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 .
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, 19-24, 27-29, 31-32, 34-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-6, 10-11, 13-14, 18, 20, 23-24 of U.S. Patent No. 12251147B2, referred herein as Pat. ‘147. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of Pat. ‘147. Pat. ‘147 recites a polyaxial bone anchoring device comprising: an anchoring element having a shank configured to anchor to bone and a head [claim 1 Col. 10 lines 56-58]; a receiving part having a first end, a second end below the first end, a central axis extending through the first and second ends, a channel at the first end that extends transverse to the central axis for receiving a rod, an accommodation space for pivotably holding the head, and an opening at the second end [claim 1 Col. 10 lines 59-65]; a pressure member configured to extend into the channel to contact the rod and movable at least partially in the accommodation space to contact and exert pressure on the head to lock the head relative to the receiving part [claim 1 Col. 10 line 66 to Col 11 line 8]; and an insert piece configured to be positioned around and to contact the head in the receiving part, the insert piece comprising an inner wall having a first portion that is substantially cylindrical segment-shaped [claim 1 Col. 11 line 9-13 and claim 9]; wherein when the pressure member and the insert piece are held in the receiving part, the head is insertable through the opening into the accommodation space; and wherein when the head, the pressure member, and the insert piece are in the receiving part, the insert piece is positionable such that the entire first portion of the inner wall is radially spaced apart from the head to form a radial gap between the head and the first portion of the inner wall, and wherein part of the pressure member is configured to extend axially downwardly into the radial gap [claim 1 Col. 11 lines 14-25].
Claims 19-24 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 6-7 of Pat. ‘147 for reciting substantially similar limitations.
Claim 27 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 17 of Pat. ‘147. Pat. ‘147 recites a polyaxial bone anchoring device comprising: an anchoring element having a shank configured to anchor to bone and a head [claim 10 Col. 11 line 62-64]; a receiving part having a first end, a second end below the first end, a central axis extending through the first and second ends, a channel at the first end that extends transverse to the central axis for receiving a rod, and an accommodation space at the second end for pivotably holding the head [Claim 10 Col. 11 line 65 to Col. 12 line 6]; a pressure member configured to extend into the channel to contact the rod and movable at least partially in the accommodation space to contact and exert pressure on the head to lock the head relative to the receiving part [Claim 10 Col. 12 line 7-16]; and an insert piece configured to be positioned around and to contact the head in the receiving part, the insert piece comprising an inner wall having a first portion that is substantially cylindrical segment-shaped [Claim 10 Col. 12 line 17-20 and claim 17]; wherein when the head, the pressure member, and the insert piece are in the receiving part, part of the pressure member is positionable radially between the head and the first portion of the inner wall of the insert piece to restrict movement of the first portion of the inner wall radially inwardly towards the central axis of the receiving part [Claim 10 Col. 12 line 21-31].
Claims 28-29 and 31-32 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 13-14 of Pat. ‘147 for reciting substantially similar limitations.
Claim 34 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18 of Pat. ‘147. Pat. ‘147 recites a polyaxial bone anchoring device comprising: an anchoring element having a shank configured to anchor to bone and a head [Claim 18 Col. 12 lines 60-62]; a receiving part having a first end, a second end below the first end, a central axis extending through the first and second ends, a channel at the first end that extends transverse to the central axis for receiving a rod, an accommodation space for pivotably holding the head, and an opening at the second end [Claim 10 Col. 12 line 63 to Col. 13 line 3]; and separate first and second ring segment-shaped insert pieces each configured to extend circumferentially at least halfway but less than entirely around the central axis [Claim 18 Col. 13 line 4-6]; wherein when the first and second ring segment-shaped insert pieces are held in the receiving part, at least part of each of the first and second ring segment-shaped insert pieces is movable radially while maintaining a constant angular position relative to the central axis to facilitate insertion of the head through the opening into the accommodation space and holding of the head in the accommodation space [Claim 18 Col. 13 line 7-16].
Claims 35-37 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20 and 23-24 of Pat. ‘147 for reciting substantially similar limitations.
Allowable Subject Matter
Claims 25-26, 30, and 33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 MARCELA I SHIRSAT whose telephone number is (571)270-5269. The examiner can normally be reached M-F 9:00am-5:30pm MST.
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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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/MARCELA I. SHIRSAT/ Primary Examiner, Art Unit 3775
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