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 .
Allowable Subject Matter
Claims 1-16 are allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
Most pertinent prior art, including U.S. Patent Pub. No. 2017/0265774 to Johnson et al., U.S. Patent Pub. No. 2005/0154296 to Lechner et al., and U.S. Patent Pub. No. 2014/0378999 to Crawford et al. disclose a surgical system for robot assisted intervertebral disc prosthesis placement. The system comprises a computing system for storing and processing a 3D model of first and second vertebrae adjacent a disc space and identifying positions of the first and second vertebrae and generating and storing position data for the positions of the first and second vertebrae, a robot, and a plurality of instruments configured to be coupled to the robot. The robot is configured to insert a cutter to the registered location to cut one or more bone cuts in at least one of the first and second vertebrae, and wherein the robot is configured to insert an intervertebral disc prosthesis corresponding in size to the desired size for the intervertebral disc prosthesis to the registered location with an inserter instrument.
The prior art fails to teach or disclose, however, wherein the system includes a first trial instrument configured to be inserted between the first and second vertebrae to obtain an initial registration position, the initial registration position is a desired location for an intervertebral disc prosthesis with respect to the positions of the first and second vertebrae, and the computing system includes an interface including a user-selectable option for selecting one of the plurality of instruments to be sequentially delivered with the robot to the initial registration position.
The prior art fails to teach or disclose, however, wherein the plurality of instruments including a first disc sizer configured to be inserted between the first and second vertebrae at a desired location for the selected intervertebral disc prosthesis with respect to the positions of the first and second vertebrae and wherein the computing system is configured to register position data for the intervertebral disc prosthesis location as a registered location, wherein the robot is configured to insert a second disc sizer and subsequent disc sizers to the registered location and removing the sizer until a desired size for the intervertebral disc prosthesis is determined
Claim Objections
Claim 11 is objected to because of the following informalities: Claim 11 recites “The surgical method of claim 1…” Examiner believes the claim should read “The system of claim 1…” Appropriate correction is required.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of U.S. Patent No. 11,819,424. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present application and granted patent disclose a system for robot assisted intervertebral disc prosthesis placement. The system comprises a computing system for storing and processing the 3D model and the position data, a robot, a plurality of instruments including sizing templates, trials, cutters or placement instruments for intervertebral disc prostheses, wherein each of the plurality of instruments is configured to be coupled to the robot, wherein the plurality of instruments includes a first trial instrument configured to be inserted between the first and second vertebrae to obtain an initial registration position, wherein the initial registration position is a desired location for an intervertebral disc prosthesis with respect to the positions of the first and second vertebrae, and an interface on the computing system, the interface including a user-selectable option for selecting one of the plurality of instruments to be sequentially delivered with the robot to the initial registration position. The robot includes a guiding device which guides a trajectory of the plurality of instruments and provides a depth stop to limit a depth of insertion of the plurality of instruments.
Conclusion
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/CHRISTOPHER J BECCIA/Primary Examiner, Art Unit 3775
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