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 09 June 2025. Claims 1-21 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.
Drawings
The drawings received on 09 June 2025 are accepted by the examiner.
Claim Objections
Claim 8 is objected to because of the following informality:
In line 3, it appears that the phrase “a first bone” should read “a first bone portion” for consistency (see lines 6 and 8 of claim 8 for similar language).
Claim 10 is objected to because of the following informality:
In lines 1-2, it appears that the phrase “wherein the at least one hole for guiding at least one two fixation elements is disposed adjacent to the second end of the targeting guide” should read “wherein at least one hole for guiding at least one of two fixation elements is disposed adjacent to the second end of the targeting guide” for clarity.
Claim 16 is objected to because of the following informality:
In line 4, it appears that the phrase “a first bone” should read “a first bone portion” for consistency (see lines 6-7 and 8-9 of claim 16 for similar language).
In line 16, it appears that the phrase “the fist fixation element” should read “the first fixation element.”
Appropriate correction is required.
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 and 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 12,343,045 (see Claim Mapping Table below). 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.
Claim Mapping Table
Current Application – 19/232,020
U.S. Patent No. 12,343,045
Claim 1: a system, comprising: a base including a first member defining a first hole for receiving a first fixation element for coupling the first member to a bone; and a second member pivotably coupled to the first member, the second member defining a second hole and a third hole, the second hole for receiving a second fixation element for coupling the second member to a bone, and the third hole for receiving an adjustment member for adjusting an angle between the first member and the second member; and a targeting guide coupled to the base, the targeting guide extending from a first end to a second end, the targeting guide defining a fourth hole disposed adjacent to the second end of the targeting guide and sized and configured to receive a fixation device therein.
Claim 1: a system, comprising: a base including first and second members that are coupled together in a pivoting arrangement, the first member including a first hole for receiving a first fixation element for coupling the first member to a first bone portion and a second hole for receiving an adjustment member for adjusting an angle between the first and second members, the second member having an adjustable length and defining at least one hole for receiving at least one second fixation element for coupling the second member to a second bone portion; and a targeting member extending from a first end to a second end so as to be configured to be positioned relative to the base, the targeting member defines a first hole adjacent to the first end for receiving one of the at least one second fixation elements and further defines at least one hole for guiding at least one third fixation element into engagement with the first and second bone portions that is disposed adjacent to the second end of the targeting member.
Claim 8: a surgical instrument system, comprising: a base having a first member pivotally coupled to a second member, the first member defining a first opening configured for coupling the first member to a first bone portion and a second opening for receiving an adjustment member for adjusting an angle between the first member and the second member, the second member having an adjustable length and defining at least one hole suitable for coupling the second member to a second bone portion; and a targeting guide configured to be positioned relative to the base, the targeting guide defining at least one hole for guiding engagement with the first and second bone portions.
Claim 1: a system, comprising: a base including first and second members that are coupled together in a pivoting arrangement, the first member including a first hole for receiving a first fixation element for coupling the first member to a first bone portion and a second hole for receiving an adjustment member for adjusting an angle between the first and second members, the second member having an adjustable length and defining at least one hole for receiving at least one second fixation element for coupling the second member to a second bone portion; and a targeting member extending from a first end to a second end so as to be configured to be positioned relative to the base, the targeting member defines a first hole adjacent to the first end for receiving one of the at least one second fixation elements and further defines at least one hole for guiding at least one third fixation element into engagement with the first and second bone portions that is disposed adjacent to the second end of the targeting member.
Claim 9: the surgical instrument system of claim 8, wherein the targeting guide extends from a first end to a second end, the targeting guide defining a first opening adjacent to the first end for receiving one of at least two fixation elements.
Claim 1: a system, comprising: a base including first and second members that are coupled together in a pivoting arrangement, the first member including a first hole for receiving a first fixation element for coupling the first member to a first bone portion and a second hole for receiving an adjustment member for adjusting an angle between the first and second members, the second member having an adjustable length and defining at least one hole for receiving at least one second fixation element for coupling the second member to a second bone portion; and a targeting member extending from a first end to a second end so as to be configured to be positioned relative to the base, the targeting member defines a first hole adjacent to the first end for receiving one of the at least one second fixation elements and further defines at least one hole for guiding at least one third fixation element into engagement with the first and second bone portions that is disposed adjacent to the second end of the targeting member.
Claim 10: the surgical instrument system of claim 9, wherein at least one hole for guiding at least one of two fixation elements is disposed adjacent to the second end of the targeting guide.
Claim 1: a system, comprising: a base including first and second members that are coupled together in a pivoting arrangement, the first member including a first hole for receiving a first fixation element for coupling the first member to a first bone portion and a second hole for receiving an adjustment member for adjusting an angle between the first and second members, the second member having an adjustable length and defining at least one hole for receiving at least one second fixation element for coupling the second member to a second bone portion; and a targeting member extending from a first end to a second end so as to be configured to be positioned relative to the base, the targeting member defines a first hole adjacent to the first end for receiving one of the at least one second fixation elements and further defines at least one hole for guiding at least one third fixation element into engagement with the first and second bone portions that is disposed adjacent to the second end of the targeting member.
Claim 11: the surgical instrument system of claim 10, wherein the targeting guide defines a pair of parallel openings.
Claim 2: the system of claim 1, wherein the at least one hole includes a pair of parallel holes.
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.
Claims 1-9 and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Olsen (U.S. Patent 7,507,240).
Regarding claims 1-7, Olsen discloses (as to claim 1) a system (10) comprising a base (i.e. base defined by 12 and 14) including a first member (12) defining a first hole (i.e. hole defined by 16) capable of receiving a first fixation element (22a or 22b) for coupling the first member to a bone; and a second member (14) pivotably coupled to (i.e. at 34) the first member, the second member defining a second hole (i.e. hole defined by 20) and a third hole (i.e. hole defined by 302), the second hole capable of receiving a second fixation element (26a or 26b) for coupling the second member to a bone, and the third hole capable of receiving an adjustment member (304) for adjusting an angle between the first member and the second member (see column 13, lines 35-48); and a targeting guide (18) coupled to the base, the targeting guide extending from a first end (i.e. end attached to 12) to a second end (i.e. end including 186’), the targeting guide defining a fourth hole (i.e. hole defined by 18) disposed adjacent to the second end of the targeting guide and capable of receiving a fixation device (24a or 24b) therein, wherein (as to claim 2) the first member includes a first component (70) and a second component (140), the first and second components capable of translating relative to one another (i.e. via rotation of 60) along an axis (i.e. axis defined along and through center of 60), wherein (as to claim 3) the first component defines an opening (78) that is capable of receiving at least a portion (144) of the second component, wherein (as to claim 4) the first and second components include complementary alignment mechanisms (i.e. mechanisms defined by 80 and 144), wherein (as to claim 5) the complementary alignment mechanism includes a channel (80) and a protrusion (144) capable of being received at least partially within the channel, wherein (as to claim 6) an adjustment mechanism (60) is provided for adjusting a position of the first component relative to the second component (see column 5, line 55 – column 6, line 60), and wherein (as to claim 7) the adjustment mechanism includes a fastener (60) that extends between the first component and the second component (extension as best seen in Figure 3B) (see Figures 1-14, and column 4, line 43 – column 14, line 41).
Regarding claims 8-9 and 12-13, Olsen discloses (as to claim 8) a surgical instrument system (10), comprising a base (i.e. base defined by 12 and 14) having a first member (14) pivotally coupled to (i.e. at 34, pivoting about 304) a second member (12), the first member including a first opening (i.e. opening defined by 20) capable of being used to couple (i.e. via 26a or 26b) the first member to a first bone portion and a second opening (i.e. opening defined by 302) capable of receiving an adjustment member (304) for adjusting an angle between the first member and the second member (see column 13, lines 35-48), the second member having an adjustable length (i.e. length/distance between 16 and 18 is capable of being adjusted via rotation of 60) and defining at least one hole (i.e. hole defined by 16) capable of guiding engagement with (i.e. via 22a and/or 22b) the first and second bone portions; and a targeting guide (18) capable of being positioned relative to the base, the targeting guide defining at least one hole (i.e. hole defined by 18) capable of guiding engagement with (i.e. via 24a and/or 24b) the first and second bone portions, wherein (as to claim 9) the targeting guide extends from a first end (i.e. end including 186’) to a second end (i.e. end attached to 12), the targeting guide defining a first opening (i.e. opening defined by 18) adjacent to the first end for receiving one (22a or 22b) of at least two fixation elements (i.e. it is the examiner’s position that 22a or 22b, and 24a or 24b are interchangeable with one another and capable of being positioned within 16 or 18), wherein (as to claim 12) the second member includes a first component (12) and a second component (16) that are adjustable relative to one another (i.e. via rotation of 60), and wherein (as to claim 13) the first component is coupled to (i.e. at 34) the first member and the second component defines an opening (i.e. opening defined by 16) capable of receiving at least one second fixation element (22a and or 22b) (see Figures 1-14, and column 4, line 43 – column 14, line 41).
Note: Regarding phrases such as “for,” “sized and configured to,” and “configured to,“ "[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)).
Allowable Subject Matter
Claims 14 and 15 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.
Claim 16-21 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 14 and 15 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 at least claim 14, in combination with the limitations required by claims 8 and 12, no prior art reference could be found disclosing or making obvious wherein the second component defines an opening sized and configured to receive at least a portion of the first component.
Claims 16-21 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 surgical method, comprising: providing an instrument system including a base having a first member pivotally coupled to a second member, the first member including a first hole configured for coupling the first member to a first bone and a second hole for receiving an adjustment member for adjusting an angle between the first member and the second member, the second member having an adjustable length and defining at least one opening suitable for coupling the second member to a second bone portion, and a targeting guide configured to be positioned relative to the base, the targeting guide defining at least one hole for guiding engagement with the first and second bone portions; inserting a first fixation element through a first hole defined by the first member of the base; inserting a second fixation element through a second hole defined by the second member of the base; adjusting an angle between the first member and the second member with the adjustment member; and positioning the targeting guide relative to the base such that the first fixation element is at least partially received within a first hole defined adjacent to a first end of the targeting guide.
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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