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 .
Response to Amendment
The Amendment filed 08/07/26 has been entered. Claims 21-23 and 37 have been amended, and new claim 40 has been entered. Claims 21-40 are addressed in the following office action.
Claim Objections
Claims 26-28 objected to because of the following informalities:
In claim 26, lines 3-4: “a terminal end of the plurality of adjustable limbs” should be “a terminal end of each of the plurality of adjustable limbs”.
In claim 27, lines 3-4: “a terminal end of the plurality of adjustable limbs” should be “a terminal end of each of the plurality of adjustable limbs”.
In claim 28, line 1: “the at least one thru-hole” should be “at least one thru-hole”.
In claim 28, line 3: “a terminal end” should be “the terminal end”.
Appropriate correction is required.
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 21-24, 28-29, 32, 34, and 40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sullivan (US 2013/0096611).
Regarding claim 21, an invention relating to suture anchors, Sullivan discloses (Fig. 2) a surgical implant (100), comprising: an implantable body (11) having a length that is defined between a leading end (12) and a trailing end (13), and extends between a proximal-facing surface and a distal-facing surface (see annotated figure below), the implantable body including a plurality of thru-holes (16 & 17) formed therein that extend from the proximal-facing surface to the distal-facing surface (Par. 0033); an adjustable filament loop (see annotated figure of element 40 below) coupled to the body and disposed through at least two of the thru-holes of the implantable body (Par. 0035), the adjustable filament loop having at least one adjustable filament limb [i.e. the portion of element within the splice and connecting to element 41] extending proximally therefrom [i.e. extending in the direction of the proximal-facing surface is facing], the at least one adjustable filament limb being configured to adjust a size of the adjustable filament loop when tension is applied thereto [i.e. when element 41 is pulled the portion of the suture passing device wrapped around element 20 will constrict] (Par. 0039); and a shuttle suture (30) that extends along a length and is defined by at least one limb that is removably coupled to the implantable body [i.e. the element 30 can be pulled through the socket 19], the at least one limb having a first opening [i.e. an aperture] in a sidewall formed along an intermediate portion of the length of the shuttle suture that leads into a hollow receiving portion [i.e. splice region 39] within the at least one limb with the at least one adjustable filament limb extending from the adjustable filament loop into the hollow receiving portion through the first opening, wherein the at least one adjustable filament limb extends in a direction towards the at least one limb of the shuttle suture (Fig. 2; Par. 0039).
PNG
media_image1.png
264
467
media_image1.png
Greyscale
PNG
media_image2.png
230
459
media_image2.png
Greyscale
Regarding claim 22, Sullivan discloses the implant of claim 21. Sullivan further discloses wherein the at least one limb comprises a second opening in the sidewall formed along the intermediate portion of the at least one adjustable filament limb such that the second opening is more proximate than the first opening to a terminal end of the at least one limb (see annotated figure below).
PNG
media_image3.png
275
467
media_image3.png
Greyscale
Regarding claim 23, Sullivan discloses the implant of claim 22. Sullivan further discloses wherein the second opening is formed at a terminal end of the hollow receiving portion opposite from the first opening, the terminal end of the hollow receiving portion terminating prior to the terminal end of the at least one limb (Par. 0039).
Regarding claim 24, Sullivan discloses the implant of claim 23. Sullivan further discloses wherein the at least one adjustable filament limb exits the shuttle suture through the second opening, the second opening being more remote from the implantable body than the first opening [i.e. when element is 30 is tensioned the aperture will be outside the lumen of the anchor boy and more remote than the other aperture] (Fig. 2).
Regarding claim 28, Sullivan discloses the implant of claim 22. Sullivan further discloses wherein the at least one thru-hole through which the shuttle suture is disposed is located at the leading end such that the at least one limb extends from the proximal-facing surface with a distance between a terminal end of the at least one limb and the proximal-facing surface being smaller than a distance between the terminal end of the at least one limb and the distal-facing surface (Fig. 2).
Regarding claim 29, Sullivan discloses the implant of claim 22. Sullivan further discloses (Fig. 2) wherein a body-facing surface of the at least one adjustable filament limb that extends from the proximal-facing surface forms an acute angle with a longitudinal axis (11a) extending through the length of the implantable body (see annotated figure below).
PNG
media_image4.png
222
505
media_image4.png
Greyscale
Regarding claim 32, Sullivan discloses the implant of claim 22. Sullivan further discloses wherein the shuttle suture is disposed separate from the adjustable filament loop such that the shuttle suture does not form a portion of the adjustable filament loop (Par. 0039).
Regarding claim 34, Sullivan discloses the implant of claim 22. Sullivan further discloses (Fig. 1) wherein the adjustable filament loop is configured to receive a graft therein, the graft configured to be maintained distal to the distal- facing surface of the implantable body [i.e. if element 40 is advanced into the anchor body so that the loop extends out of recess 16, then the loop can receive the graft].
Regarding claim 40, an invention relating to suture anchors, Sullivan discloses (Fig. 2) a surgical implant (100), comprising: an implantable body (11) having a length that is defined between a leading end (12) and a trailing end (13), and extends between a proximal-facing surface and a distal-facing surface (see annotated figure below), the implantable body including a plurality of thru-holes (16 & 17) formed therein that extend from the proximal-facing surface to the distal-facing surface (Par. 0033); an adjustable filament loop (see annotated figure, element 40 below) coupled to the body and disposed through at least two of the thru-holes of the implantable body (Par. 0035), the adjustable filament loop having at least one adjustable filament limb [i.e. the portion of element within the splice and connecting to element 41] extending proximally therefrom [i.e. extending in the direction of the proximal-facing surface is facing], the at least one adjustable filament limb being configured to adjust a size of the adjustable filament loop when tension is applied thereto [i.e. when element 41 is pulled the portion of the suture passing device wrapped around element 20 will constrict] (Par. 0039); and a shuttle suture (30) defined by at least one limb that is removably coupled to the implantable body [i.e. the element 30 can be pulled through the socket 19], the at least one limb having a first opening [i.e. an aperture] in a sidewall thereof that leads into a hollow receiving portion [i.e. splice region 39] within the at least one limb with the at least one adjustable filament limb extending from the adjustable filament loop into the hollow receiving portion through the first opening, wherein the at least one adjustable filament limb extends in a direction towards the at least one limb of the shuttle suture (Fig. 2; Par. 0039), and wherein the shuttle suture is disposed separate from the adjustable filament loop such that the shuttle suture does not form a portion of the adjustable filament loop (Par. 0039).
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 21-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 6, and 8-9 of U.S. Patent No. 10,405,968. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are fully contained within the claim of the patent application.
Claims
19/030,735
21
22
23
24
25
26
27
28
29
Claims US Patent No. 10,405,968
1 & 8
9
1
1
4
1
1
1
6
Claims
19/030,735
30
31
32
33
34
37
38
39
Claims US Patent No. 10,405,968
1
1
1
2
1
1 & 8
9
6
Response to Arguments
Applicant’s arguments, see pages 7-8, filed 08/07/26, with respect to claims 22-36 have been fully considered and are persuasive. The claim objection of claim 22, and 35 USC § 112 rejection of claims 22-36 has been withdrawn.
Applicant’s remaining arguments with respect to the rejection of claims 21, 37, and 39 under 35 USC § 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of newly cited prior art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Chima Igboko whose telephone number is (571)272-8422. The examiner can normally be reached on Monday-Friday 9:00am-6:00pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Jackie Ho, at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.U.I/ Examiner, Art Unit 3771
/KATHLEEN S HOLWERDA/Primary Examiner, Art Unit 3771
Prosecution Insights