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 .
Priority
This application discloses and claims only subject matter disclosed in prior Application No. 16/173,727, filed October 29th, 2018, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of prior U.S. Patent No. 12,303,397. This is a statutory double patenting rejection.
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 1-7 and 9-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,224,520. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 1-7 and 9-20 of the current application and the invention of claims 1-20 of the patent lies in the fact that the invention of claims 1-20 of the patent includes more elements and is thus more specific. Thus the invention of claims 1-20 of the patent is in effect a "species" of the "generic" invention of claims 1-7 and 9-20 of the current 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 1-7 and 9-20 of the current application are anticipated by claims 1-20 of the patent, claims 1-7 and 9-20 of the current application are not patentably distinct from claims 1-20 of the patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,833,058. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 1-20 of the current application and the invention of claims 1-20 of the patent lies in the fact that the invention of claims 1-20 of the patent includes more elements and is thus more specific. Thus the invention of claims 1-20 of the patent is in effect a "species" of the "generic" invention of claims 1-20 of the current 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 1-20 of the current application are anticipated by claims 1-20 of the patent, claims 1-20 of the current application are not patentably distinct from claims 1-20 of the patent.
Allowable Subject Matter
Claims 1-20 are allowable over the prior art. However, the claims have been rejected under non-statutory double patenting as discussed above.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 1:
Spangler (U.S. Patent 9,687,356) discloses a method of placing an implant for intervertebral fusion comprising:
(claim 1) an implant (for example see Figures 21 and 22) comprising
(claim 1) a first intervertebral spacer body (left element 200)
(claim 1) wherein the first intervertebral spacer body defines a height dimension perpendicular to respective endplates of adjacent vertebral bodies
(claim 1) wherein the first intervertebral spacer body has a non-adjustable fixed height
(claim 1) a second intervertebral spacer body (right element 200)
(claim 1) inserting the implant in a space between the adjacent vertebral bodies
(claim 1) wherein the implant is oriented such that respective opposing surfaces of the first intervertebral spacer body contacts both of the adjacent vertebral bodies simultaneously
(claim 1) wherein the implant is oriented such that respective opposing surfaces of the second intervertebral spacer body contacts both of the adjacent vertebral bodies simultaneously
Spangler discloses expandable walls (330) extending between the intervertebral bodies. However, the walls are not enclosed, i.e. do not form a container, capable of being filled with a material such that the container expands to mutually contact both of the adjacent vertebral bodies.
Regarding claim 1:
Foley (U.S. Publication 2008/0154305) discloses a method of placing an implant for intervertebral fusion comprising:
(claim 1) an implant (for example see Figure 1B) comprising
(claim 1) a first intervertebral spacer body (22A)
(claim 1) wherein the first intervertebral spacer body defines a height dimension perpendicular to respective endplates of adjacent vertebral bodies
(claim 1) wherein the first intervertebral spacer body has a non-adjustable fixed height
(claim 1) a second intervertebral spacer body (22B)
(claim 1) an expandable container (30’) disposed between the first intervertebral spacer body and the second intervertebral spacer body
(claim 1) inserting the implant in a space between the adjacent vertebral bodies
(claim 1) filling the expandable container with fill material such that the expandable container expands to mutually contact both of the adjacent vertebral bodies (paragraphs 49-52 disclose the balloon may be constructed to allow bone ingrowth between the vertebral bodies)
Foley fails to disclose the method wherein the implant is oriented such that respective opposing surfaces of the first intervertebral spacer body contacts both of the adjacent vertebral bodies simultaneously and wherein the implant is oriented such that respective opposing surfaces of the second intervertebral spacer body contacts both of the adjacent vertebral bodies simultaneously.
Regarding claim 1:
Cragg (U.S. Publication 2005/0113919) discloses a method of placing an implant for intervertebral fusion comprising:
(claim 1) an implant (for example see Figures 24-27) comprising
(claim 1) a first intervertebral spacer body (16)
(claim 1) wherein the first intervertebral spacer body defines a height dimension perpendicular to respective endplates of adjacent vertebral bodies
(claim 1) wherein the first intervertebral spacer body has a non-adjustable fixed height
(claim 1) a second intervertebral spacer body (12)
(claim 1) an expandable container (18) disposed between the first intervertebral spacer body and the second intervertebral spacer body
(claim 1) inserting the implant in a space between the adjacent vertebral bodies
(claim 1) filling the expandable container with fill material such that the expandable container expands to mutually contact both of the adjacent vertebral bodies
Cragg fails to disclose the method wherein the implant is inserted into a space between the adjacent vertebral bodies such that respective opposing surfaces of the first intervertebral spacer body contacts both of the adjacent vertebral bodies simultaneously and such that respective opposing surfaces of the second intervertebral spacer body contacts both of the adjacent vertebral bodies simultaneously.
The examiner was unable to find a reference or a combination of references that disclose and/or teach all the limitations of claim 1 as presented.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited references the examiner felt were relevant to the application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas Woodall whose telephone number is (571) 272-5204. The examiner can normally be reached on Monday-Friday 8am to 5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571. 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.
/NICHOLAS W WOODALL/Primary Examiner, Art Unit 3775
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