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 over US Patent 10786286 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).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1 is/are rejected on the ground of nonstatutory double patenting as being anticipated by claim(s) 1-4 of U.S. Patent No. 9364267. 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 19/266701
US Patent 9364267
1. An interspinous fusion device comprising: a first member comprising a column of teeth; a second member comprising a column of recesses adapted to mate with the column of teeth of the first member, said first member and said second member having opposing windows on their walls, and wherein the first member and the second member lock together when the teeth and recesses are mated, said locking occurring without the aid of a set screw, pin or other mechanical component.
Claims 1-4:
Claim 1. An interspinous fusion device comprising: a first member having a ring with two or more anchor assemblies projecting
laterally from substantially opposite sides of said first member ring, the first member
further comprising a first flange and a second flange that each extend transversely and
from opposite sides of the ring, the two flanges facing each other and biased toward one another, wherein each of said first and second flanges comprises a series of teeth
protruding inwardly therefrom; a second member having a ring with two or more anchor assemblies projecting laterally from substantially opposite sides of said second member ring, the second member further comprising a barrel extending transversely from the second member ring wherein the barrel comprises a first column of recesses adapted to mate with the teeth of the first flange and a second column of recesses adapted to mate with the teeth of the
second flange, wherein the barrel has openings on opposite sides of the barrel in between the first and second column such that when the first member is mated with the second member there are no other mechanical components within the barrel such that an unobstructed passage is formed through which bone graft material can extend; wherein the first member is adapted to slide over the barrel of the second member
such that the series of teeth of the first flange mates with the recesses in the first column
of recesses of the barrel and the series of teeth of the second flange mates with the
recesses in the second column of recesses of the barrel, the bias of the two flanges further causing the two flanges to compress down onto the barrel to form a compression lock with the barrel without the aid of a set screw, a pin, or other mechanical component.
Claim(s) 1 is/are rejected on the ground of nonstatutory double patenting as being anticipated by claim(s) 1 of U.S. Patent No. 10213233. 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 19/266701
US Patent 10213233
1. An interspinous fusion device comprising: a first member comprising a column of teeth; a second member comprising a column of recesses adapted to mate with the column of teeth of the first member, said first member and said second member having opposing windows on their walls, and wherein the first member and the second member lock together when the teeth and recesses are mated, said locking occurring without the aid of a set screw, pin or other mechanical component.
Claim 1. An interspinous fusion device comprising: a first member having a ring with two or more anchor assemblies projecting laterally from substantially opposite sides of said first member ring, the first member further comprising two columns of teeth formed integrally with the first member; a second member having a ring with two or more anchor assemblies projecting laterally
from substantially opposite sides of said second member ring, the second member further comprising one or more hollow barrels and at least two columns of recesses, said two columns of recesses adapted to mate with the two columns of teeth of the first member, said one or more barrels having opposing window passageways in between the two columns of recesses, such that
when the first member is mated with the second member there are no other mechanical components within the one or more barrels such that an unobstructed passage is formed through the window passageways through which bone graft material can extend, and wherein the first
member and the second member lock together when the teeth and recesses are mated, said locking occurring without the aid of a set screw, pin or other mechanical component.
Claim(s) 1 is/are rejected on the ground of nonstatutory double patenting as being anticipated by claim(s) 1 of U.S. Patent No. 11786275. 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 19/266701
US Patent 11786275
1. An interspinous fusion device comprising: a first member comprising a column of teeth; a second member comprising a column of recesses adapted to mate with the column of teeth of the first member, said first member and said second member having opposing windows on their walls, and wherein the first member and the second member lock together when the teeth and recesses are mated, said locking occurring without the aid of a set screw, pin or other mechanical component.
Claim 1. An interspinous fusion device comprising: a first member comprising at least one column of teeth formed integrally with the first member; a second member comprising a barrel with at least one column of recesses, said at least one column of recesses adapted to mate with said at least one column of teeth of the first member, said barrel having opposing window passageways on its wall, such that when the first member is mated with the second member there are no other mechanical components within the barrel such that an unobstructed passage is formed through the window passageways, and wherein the first member and the second member lock together when the teeth and recesses are mated, said locking occurring without the aid of a set screw, pin or other mechanical component.
Claim(s) 1 is/are rejected on the ground of nonstatutory double patenting as being anticipated by claim(s) 1 of U.S. Patent No. 12376890. 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 19/266701
US Patent 12376890
1. An interspinous fusion device comprising: a first member comprising a column of teeth; a second member comprising a column of recesses adapted to mate with the column of teeth of the first member, said first member and said second member having opposing windows on their walls, and wherein the first member and the second member lock together when the teeth and recesses are mated, said locking occurring without the aid of a set screw, pin or other mechanical component.
Claim 1. An interspinous fusion device comprising: a first member comprising a column of teeth; a second member comprising a column of recesses adapted to mate with the column of teeth of the first member, said first member and said second member having opposing windows on their walls, such that when the first member is mated with the second member an unobstructed passage is formed through the opposing windows, and wherein the first member and the second member lock together when the teeth and recesses are mated, said locking occurring without the aid of a set screw, pin or other mechanical component.
Thus, the invention of US Patents 9364267 (claims 1-4), 10213233 (claim 1), 11786275 (claim 1) and 12376890 (claim 1), 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.
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:
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 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Ye (CN 101129271A).
With respect to claim 1, Ye discloses an interspinous fusion device (30) comprising: a first member (32) comprising a column of teeth (321); a second member (31) comprising a column of recesses (315) adapted to mate with the column of teeth of the first member (see fig. 2a below), said first member and said second member having opposing windows on their walls (see fig. 2a below), and wherein the first member and the second member lock together when the teeth and recesses are mated, said locking occurring without the aid of a set screw, pin or other mechanical component (see fig. 2a below).
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20120239089 (fig. 3-5)
US 20110066186 (fig. 1-2)
US 8636771 (fig. 4)
US 6432108 (fig. 2, 4)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tara Carter whose telephone number is (571) 272-3402. The examiner can normally be reached on M-F 7am-3pm.
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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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