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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 10575862. 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.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,349,927. 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 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) 1-3, 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dixon et al. (U.S. Publication No. 2002/0107519).
Dixon discloses a method for preparing one or more bones, the method comprising the steps of: inserting a spacer (31) into a space defined between a first bone and a second bone (Figure 3a-3d); aligning a bone preparation guide (33, 34) with a portion of the first bone or the second bone while the spacer is inserted into the space, using the spacer as a reference (Figure 2); and contacting the portion of the first bone or the second bone with a tissue removing instrument (40) using the bone preparation guide to guide the tissue removing instrument (Figure 8).
Regarding claim 2, the step of inserting the spacer and aligning the bone preparation guide includes first inserting the spacer into the space as a separate component and then engaging the bone preparation guide with the inserted spacer to align the bone preparation guide with the portion of the first bone or the second bone (Figure 3a-3d).
Regarding claim 3, when engaging the bone preparation guide with the inserted spacer includes receiving the spacer within an opening defined in the body of the bone preparation guide while the spacer is inserted into the space (Figure 2).
Regarding claim 5, when contacting the portion of the first bone or the second bone with a tissue removing instrument using the bone preparation guide includes aligning the tissue removing instrument with a guide surface of the bone preparation guide (Figure 8).
Regarding claim 6, the step of inserting the spacer includes positioning a first portion of the spacer within the space such that a central longitudinal axis of the first portion is spaced laterally from a central longitudinal axis of a second portion of the spacer (Figure 2).
Claim(s) 1, 4, 10, 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Keller et al. (U.S. Publication No. 2004/0010259).
Keller et al. discloses a method for preparing one or more bones, the method comprising the steps of: inserting a spacer (36) into a space defined between a first bone and a second bone (Figure 3, 4); aligning a bone preparation guide (30) with a portion of the first bone or the second bone while the spacer is inserted into the space, using the spacer as a reference (Figure 3); and contacting the portion of the first bone or the second bone with a tissue removing instrument (252) using the bone preparation guide to guide the tissue removing instrument (Figure 16).
Regarding claim 4, the step of inserting the spacer and aligning the bone preparation guide includes inserting the spacer into the space while the spacer is engaged with the bone preparation guide (Figure 3).
Keller et al. discloses a device that can be used as a spacer configured to be inserted into a joint space between first and second opposing bones (Figure 33), comprising: a first portion configured to extend into the joint space and a second portion, opposite the first portion (see figure below), configured to extend above the joint space (depending on orientation of patient); and an intermediate portion (see below) disposed between the first portion and the second portion, the spacer configured to serve as a reference to position a tissue removing instrument with respect to the first and/or second bone (Considered capable of since all the structural limitations are met)
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Regarding claim 15, first portion includes a keel (610).
Claim(s) 10-12, 14, 16, 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Steffensmeier (U.S. Publication No. 2006/0036257).
Steffensmeier discloses a spacer configured to be inserted into a joint space between first and second opposing bones (Figure 5), comprising: a first portion (14) configured to extend into the joint space and a second portion (16), opposite the first portion, configured to extend above the joint space (Figure 5, would be “above” if the leg is in a laying down position); and an intermediate portion (34) disposed between the first portion and the second portion, the spacer configured to serve as a reference to position a tissue removing instrument with respect to the first and/or second bone (Figure 10)
Regarding claim 11, the intermediate portion (34) provides a first guide surface on a first side of the spacer (see below) and a second guide surface on a second, opposite side of the spacer, the first and second guide surfaces each defining a plane to guide the tissue removing instrument (considered capable of).
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Regarding claim 12, the intermediate portion (34) has a thickness and the first portion has a thickness, the thickness of the intermediate portion being different than the thickness of the first portion (Figure 1).
Regarding claim 14, the intermediate portion is configured to be engaged with a body of a bone preparation guide (Figure 10).
Regarding claim 16, the second portion includes at least one recess (32).
Regarding claim 17, the first, second, and intermediate portions are integral (Figure 1).
Claim(s) 10, 13, 18, 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Michelson (U.S. Publication No. 2002/0058944).
Michelson discloses a spacer configured to be inserted into a joint space between first and second opposing bones (Figure 10), comprising: a first portion (170, 172) configured to extend into the joint space and a second portion (164), opposite the first portion, configured to extend above the joint space (Figure 10, would be “above” if the patient is in a prone position); and an intermediate portion (74) disposed between the first portion and the second portion, the spacer configured to serve as a reference to position a tissue removing instrument with respect to the first and/or second bone (Figure 12)
Regarding claim 13, a central longitudinal axis of the first portion is spaced from a central longitudinal axis of the second portion (considering each prong 170, 172 has its own central longitudinal axis).
Regarding claim 18, at least the first portion tapers in thickness across its width (Figure 7).
Regarding claim 19, the first portion is defined by at least two pins separated from each other with a gap therebetween (Figure 7).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW YANG whose telephone number is (571)272-3472. The examiner can normally be reached 9:00 - 9:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached on 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW YANG/Primary Examiner, Art Unit 3775
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