first main body (as shown in fig.3).
With respect to claim 16, Robins discloses a binding system or splint (shown in figs.1-7) for localized binding of pelvic structures of a patient ([Col.2], lines 11-18, use in immobilizing such as a broken femur or a hip dislocation, note: the hips are a part of the pelvis]), the binding system comprising:
an elongated member or cravat (c) and ([Col.3], lines 53-63); and
a binding device comprising a first main body or a base panel (10a, 10b and 10c, figs.1 and 3) that is configured to encircle at least part of the pelvic structure (as shown in figs.5-6) and ([Col.2], lines 11-18), the binding device having a first engagement feature or slot (46) engaged with the elongated member or cravat (c) and (as shown in figs.3-4).
With respect to claim 17, Robins discloses the first main body or a base panel (10a, 10b and 10c, figs.1 and 3) comprises a plurality of panels (20a-c on the left and right side of the main panel or base panel as show in fig.1) and (16a-c on the left and right side of the main body or base panel (as shown in fig.1), each panel being hingedly connected via (fold lines 14 and 18, fig.1) and ([Col.3], lines 36-39) to an adjacent panel of the plurality of panels, wherein a first panel of the plurality of panels of the first main body is configured to fold against a second panel of the plurality of panels of the first main body (as shown in figs.2-4), thereby moving the first main body towards a stowable configuration, as for example, underneath a bed or sofa when not in use ([Col.1], lines 17-22, the primary object of the invention is to provide a traction splint for use as soon as it could be applied to a fractured femur and held in place until the orthopedic surgeon could take corrective measures. The time consumed might range anywhere from five minutes to five hours]. Note: stowed position is being interpreted as “when not in use”.
With respect to claim 18, Robins discloses the first engagement feature comprises a primary engagement slot (46, fig.1) defined by a proximal panel (16a-c on the left and right sides) of a plurality of panels of the first main body (as shown in fig.1), and wherein the elongated member or cravat (c) is received by the first engagement slot (46, as shown in figs.3-4).
With respect to claim 19, Robins discloses the elongated member or cravat (c) is engaged with a second engagement feature (46) of the binding device, the second engagement feature (46) comprising a primary engagement slot (46) defined by a distal panel (20a-c of the left and right side, as shown in fig.1) of one of the first main body and a second main body (16a-c, left and right side, as shown in fig.1).
With respect to claim 20, Robins discloses the plurality of panels of the first main body comprises a second panel hingedly coupled via (fold lines 14 and 18, fig.1) and ([Col.3], lines 36-39) to the proximal panel, the second panel defining a secondary engagement slot (40) that aligns with the primary engagement slot (40) of the proximal panel when the proximal panel is folded over onto the second panel such that the first engagement feature comprises the secondary engagement slot ([Col.3], lines 53-63) and ([Col.6], lines 27-31, one segment can be nestably received within another segment and the two segments can be held fast to each other as by cravats extended through aligned apertures].
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Robins as applied to claim 2 above, and further in view of Grohs et al. U.S. Patent No. (6,250,713 B1).
With respect to claim 3, Robins substantially discloses the invention as claimed except the hinged connection is a living hinge.
Grohs et al. however, teaches a lifting member comprising side panels hinged to a main portion, such as by a living hinge ([Col.5], lines 64-67) and (figs.5-6).
In view of the teachings of Grohs et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the hinged connection of Robins by incorporating a living hinge in order to allow the panels to be able to bend or rotate.
With respect to claim 4, the combination of Robins/Grohs et al. substantially discloses the invention as claimed. Robins further discloses the first engagement feature is an engagement slot (46, fig.1) defined by a proximal panel of the plurality of panels (as shown in fig.1), the first engagement slot (46, fig.1) being configured to receive the elongated member (cravat C, figs.3-4 and 6-7) and ([Col.3], lines 53-63).
With respect to claim 5, the combination of Robins/Grohs et al. substantially discloses the invention as claimed. Robins further discloses the first main body (10a, 10b and 10c, figs.1 and 3) is configured to move between a flat configuration (as shown in fig.1) and ([Col.2], lines 11-18), and a stowable configuration, as for example, underneath a bed or sofa when not in use ([Col.1], lines 17-22, the primary object of the invention is to provide a traction splint for use as soon as it could be applied to a fractured femur and held in place until the orthopedic surgeon could take corrective measures. The time consumed might range anywhere from five minutes to five hours]. Note: stowed position is being interpreted as “when not in use”.
With respect to claim 6, the combination of Robins/Grohs et al. substantially discloses the invention as claimed. Robins further discloses each of the plurality of panels of the first main body is folded against at least one other panel of the plurality of panels (as shown in figs.3-5) when the first main body is in the stowable configuration, as for example, underneath a bed or sofa when not in use ([Col.1], lines 17-22, the primary object of the invention is to provide a traction splint for use as soon as it could be applied to a fractured femur and held in place until the orthopedic surgeon could take corrective measures. The time consumed might range anywhere from five minutes to five hours]. Note: stowed position is being interpreted as “when not in use”.
Claim(s) 15 is rejected under 35 U.S.C. 103 as being unpatentable over Robins.
With respect to claim 15, Robins substantially discloses the invention as claimed but did not explicitly discloses sizing the binding device to fit a user, wherein sizing the binding device comprises at least one of folding back excess portions of the first main body and coupling the first main body to a second main body; and engaging the elongated member with a second engagement feature of the binding device, Robins however, suggests in ([Col.6], lines 17-27, the segments or sections may be selectively positionable as to each other along the splint length or certain of the segments may be eliminated for a particular usage, thus permitting a wide range of size adjustability. For instance, in the event that an injured adult leg is to be treated, the splint would be assembled using all segments or sections. In the case of a child's leg, it might be desirable to use only the distal and medial segments or the proximal and medial segments. For pediatric injuries, the distal segment alone may be used), therefore, it would have been well within the skill of an ordinary artisan to modify the sizing of the binding device to fit a user, wherein sizing the binding device comprises at least one of folding back excess portions of the first main body and coupling the first main body to a second main body based on the particular usage as suggested and taught by Robins.
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, 3-4, 6 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-4, 6 and 13 of copending Application No. (17/589,830) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are a broader recitation of the invention than that of copending Application No. (17/589,830).
Claim 1 of the instant application recites: A binding device for localized binding of pelvic structures of a patient, the binding device comprising: a first main body comprising a plurality of panels, wherein said first main body is configured to encircle at least part of the pelvic structure, wherein a first engagement feature of said first main body is configured to engage with an elongated member, and wherein a first panel of said plurality of panels is configured to fold against a second panel of said plurality of panels.
Claim 2 of copending Application No. (17/589,830) recite: a binding device for compressing pelvic structures of a patient, the binding device comprising: a first main body that is configured to encircle at least part of the pelvic structure, the first main body having a first engagement feature that is configured to engage with a first constriction tourniquet assembly; wherein the first main body comprises a plurality of panels, each panel being hingedly connected by a hinged connection to an adjacent panel of the plurality of panels.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between claim 1 of the current application and claim 2of copending Application No. (17/589,830) lies in the fact that the Copending claims include many more elements and is thus much more specific. Thus, the invention of claim 2 of copending Application No. (17/589,830) is in effect a “species” of the “generic” invention of current application claim 1. It has been held that the generic invention is “anticipated” by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 of the current application is anticipated by claim 2 of copending Application No. (17/589,830), it is not patentably distinct from claim 2 of copending Application No. (17/589,830).
All of the limitations of claim 3 of the instant application can be found in claim 3 of copending Application No. (17/589,830).
All of the limitations of claim 4 of the instant application can be found in claim 4 of copending Application No. (17/589,830).
All of the limitations of claim 6 of the instant application can be found in claim 6 of copending Application No. (17/589,830).
All of the limitations of claim 13 of the instant application can be found in claim 11 of copending Application No. (17/589,830).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OPHELIA ALTHEA HAWTHORNE whose telephone number is (571)270-3860. The examiner can normally be reached M-F 8:00 AM-5:00 PM, EST.
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/OPHELIA A HAWTHORNE/Primary Examiner, Art Unit 3786