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.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-18 of related U.S. Patent No. 12,318,308.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of the application recites an expandable interbody implant (See Claim 1, Lines 1-2 of the patent), comprising: an expandable body defined by a superior endplate and an inferior endplate, the expandable body having a length extending from a proximal end to a distal end in a proximal-to-distal direction, and a width extending from a first lateral side to a second lateral side in a widthwise direction, the length being greater than the width (See Claim 1, Lines 3-10 of the patent); the superior endplate including first proximal ramps and first distal ramps disposed opposite the first proximal ramps (See Claim 1, Lines 11-15 of the patent); and the inferior endplate including second proximal ramps and second distal ramps disposed opposite the second proximal ramps (See Claim 1, Lines 16-20 of the patent); and a moving mechanism for expanding the superior endplate and the inferior endplate, the moving mechanism including: a support block coupled to the superior endplate and the inferior endplate, the support block rotatably supporting a proximal set screw and a distal set screw along a rotation axis; a proximal trolley movably coupled to the proximal set screw and including a plurality of inclined surfaces; and a distal trolley movably coupled to the distal set screw and including a plurality of inclined surfaces (See Claim 1, Lines 21-34 of the patent).
As to Claims 2-19 of the application: Claims 2-18 are substantially similar or identical to Claims 2-18 of the patent. The limitations of Claim 19 are found in Lines 35-50 of Claim 1 of the patent.
Claim Objections
Claim 20 is objected to because of the following informalities: In Line 2, the limitation “proximal to distal direction” should be amended as follows --proximal-to-distal direction-- to keep terminology consistent throughout. Appropriate correction is required.
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 5-9 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 5 at Line 2 recites the limitation “the first inside surface of the superior endplate”. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the limitation is being interpreted as “a first inside surface of the superior endplate”. Appropriate correction is required.
Claim 6 at Line 2 recites the limitation “the second inside surface of the inferior endplate”. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the limitation is being interpreted as “a second inside surface of the inferior endplate”. Appropriate correction is required.
Claim 5 at Line 2 recites the limitation “the first inside surface of the superior endplate”. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the limitation is being interpreted as “a first inside surface of the superior endplate”. Appropriate correction is required.
Claim 7 at Line 2 recites the limitation “the first inside surface of the superior endplate”. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the limitation is being interpreted as “a first inside surface of the superior endplate”. Appropriate correction is required.
Claim 8 at Lines 1-2 recites the limitation “wherein in the first expanded position”. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the limitation is being interpreted as “wherein in a first expanded position”. Appropriate correction is required.
Claim 9 at Lines 1-2 recites the limitation “wherein in the second expanded position”, and in Lines 3-4 recites “the medial position”. There is insufficient antecedent basis for these limitations in the claim. For purposes of examination, the limitation is being interpreted as “wherein in a second expanded position” and “a medial position”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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(s) 1-3, 5-9, 17, 18, & 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matthis et al. (US PG Pub No. 2008/0147193).
Regarding Claim 1, Matthis et al. discloses an expandable interbody implant (expandable intervertebral implant, Figs. 1-7, 15-18, 21-25e, Paragraphs [0038-0060]), comprising: an expandable body (Figs. 21-22) defined by a superior endplate (30, Fig. 1) and an inferior endplate (30’, Fig. 1), the expandable body having a length extending from a proximal end to a distal end in a proximal-to-distal direction, and a width extending from a first lateral side to a second lateral side in a widthwise direction, the length being greater than the width (See examiner annotated Fig. 2 below); the superior endplate including first proximal ramps and first distal ramps disposed opposite the first proximal ramps (See examiner annotated Fig. 17 below); and the inferior endplate including second proximal ramps and second distal ramps disposed opposite the second proximal ramps (See examiner annotated Fig. 17 below); and a moving mechanism (See examiner annotated Fig. 1 below) for expanding the superior endplate and the inferior endplate, the moving mechanism including: a support block coupled to the superior endplate and the inferior endplate (Fig. 2), the support block rotatably supporting a proximal set screw (11’, Figs. 1, 3, 5) and a distal set screw (11, Figs. 1, 3-5) along a rotation axis (L, L’, Fig. 5); a proximal trolley (20’, Figs. 1, 3, 5) movably coupled to the proximal set screw (Paragraph [0045]) and including a plurality of inclined surfaces (21’, 22’, Fig. 5); and a distal trolley (20, Figs. 1, 3-5) movably coupled to the distal set screw (Paragraph [0045]) and including a plurality of inclined surfaces (21, 22, Fig. 5).
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Regarding Claim 2, Matthis et al. discloses wherein the support block further includes a first lateral protrusion (pin 39, Fig. 1) movably disposed in a first slot (36, Fig. 1) of the superior endplate (Paragraphs [0048-0049]).
Regarding Claim 3, Matthis et al. discloses wherein the support block further includes a second lateral protrusion (pin 39’, Fig. 1) movably disposed in a second slot (36’, Fig. 1) of the inferior endplate (Paragraphs [0048-0049]).
Regarding Claim 5 as best understood, Matthis et al. discloses wherein: a first inside surface of the superior endplate further comprises a guide wall (See examiner annotated Fig. 17 above); and the proximal trolley comprises a catch surface (See examiner annotated Fig. 1 above), the catch surface of the proximal trolley being disposed within the guide wall of the superior endplate (Figs. 2 & 21-22).
Regarding Claim 6 as best understood, Matthis et al. discloses wherein: a second inside surface of the inferior endplate further comprises a guide wall (See examiner annotated Fig. 1 above); and the distal trolley comprises a catch surface (See examiner annotated Fig. 1 above), the catch surface of the distal trolley being disposed within the guide wall of the inferior endplate (Figs. 2 & 21-22).
Regarding Claim 7 as best understood, Matthis et al. discloses wherein: a first inside surface of the superior endplate further comprises proximal guide walls and distal guide walls (See examiner annotated Fig. 17 directly below), the proximal guide walls being adjacent to and inclined at substantially the same orientation as the first proximal ramps and the distal guide walls being adjacent to and inclined at substantially the same orientation as the first distal ramps (Paragraph [0046, 0052], Figs. 2, 15, 18, 21-22).
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Regarding Claim 8 as best understood, Matthis et al. discloses wherein in a first expanded position (when the superior and inferior endplates have just begun to move from the resting/unexpanded configuration), the proximal trolley contacts the first proximal ramps and the second proximal ramps and is disposed proximate the proximal side of the expandable body (Figs. 2-3, Paragraph [0052]).
Regarding Claim 9 as best understood, Matthis et al. discloses wherein in a second expanded position (when the superior and inferior endplates have begun to move from the resting/unexpanded configuration but are not yet in a fully expanded position), the distal trolley contacts the first distal ramps and the second distal ramps and is disposed proximate a distal side of the expandable body, with respect to a medial position (Figs. 2-3, Paragraph [0052]).
Regarding Claim 17, Matthis et al. discloses wherein the superior endplate and the inferior endplate is concave (at the bottom of 36 and 36’, Figs. 15 & 1) in the proximal-to-distal direction.
Regarding Claim 18, Matthis et al. discloses wherein the superior endplate and the inferior endplate is concave in the widthwise direction (at the underside surface between 31 & 33, Fig. 17 and 31’ & 33’, Fig. 1).
Regarding Claim 20, Matthis et al. discloses wherein the support block is constrained from moving in the proximal-to-distal direction (the support block does not translate).
Allowable Subject Matter
Claims 4, 10-16 & 19 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. (See also the double patenting rejection above). The following is a statement of reasons for the indication of allowable subject matter: Matthis et al. discloses the claimed invention as stated above, except wherein the first lateral protrusion and the second lateral protrusion extend in substantially opposite directions, wherein: the proximal set screw and the distal set screw are coaxially aligned in the proximal-to-distal direction along the length of the expandable body, and a screw adjusting aperture extends through the proximal trolley, the proximal set screw, the support block, and the distal set screw, a proximal plate including at least one bone screw aperture that defines a bone screw trajectory, and wherein: in a contracted position, the proximal trolley and the distal trolley are disposed in a medial position within the expandable body, in a first expanded position, the proximal trolley is disposed adjacent a proximal side of the expandable body and a spacing between the superior and inferior endplates at the proximal end of the expandable body is greater than a spacing between the superior and inferior endplates at the proximal end of the expandable body in the contracted position, and in a second expanded position, a spacing between the superior and inferior endplates at the distal end of the expandable body is greater than a spacing between the superior and inferior endplates at the distal end of the expandable body in the contracted position. Furthermore, there is no reasonable motivation to modify Matthis et al. as claimed without destroying the invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WEISS whose telephone number is (571) 270-5597. The examiner can normally be reached Monday through Friday, 8:00 am to 4:00 pm EST. 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.
/JESSICA WEISS/Primary Examiner, Art Unit 3775
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