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 .
EXAMINER’S COMMENT
There does not appear to be any overlapping subject matter requiring a Double Patenting rejection with regard to US Patent 11653953 at this time.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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Claim(s) 1, 2, 5, 8, 13 and 21-22 is/are rejected on the ground of nonstatutory double patenting as being anticipated by claim(s) 9 and 10 of U.S. Patent No. 12329420. 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 many more elements and are thus much more specific as shown below (note that underlined and/or bolded sections indicate comparable elements and that the claims are presented by grouping and numerical order):
Invention 19/238242
US Patent 12329420
1. An implant, comprising: a body having a rod-receiving recess, the body having first and second sides defining openings to the rod-receiving recess, the rod-receiving recess defining a central longitudinal rod axis extending between the openings of the first and second sides, wherein at least a portion of the rod-receiving recess is formed by an inner surface of the implant, the inner surface defining two grip grooves extending parallel to each other and the central longitudinal rod axis, wherein each grip groove defines two edges where the grip groove intersects the inner surface, the four edges of the two grip grooves together defining a circular radius about the central longitudinal rod axis; and a retaining member configured to move with respect to the body to exert a force against a rod in the rod-receiving recess that is perpendicular to the central longitudinal rod axis and urge the rod against the four edges of the two grip grooves, wherein the engagement of the four edges of the grip grooves against the rod serves to restrain rotational movement of the rod about the central longitudinal rod axis; and wherein at least one of the two grip grooves defines an inner surface having formed therein one or more protrusions, the one or more protrusions extending to edges arranged to contact the rod when the rod is engaged with the four edges of the grip grooves.
10. An implant, comprising: a body having a rod-receiving recess, the body having first and second sides defining openings to the rod-receiving recess, the rod-receiving recess defining a central longitudinal rod axis extending between the openings of the first and second sides; and a retaining member comprising a rod-facing surface, the retaining member configured to move with respect to the body to exert a force against a rod in the rod-receiving recess that is perpendicular to the central longitudinal rod axis and engage, urge the rod against an inner surface of the rod-receiving recess the four edges of the two grip grooves; wherein the rod-facing surface of the retaining member includes two grip grooves extending parallel to each other and the central longitudinal axis; wherein the rod-facing surface defines an initial seating position for a rod in the rod; wherein each grip groove defines two edges where the grip groove intersects the rod facing surface, the four edges of the two grip grooves together defining a circular radius about the central longitudinal rod axis, wherein the engagement of the four edges of the grip grooves against the rod serves to restrain rotational movement of the rod about the central longitudinal rod receiving recess as the force is exerted against the rod by the retaining member, the rod having a radius sized to contact all four edges of the two grip grooves; and wherein the initial seating position is configured to have the rod contact the four edges before contacting a region of the rod-facing surface between the two grip grooves, the region extending from one of the two grip grooves to another of the two grip grooves; wherein at least one grip grooves defines an inner surface having formed therein one or more protrusions, the one or more protrusions extending to edges arranged to contact the rod when the rod is engaged with the edges of the grip grooves.
21. The implant of claim 1, wherein the inner surface defines an initial seating position for a rod in the rod-receiving recess before the force is exerted against the rod by the retaining member, the rod having a radius sized to contact all four edges of the two grip grooves; and wherein the initial seating position is configured to have the rod contact the four edges before contacting a region of the inner surface between the two grip grooves, the region extending from one of the two grip grooves to another of the two grip grooves.
Claim 10 above, note bolded and underlined sections
2. The implant of claim 21, wherein the region of the inner surface between the two grip grooves is sized and positioned to allow the force against the rod in the rod-receiving recess to permit deflection of at least one of one or more of the four edges or the rod where one or more of the four edges engage the rod, the deflection causing movement of the rod towards the region.
Claim 10 above, note underlined sections and note that this device is capable of performing this function
3. The implant of claim 2, wherein the region of the inner surface between the two grip grooves is positioned a distance away from the central longitudinal rod axis that is larger than a radius of the rod.
4. The implant of claim 1, comprising a compression member disposed in a cavity formed in the body, the compression member having an inner surface defining at least a portion of the rod-receiving recess, an inner surface of the compression member having the two grip grooves formed therein.
5. The implant of claim 1, wherein the grip grooves extend along an entire length of the inner surface of the rod-receiving recess in the direction of the central longitudinal rod axis.
Claim 10 above, note bolded sections
6. The implant of claim 1, wherein the grip grooves are positioned opposite the retaining member with respect to the central longitudinal rod axis.
7. The implant of claim 1, wherein the rod-receiving recess defines an open end sized to accept the rod and a closed end sized to contact the rod, wherein the grip grooves are arranged symmetrically about an axis extending from the open end to the closed end.
8. The implant of claim 1, wherein the body of the implant defines the inner surface forming the rod-receiving recess.
Claim 10 above, note underlined section
9. The implant of claim 1, wherein the intersection between the grip grooves and the inner surface defines sharp edges.
13. The implant of claim 1, wherein the grip grooves are formed by protrusions extending from the inner surface.
Claim 10 above, note underlined section
14. The implant of claim 1, wherein the implant comprises a connector and the rod-receiving recess is a first rod-receiving recces, the body defining a second rod-receiving recess with one or both of the first and second rod-receiving recesses having the two grip grooves, the body having proximal and distal ends that define a proximal-distal axis extending therebetween; wherein the retaining member is slidably disposed within a tunnel formed in the body and configured to translate with respect to the body along a rod pusher axis.
15. The implant of claim 14, wherein the second rod-receiving recess is defined by a pair of spaced apart arms of the body.
16. The connector of claim 14, wherein the first rod-receiving recess is open in a distal direction and wherein the second rod-receiving recess is open in a proximal direction.
17. The connector of claim 14, wherein the rod pusher axis is substantially perpendicular to the proximal-distal axis.
18. The connector of claim 14, further comprising a set screw threadably received in the body to lock a first rod within the first rod-receiving recess and to lock a second rod within the second rod-receiving recess.
19. The implant of claim 1, wherein the implant comprises a bone anchor assembly, the body comprises a receiver member of the bone anchor assembly, and the retaining member comprises a set screw or locking element.
22. An implant, comprising: a body having a rod-receiving recess, the body having first and second sides defining openings to the rod-receiving recess, the rod-receiving recess defining a central longitudinal rod axis extending between the openings of the first and second sides, wherein at least a portion of the rod-receiving recess is formed by an inner surface of the implant, the inner surface defining two grip grooves extending parallel to each other and the central longitudinal rod axis, wherein each grip groove defines two edges where the grip groove intersects the inner surface, the four edges of the two grip grooves together defining a circular radius about the central longitudinal rod axis; and a retaining member configured to move with respect to the body to exert a force against a rod in the rod-receiving recess that is perpendicular to the central longitudinal rod axis and urge the rod against the four edges of the two grip grooves, wherein the engagement of the four edges of the grip grooves against the rod serves to restrain rotational movement of the rod about the central longitudinal rod axis; and wherein the inner surface defines a groove intersecting at least one grip groove, the intersection of the groove segmenting the edges of the at least one grip groove and defining four corners for resisting translation of the rod along the central longitudinal rod axis when the rod is engaged with the edges.
9. An implant, comprising: a body having a rod-receiving recess, the body having first and second sides defining openings to the rod-receiving recess, the rod-receiving recess defining a central longitudinal rod axis extending between the openings of the first and second sides; and a retaining member comprising a rod-facing surface, the retaining member configured to move with respect to the body to exert a force against a rod in the rod-receiving recess that is perpendicular to the central longitudinal rod axis and engage, urge the rod against an inner surface of the rod-receiving recess the four edges of the two grip grooves; wherein the rod-facing surface of the retaining member includes two grip grooves extending parallel to each other and the central longitudinal axis; wherein the rod-facing surface defines an initial seating position for a rod in the rod; wherein each grip groove defines two edges where the grip groove intersects the rod facing surface, the four edges of the two grip grooves together defining a circular radius about the central longitudinal rod axis, wherein the engagement of the four edges of the grip grooves against the rod serves to restrain rotational movement of the rod about the central longitudinal rod receiving recess as the force is exerted against the rod by the retaining member, the rod having a radius sized to contact all four edges of the two grip grooves; and wherein the initial seating position is configured to have the rod contact the four edges before contacting a region of the rod-facing surface between the two grip grooves, the region extending from one of the two grip grooves to another of the two grip grooves; and wherein the inner surface defines a groove intersecting at least one grip groove, the intersection of the groove segmenting the edges of the at least one grip groove and defining four corners for resisting translation of the rod along the central longitudinal rod axis when the rod is engaged with the edges.
23. The implant of claim 22, wherein, the groove intersecting at least one grip groove is oriented perpendicular to the grip grooves.
Thus, the invention of US Patent 12329420, claims 9 and 10, respectively, is 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.
Reasons for Allowance
The following is a statement of reasons for the indication of allowable subject matter:
The claims in the instant application have not been rejected using prior art, the closest available prior art being US 20050277927, because no references, or reasonable combination thereof, could be found which disclose, or suggest, the claimed combination of limitations recited in claim 1. In particular, none of the cited references teach or suggest “wherein at least a portion of the rod-receiving recess is formed by an inner surface of the implant, the inner surface defining two grip grooves extending parallel to each other and the central longitudinal rod axis, wherein each grip groove defines two edges where the grip groove intersects the inner surface, the four edges of the two grip grooves together defining a circular radius about the central longitudinal rod axis; wherein at least one of the two grip grooves defines an inner surface having formed therein one or more protrusions, the one or more protrusions extending to edges arranged to contact the rod when the rod is engaged with the four edges of the grip grooves”, as required by claims 1-9, 13-19 and 21.
The claims in the instant application have not been rejected using prior art, the closest available prior art being US 20050277927, because no references, or reasonable combination thereof, could be found which disclose, or suggest, the claimed combination of limitations recited in claim 22. In particular, none of the cited references teach or suggest “wherein at least a portion of the rod-receiving recess is formed by an inner surface of the implant, the inner surface defining two grip grooves extending parallel to each other and the central longitudinal rod axis, wherein each grip groove defines two edges where the grip groove intersects the inner surface, the four edges of the two grip grooves together defining a circular radius about the central longitudinal rod axis; wherein the inner surface defines a groove intersecting at least one grip groove, the intersection of the groove segmenting the edges of the at least one grip groove and defining four corners for resisting translation of the rod along the central longitudinal rod axis when the rod is engaged with the edges”, as required by claims 22-23.
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.”
Allowable Subject Matter
Claims 3, 4, 6, 7, 9, 14-19 and 23 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.
Conclusion
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/TARA ROSE E CARTER/ Examiner, Art Unit 3773
/JULIANNA N HARVEY/Primary Examiner, Art Unit 3773
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