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, 3, 5, 10, 12-17 & 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 6, 7, 9, 11, 12, 14, 17, 19, & 20 of U.S. Patent No. 12,403,015.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 recites a method of using an expandable device having a body (See Claim 1 of the patent), comprising: rotating a shaft in a first rotational direction within the body to translate an end plate in a first axial direction; and locking the end plate in a first position along the first axial direction by engaging the shaft with a locking mechanism applying a resistance force to the shaft to resist the shaft from rotating in a second rotational direction opposite the first rotational direction.
As to Claims 3, 5, 10 & 12-14: The limitations of claims 3, 5, 10 & 12-14 are found in Claims 11, 1, 9, 4-6, 12 & 7, respectively.
Claim 15 recites a method of using an expandable device having a body (See Claim 14), comprising: rotating a shaft within the body in a first rotational direction about a longitudinal axis of the shaft so as to rotate a first gear sleeve about an axis extending in a first axial direction transverse to the longitudinal axis, the rotation of the first gear sleeve causing a post connected to an end plate to translate respect to the first gear sleeve along the first axial direction, the first gear sleeve defining a channel receiving the post of the end plate therein; and stopping the translation of the end plate by engaging a stop plate coupled to the post with a stopping structure of the first gear sleeve.
As to Claims 16, 17 & 19: The limitations of claims 16, 17 & 19 are found in Claims 17, 20 & 19, respectively.
Claim Objections
Claim 15 is objected to because of the following informalities: In Line 5, the words --of the expandable device-- should be added after the words “end plate”. Appropriate correction is required.
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 2 & 15-20 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 2 at Line 2 recites the limitation “the worm gear”. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the limitation is being interpreted as “the shaft”. Appropriate correction is required.
Claim 15 at Line 7 recites the limitation “the translation of the end plate”. There is insufficient antecedent basis for this limitation in the claim. (Claim 16 at Lines 4-5 further recites “translating the end plate”.) Lines 4-5 previously recite “a post connected to an end plate to translate”. For purposes of examination, the limitation is being interpreted as “the translation of the post connected to the end plate”. Appropriate correction is required.
Claim 16 at Line 3 recites the limitation “the first post of the end plate”. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the limitation is being interpreted as “the post of the end plate”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim limitations in this application that are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
Locking mechanism (Claim 1)
Actuating mechanism (Claims 11 & 18)
Stopping structure (Claim 15)
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.
Claim(s) 1, 2, 5, & 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Varela (US PG Pub No. 2011/0172774).
Regarding Claim 1, Varela discloses a method of using (Figs. 11-13) an expandable device (10, Figs. 1-17) having a body (housing 24, Fig. 10a), comprising: rotating a shaft (screw 22, Fig. 10a, Paragraph [0037]) in a first rotational direction (clockwise or counterclockwise) within the body (Figs. 9a-9b) to translate an end plate (superior plate member 12, Fig. 10a) in a first axial direction (in the vertical direction away from or toward the inferior plate member 14, See Figs. 11-13); and locking the end plate in a first position (desired deployed state, Paragraphs [0038, 0042]) along the first axial direction by engaging the shaft (via teeth 58 of 22, Fig. 9a-9b, Paragraph [0040]) with a locking mechanism (teeth 60 in exposed floor of the cylindrical recess 50 of housing 24) applying a resistance force to the shaft to resist the shaft from rotating in a second rotational direction opposite the first rotational direction (“teeth 58 or the like that frictionally engage the screw 22 with a corresponding plurality of teeth 60” aide in preventing unwanted rotation of the screw 22 and corresponding translation of the wedge structure 26, and may also aide in allowing the screw 22 to be rotated in a ratcheting or step-wise manner, with specific detent points, Paragraph [0040]).
Regarding Claim 5, Varela discloses wherein the shaft includes ratchet teeth (teeth 58, Figs. 9a-9b, Paragraph [0040]) and the locking mechanism includes ratchet teeth (teeth 60 in 50 of 24, Fig. 9a, Paragraph [0040]), wherein locking the end plate includes the resistance force being applied from the ratchet teeth of the locking mechanism engaging with the ratchet teeth of the shaft (Paragraph [0040]).
Regarding Claim 11, Varela discloses inserting an actuating mechanism (hexalobular driver, by which the screw 22 is rotated) within an opening of the shaft (keyed recess 46 for receiving hexalobular driver, Paragraph [0037]).
Claim(s) 15-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jimenez et al. (US PG Pub. No. 2011/0160861).
Regarding Claim 15 as best understood, Jimenez et al. discloses a method of using (Figs. 10A-10D, Paragraph [0086]) an expandable device (fusion device 500, Fig. 10A) having a body (550, Fig. 10A), comprising: rotating a shaft (worm 540, Fig. 10A) within the body (Fig. 10B) in a first rotational direction (clockwise or counter clockwise) about a longitudinal axis of the shaft (central axis running through entire length of 540) so as to rotate a first gear sleeve (right geared sleeve 520, Fig. 10A) about an axis (vertical axis running centrally through height of right 520, Fig. 10D) extending in a first axial direction (vertical direction) transverse to the longitudinal axis, the rotation of the first gear sleeve causing a post (right threaded post 511, Fig. 10A, Paragraph [0086]) connected to an end plate (upper endplate 510, Figs. 10A, 10D) of the expandable device to translate respect to the first gear sleeve along the first axial direction (Paragraph [0086]), the first gear sleeve defining a channel (central opening extending vertically through right 520, Fig. 10A) receiving the post of the end plate therein (Fig. 10D); and stopping the translation of the post connected to the end plate by engaging a stop plate (toothed helical plates of right 511, Fig. 10A) coupled to the post with a stopping structure (internal threading formed within right geared sleeve 520) of the first gear sleeve (Figs. 10A-10D).
Regarding Claim 16 as best understood, Jimenez et al. discloses wherein the channel of the first gear sleeve defines a first threaded section (upper half of inner threading, Figs. 10A & 10D) and a second section (lower half of inner threading, Figs. 10A & 10D), the stopping structure being in between the first threaded section and the second section (Fig. 10D), wherein the post of the end plate is received through the first threaded section and the stop plate is received in the second section (Fig. 10D), wherein translating the post connected to the end plate includes translating the post of the end plate within the first threaded section and translating the stop plate within the second section (Paragraph [0086]).
Regarding Claim 17, Jimenez et al. discloses wherein rotating the shaft includes axially fixing the shaft with a pin (570, Fig. 10A) received in an indent of the shaft (Fig. 10C) while the shaft rotates (Paragraph [0086]).
Regarding Claim 18, Jimenez et al. discloses inserting an actuating mechanism (547, Fig. 10A) within an opening (hole formed through tip of 548 for 547, Fig. 10A) of the shaft.
Regarding Claim 19, Jimenez et al. discloses wherein the shaft has a first threaded section (543, Fig. 10A) and the first gear sleeve has gear teeth (Fig. 10A) engaged with the first threaded section (Paragraph [0086]), and wherein rotating the shaft further rotates the first gear sleeve due to engagement between the first threaded section of the shaft and the gear teeth of the first gear sleeve (Paragraph [0086]).
Regarding Claim 20, Jimenez et al. discloses wherein: rotating the shaft within the body in the first rotational direction drives a second gear sleeve (left geared sleeve 520, Fig. 10A) to rotate about a second axis (vertical axis running centrally through height of left 520, Fig. 10D) extending in the first axial direction (vertical direction), the rotation of the second gear sleeve causing a second post (left threaded post 511, Fig. 10A, Paragraph [0086]) connected to the end plate to translate along the first axial direction within a channel of the second gear sleeve (central opening extending vertically through left 520, Fig. 10A).
Allowable Subject Matter
Claims 3-4, 6-10 & 12-14 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. (Note: See the double patenting rejection above.)
Claim 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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 JESSICA WEISS whose telephone number is (571) 270-5597. The examiner can normally be reached Monday through Friday, 8:00 am to 4:00 pm EST. If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, KEVIN T. TRUONG, at 571-272-4705. 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.
/JESSICA WEISS/Primary Examiner, Art Unit 3775
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