DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is responsive to the set of claims received on 19 May 2025. Claims 1-20 are currently pending.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/252,865, filed on 16 December 2020.
Drawings
The drawings received on 19 May 2025 are accepted by the examiner.
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 1-4 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-8 of U.S. Patent No. 12,357,363. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus much specific. Thus the invention of the patent claims are in effect a "species" of the "generic" invention of the application claims. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
Claims 1 and 2 disclose the following:
Claim Mapping Table
Current Application – 19/211,487
U.S. Patent No. 12,357,363
Claim 1: a percutaneous targeting device comprising: a body; an extension moveable relative to the body, the extension including an attachment opening having a first attachment hole and a second attachment hole, and no sidewall is located between the first attachment hole and the second attachment hole, and the extension includes another attachment hole; a targeting assembly including a target channel; a target pin receivable through the body and configured to be placed in a distal bone part of a bone to reposition the distal bone part of the bone, wherein the target pin is received through the target channel of the targeting assembly; a guide wire insertable through one of the first attachment hole and the second attachment hole and configured to be inserted into the bone; another guide wire inserted through the another attachment hole and configured to be inserted into the bone; and a cannulated fixation screw configured to be screwed into the bone using the guide wire.
Claim 3: a percutaneous targeting device comprising: a body; an extension moveable relative to the body, the extension including an attachment opening including a first attachment hole and a second attachment hole, and no sidewall is located between the first attachment hole and the second attachment hole; a targeting assembly including a target channel; a target pin receivable through the body and configured to be placed in a distal bone part of a bone to reposition the distal bone part of the bone, wherein the target pin is received through the target channel of the targeting assembly; a guide wire inserted through one of the first attachment hole and the second attachment hole and configured to be inserted into the bone; and a cannulated fixation screw configured to be screwed into the bone using the guide wire; wherein the targeting assembly includes a hook of a hook assembly configured to be inserted intramedullary into a proximal bone part of the bone.
Claim 5: the targeting device according to claim 3, including another attachment hole that receives another guide wire.
Claim 2: the targeting device as recited in claim 1, wherein the bone is a metatarsal bone that is split into the distal bone part and a proximal bone part.
Claim 3: a percutaneous targeting device comprising: a body; an extension moveable relative to the body, the extension including an attachment opening including a first attachment hole and a second attachment hole, and no sidewall is located between the first attachment hole and the second attachment hole; a targeting assembly including a target channel; a target pin receivable through the body and configured to be placed in a distal bone part of a bone to reposition the distal bone part of the bone, wherein the target pin is received through the target channel of the targeting assembly; a guide wire inserted through one of the first attachment hole and the second attachment hole and configured to be inserted into the bone; and a cannulated fixation screw configured to be screwed into the bone using the guide wire; wherein the targeting assembly includes a hook of a hook assembly configured to be inserted intramedullary into a proximal bone part of the bone.
Claim 5: the targeting device according to claim 3, including another attachment hole that receives another guide wire.
Claim 3: the targeting device as recited in claim 1, wherein the guide wire is received in one of the first attachment hole and the second attachment hole depending on a desired distance between the guide wire and the another guide wire.
Claim 6: the targeting device according to claim 5, wherein the guide wire is received in one of the first attachment hole and the second attachment hole depending on a desired distance between the guide wire and the another guide wire.
Claim 4: the targeting device as recited in claim 1, including another cannulated fixation screw configured to be screwed into the bone using the another guide wire.
Claim 7: the targeting device according to claim 5, including another cannulated fixation screw configured to be screwed into the bone using the another guide wire.
Claim 6: the targeting device as recited in claim 1, wherein the another attachment hole is most distal to the target pin and the attachment opening is most proximal to the target pin.
Claim 8: the targeting device as recited in claim 5, wherein the another attachment hole is most distal to the target pin and the attachment opening is most proximal to the target pin.
Claims 1 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 12,357,363. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus much specific. Thus the invention of the patent claims are in effect a "species" of the "generic" invention of the application claims. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
Claims 1 and 2 disclose the following:
Claim Mapping Table
Current Application – 19/211,487
U.S. Patent No. 12,357,363
Claim 1: a percutaneous targeting device comprising: a body; an extension moveable relative to the body, the extension including an attachment opening having a first attachment hole and a second attachment hole, and no sidewall is located between the first attachment hole and the second attachment hole, and the extension includes another attachment hole; a targeting assembly including a target channel; a target pin receivable through the body and configured to be placed in a distal bone part of a bone to reposition the distal bone part of the bone, wherein the target pin is received through the target channel of the targeting assembly; a guide wire insertable through one of the first attachment hole and the second attachment hole and configured to be inserted into the bone; another guide wire inserted through the another attachment hole and configured to be inserted into the bone; and a cannulated fixation screw configured to be screwed into the bone using the guide wire.
Claim 1: a percutaneous targeting device comprising: a body that is arc-shaped; an extension including a first attachment hole and an attachment opening, the attachment opening including a second attachment hole and a third attachment hole, wherein no sidewalls are located between the second attachment hole and the third attachment hole, wherein the extension is moveable relative to the body, and a position of the extension is adjustable relative to the body to change an angle between a target pin and a first guide wire; a targeting assembly including a target sleeve defining a target channel, the targeting assembly including a hook of a hook assembly that is configured to be inserted intramedullary into a proximal bone part of a metatarsal bone, and the metatarsal bone is split into the proximal bone part and a distal bone part; the target pin receivable through the body and configured to be placed in the distal bone part of the metatarsal bone to reposition the distal bone part of the metatarsal bone, wherein the target pin is received through the target channel of the target sleeve of the targeting assembly, wherein the first attachment hole is most distal to the target pin, and the attachment opening is proximal to the target pin, wherein the targeting assembly is configured to hold the target pin in a fixed position relative to the targeting assembly, and wherein the target sleeve is configured to allow for movement of the target pin within the targeting assembly; the first guide wire inserted through the first attachment hole and configured to be inserted into the metatarsal bone; a first cannulated fixation screw configured to be screwed into the metatarsal bone using the first guide wire; a second guide wire inserted through one of the second attachment hole and the third attachment hole of the attachment opening depending on a desired distance between the first guide wire and the second guide wire; and a second cannulated fixation screw configured to be screwed into the metatarsal bone using the second guide wire.
Claim 10: the targeting device as recited in claim 1, wherein the cannulated fixation screw is a non-compressive cannulated fixation screw.
Claim 2: the targeting device according as recited in claim 1, wherein the first cannulated fixation screw is a first non-compressive cannulated fixation screw and the second cannulated fixation screw is a second non-compressive cannulated fixation screw.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-11 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Chan (U.S. Patent 5,891,150) in view of McGhie (U.S. Patent 9,265,878).
Chan discloses (as to part of claim 1) a percutaneous targeting device (5) comprising a body (22); an extension (40) moveable relative to (i.e. via the interaction between 115 and 120) the body, the extension including an attachment opening (i.e. opening defined between 44 and 170 and defining each instance of 125) having a first attachment hole (e.g. one instance of 125 as best seen in Figure 5) and a second attachment hole (e.g. an adjacent instance of 125 as best seen in Figure 5), and the extension includes another attachment hole (e.g. instance of 125 at free end of 44/170 as best seen in Figures 1 and 5); a targeting assembly (105) including a target channel (i.e. channel defined through 105, see Figure 2); a target pin (60) receivable through the body and capable of being placed in a distal bone part of a bone to reposition the distal bone part of the bone (see Note below regarding functional language), wherein the target pin is received through the target channel of the targeting assembly (reception as best seen in Figure 1); a guide wire (i.e. one instance of 305) capable of being inserted through one of the first attachment hole and the second attachment hole (i.e. although not explicitly disclose, 90 is removed and 305 is placed while 270 is located within 17; it is therefore the examiner’s position that 305 is capable of being inserted through 125 to accomplish this, see column 9, line 52 – column 10, line 9) and capable of being inserted into the bone (see Figures 17-21); another guide wire (i.e. another instance of 305) capable of being inserted through the another attachment hole (i.e. although not explicitly disclose, 90 is removed and 305 is placed while 270 is located within 17; it is therefore the examiner’s position that 305 is capable of being inserted through 125 to accomplish this, see column 9, line 52 – column 10, line 9) and capable of being inserted into the bone (see Figures 17-21); and a cannulated fixation screw (310) capable of being screwed into the bone using the guide wire (see Figures 20-21, and column 10, lines 18-32), wherein (as to claim 2) the bone is capable of being a metatarsal bone that is split into the distal bone part and a proximal bone part (see column 12, line 61 – column 13, line 13), wherein (as to claim 3) the guide wire is capable of being received in one of the first attachment hole and the second attachment hole depending on a desired distance between the guide wire and the another guide wire (i.e. not explicitly disclosed; however, fully capable given Note below regarding functional language), wherein (as to claim 5) the attachment opening is between the targeting assembly and the another attachment hole (location as best seen in Figures 1 and 5), wherein (as to claim 6) the another attachment hole is most distal to (i.e. along and arc drawn through 22 and 40) the target pin and the attachment opening is most proximal to (i.e. along and arc drawn through 22 and 40) the target pin (see Figures 1 and 5), wherein (as to claim 7) the targeting assembly includes a target sleeve (i.e. sleeve defined by 105) that defines the target channel that receives the target pin (reception as best seen in Figure 1), wherein (as to claim 8) the target sleeve is capable of allowing for movement of (i.e. dependent upon the position of 150) the target pin within the target targeting assembly (see column 5, lines 35-55), wherein (as to claim 9) a position of the extension is adjustable relative to (i.e. via the interaction between 115 and 120) the body to change an angle between (i.e. indicated by 145) the target pin and the guide wire, wherein (as to claim 10) the cannulated fixation screw is a non-compressive cannulated fixation screw (i.e. 310 is not disclosed as a compression screw (see column 10, lines 18-32), where 220/230 is disclosed as a compression screw (see column 7, lines 21 – column 8, line 55)), wherein (as to claim 11) the targeting assembly is capable of holding the target pin in a fixed position relative to (i.e. dependent upon the position of 150) the targeting assembly (see column 5, lines 35-55), wherein (as to claim 13) the guide wire and the another guide wire (i.e. the examiner would note that the another guide wire is not being treated as a positively recited claim limitation given the language of claim 5) each have a tip (i.e. tip as best seen in Figures 17-21) and is capable of being drilled into the bone (see column 9, lines 63-65), wherein (as to claim 14) the body is arc-shaped (see Figure 2, and column 4, lines 61-62), and wherein (as to part of claim 15) the attachment opening includes a third attachment hole (e.g. another adjacent instance of 125 as best seen in Figure 5) (see Figures 1-28, and column 4, line 40 – column 12, line 56).
Chan discloses the claimed invention except for wherein (as to the remainder of claim 1) no sidewall is located between the first attachment hole and the second attachment hole, and wherein (as to the remainder of claim 15) no sidewalls are located between the first attachment hole, the second attachment hole and the third attachment hole.
McGhie teaches the use of a targeting device (10) comprising a body (20); and an extension (22), wherein the extension includes an attachment opening (i.e. opening defining each instance of 36) including a first attachment hole (e.g. one instance of 36 as best seen in Figure 1), a second attachment hole (e.g. an adjacent instance of 36 as best seen in Figure 1) and a third attachment hole (e.g. another adjacent instance of 36 as best seen in Figure 1), and no sidewall is located between the first attachment hole, the second attachment hole, and the second attachment hole (i.e. the holes overlap, see column 5, lines 7-9) (see Figures 1 and 2, and column 3, line 36 – column 8, line 17).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the invention of Chan with wherein no sidewall is located between the first attachment hole and the second attachment hole, and wherein no sidewalls are located between the first attachment hole, the second attachment hole and the third attachment hole in view of McGhie in order to provide a well-known obvious hole configuration allowing for a greater number of holes aiding a physician to more precisely choose a desired position for providing a bone hole to yield predictable results.
Note: Regarding functional language, "[a]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (see MPEP 2114(II)).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Chan (U.S. Patent 5,891,150) in view of McGhie (U.S. Patent 9,265,878), as applied to claim 1 above.
Chan discloses the use of the targeting device in conjunction with first and second fixation screws (220, see Figure 8); however, Chan in view of McGhie fail to explicitly disclose first and second cannulated fixation screws capable of being screwed into the bone using guide wires.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the invention of Chan in view of McGhie with the use of the targeting device in conjunction with first and second cannulated fixation screws capable of being screwed into the bone using guide wires in order to provide a desired use to yield predicable results, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (see St. Regis Paper Co. v. Bemis Co., 193 USPQ 8).
Allowable Subject Matter
Claims 12 and 16 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.
Claims 17-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 12 and 16 in the instant application have not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose, or suggest, the following:
Regarding claim 12, in combination with the limitations required by claim 1, no prior art reference could be found disclosing or making obvious wherein the target pin is a K-wire that extends axially through the targeting assembly.
Regarding claim 16, in combination with the limitations required by claim 1, no prior art reference could be found disclosing or making obvious wherein a periphery of the targeting assembly includes a window along the target channel, the target pin includes a first indicator, the body includes a second indicator, and the first and second indicators are alignable with each other at a position along the window.
Claims 17-20 in the instant application have not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose, or suggest, in combination with the underlined limitations below, a targeting device comprising a body; an extension moveable along an arc path established by the body, the extension including a first attachment hole and an attachment opening having a row of overlapping attachment holes; a targeting assembly coupled to the body, wherein the targeting assembly includes a target channel dimensioned to receive a target pin that is insertable in a first bone part to reposition the first bone part relative to a second bone part; a first guide sleeve insertable in the first attachment hole, the first guide sleeve dimensioned to receive a first guide wire insertable in the second bone part; and a second guide sleeve insertable in a selectable one of the overlapping attachment holes, the second guide sleeve dimensioned to receive a second guide wire insertable in the second bone part; wherein the first and second guide wires establish a trajectory of respective cannulated fixation screws adapted to secure the first bone part and the second bone part to each other.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY E WAGGLE, JR whose telephone number is (571)270-7110. The examiner can normally be reached TEAP: Monday - Friday (7:45am - 3:45pm).
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/LARRY E WAGGLE, JR/Primary Examiner, Art Unit 3775
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