DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is responsive to the preliminary amendments received on 23 July 2025. Claims 1-7 and 10-18 are currently pending.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Drawings
The drawings received on 23 July 2025 are accepted by the examiner.
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.
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Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,376,850 (see Claim Mapping Table below). 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 Mapping Table
Current Application – 19/278,286
U.S. Patent No. 12,376,850
Claim 1: a surgical staple comprising: a bridge having an upper side, a lower side opposite the upper side, a first end and a second end; and a plurality of legs depending from the lower side of the bridge, including at least a first leg adjacent the first end of the bridge and a second leg adjacent the second end of the bridge, the legs each having tips at opposite ends of the legs relative to the bridge; the bridge further having: a length extending between the first end and the second end, a thickness extending between the upper side and lower side of the bridge and a width extending perpendicular to the length and the thickness, the upper side having a smooth curved surface extending from the first end to the second end of the bridge, the smooth curved surface having a narrowed middle region, a first narrowed region adjacent the first end and a second narrowed region adjacent the second end, the upper side of the bridge having a pair of lateral inclined surfaces on each side of the narrowed middle region of the smooth curved surface, the width including a reduced width portion adjacent the narrowed middle region of the smooth curved surface as compared to a pair of larger width portions disposed on opposite sides of the reduced width portion, and a first extension of the bridge adjacent the first end of the bridge and extending on an opposite side of the first leg relative to the second leg, a second extension of the bridge adjacent the second end of the bridge and extending on an opposite side of the second leg relative to the first leg, wherein the surgical staple has a relaxed configuration, where the bridge is arched, and a tensioned configuration, whereby the bridge is less arched than in the relaxed configuration and the tips of at least two of the legs are further apart as compared to in the relaxed configuration, the surgical staple being biased into the relaxed configuration.
Claim 1: a surgical staple comprising: a bridge having an upper side, a lower side opposite the upper side, a first end and a second end; and a plurality of legs depending from the lower side of the bridge, including at least a first leg adjacent the first end of the bridge and a second leg adjacent the second end of the bridge, the legs each having tips at opposite ends of the legs relative to the bridge; the bridge further having: a length extending between the first end and the second end, a thickness extending between the upper side and lower side of the bridge and a width extending perpendicular to the length and the thickness, the upper side having a smooth curved surface extending from the first end to the second end of the bridge, the smooth curved surface having a narrowed middle region, a first narrowed region adjacent the first end and a second narrowed region adjacent the second end, the width including a reduced width portion adjacent the narrowed middle region of the smooth curved surface as compared to a pair of larger width portions disposed on opposite sides of the reduced width portion, and a first extension of the bridge adjacent the first end of the bridge and extending on an opposite side of the first leg relative to the second leg, a second extension of the bridge adjacent the second end of the bridge and extending on an opposite side of the second leg relative to the first leg, the first extension having a tapering thickness decreasing toward the first end and the second extension having a tapering thickness decreasing toward the second end, the tapering thicknesses being predominately in the upper side as opposed to the lower side of the bridge; wherein the surgical staple has a relaxed configuration, where the bridge is arched, and a tensioned configuration, whereby the bridge is less arched than in the relaxed configuration and the tips of at least two of the legs are further apart as compared to in the relaxed configuration, the surgical staple being biased into the relaxed configuration.
Claim 2: the surgical staple of claim 1, wherein the plurality of legs includes a third leg and a fourth leg, the third leg being disposed between the first leg and the fourth leg, and the fourth leg being disposed between the second leg and the third leg.
Claim 8: the surgical staple of claim 2, wherein the upper side of the bridge includes a pair of lateral inclined surfaces on each side of the narrowed middle region of the smooth curved surface.
Claim 2: the surgical staple of claim 1, wherein the plurality of legs includes a third leg and a fourth leg, the third leg being disposed between the first leg and the fourth leg, and the fourth leg being disposed between the second leg and the third leg.
Claim 2: the surgical staple of claim 1, wherein the plurality of legs includes a third leg and a fourth leg, the third leg being disposed between the first leg and the fourth leg, and the fourth leg being disposed between the second leg and the third leg.
Claims 1-7 and 10-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-13 and 15-18 of U.S. Patent No. 12,376,850 in view of Cheney (U.S. Patent 10,117,647).
Claims 1-7, 9-13 and 15-18 disclose the following:
Claim Mapping Table
Current Application – 19/278,286
U.S. Patent No. 12,376,850
Claim 1: a surgical staple comprising: a bridge having an upper side, a lower side opposite the upper side, a first end and a second end; and a plurality of legs depending from the lower side of the bridge, including at least a first leg adjacent the first end of the bridge and a second leg adjacent the second end of the bridge, the legs each having tips at opposite ends of the legs relative to the bridge; the bridge further having: a length extending between the first end and the second end, a thickness extending between the upper side and lower side of the bridge and a width extending perpendicular to the length and the thickness, the upper side having a smooth curved surface extending from the first end to the second end of the bridge, the smooth curved surface having a narrowed middle region, a first narrowed region adjacent the first end and a second narrowed region adjacent the second end, the upper side of the bridge having a pair of lateral inclined surfaces on each side of the narrowed middle region of the smooth curved surface, the width including a reduced width portion adjacent the narrowed middle region of the smooth curved surface as compared to a pair of larger width portions disposed on opposite sides of the reduced width portion, and a first extension of the bridge adjacent the first end of the bridge and extending on an opposite side of the first leg relative to the second leg, a second extension of the bridge adjacent the second end of the bridge and extending on an opposite side of the second leg relative to the first leg, wherein the surgical staple has a relaxed configuration, where the bridge is arched, and a tensioned configuration, whereby the bridge is less arched than in the relaxed configuration and the tips of at least two of the legs are further apart as compared to in the relaxed configuration, the surgical staple being biased into the relaxed configuration.
Claim 1: a surgical staple comprising: a bridge having an upper side, a lower side opposite the upper side, a first end and a second end; and a plurality of legs depending from the lower side of the bridge, including at least a first leg adjacent the first end of the bridge and a second leg adjacent the second end of the bridge, the legs each having tips at opposite ends of the legs relative to the bridge; the bridge further having: a length extending between the first end and the second end, a thickness extending between the upper side and lower side of the bridge and a width extending perpendicular to the length and the thickness, the upper side having a smooth curved surface extending from the first end to the second end of the bridge, the smooth curved surface having a narrowed middle region, a first narrowed region adjacent the first end and a second narrowed region adjacent the second end, the width including a reduced width portion adjacent the narrowed middle region of the smooth curved surface as compared to a pair of larger width portions disposed on opposite sides of the reduced width portion, and a first extension of the bridge adjacent the first end of the bridge and extending on an opposite side of the first leg relative to the second leg, a second extension of the bridge adjacent the second end of the bridge and extending on an opposite side of the second leg relative to the first leg, the first extension having a tapering thickness decreasing toward the first end and the second extension having a tapering thickness decreasing toward the second end, the tapering thicknesses being predominately in the upper side as opposed to the lower side of the bridge; wherein the surgical staple has a relaxed configuration, where the bridge is arched, and a tensioned configuration, whereby the bridge is less arched than in the relaxed configuration and the tips of at least two of the legs are further apart as compared to in the relaxed configuration, the surgical staple being biased into the relaxed configuration.
Claim 2: the surgical staple of claim 1, wherein the plurality of legs includes a third leg and a fourth leg, the third leg being disposed between the first leg and the fourth leg, and the fourth leg being disposed between the second leg and the third leg.
Claim 2: The surgical staple of claim 1, wherein the plurality of legs includes a third leg and a fourth leg, the third leg being disposed between the first leg and the fourth leg, and the fourth leg being disposed between the second leg and the third leg.
Claim 3: the surgical staple of claim 2, wherein at least two of the first leg, second leg, third leg and fourth leg terminate at a common distal extent from the bridge.
Claim 3: the surgical staple of claim 2, wherein at least two of the first leg, second leg, third leg and fourth leg terminate at a common distal extent from the bridge.
Claim 4: the surgical staple of claim 2, wherein at least two of the first leg, second leg, third leg and fourth leg terminate at different distal extents from the bridge.
Claim 4: the surgical staple of claim 2, wherein at least two of the first leg, second leg, third leg and fourth leg terminate at different distal extents from the bridge.
Claim 5: the surgical staple of claim 2, wherein the first, second, third and fourth legs terminate at a common distal extent from the bridge.
Claim 5: the surgical staple of claim 2, wherein the first, second, third and fourth legs terminate at a common distal extent from the bridge.
Claim 6: the surgical staple of claim 2, wherein the reduced width portion of the width of the bridge is disposed between the third and fourth legs.
Claim 6: the surgical staple of claim 2, wherein the reduced width portion of the width of the bridge is disposed between the third and fourth legs.
Claim 7: the surgical staple of claim 6, wherein the bridge of the surgical staple is more likely to bend at the reduced width portion of the width of the bridge as opposed to i) between the first leg and the third leg; and i) between the second leg and the fourth leg when the surgical staple is moved from the relaxed configuration to the tensioned configuration.
Claim 7: the surgical staple of claim 6, wherein the bridge of the surgical staple is more likely to bend at the reduced width portion of the width of the bridge as opposed to i) between the first leg and the third leg; and i) between the second leg and the fourth leg when the surgical staple is moved from the relaxed configuration to the tensioned configuration.
Claim 10: the surgical staple of claim 1, wherein the lower side of the bridge at the first and second extensions is, in use, abutting a bone and/or tissue.
Claim 15: the surgical staple of claim 1, wherein the lower side of the bridge at the first and second extensions is, in use, abutting a bone and/or tissue.
Claim 11: the surgical staple of claim 1, wherein the first end of bridge and the second end of the bridge are each rounded such that the thickness is decreasing at the first end of the bridge and second end of the bridge.
Claim 16: the surgical staple of claim 1, wherein the first end of bridge and the second end of the bridge are each rounded such that the thickness is decreasing at the first end of the bridge and second end of the bridge.
Claim 12: the surgical staple of claim 2, wherein the lower side of the bridge of the surgical staple has an intermediate smooth surface extending between the third and fourth legs, a first smooth surface extending between the first and third legs and a second smooth surface extending between the second and fourth legs, the first smooth surface and the second smooth surface each having a maximum width less than a maximum width of the intermediate smooth surface.
Claim 9: the surgical staple of claim 2, wherein the lower side of the bridge of the surgical staple has an intermediate smooth surface extending between the third and fourth legs, a first smooth surface extending between the first and third legs and a second smooth surface extending between the second and fourth legs, the first smooth surface and the second smooth surface each having a maximum width less than a maximum width of the intermediate smooth surface.
Claim 13: a method of implanting the surgical staple of claim 1 into one or more bones or bone pieces, the method comprising: drilling holes in the one or more bones or bone pieces for receiving the legs of the surgical staple; moving the surgical staple from the relaxed configuration to the tensioned configuration; inserting the legs of the surgical staple into the holes while the surgical staple is in the tensioned configuration; and allowing the surgical staple to move from the tensioned configuration toward the relaxed configuration and into an installed configuration whereby the surgical staple compresses the one or more bones or bone pieces together.
Claim 17: a method of implanting the surgical staple of claim 1 into one or more bones or bone pieces, the method comprising: drilling holes in the one or more bones or bone pieces for receiving the legs of the surgical staple; moving the surgical staple from the relaxed configuration to the tensioned configuration; inserting the legs of the surgical staple into the holes while the surgical staple is in the tensioned configuration; and allowing the surgical staple to move from the tensioned configuration toward the relaxed configuration and into an installed configuration whereby the surgical staple compresses the one or more bones or bone pieces together.
Claim 14: the method of claim 13, wherein, in the installed configuration, the lower side of the bridge at the first and second extensions is abutting the one or more bones or bone pieces.
Claim 18: the method of claim 17, wherein, in the installed configuration, the lower side of the bridge at the first and second extensions is abutting the one or more bones or bone pieces.
Claim 15: a method of implanting the surgical staple of claim 2 into one or more bones or bone pieces, the method comprising: drilling holes in the one or more bones or bone pieces for receiving the legs of the surgical staple; moving the surgical staple from the relaxed configuration to the tensioned configuration; inserting the legs of the surgical staple into the holes while the surgical staple is in the tensioned configuration; and allowing the surgical staple to move from the tensioned configuration toward the relaxed configuration and into an installed configuration whereby the surgical staple compresses the one or more bones or bone pieces together..
Claim 10: a method of implanting the surgical staple of claim 2 into one or more bones or bone pieces, the method comprising: drilling holes in the one or more bones or bone pieces for receiving the legs of the surgical staple; moving the surgical staple from the relaxed configuration to the tensioned configuration; inserting the legs of the surgical staple into the holes while the surgical staple is in the tensioned configuration; and allowing the surgical staple to move from the tensioned configuration toward the relaxed configuration and into an installed configuration whereby the surgical staple compresses the one or more bones or bone pieces together.
Claim 16: the method of claim 15, wherein, in the installed configuration, the lower side of the bridge at the first and second extensions is abutting the one or more bones or bone pieces.
Claim 11: the method of claim 10, wherein, in the installed configuration, the lower side of the bridge at the first and second extensions is abutting the one or more bones or bone pieces.
Claim 17: the method of claim 15, wherein the step of moving the surgical staple from the relaxed configuration to the tensioned configuration further comprises bending the bridge to a greater amount at the reduced width portion of the width of the bridge as opposed to i) between the first leg and the third leg; and i) between the second leg and the fourth leg when the surgical staple is moved from the relaxed configuration to the tensioned configuration.
Claim 12: the method of claim 10, wherein the step of moving the surgical staple from the relaxed configuration to the tensioned configuration further comprises bending the bridge to a greater amount at the reduced width portion of the width of the bridge as opposed to i) between the first leg and the third leg; and i) between the second leg and the fourth leg when the surgical staple is moved from the relaxed configuration to the tensioned configuration.
Claim 18: the method of claim 15, wherein the step of moving the surgical staple from the relaxed configuration to the tensioned configuration further comprises: contacting a side of the third leg facing the fourth leg with a first operative part of a spreading tool and contacting a side of the fourth leg facing the third leg with a second operative part of the spreading tool; and moving the first operative part of the spreading tool and the second operative part of the spreading tool away from each other to move the surgical staple from the relaxed configuration to the tensioned configuration.
Claim 13: the method of claim 10, wherein the step of moving the surgical staple from the relaxed configuration to the tensioned configuration further comprises: contacting a side of the third leg facing the fourth leg with a first operative part of a spreading tool and contacting a side of the fourth leg facing the third leg with a second operative part of the spreading tool; and moving the first operative part of the spreading tool and the second operative part of the spreading tool away from each other to move the surgical staple from the relaxed configuration to the tensioned configuration.
Claims 1-7, 9-13 and 15-18 disclose the claimed invention except for wherein (as to the remainder of claim 1) the upper side of the bridge has a pair of lateral inclined surfaces on each side of the narrowed middle region of the smooth curved surface
Cheney teaches the use of a surgical staple (210) comprising a bridge (205) having an upper side (230) and a middle region (i.e. region defined at intersection of 225, 226, 227 and 228), wherein the upper side of the bridge has a pair of lateral inclined surfaces (227 and 228) on each side of the middle region (see Figure 11, and column 6, line 16 – column 7, line 25).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the invention of claims 1-7, 9-13 and 15-18 with wherein the upper side of the bridge has a pair of lateral inclined surfaces on each side of the narrowed middle region of the smooth curved surface in view of Cheney in order to provide a well-known, obvious surface allowing for a lower staple profile for less protuberance to a patient’s tissue.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY E WAGGLE, JR whose telephone number is (571)270-7110. The examiner can normally be reached TEAP: Monday - Friday (7:45am - 3:45pm).
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/LARRY E WAGGLE, JR/Primary Examiner, Art Unit 3775
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