Notice of Pre-AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. 61/684,418, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for claims 1-17 of this application. In particular, the features of Figures 14-20, including a shuttle device, are not contained in the provisional ‘418 application. The '418 application does not show the subject matter of Figures 14-20 in the drawings, nor does it provide a written description of the features shown in these figures in the description.
Accordingly, pending claims 1-17 are not entitled to the benefit of the prior application. Claims 1-17 are supported by Application No. 13/961,716. Therefore, the priority date of claims 1-17 is 7 August 2013.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
The claims of the patent "anticipate" the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claim. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claims 1-17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,274,433. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application are anticipated by the claims of the ‘433 patent, as outlined in the chart below:
Claims of present application 19/079752
Anticipated by claims of 12,274,433
1
1
2
2
3
3
4
4
5
5
6
6
7
7
8
8
9
9
10
10
11
11
12
12
13
15
14
13
15
14
16
1
17
1
Specifically, Claim 1 of ‘433 recites “a soft anchor located on the distal tip portion [of the inserter]”, which anticipates “a soft anchor securable relative to the distal tip portion” in claim 1, “a soft anchor carried by the distal tip portion” of claim 16 and “a soft anchor securable to the inserter” of claim 17 because the claims of the application are broader than the ‘433 patent.
Claims 1, 7, 16 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 10,736,620 in view of Norton (US Patent Publication 2013/0190819).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application are rendered obvious by the claims of the ‘620 patent, as outlined in the chart below:
Claims of present application 19/079752
Obvious by claims of 10,736,620 in view of Norton’819
1
1
7
1
16
1
17
1
Claim 1 of the ‘620 patent recites the limitations of claims 1, 7, 16 and 17 including a soft anchor (“A soft anchor”) including a sheath (“a tubular sleeve or sheath formed of a flexible material and having a first length, a cannulation and two ends”), a tissue attachment suture preloaded through the sheath (“a suture passing through at least a portion of the tubular sleeve or sheath”), and a shuttle device preloaded through a splice area of the tissue attachment suture (“a shuttling device passing through the splice in the suture and through the distal end of the suture”), wherein the shuttle device is configured to receive a free end of the tissue attachment suture for splicing the tissue attachment suture through itself thereby creating an adjustable loop (“the shuttling device having one end for capturing the free end of the suture, the shuttling device being adapted for pulling the shuttling device and the captured free end of the suture through the splice in the suture and through the distal end of the suture to form a flexible, adjustable closed loop”).
The ‘620 patent does not recite an inserter or a soft anchor securable to the inserter. Norton’819 teaches a soft anchor including a sheath 30, a suture 14 passing through the sheath (Figure 5) and a shuttle device (92; Figures 54-55). Norton’819 further teaches any suitable inserter can be used to place the device in the bone (paragraph [0067]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to modify the device of the ‘620 patent by providing an inserter, as taught by Norton’819, in order to aid in inserting the anchor into the bone.
Allowable Subject Matter
Claims 1-17 are only rejected under nonstatutory double patenting. Claims 1-17 are not rejected using prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDSEY BACHMAN whose telephone number is (571)272-6208. The examiner can normally be reached Monday-Wednesday 9:30 am-5 pm and alternating Thursdays.
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Lindsey Bachman
/L.B./Examiner, Art Unit 3771 3 September 2026
/ELIZABETH HOUSTON/Supervisory Patent Examiner, Art Unit 3771
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