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 Patents 11832855 and 10966762 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) 39-42 is/are rejected on the ground of nonstatutory double patenting as being anticipated by claim(s) 19-22 of U.S. Patent No. 12336742. 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):
Invention 19/242362
US Patent 12336742
39. A surgical instrument configured to unilaterally hold an implant, comprising: a handle; and a unilateral locking mechanism comprising an elongated body having a proximal end coupled to the handle and a distal end defining a plurality of locking elements configured to engage a unilateral portion of the implant, wherein the unilateral locking mechanism comprises: a tubular locking shaft; a partial tubular locking shaft segment formed at a distal end of the tubular locking shaft, wherein a window is formed in the partial tubular locking shaft segment exposing an implant-receiving pocket; a clasp having a proximal clasp portion fixedly attached to an outer surface of the partial tubular shaft segment and a free distal clasp portion aligned with the window; a locking sleeve configured to slide longitudinally over the tubular locking shaft and the partial tubular shaft segment; wherein the free distal clasp portion enters the window towards the implant-receiving pocket in response to the locking sleeve sliding distally over the free distal clasp portion and wherein the free distal clasp portion exits the window away from the implant-receiving pocket in response to the locking sleeve sliding proximally away from the free distal clasp portion.
19. A surgical instrument configured to unilaterally hold an implant, comprising: a handle; and a unilateral locking mechanism comprising an elongated body having a proximal end coupled to the handle and a distal end defining a plurality of locking elements configured to engage a unilateral portion of the implant, wherein the unilateral locking mechanism comprises: a tubular locking shaft; a partial tubular locking shaft segment formed at a distal end of the tubular locking shaft, wherein a window is formed in the partial tubular locking shaft segment exposing an implant-receiving pocket; a clasp having a proximal clasp portion fixedly attached to an outer surface of the partial tubular shaft segment and a free distal clasp portion aligned with the window; a locking sleeve configured to slide longitudinally over the tubular locking shaft and the partial tubular shaft segment; wherein the free distal clasp portion enters the window towards the implant- receiving pocket in response to the locking sleeve sliding distally over the free distal clasp portion and wherein the free distal clasp portion exits the window away from the implant- receiving pocket in response to the locking sleeve sliding proximally away from the free distal clasp portion.
40. The surgical instrument of claim 39, wherein the free distal clasp portion defines a surface protrusion configured to engage a counterpart groove formed in the unilateral portion of the implant; and wherein the surface protrusion of the free distal clasp portion is configured to engage the counterpart groove of the implant in response to entering the window towards the implant-receiving pocket and wherein the surface protrusion is configured to disengage the counterpart groove of the implant in response to the free distal clasp portion exiting the window away from the implant-receiving pocket.
20. The surgical instrument of claim 19, wherein the free distal clasp portion defines a surface protrusion configured to engage a counterpart groove formed in the unilateral portion of the implant; and wherein the surface protrusion of the free distal clasp portion is configured to engage the counterpart groove of the implant in response to entering the window towards the implant- receiving pocket and wherein the surface protrusion is configured to disengage the counterpart groove of the implant in response to the free distal clasp portion exiting the window away from the implant-receiving pocket.
41. The surgical instrument of claim 39, further comprising an auxiliary instrument, wherein the auxiliary instrument is configured to pass through the tubular locking shaft in alignment with a proximal-distal axis of the open recess formed in the implant.
21. The surgical instrument of claim 19, further comprising an auxiliary instrument, wherein the auxiliary instrument is configured to pass through the tubular locking shaft in alignment with a proximal-distal axis of the open recess formed in the implant.
42. The surgical instrument of claim 41 wherein the auxiliary instrument is at least one of a rod reducer and a set screw reducer.
22. The surgical instrument of claim 21 wherein the auxiliary instrument is at least one of a rod reducer and a set screw reducer.
43. The surgical instrument of claim 41, wherein the auxiliary instrument is threadably coupled to the handle and configured to translate along a central longitudinal axis of the tubular locking shaft in response to rotation of the handle.
44. The surgical instrument of claim 39, wherein partial tubular locking shaft segment defines a pair of spaced apart arms forming the implant-receiving pocket therebetween.
45. The surgical instrument of claim 44, wherein a distal-facing bearing surface extends transversely between the pair of spaced apart arms, wherein the distal-facing bearing surface is configured to contact a counterpart proximal-facing bearing surface of the unilateral portion of the implant to thereby constrain longitudinal movement of the implant in a proximal direction.
46. The surgical instrument of claim 45, wherein the distal-facing bearing surface is formed on a stop beam.
47. The surgical instrument of claim 45, wherein the distal-facing bearing surface is proximal to a distal end of the spaced apart arms.
48. The surgical instrument of claim 44, wherein a lateral-facing bearing surface protrudes longitudinally along at least one of opposing faces of the pair of spaced apart arms at or adjacent to a front of the implant-receiving pocket, wherein the lateral-facing bearing surface is configured to mate and slide along a lateral-facing counterpart groove formed in the unilateral portion of the implant and to thereby constrain lateral movements of the implant.
49. The surgical instrument of claim 39, wherein the tubular locking shaft defines a cutaway portion at a distal end to form the partial tubular locking shaft segment.
50. The surgical instrument of claim 39, further comprising a locking pin extending transversely across an inner portion of the locking sleeve and configured to exert a force against an outer surface of the clasp.
51. A method of securing an implant to a surgical instrument, comprising: aligning a tubular locking shaft of the surgical instrument with a proximal end of the implant; inserting a partial tubular locking shaft segment of the tubular locking shaft onto a unilateral portion of the implant until a distal-facing bearing surface of the unilateral locking mechanism engages a counterpart proximal-facing bearing surface of the unilateral portion of the implant; and controlling radial movement of a clasp of the partial tubular locking shaft segment such that a bearing surface of the clasp engages a counterpart bearing surface of the unilateral portion of the implant.
52. The method of claim 51, wherein inserting the partial tubular locking shaft segment onto the unilateral portion of the implant comprises sliding at least a pair of lateral- facing bearing surfaces along at least a pair of lateral-facing grooves defined along the unilateral portion of the implant.
53. The method of claim 51, wherein controlling the movement of the clasp comprises sliding a locking sleeve over an outer portion of the clasp such that a surface protrusion formed on an inner portion of the clasp engages a counterpart groove formed in the unilateral portion of the implant.
54. The method of claim 51, further comprising translating a rod reducing element through a hollow interior of the tubular locking shaft; and inserting a rod into the implant while the implant is secured to the instrument.
55. The method of claim 51, wherein aligning a tubular locking shaft of the surgical instrument with a proximal end of the implant further comprises positioning the surgical instrument over the proximal end of the implant such that an implant-receiving pocket of the partial tubular locking shaft segment is aligned with the unilateral portion of the implant.
56. The method of claim 55, wherein controlling radial movement of the clasp of the partial tubular locking shaft segment such that the bearing surface of the clasp engages the counterpart bearing surface of the unilateral portion of the implant comprises moving the bearing surface radially inward through an opening in the implant-receiving pocket.
57. The method of claim 51, wherein the distal-facing bearing surface is formed on a stop beam located proximal to a distal end of the partial tubular locking shaft segment.
58. The method of claim 51, wherein a body of the partial tubular locking shaft segment defines a pair of spaced apart arms forming an implant-receiving pocket therebetween; and wherein controlling the movement of the clasp of the partial tubular locking shaft segment such that the bearing surface of the clasp engages the counterpart bearing surface of the unilateral portion of the implant comprises moving the clasp radially-inward relative to the pair of spaced apart arms.
59. The method of claim 51, further comprising tightening a locking mechanism within a recess of the implant while the clasp of the partial tubular locking shaft segment engages the counterpart bearing surface of the unilateral portion of the implant.
Thus, the invention of US Patent 12336742, claims 19-22, respectively, 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.
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 because no references, or reasonable combination thereof, could be found which disclose, or suggest, the claimed combination of limitations recited in independent claim 39. In particular, none of the cited references teach or suggest a unilateral locking mechanism comprising an elongated body having a proximal end coupled to the handle and a distal end defining a plurality of locking elements configured to engage a unilateral portion of the implant, wherein the unilateral locking mechanism comprises: a tubular locking shaft; a partial tubular locking shaft segment formed at a distal end of the tubular locking shaft, wherein a window is formed in the partial tubular locking shaft segment; an implant-receiving pocket; a clasp with a proximal clasp portion fixedly attached to an outer surface of the partial tubular shaft segment and a free distal clasp portion aligned with the window; a locking sleeve; wherein the free distal clasp portion enters the window towards the implant-receiving pocket in response to the locking sleeve sliding distally over the free distal clasp portion and wherein the free distal clasp portion exits the window away from the implant-receiving pocket in response to the locking sleeve sliding proximally away from the free distal clasp portion, as required by claims 39-50.
The claims 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 claimed combination of limitations recited in independent claim 51. In particular, none of the cited references teach or suggest a method including inserting a partial tubular locking shaft segment of the tubular locking shaft onto a unilateral portion of the implant until a distal-facing bearing surface of the unilateral locking mechanism engages a counterpart proximal-facing bearing surface of the unilateral portion of the implant; and controlling radial movement of a clasp of the partial tubular locking shaft segment such that a bearing surface of the clasp engages a counterpart bearing surface of the unilateral portion of the implant, as required by claims 51-59.
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 43-50 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.
Claims 51-59 are allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 20080228233; and US 20130245702.
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/TARA ROSE E CARTER/ Examiner, Art Unit 3773
/EDUARDO C ROBERT/ Supervisory Patent Examiner, Art Unit 3773
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