I. Claim 5 is objected to because of the following informalities: There should be a semicolon after “first fastener” in line 2. Appropriate correction is required.
II. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-12 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-12 of prior U.S. Patent No. 10736679. This is a statutory double patenting rejection.
III. 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 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abdou (US 2007/0123884).
Regarding claim 13, Abdou discloses a locking clip (e.g. 210; Fig. 2C) for retaining a fastener in a bone fixation plate, the locking clip comprising: a flexure member (e.g. the V shaped structure that includes 210 in Fig. 2C); and a body member coupled to the flexure member, the body member comprising a locking tab (e.g. 225), the locking tab lying over an overhang space in which a screw head of the fastener may be installed, the flexure member providing flexibility to allow the screw head to pass the locking tab, wherein a spring tension of the flexure member in a displaced state biases the locking tab to return to a neutral position once the screw head has passed below an underside surface of the locking tab, the locking tab configured to provide an axial limitation to motion of the fastener in a non-rotationally-ratcheting manner.
IV. Claims 13, 14, 15, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Freid et al. (US 2004/0019353; “Fried” herein).
Regarding claim 13, Fried discloses a locking clip for retaining a fastener in a bone fixation plate, the locking clip comprising: a flexure member (e.g. half of 46; Fig. 25); and a body member (e.g. another half of 46; Fig. 25) coupled to the flexure member, the body member comprising a locking tab (e.g. inward projections on 50), the locking tab lying over an overhang space in which a screw head of the fastener may be installed, the flexure member providing flexibility to allow the screw head to pass the locking tab, wherein a spring tension (e.g. resulting from elastic modulus) of the flexure member in a displaced state biases the locking tab to return to a neutral position once the screw head has passed below an underside surface of the locking tab, the locking tab configured to provide an axial limitation to motion of the fastener in a non-rotationally-ratcheting manner.
Regarding claim 14, Fried further discloses the body member defines a clip tool engagement cavity (e.g. 220) for translational displacement of the locking tab (e.g. a tool such as pincers can be used to translate a tab).
Regarding claim 15, Fried further discloses the locking clip comprises a second locking tab (e.g. there are at least 4 tabs per half; Fig. 25), the locking tab and the second locking tab for retaining the fastener, the fastener being a single fastener.
Regarding claim 18, Fried further discloses the flexure member is an arcuate flexure member (e.g. note arcuate aspect of 208) configured to partially surround the overhang space.
Regarding claim 19, Fried further discloses the flexure member lies at a first elevation level, and wherein the locking tab lies at a second elevation level (e.g. tabs are higher up than flexure member at 210; Fig. 25).
V. Claims 16, 17, and 20 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.
VI. The following is an examiner’s statement of reasons for allowance or the indication of allowable subject matter: The claims distinguish over closest prior art cited in the 892. In an exemplary prior art reference, Fried discloses an apparatus involving a flexure member (e.g. a half of 46; Fig. 25), a body member (e.g. another half of 46; Fig. 25) coupled to the flexure member, and tabs (e.g. inward projections on 50), but fails to disclose at least a second locking tab for retaining a second fastener as claimed; or a third locking tab for retaining a third fastener as claimed; or the body member extends from the first elevation level to the second elevation level through a third elevation level between the first elevation level and the second elevation level as claimed. There would have been no obvious reason(s) to modify the Fried apparatus to satisfy at least this/these and/or each of applicant’s claimed limitations without the use of impermissible hindsight reasoning. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
VII. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAN A. SEVILLA whose telephone number is (571)270-5621. The examiner can normally be reached on Monday through Thursday, 8:00 am to 5:00 pm. 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.
/CHRISTIAN A SEVILLA/ Primary Examiner, Art Unit 3775
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