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 .
Election/Restrictions
Applicant's election with traverse of Species I (Fig. 2a-e) in the reply filed on 6/30/26 is acknowledged. The traversal is on the ground(s) that species iv and species v subspecies ii should be included in Species I. This is found persuasive and those two species will be examined.
Specification
The disclosure is objected to because of the following informalities: In page 1 Lines 5-7, the corresponding patent number for the parent application must be added.
Appropriate correction is required.
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 11-14, 16, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, and 8 of U.S. Patent No. 11,375,991. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the structural limitation recited in the claims of the instant application are also recited in claims 1-5, 7, and 8 of U.S. Patent No. 11,375,991. The difference in the terminology used would be obvious to one of ordinary skill in the art.
Specifically, the limitation of claim 11 are found in the combination of claims 1 and 2 of U.S. Patent No. 11,375,991 as well as in claim 7 of U.S. Patent No. 11,375,991. The claimed limitations of claim 12 are found in claim 1 of U.S. Patent No. 11,375,991. The claimed limitations of claim 13 are found in the combination of claims 3 and 4 of U.S. Patent No. 11,375,991. The claimed limitations of claims 14, 16, and 20 are found in claims 4, 5, and 8 of U.S. Patent No. 11,375,991, respectively.
Claims 11, 13, 14, 16, 17, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 8, 10-14, and 17 of U.S. Patent No. 12,059,146. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the structural limitation recited in the claims of the instant application are also recited in claims 7, 8, 10-14, and 17 of U.S. Patent No. 12,059,146. The difference in the terminology used would be obvious to one of ordinary skill in the art.
Specifically, the limitation of claim 11 are found in the combination of claims 7 and 8 of U.S. Patent No. 12,059,146 as well as in claim 14 of U.S. Patent No. 12,059,146. The claimed limitations of claim 13 are found in the combination of claims 7 and 10 of U.S. Patent No. 12,059,146. The claimed limitations of claims 14, 16, and 20 are found in claims 10, 11, and 17 of U.S. Patent No. 12,059,146, respectively. The claimed limitations of claim 17 are found in the combination of claims 12 and 13 of U.S. Patent No. 12,059,146.
Claims 11-14, 16, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, and 8 of U.S. Patent No. 11,389,154. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the structural limitation recited in the claims of the instant application are also recited in claims 1-5, 7, and 8 of U.S. Patent No. 11,389,154. The difference in the terminology used would be obvious to one of ordinary skill in the art.
Specifically, the limitation of claim 11 are found in the combination of claims 1 and 2 of U.S. Patent No. 11,389,154 as well as in claim 7 of U.S. Patent No. 11,389,154. The claimed limitations of claim 12 are found in claim 1 of U.S. Patent No. 11,389,154. The claimed limitations of claim 13 are found in the combination of claims 3 and 4 of U.S. Patent No. 11,389,154. The claimed limitations of claims 14, 16, 19, and 20 are found in claims 4, 5, 1, and 8 of U.S. Patent No. 11,389,154, respectively.
Claims 11-16 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,419,629. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the structural limitation recited in the claims of the instant application are also recited in claims 1-9 of U.S. Patent No. 12,419,629. The difference in the terminology used would be obvious to one of ordinary skill in the art.
Specifically, the limitation of claim 11 are found in the combination of claims 2 and 3 of U.S. Patent No. 12,419,629 as well as in claims 1 and 8 of U.S. Patent No. 12,419,629. The claimed limitations of claim 12 are found in the combination of claims 3 and 4 of U.S. Patent No. 12,419,629. The claimed limitations of claim 13 are found in the combination of claims 4 and 5 of U.S. Patent No. 12,419,629. The claimed limitations of claims 14, 16, and 20 are found in claims 7, 6, and 9 of U.S. Patent No. 12,419,629, respectively. The limitation of claim 15 are found in the combination of claims 2 and 3 of U.S. Patent No. 12,419,629 as well as in claim 1 of U.S. Patent No. 12,419,629.
Claims 11 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,667,456. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the structural limitation recited in the claims of the instant application are also recited in claims 1-3 of U.S. Patent No. 12,667,456. The difference in the terminology used would be obvious to one of ordinary skill in the art.
Specifically, the limitation of claim 11 are found in the combination of claims 1-3 of U.S. Patent No. 12,667,456. The claimed limitations of claim 12 are found in claim 1 of U.S. Patent No. 12,667,456.
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) 11, 13-15, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Orphanos et al. (2011/0022061).
Orphanos discloses the following claimed limitations:
Claim 11: An implantable bone anchor comprising: an anchor body (200, 302) (Fig. 6 and 11a) having a proximal end and a distal end (Fig. 6 and 11a), with an upper surface (see figure below) and a lower surface (opposite side from upper surface, see figure below) with each of a first bore (208, 322), a second bore (210, 324), and a third bore (212, 326) extending from the upper surface to the lower surface (Fig. 6 and 11a); a working suture (110, 306) extending from the upper surface to the lower surface through the first bore (Fig. 6 and 11a), then along the lower surface past the second bore to the third bore (Fig. 6 and 11a), and from the lower surface to the upper surface through the third bore (Fig. 6 and 11a); and a suture lock (130, 308) having a free end (see figure below) and a collapsible loop (see figure below) with an intermediate portion therebetween (see figure below), the intermediate portion extending through the second bore such that the free end extends from the upper surface and the collapsible loop is positioned at the lower surface (see figure below), the collapsible loop extending around the working suture (see figure below).
Claim 13: wherein the collapsible loop is formed by a slidable knot tied in the suture lock ([0045], [0073]), wherein an upper portion of the second bore adjacent the upper surface is sized to receive at least a portion of the slidable knot (where it is capable of receiving the knot).
Claim 14: wherein the second bore includes a platform therein (see figure below where the platform is on the lower side as well as seen in Fig. 4a-5c), wherein the platform prevents the slidable knot from passing through the second bore (where it is capable of performing this function).
Claim 15: wherein the anchor body includes a channel (see figure below where the channel is on the lower side as well as seen in Fig. 4a-5c) formed in the lower surface between the first and third bores (Fig. 4a-5c).
Claim 19: wherein the collapsible loop is actuatable from a first position allowing the working suture to slide therethrough to a second position engaging the working suture and preventing sliding of the working suture through the collapsible loop, wherein actuation of the collapsible loop is achieved by pulling the free end of the suture lock upwards away from the upper surface of the anchor body ([0017], [0045], [0065]).
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Allowable Subject Matter
Claim 18 is 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.
The following is a statement of reasons for the indication of allowable subject matter: the art of record when considered alone or in combination neither renders obvious nor anticipates the bone anchor with a working suture and a suture lock wherein the free end of the suture lock has a break-away feature configured to break away from the collapsible loop at a location above the upper surface of the anchor body and wherein the break-away feature is a point of weakness in a piece of suture forming the suture lock, in conjunction with the rest of the claimed limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANNE DORNBUSCH whose telephone number is (571)270-3515. The examiner can normally be reached Monday-Wednesday 9 am-3 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at (571) 272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DIANNE DORNBUSCH/Primary Examiner, Art Unit 3771
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