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 .
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 21-38 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 21 recites the limitation "the second cutting flute" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 33 recites the limitation "the second cutting flute" in line 5. There is insufficient antecedent basis for this limitation in the claim.
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 and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 11,406,396 in view of Gubellini et al., U.S. PG-Pub 2012/0150209.
Regarding claims 21 and 33, claim 15 of U.S. Patent No. 11,406,396 recites “A method of dissecting a tissue generally in a radial direction from a center axis of a surgical bur, the method comprising: powering a motor to rotate the surgical bur around the center axis of the surgical bur; moving the rotating surgical bur in a radial direction from the center axis toward the tissue; engaging a front wall of the tissue with a trailing edge of the surgical bur; and engaging a cutting edge of the surgical bur to the tissue after engaging the trailing edge of the surgical bur to the tissue; wherein the trailing edge and the cutting edge of the surgical bur are each a same distance from the center axis of the surgical bur to reduce vibration of the surgical bur.”
Claim 15 of U.S. Patent No. 11,406,396 does not recite a body including a proximal end and a distal end, second cutting and trailing edges, first and second flutes formed between the cutting edges, first and second convex lands defined between the cutting and trailing edges, and first and second chip spaces formed between the cutting and trailing edges.
Gubellini et al. discloses a surgical bur having a body that extends between a proximal end and a distal end, with first and second cutting edges (38), first and second trailing edges (edges 61 including rib crests 76), first and second flutes (46) formed between each of the cutting and trailing edges, first and second convex lands (54, 60) defined between the cutting and trailing edges, and first and second chip space (45) formed between the cutting and trailing edges (Figs. 3-5) as such increases cutting efficiency by reducing the number of rotations needed to excise a desired amount of tissue (paragraph [0051]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify claim 15 of U.S. Patent No. 11,406,396 such that the surgical bur includes a body including a proximal end and a distal end, second cutting and trailing edges, first and second flutes formed between the cutting edges, first and second convex lands defined between the cutting and trailing edges, and first and second chip spaces formed between the cutting and trailing edges in view of Gubellini et al. to permit increasing cutting efficiency by reducing the number of rotations needed to excise a desired amount of tissue.
Allowable Subject Matter
Claims 21 and 33 would be allowable if rewritten or amended 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 with the filing of a terminal disclaimer to overcome the non-statutory double patenting rejection set forth above.
Claims 22-32 and 34-38 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record, alone or in combination, does not disclose a surgical bur having a body with first and second flutes, first and second cutting edges, first and second trailing edges such that the first and second cutting edges and the first and second trailing edges are spaced a first/same distance from a center axis of the surgical bur to reduce vibration during cutting as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric Gibson whose telephone number is (571)270-5274. The examiner can normally be reached Monday-Thursday ~6:00 A.M. to 4:00 P.M. (CST).
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, 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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/ERIC S GIBSON/ Primary Examiner, Art Unit 3775
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