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 .
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-14 of U.S. Patent No. 12,357,298. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of the Application recites:
A surgical fixation system, comprising: a button; a loop connected to the button; and a suture tape received through at least one of a first aperture or a second aperture of the button, wherein the suture tape is tensionable separately from the loop when the surgical fixation system is implanted within a joint.
Claim 1 of the Patent recites:
A surgical fixation system, comprising: a button; a loop connected to the button; and a reinforcement material connected to the button and tensionable separately from the loop, wherein the reinforcement material is received through a first aperture and a second aperture of the button.
Claim 2 of the Application recites:
The surgical fixation system as recited in claim 1, comprising a graft received over a portion of the loop.
Claim 2 of the Patent recites:
The surgical fixation system as recited in claim 1, comprising a graft received over a portion of the loop.
Claim 3 of the Application recites: 3. The surgical fixation system as recited in claim 2, wherein the suture tape is unattached to the graft and is tensionable separately from the graft.
Claim 3 of the Patent recites: 3. The surgical fixation system as recited in claim 2, wherein the reinforcement material is unattached to the graft and is tensionable separately from the graft.
Claim 4 of the Application recites:
4. The surgical fixation system as recited in claim 2, wherein the graft is looped over a cradle of the loop.
Claim 4 of Patent recites: 4. The surgical fixation system as recited in claim 2, wherein the graft is looped over a cradle of the loop.
Claim 5 of the Application recites:
5. The surgical fixation system as recited in claim 1, wherein the loop is an adjustable loop that includes at least one adjustable eyesplice.
Claim 5 of the Patent recites:
5. The surgical fixation system as recited in claim 1, wherein the loop is an adjustable loop that includes at least one adjustable eyesplice.
Claim 6 of the Application recites:
6. The surgical fixation system as recited in claim 5, wherein the adjustable loop includes a first adjustable eyesplice and a second adjustable eyesplice interconnected with the first adjustable eyesplice.
Claim 6 of the Patent recites: 6. The surgical fixation system as recited in claim 5, wherein the adjustable loop includes a first adjustable eyesplice and a second adjustable eyesplice interconnected with the first adjustable eyesplice.
Claim 7 of the Application recites: 7. The surgical fixation system as recited in claim 1, wherein the loop includes a free braid strand that is configured to reduce a size of the loop.
Claim 9 of the Patent recites: 9. The surgical fixation system as recited in claim 1, wherein the loop includes a free braid strand that is configured to reduce a size of the loop.
Claim 8 of Application recites:
8. The surgical fixation system as recited in claim 7, wherein the free braid strand extends through at least one of the first aperture or the second aperture of the button.
Claim 10 of the Patent recites:
10. The surgical fixation system as recited in claim 9, wherein the free braid strand extends through at least one of the first aperture or the second aperture of the button.
Claim 9 of Application recites:
9. The surgical fixation system as recited in claim 1, comprising a second button and a second loop connected to the second button, wherein the suture tape is connected to the second button.
Claim 11 of Patent recites: 11. The surgical fixation system as recited in claim 1, comprising a second button and a second loop connected to the second button, wherein the reinforcement material is connected to the second button.
Claim 10 of the Application recites:
10. The surgical fixation system as recited in claim 1, comprising a passing suture passed through the button.
Claim 12 of the Patent recites:
12. The surgical fixation system as recited in claim 1, comprising a passing suture passed through the button.
Claim 11 of the Application recites:
11. The surgical fixation system as recited in claim 1, wherein the loop includes a spliced suture.
Claim 13 of the Patent recites:
13. The surgical fixation system as recited in claim 1, wherein the reinforcement material includes a suture tape, and the loop includes a spliced suture.
Claim 12 of the Application recites:
12. The surgical fixation system as recited in claim 1, comprising a graft connected to the loop, wherein the graft includes tissue, tendon, ligament, synthetic material, biologic material, bone, or any combination thereof.
Claim 14 of the Patent recites:
14. The surgical fixation system as recited in claim 1, comprising a graft connected to the loop, wherein the graft includes tissue, tendon, ligament, synthetic material, biologic material, bone, or any combination of tissue, tendon, ligament, synthetic material, biologic material and bone.
It is clear that all of the elements of claims 1-12 of the Application are to be found in claims 1-6 and 9-14 of the Patent. The differences between the claims of the Application and the Patent lies in the fact that the application includes less elements/details and is thus more board. The inventions of claims 1-18 of the Patent are in effect a “species” of the “generic” invention of the Application. Se In re Goodman, 29 USPQ2d 2010 (Fed. Circ. 1993). The same reasoning and logic applies to all of the dependent claims which depend from the independent claims. Since claims 1-12 of the Application are anticipated by claims 1-6 and 9-14 of the Patent, they are not patentably distinct from claims 1-6 and 9-14 of the Patent.
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 13-17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Struhl (US 2009/0182335). Regarding claim 13, Struhl discloses a surgical fixation system, comprising a button (50); a loop (58) connected to the button; and a suture tape (60/62) connected to the button (figure 2), wherein the loop and the suture tape are both accommodated within a common set of apertures of the button (figure 2). Regarding claim 14, Struhl discloses a surgical method, comprising performing a primary tissue reconstruction with a surgical fixation system that includes a button (50) and a loop (58) connected to the button (figure 2, 5); and augmenting the primary tissue reconstruction with a reinforcement material (60/62) that is connected to the button and is tensionable separately from the loop (¶33-35). Regarding claim 15, Struhl discloses wherein performing the primary tissue reconstruction includes passing the surgical fixation system through a bone tunnel (26) of a first bone (12); and seating the button of the surgical fixation system onto a cortex of the first bone (figures 4-5, ¶33).
Regarding claim 16, Struhl discloses after passing the surgical fixation system and seating the button, the loop suspends a graft of the surgical fixation system within the bone tunnel, and the button suspends the reinforcement material within the bone tunnel (figures 4-5). Regarding claim 17, Struhl discloses wherein performing the primary tissue reconstruction includes tensioning the graft at a first tension (¶33); and tensioning the reinforcement material at a second tension that is different than the first tension (¶33-35). Regarding claim 19, Struhl discloses fixating the graft to a bone at the first tension (figure 5, ¶33-35); and fixating the reinforcement material to the bone at the second tension (¶33-35, figure 6).
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 20 is rejected under 35 U.S.C. 103 as being unpatentable over Struhl (US 2009/0182335).
Regarding claim 20, Struhl discloses the claimed invention except for the express teaching of the second tension in the reinforcement member being less than the first tension in the loop.
It would have been obvious to one of ordinary skill in the art at the time of filing to have constructed the method of Struhl to have the second tension in the reinforcement member being less than the first tension in the loop as their only a finite number of ways to change the tension between the reinforcement member and the loop. As the reinforcement member or the loop has to have a greater tension for them to have differing tensions from each other.
Allowable Subject Matter
Claim 18 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.
ConclusionAny inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW JAMES LAWSON whose telephone number is (571)270-7375. The examiner can normally be reached Mon - Fri 6:30-3:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at 571-270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW J LAWSON/Primary Examiner, Art Unit 3619
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