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 .
Claim Objections
Claim 10 is objected to because of the following informalities: Applicant uses the term “the housing 20 is integral. This should read, “the housing is integral”. 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.
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Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 11-16 of U.S. Patent No. 12,402,895. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of the Application recites:
1. A surgical guidance device comprising: a housing; a differential control assembly located within the housing, the differential control assembly comprising: a support shaft having a proximally positioned drive connector engageable with a powered driving device; a distally positioned tool connector attachable to a driver tool guide; a screw gear and a chuck, wherein the screw gear and the chuck are releasably engagable to direct rotational movement of the screw gear when the chuck is engaged therewith; and a threaded carriage translatable along the support shaft for directing proximal or distal movement of a guidewire through the differential control assembly, the threaded carriage including at least one positive stop limiting the proximal and distal translation of the carriage within the housing; wherein the differential control assembly is cannulated for passage of the guidewire therethrough and aligned along a common axis with the housing; and an actuator assembly comprising: a chuck mover; a handle operably attached to the chuck mover to actuate engagement of the chuck with the screw gear; a directional actuator actuating movement of the carriage proximally or distally; a thread guide; and a carriage lock releasably engaging the thread guide with the threaded carriage, wherein engagement thereof permits proximal or distal movement of the threaded carriage along the support shaft to effect proximal or distal movement of the guidewire; wherein the differential control assembly is actuatable to first drive the guidewire into a target site by engagement of the carriage lock with the carriage to direct distal movement of the guidewire, the depth thereof being governed by the at least one positive stop, and to then differentially drive a screw affixed to the surgical guidance device by actuating the handle to engage the chuck with the screw gear.
Claim 1 of Patent 12,402,895 recites:
1. A surgical guidance device (10) that comprises: a. a differential control assembly (50) that is cannulated for passage of a guidewire (15) therethrough, and aligned along a common axis with and within a housing (20), the differential control assembly (50) including a support shaft (51) having a proximally positioned drive connector (59) for engagement with a powered driving device (500), and a distally positioned tool connector (52) configured for attachment of a driver tool guide (200), a screw gear (53) and a chuck (54) that are releasably engagable to direct rotational movement of the screw gear (53) when the chuck (54) is engaged therewith, and a threaded carriage (55) translatable along the support shaft (51) for directing proximal or distal movement of the guidewire (15) through the differential control assembly (50), the threaded carriage (55) including at least one positive stop (57) which limits the proximal and distal translation of the carriage (55) within the housing (20), and b. an actuator assembly (29) including a handle (42) operably attached to a chuck mover (43) for actuating engagement of the chuck (54) with the screw gear (53), a directional actuator (30) for actuating movement of the carriage (55) proximally or distally, and a carriage lock (31) configured to releasably engage a thread guide (32) with the threaded carriage (55) wherein engagement thereof permits proximal or distal movement of the threaded carriage (55) along the support shaft (51) to effect proximal or distal movement of the guidewire (15), wherein the differential control assembly (50) is actuatable to first drive the guidewire (15) into a target site by engagement of the carriage lock (31) with the carriage (55) to direct distal movement of the guidewire (15), the depth thereof being governed by the at least one positive stop (57), and to differentially drive a screw affixed to the surgical guidance device (10) by actuating the handle (42) to engage the chuck (54) with the screw gear (53), and wherein the guidewire (15) is constructed from a material having sufficient column strength for penetrating a bone.
Claim 2 of the Application recites:
2. A surgical guidance device comprising: a housing comprising a center drive barrel, a proximal end, a distal end opposite the proximal end, and a hand grip extending radially from the center drive barrel near the proximal end, the proximal end being adapted for securing the housing to a powered driving device; a differential control assembly contained in the center drive barrel, the differential control assembly comprising: a support shaft comprising a drive connector proximally positioned for engagement with the powered driving device and a tool connector distally positioned and configured for attachment of a driver tool guide; a screw gear; a chuck releasably engaging the screw gear to direct rotational movement of the screw gear when engaged therewith; and a threaded carriage translatable along the support shaft and directing proximal or distal movement of a guidewire through the differential control assembly, the threaded carriage comprising at least one positive stop limiting a proximal translation and a distal translation of the threaded carriage within the housing; wherein the differential control assembly is cannulated for passage of a guidewire therethrough and aligned along a common axis with and within the center drive barrel of the housing, and an actuator assembly comprising: a chuck mover releasably engaging the screw gear; a handle extending radially from the housing and operably attached to the chuck mover and actuating engagement of the chuck with the screw gear; a directional actuator actuating movement of the threaded carriage proximally or distally; a thread guide; and a carriage lock releasably engaging the thread guide with the threaded carriage wherein engagement thereof permits proximal or distal movement of the threaded carriage along the support shaft to effect proximal or distal movement of the guidewire; wherein the differential control assembly is actuatable to first drive the guidewire into a target site by engagement of the carriage lock with the threaded carriage to direct distal movement of the guidewire, the depth thereof being governed by the at least one positive stop, and to then differentially drive a screw affixed to the surgical guidance device by actuating the handle to engage the chuck with the screw gear.
Claim 2 of Patent 12,402,895 recites:
2. A surgical guidance device (10) comprising: a. a housing (20) having a proximal end (21), a center drive barrel (24), and a distal end (22), the proximal end (21) adapted with a hand grip (40) for gripping the surgical guidance device (10), the center drive barrel (24) configured to contain a differential control assembly (50) housed therein, the proximal end (21) of the housing (20) adapted for securing the housing (20) to a powered driving device (500), b. the differential control assembly (50) being cannulated for passage of a guidewire therethrough, and aligned along a common axis with and within the housing (20), the differential control assembly (50) including a support shaft (51) having a proximally positioned drive connector (59) for engagement with the powered driving device (500), and a distally positioned tool connector (52) configured for attachment of a driver tool guide (200), a screw gear (53) and a chuck (54) that are releasably engagable to direct rotational movement of the screw gear (53) when the chuck (54) is engaged therewith, a threaded carriage (55) translatable along the support shaft (51) for directing proximal or distal movement of the guidewire (15) through the differential control assembly (50), the threaded carriage (55) including at least one positive stop (57) which limits the proximal and distal translation of the carriage (55) within the housing (20), and c. an actuator assembly (29) including a hand grip (40) including a handle (42) operably attached to a chuck mover (43) for actuating engagement of the chuck (54) with the screw gear (53), a directional actuator (30) for actuating movement of the carriage (55) proximally or distally, and a carriage lock (31) configured to releasably engage a thread guide (32) with the threaded carriage (55) wherein engagement thereof permits proximal or distal movement of the threaded carriage (55 along the support shaft (51) to effect proximal or distal movement of the guidewire (15), wherein the differential control assembly (50) is actuatable to first drive the guidewire (15) into a target site by engagement of the carriage lock (31) with the carriage (55) to direct distal movement of the guidewire (15), the depth thereof being governed by the at least one positive stop (57), and to differentially drive a screw affixed to the surgical guidance device (10) by actuating the handle (42) to engage the chuck (54) with the screw gear (53), and wherein the directional actuator (30) is actuated to direct the guidewire (15) to move distally, and is released to retract the guidewire to move proximally, wherein displacement of the guidewire (15) is governed by the at least one positive stop (57), and wherein retraction of the guidewire (15) with the directional actuator (30) thereby differently permits distally directed driving of only the screw gear (53).
Claim 5 of the Application recites:5.The surgical guidance device according to claim , wherein the differential control assembly includes a connector for securing to a powered driving device such as a drill or power drill.
Claim 5 of Patent 12,402,895 recites:5. The surgical guidance device (10) according to claim 1 wherein the differential control assembly (50) includes a connector (51) for securing to the powered driving device (500) and the powered driving device is a drill or power drill.
Claim 11 of the Application recites:
13. The surgical guidance device according to claim 1 wherein the at least one positive stop is at least one ring that interferes within the housing to limit movement of the threaded carriage.
Claim 13 of Patent 12,405,895 recites: 13. The surgical guidance device (10) according to claim 1 wherein the at least one positive stop is at least one ring that interferes within the housing to limit movement of the carriage (55).Claim 12 of Application recites: 14. The surgical guidance device (10) according to claim 1 wherein at least one positive stop includes two or more rings oriented proximally and distally relative to the threaded carriage (55).
Claim 14 of Patent 12, 405,895 recites:
14. The surgical guidance device (10) according to claim 1 wherein at least one positive stop includes two or more rings oriented proximally and distally relative to the carriage (55).
Claim 13 of the Application recites: 15. The surgical guidance device according to claim 1 wherein the positive stop is a sleeve that encloses the threaded carriage to thereby limit its translation.
Claim 15 of Patent 12,405,895 recites:15. The surgical guidance device (10) according to claim 1 wherein the positive stop is a sleeve that encloses the carriage (55) to thereby limit its translation.
Claims 3-8, 9-10 and 14 which depend from claim 1 and are verbatim or nearly verbatim will not be copied for brevity.
It is clear that all of the elements of claims 1, 8 and 15 of the Application are to be found in claims 1, 8 and 15 of the Patents. The differences between the claims of the Application and the Patents lines 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 1-14 of the Application are anticipated by claims 1-8 and 11-16 of the Patent, they are not patentably distinct from claims 1-8 and 11-16 of the Patent.
Conclusion
Any 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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/MATTHEW J LAWSON/Primary Examiner, Art Unit 3619
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