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 .
Status of the Claims
This Office Action is responsive to the preliminary amendment filed June 10, 2025. As directed by the preliminary amendment: Claims 1-3 have been cancelled. Claims 4-12 are newly added and presently pending in this application.
Claim Objections
Claim 5 is objected to because of the following informalities: In ll. 2, the phrase “said faster assembly” should be re-written as -said fastener assembly--. Appropriate correction is required.
Examiner’s Note
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 4 and 6-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bailey et al. (US 5,462,551), herein referred to as Bailey.
Regarding claim 4, Bailey discloses a clamp (figures 1 and 3) for coupling a surgical retractor system (considered functional) to a track portion (25) of a base plate (10, 11, 12) for surgery, the clamp (figures 1 and 3) comprising a body (81), a mount portion (70, 71) disposed at an end of the body (81) (figure 3), the mount portion (70+71) adapted to (i.e. capable of) couple to the surgical retractor system (considered functional), a fastener assembly (88) disposed at another end of the body (81) (figures 1 and 3), a first track arm (84) coupled to the body (81) proximate, and further inward relative to, the fastener assembly (88) (figures 1 and 3), and a second track arm (85) coupled to the body (81) proximate, and further inward relative to, the mount portion (70+71) (figures 1 and 3), the first and second track arms (84, 85) configured to (i.e. capable of) couple to the track portion (25) of the base plate (10, 11, 12), the fastener assembly (88) adapted to (i.e. capable of) move the first track arm (84) from a first position (col. 3, ll. 35-47) to a second position (col. 3, ll. 35-47) along the body (81), the first position characterized by the clamp (figures 1 and 3) being removeable (i.e. capable of) from the track portion (25), the second position characterized by the clamp (figures 1 and 3) being fixedly coupled to the track portion (25) (figure 1), and an intermediate position (col. 3, ll. 35-47) characterized as being between the first position (col. 3, ll. 35-47) and the second position (col. 3, ll. 35-47) such that the clamp (figures 1 and 3) is adapted to (i.e. capable of) linearly translate along the track portion (25) of the base plate (figure 1).
Regarding claim 6, Bailey discloses wherein the body (18) is formed of a generally longitudinal shape (figures 1 and 3), wherein the first track arm (84) can translate along the generally longitudinal shape (figure 3), but not rotate (col. 3, ll. 35-47).
Regarding claim 7, Bailey discloses wherein the track portion (25) comprises a width (figures 1 and 3), and when in an assembled configuration (figures 1 and 3), the generally longitudinal direction of the body (18) substantially aligns (angled ± 5 degrees) with the width (figure 1).
Regarding claim 8, Bailey discloses wherein the mount portion (70,+71) is angled upwardly (col. 3, ll. 47-50 and figure 3) with respect to the generally longitudinal direction of the body (81) (figure 3).
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.
Claim(s) 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bailey (US 5,462,551).
Regarding claims 9, 10, 11, 12, Bailey’s clamp discloses all the features/elements as claimed but lacks a detailed description on wherein the angle is about 45 degrees, wherein said angle is between about 30 degrees to about 60 degrees, wherein said angle is between about 15 degrees to about 75 degrees, wherein the mount portion is angled downwardly with respect to the generally longitudinal direction of the body is between about 30 degrees to about 60 degrees.
However, it is known that discovering the optimum or workable ranges involves only routine skill in the art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bailey’s clamp with wherein the angle is about 45 degrees, wherein said angle is between about 30 degrees to about 60 degrees, wherein said angle is between about 15 degrees to about 75 degrees, wherein the mount portion is angled downwardly with respect to the generally longitudinal direction of the body is between about 30 degrees to about 60 degrees, since it is known that discovering the optimum or workable ranges involves only routine skill in the art.
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 4-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,350,115. 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”.
Conclusion
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/SI MING KU/Primary Examiner, Art Unit 3775
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