I. 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 1-8 and 10-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-8 and 10-20 of prior U.S. Patent No. 11877931. This is a statutory double patenting rejection.
II. Claim 9 is 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.
III. The following is an examiner’s statement of reasons for the indication of allowable subject matter: The claims distinguish over closest prior art cited in the 892. In an exemplary prior art reference, Stark (US 2009/0216238) discloses a method involving an implant involving a sacrum and an ilium (e.g. Fig. 26; paras. [0008], [0107]), but fails to disclose at least struts, openings, and relationships thereof, as claimed. There would have been no obvious reason(s) to modify the Stark method to satisfy at least this/these and/or each of applicant’s claimed limitations without an application of impermissible hindsight reasoning. Claim 1 of U.S. 11877931 discloses a method involving an implant, a rod, and a thread, but fails to disclose at least struts, openings, and relationships thereof, as claimed. There would have been no obvious reason(s) to modify claim 1 of U.S. 11877931 to satisfy at least this/these and/or each of applicant’s claimed limitations without an application of impermissible hindsight reasoning. 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.”
IV. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAN A. SEVILLA whose telephone number is (571)270-5621. The examiner can normally be reached on Monday through Thursday, 8:00 am to 5:00 pm. 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.
/CHRISTIAN A SEVILLA/ Primary Examiner, Art Unit 3775
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