DETAILED ACTION
The following Office Action is in response to the Non-Provisional Patent Application filed on April 8, 2025. Claims 1-17 are currently pending.
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 Interpretation
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.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 7-16 of U.S. Patent No. 12,161,319. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent anticipate the claims of the instant application.
Concerning claims 1-4 of the instant application, claim 1 of U.S. Patent No. 12,161,319 claims, a surgical system comprising: a) a button inserter comprising: i) a shaft including a projection that defines a fulcrum at a distal end of the projection, wherein the projection extends beyond a distal tip of the shaft; ii) an inner rod within the shaft having a button mating surface extending from a distal tip of the inner rod; and iii) a handle including a handle switch that translates the inner rod between an extended position where the button mating surface of the inner rod extends beyond the distal tip of the shaft and a retracted position where the button mating surface of the inner rod is completely within the shaft; b) an oblong button including a congruent mating surface to the button mating surface of the inner rod of the button inserter, wherein the oblong button is constrained rotationally and translationally by (i) the projection of the shaft that defines the fulcrum and (ii) the button mating surface on the inner rod of the inserter when the inner rod of the button inserter is in the extended position; c) a second button configured to be removably coupled to the handle; and d) a suture strand passing through an opening of the oblong button passing over the projection and further passing through an opening of the second button, wherein when the inner rod translates relative to the shaft to the retracted position, the suture strand applies an off-axis force to rotate the oblong button about the fulcrum from an initial position to a deployed position.
Concerning claim 5 of the instant application, claim 2 of U.S. Patent No. 12,161,319 claims, the surgical system of claim 1, wherein the handle includes a groove and a pair of resilient arms, and the second button is located in the groove and removably coupled to the handle by the pair of resilient arms.
Concerning claim 6 of the instant application, claim 3 of U.S. Patent No. 12,161,319 claims, the surgical system of claim 1, wherein the oblong button is substantially parallel to a longitudinal axis of the shaft in the initial position and the oblong button is substantially perpendicular to the longitudinal axis of the shaft in the deployed position.
Concerning claim 7 of the instant application, claim 4 of U.S. Patent No. 12,161,319 claims, the surgical system of claim 1, wherein the suture strand imparts an off-axis tensile force between the oblong button and the second button.
Concerning claim 8 of the instant application, claim 7 of U.S. Patent No. 12,161,319 claims, The surgical system of claim 1, wherein the suture strand is coupled to the handle switch.
Concerning claim 9 of the instant application, claim 8 of U.S. Patent No. 12,161,319 claims, the surgical system of claim 1, wherein the opening of the oblong button comprises a proximal opening, and wherein the oblong button further comprises a distal opening.
Concerning claim 10 of the instant application, claim 9 of U.S. Patent No. 12,161,319 claims, the surgical system of claim 8, wherein the oblong button further comprises a channel positioned between the proximal opening and the distal opening.
Concerning claim 11, claim 10 of U.S. Patent No. 12,161,319 claims, The surgical system of claim 8, wherein the suture strand is positioned only in the proximal opening.
Concerning claim 12, claim 11 of U.S. Patent No. 12,161,319 claims, the surgical system of claim 1, wherein the off-axis is non-parallel to a longitudinal axis of the shaft.
Concerning claim 13, claim 12 of U.S. Patent No. 12,161,319 claims, the surgical system of claim 1, wherein the second button is a round button.
Concerning claim 14, claim 13 of U.S. Patent No. 12,161,319 claims, the surgical system of claim 1, wherein the second button is oblong or a dog bone shape.
Concerning claim 15, claim 14 of U.S. Patent No. 12,161,319 claims, the surgical system of claim 1, wherein the second button is substantially perpendicular to a longitudinal axis of the shaft when the second button is removably coupled to the handle.
Concerning claim 16, claim 15 of U.S. Patent No. 12,161,319 claims, the surgical system of claim 1, further comprising: a cap positioned at a proximal end of the handle; a slide positioned inside of the handle and coupled to the inner rod; and a resilient member positioned between the cap and the slide, wherein the resilient member is configured to move the slide away from a distal end of the handle to thereby translate the inner rod through the shaft from the extended position to the retracted position.
Concerning claim 17, claim 16 of U.S. Patent No. 12,161,319 claims, the surgical system of claim 15, wherein the handle switch is positioned in an opening in the slide when the inner rod is in the extended position to thereby prevent movement of the slide and the inner rod.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Bonutti reference teaches a button inserter with a shaft, inner rod, and an oblong button that rotates (US 5,948,002); the Schmidt et al. reference (US 2012/0203249) teaches a button inserter including a projection extending beyond a distal tip of a shaft; and the Michel et al. reference (US 2009/0043318) teaches a button inserter including a shaft, an inner rod, a handle, an oblong button; and a second button.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARTIN TRUYEN TON whose telephone number is (571)270-5122. The examiner can normally be reached Monday - Friday; EST 10:00 AM - 6:30 PM.
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/MARTIN T TON/Examiner, Art Unit 3771 6/5/2026
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