DETAILED ACTION
This is the first office action on the merits in this application. The claims of April 21, 2025, are under consideration. Claims 1-20 are 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 .
Priority
The instant claims find an earliest teaching in the 17/509526 application, therefore having an earliest effective filing date of July 10, 2018.
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 1-2 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 5, 6, and 14 of U.S. Patent No. 12,279,795. Although the claims at issue are not identical, they are not patentably distinct from each other because they require essentially the same features of an aiming guide with an aiming arm, and a connection assembly with an attachment post with bosses, a threaded shaft, and a polyaxial nut assembly. Additional features which are shared are found in the dependent claims. Additionally, instant claims 10 and 20 further require the tissue protection sleeve of claims 1 and 17 of the reference patent. Other shared features are noted throughout the claims but are not explicitly noted here.
Claim Interpretation
The term “polyaxial nut assembly” of claims 1 and 11 is a term not known to examiner from the prior art. Examiner can understand the functionality of the limitation, so deems it to be clear in scope. Examiner notes that at least claims 2, 3, 12 and 13 provide additional structure to this assembly, and so makes the structure clear, in those claims and their dependents. For purposes of understanding scope of the limitation “polyaxial nut assembly” in claims 1, 10, 11 and 20, examiner interprets this assembly in light of the specification as being of the structure of element 1170, seen clearly in fig. 41, or equivalents, thereof.
Allowable Subject Matter
Upon overcoming the issues under Double Patenting, above, claims 1-20 will be allowed.
As noted above, this application has an earliest effective filing date of July 10, 2018, and has had several patents issued in this family. The prior art has been carefully studied in this patent family several times and no prior art which requires or makes obvious the combination of claimed features of any instant claim has been discovered. In particular, the claimed polyaxial nut assembly in combination with the other required features is considered to be a novel and non-obvious limitation in the art.
A list of relevant documents is attached to this action on the Notice of References Cited Form 892. Several of these documents are not prior art, and none of the documents is prior art properly which properly teaches or suggests the claimed combination of features. Several co-invented or co-assigned references appear in this list.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Bates whose telephone number is (571)270-7034. The examiner can normally be reached Monday through Friday, 10AM-6PM
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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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/DAVID W BATES/Primary Examiner, Art Unit 3799
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