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 1-9 and 11-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 11-12, 14-16 of U.S. Patent No. 12329660B2, referred herein as Pat. ‘660, in view of Diehl et al (US Patent Pub. 20140303623A1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Pat. ‘660. Pat. ‘660 recites a modular bone preparation system, the system comprising: a preparation module adapted for releasable attachment to the base module [claim 1 col. 35 lines 60-61], the preparation module comprising: a shell comprising a base having a support surface and an outer surface opposite said support surface [claim 1 col. 35 lines 61-64]; a carriage disposed at least partially within said shell and moveable across the base of the shell, the carriage comprising a wall, at least a portion of the wall being resiliently deformable, the wall cooperating with said base to define a preparation chamber [claim 1 col. 35 lines 65- col. 36 line 2]; and a removal element disposed at least partially in the preparation chamber, the removal element configured to prepare bone stock by removing soft tissue from the bone stock [claim 1 col. 36 lines 3-6]; and wherein the drive train is operably coupled to the preparation module such that rotary power transferred from the drive train moves the carriage across the base upon actuation of the drive train [claim 1 col. 36 lines 7-11]. However, the reference is silence as to a base module.
Diehl in regards to claim 1 recites a modular bone preparation system, the system comprising: a base module including a motor (44) and a drive train (80); and a preparation module (45/46) (Fig. 1-2; and Para. [0068]-[0070], [0081], [0089]). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the preparation module of Pat. ‘660 by adding a base module as taught in Diehl in order to allow for removably attaching to the base unit allowing the module to be reusable (Para. [0068]).
Claim 2-9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2-3, 11-12, 14-16 of Pat. ‘660.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 of Pat. ‘660. Pat. ‘660 recites a modular bone preparation system, the system comprising: a preparation module adapted for releasable attachment to the base module, the preparation module comprising [claim 1 col. 35 lines 60-61]: a shell comprising a base having a support surface and an outer surface opposite said support surface [claim 1 col. 35 lines 62-64]; a carriage disposed at least partially within said shell, and moveable across said support surface of said base, said carriage comprising a wall, said wall comprising a plurality of articulating wall segments, said wall cooperating with said support surface of said base to define a preparation chamber [claim 1 col. 35 line 65 to col. 36 line 2 and claim 2]; and a removal element disposed at least partially in the preparation chamber, the removal element configured to prepare bone stock by removing soft tissue from the bone stock [claim 1 col. 36 lines 3-6]; and wherein the drive train is operably coupled to the preparation module such that rotary power transferred from the drive train moves the carriage across the base upon actuation of the drive train [claim 1 col. 36 lines 7-11].
Diehl in regards to claim 11 recites a modular bone preparation system, the system comprising: a base module including a motor (44) and a drive train (80); and a preparation module (45/46) (Fig. 1-2; and Para. [0068]-[0070], [0081], [0089]). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the preparation module of Pat. ‘660 by adding a base module as taught in Diehl in order to allow for removably attaching to the base unit allowing the module to be reusable (Para. [0068]).
Claim 12-17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11-12, 14-16 of Pat. ‘660.
Allowable Subject Matter
Claims 10 and 18 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 closest prior art of record is Horton, IV et al (US Patent Pub. 20190029846A1). Horton discloses an assembly having a shell comprising a base (604) with a support surface (710) and an outer surface, a lid (680) having a void space, a carriage (764) disposed at least partially within said void space and movable across the base (604) and comprising a wall that cooperates with the base (604) defining a preparation chamber, and a removal element (690) within the preparation chamber (Fig. 45-48,51-53). Horton also recites where the carriage (764) and removal element (690) both receive power from a drive train. However, the reference does not recite wherein the wall is deformable or articulable. Therefore, the claims of the instant application have not been rejected using prior art because none of the references or reasonable combinations thereof could be found which disclose or suggest all of the features of the claims, and there is no reasonable motivation to modify the art of record to have these features. Furthermore, attempting to modify the references to have all the cited limitations would destroy the proposed inventions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELA I SHIRSAT whose telephone number is (571)270-5269. The examiner can normally be reached M-F 9:00am-5:30pm MST.
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MARCELA . SHIRSAT
Primary Examiner
Art Unit 3775
Prosecution Insights