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.
For the below non-statutory double patenting rejections, like elements will be bolded.
Claims 1, 7, 13 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 16 of U.S. Patent No. 11,938,039. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1 and 7, claim 3 of U.S. Patent No. 11,938,039 recites “An implant, comprising: a body including a ring, the ring further defining an opening; the body defining a transverse plane dividing the implant into a superior half and an inferior half; the ring defining a radial direction and a circumferential direction; a first outer member attached to the ring, wherein the first outer member extends radially from the ring; wherein the first outer member defines one or more arches; and wherein the ring further defines a central channel extending through the implant, wherein the one or more arches of the first outer member extend in a superior direction.”
It is clear that all of the elements of claims 1 and 7 of the application are to be found in claim 3 of the patent. The difference between claims 1 and 7 of the application and claim 3 of the patent lies in the fact that claim 3 of the patent includes more elements and is thus more specific. Thus the invention of claim 3 of the patent is in effect a “species” of the “generic” invention of claims 1 and 7 of the application. It has been held that the generic invention is “anticipated” by the “species.” See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1 and 7 of the application are anticipated by claim 3 of the patent, they are not patentably distinct from claim 3 of the patent.
Regarding claim 13, claim 16 of U.S. Patent No. 11,938,039 recites “An implant, comprising: a body; the body defining a transverse plane dividing the implant into a superior half and an inferior half; a first outer member attached to the body and disposed within the superior half of the implant; a first support attached to the first outer member, the first support being disposed within the superior half of the implant; a second outer member attached to the body and disposed within the inferior half of the implant; a second support attached to the second outer member, the second support being disposed within the inferior half of the implant; wherein an end of the first support is attached to an end of the second support; and wherein the first outer member and the second outer member each form one or more arches; wherein the implant includes a first ring disposed in the superior half, wherein the first outer member is attached to the first ring; the implant includes a second ring disposed in the inferior half, wherein the second outer member is attached to the second ring; wherein the first ring and the second ring define a central channel extending through the implant, wherein the one or more arches of the first outer member extend in a superior direction.”
It is clear that all of the elements of claim 13 of the application is to be found in claim 16 of the patent. The difference between claim 13 of the application and claim 16 of the patent lies in the fact that claim 16 of the patent includes more elements and is thus more specific. Thus the invention of claim 16 of the patent is in effect a “species” of the “generic” invention of claim 13 of the application. It has been held that the generic invention is “anticipated” by the “species.” See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 13 of the application is anticipated by claim 16 of the patent, it is not patentably distinct from claim 16 of the patent.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 11-13 and 15 of U.S. Patent No. 12,303,400. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1 and 7, claim 1 of U.S. Patent No. 12,303,400 recites “An implant, comprising: a body including a ring, the ring further defining an opening; the body defining a transverse plane dividing the implant into a superior half and an inferior half; the ring defining a circumferential direction; a first outer member attached to the ring, wherein the first outer member extends outward in a direction away from the ring; wherein the first outer member defines one or more arches; wherein the ring further defines a central channel extending through the implant; and wherein the one or more arches of the first outer member extend in a superior direction.”
It is clear that all of the elements of claims 1 and 7 of the application are to be found in claim 1 of the patent. The difference between claims 1 and 7 of the application and claim 1 of the patent lies in the fact that claim 1 of the patent includes more elements and is thus more specific. Thus the invention of claim 1 of the patent is in effect a “species” of the “generic” invention of claims 1 and 7 of the application. It has been held that the generic invention is “anticipated” by the “species.” See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1 and 7 of the application are anticipated by claim 1 of the patent, they are not patentably distinct from claim 1 of the patent.
Claims 2-6 and 8-12 of the application can be found in claims 2-4, 11 and 12 of the patent.
Regarding claim 13, claim 13 of U.S. Patent No. 12,303,400 recites “An implant, comprising: a body; the body defining a transverse plane dividing the implant into a superior half and an inferior half; a first outer member attached to the body and disposed within the superior half of the implant; a first support attached to the first outer member, the first support being disposed within the superior half of the implant; a second outer member attached to the body and disposed within the inferior half of the implant; a second support attached to the second outer member, the second support being disposed within the inferior half of the implant; wherein the first outer member and the second outer member each form one or more arches; wherein the one or more arches of the first outer member extend in a superior direction; wherein the implant includes a ring disposed in a central region of the implant, wherein the first outer member and the second outer member are attached to and extend away from the ring; wherein the ring defines a central channel extending through the implant.”
It is clear that all of the elements of claim 13 of the application is to be found in claim 13 of the patent. The difference between claim 13 of the application and claim 13 of the patent lies in the fact that claim 13 of the patent includes more elements and is thus more specific. Thus the invention of claim 13 of the patent is in effect a “species” of the “generic” invention of claim 13 of the application. It has been held that the generic invention is “anticipated” by the “species.” See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 13 of the application is anticipated by claim 13 of the patent, it is not patentably distinct from claim 13 of the patent.
Claim 14 of the application can be found in claim 15 of the patent.
Allowable Subject Matter
Claims 1, 7 and 13 would be allowable with the filing of a terminal disclaimer to overcome the non-statutory double patenting rejections set forth above.
Claims 2-12 and 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 and with the filing of a terminal disclaimer to overcome the non-statutory double patenting rejections set forth above.
Claims 15-20 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.
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 an implant having a body with a ring defining an opening, a transverse plane dividing the body into superior/inferior or first/second halves, a first outer member extending outward in a direction away from the ring, the first outer member defining one or more arches extending in a superior or inferior direction/direction away from the transverse plane, and the opening of the ring defining a central channel extending through the implant 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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