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 25 is objected to because of the following informalities: the claim recites the limitation “said cylindrically shaped top counterbore extends from said top surface to said first surface; said cylindrically shaped top counterbore has a uniform diameter along a majority of the longitudinal length of said cylindrically shaped top counterbore; said cylindrically shaped top counterbore extends from said top surface to said first surface; said cylindrically shaped top counterbore has a uniform diameter along a majority of the longitudinal length of said cylindrically shaped top counterbore” in lines 1-12 which is believed should recite “said cylindrically shaped top counterbore extends from said top surface to said first surface; said cylindrically shaped top counterbore has a uniform diameter along a majority of the longitudinal length of said cylindrically shaped top counterbore;”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 25-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wolter (US Patent 6974461B1).
Wolter recites a screw locking receiver. Specifically in regards to claims 25, Wolter recites a screw receiver frame (26 in plate 24) having a top surface (top surface of 26), a bottom surface (bottom surface of 26), a first surface, a second surface opposite and spaced apart from the first surface, and an inner surface which extends between the first and second surfaces (inner surface of 26/27) and defines a cylindrical inner channel (channel of 26) having a central axis (axis through 26/27 shown in Fig. 3); a cylindrically shaped top counterbore (see Fig. 3) and a cylindrically shaped bottom counterbore (See Fig. 3); said first surface spaced downwardly from said top surface (top of 26); aid second surface is spaced upwardly from said bottom surface (inner wall of lower counterbore, Fig. 3); said inner surface includes a threaded region (28/29, fig. 3 and Col. 2 lines 50-51); said cylindrically shaped top counterbore extends from said top surface to said first surface (Fig. 3); said cylindrically shaped top counterbore has a uniform diameter along a majority of the longitudinal length of said cylindrically shaped top counterbore (Fig. 3); said cylindrically shaped top and bottom counterbores are absent threading (Fig. 3); said threaded region extends helically about at least a portion of said inner surface (28/29 Fig. 3); a top of said threaded region terminates at a bottom surface of said cylindrically shaped top counterbore (Fig. 3); a bottom of said threading terminations at a top surface of said cylindrically shaped bottom counterbore (Fig. 3); a maximum diameter of said threaded portion is less than a maximum diameter of said cylindrically shaped top or bottom counterbores (Fig. 3).
In regards to claim 26, Wolter recites wherein the depth of said cylindrically shaped top counterbore is sufficient to a) provide a flush surface between said first surface and a top portion of the screw head that is positioned furthest from said second surface when the screw is in the fastened position and a longitudinal axis is parallel to a central axis of said cylindrically shaped top counterbore, or b) a top portion of the screw is spaced downwardly from said first surface when the screw is in the fastened position and a longitudinal axis is parallel to a central axis of said cylindrically shaped top counterbore (The bore 26 is fully capable of accepting a screw at an angle within bore 26.) (Fig. 1 and 3).
In regards to claim 27, Wolter wherein the first portion of the inner surface has a diameter that is about 10 percent larger than a diameter of the second portion of the inner surface (As can be seen in Fig. 3 the top and bottom bore is larger than the deformable portion 28.) (Fig. 3).
Claim(s) 25-30, 32-34, 36-37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lai et al (WO2020/102179A1).
Lai recites a screw locking receiver. Specifically in regards to claims 25, Lai recites a screw receiver frame (14/14’ in plate) having a top surface (11), a bottom surface (8), a first surface (top surface of 14/14’), a second surface (bottom surface of 14/14’) opposite and spaced apart from the first surface, an inner surface (inner surface of 14/14’) which extends between the first and second surfaces (top and bottom surfaces of 14/14’) and defines a cylindrical inner channel (channel of 14/14’) having a central axis (axis through 14/14’ shown in Fig. 12), a cylindrically shaped top counterbore (top bore of 14/14’ see fig. 12), and a cylindrically shaped bottom counterbore (bottom bore of 14/14’, see Fig.12); said first surface is spaced downwardly from said top surface; said second surface is spaced upwardly from said bottom surface; said inner surface includes a threaded region (13 having 79); said cylindrically shaped top counterbore (top bore of 14/14’) extends from said top surface to said first surface; said cylindrically shaped top counterbore (top bore of 14/14’) has a uniform diameter along a majority of the longitudinal length of said cylindrically shaped top counterbore (top bore of 14/14’, see Fig. 12); said cylindrically shaped top counterbore (top bore of 14/14’) is absent threading (Fig. 12); said cylindrically shaped bottom counterbore (bottom bore of 14/14’) is absent threading (Fig. 12); said threaded region (13 having 79) extends helically about at least a portion of said inner surface (portion between two counterbores, Fig. 11-12 and para. [0039],[0041]); a top of said threaded region terminates at a bottom surface of said cylindrically shaped top counterbore (Fig. 12); a bottom of said threading terminations at a top surface of said cylindrically shaped bottom counterbore (Fig. 12); a maximum diameter of said threaded portion (13 having 79) is less than a maximum diameter of said cylindrically shaped top and bottom counterbores (Fig. 12).
In regards to claim 26, Lai recites wherein a depth of said cylindrically shaped top counterbore (top bore of 14/14’) is sufficient to a) provide a flush surface between said first surface and a top portion of the screw head that is positioned furthest from said second surface when the screw is in the fastened position and a longitudinal axis is parallel to a central axis of said cylindrically shaped top counterbore (Fig. 11), or b) a top portion of the screw is spaced downwardly from said first surface when the screw is in the fastened position and a longitudinal axis is parallel to a central axis of said cylindrically shaped top counterbore (The bore 14/14’ is fully capable of accepting a screw at an angle within bore 14/14’.) (Fig. 11-12).
In regards to claim 27, Lai recites wherein the first portion of the inner surface has a diameter that is about 10 percent larger than a diameter of the second portion of the inner surface (As can be seen in Fig. 12 the top and bottom bores is larger than the annulus 13.) (Fig. 12).
In regards to claim 28, Lai recites wherein the threaded region (13) includes first, and second threads (79); the first and second threads (79) are helically shaped; the first and second threads (79) are spaced from one another; a lead of each of the first and second threads (79) starts at that top of the threaded region (13); the leads of the first and second threads (79) terminate at said top surface of said cylindrically shaped bottom counterbore (Fig. 12; and Para. [0030]).
In regards to claim 29, Lai recites wherein respective leads of said first and second threads are diametrically spaced apart from one another about a top of said inner surface (Fig. 4).
In regards to claim 30, Lai recites wherein the screw locking receiver is composed of alloy that comprises Molybdenum, Titanium, Chromium, Cobalt, Nickel, Niobium, Tantalum, or Rhenium (Lai recites that the plate can be composed of titanium.) (Para. [0043]).
In regards to claim 32, Lai recites a bone screw system comprising: a screw locking receiver according to claim 25 (see above). A bone screw (16’) comprising a cylindrical section (portion below neck 28’) having a first end, a second end, and a screw body (body of screw 16’) having an outer surface which extends between the first end and the second end, and having a helical thread which extends axially about the outer surface of the screw body; and a head section (portion above neck 28’) having a first surface (surface adjacent top surface of plate), a second surface which is opposite and spaced apart from the first surface (surface adjacent top surface of plate), and an outer diameter, wherein the second surface of the screw head is coupled to the first end of the cylindrical section of the screw (16’), wherein the screw locking receiver (14/14’ in plate) and the bone screw (16’) are configurable into a coupled position (Fig. 11-12; and Para. [0041]).
In regards to claim 33, Lai recites wherein said cylindrical section (portion below neck 28’) of said bone screw (16’) is disposed at least partially in said cylindrical inner channel (channel of 14/14’) of said screw locking receiver when in said coupled position (Fig. 11).
In regards to claim 34, Lai recites wherein at least a portion of said head section of said bone screw (16’) is at least partially disposed within said cylindrically shaped top counterbore (top bore of 14/14’) when in said coupled position (Fig. 11).
In regards to claim 36, Lai recites wherein a portion of said first surface (top surface adjacent top surface of plate) of said bone screw (16’) that is furthest away from said second surface of said screw locking receiver is flush with said first surface of said screw locking receiver (Fig. 11).
In regards to claim 37, Lai recites wherein a central axis of said bone screw (16’) is not parallel with said central axis of said screw locking receiver (The bore 14/14’ is fully capable of accepting a screw 16’ at an angle within bore 14/14’.) (Fig. 11-12).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lai in view of Carlen (US Patent 5437744).
Lai discloses a screw locking receiver having top and bottom surfaces with two counterbores with an intermediate portion having a plurality of threads in between. In regards to claims 31, Lai discloses that the components can be composed of composed of titanium, stainless steel, and cobalt based alloys (Para. [0043]). However, the reference is silent as to wight distribution of the material of the composition.
Carlen in regards to claims 31recites wherein the screw locking receiver is composed of alloy that comprises Molybdenum and Rhenium, and at least one of Cobalt, Chromium, Niobium, Tantalum, or Titanium, and wherein the alloy comprises less than 50% Molybdenum by weight, less than 50% Rhenium by weight, and from 1% to 20% of at least one of Cobalt, Chromium, Niobium, Tantalum, or Titanium by weight (Carlen recites that the alloy according to the invention consists essentially, in % by weight, of 42 up to;45% Re, up to 3%, preferably up to 1% each of W, Y, Rh, Sc, Si, Ta, Tb, Vb, V or Zr, at which the sum of said elements is no greater than about 5%, preferably 3%, the remainder being Mo besides normally present impurities.) (Col. 2 lines 15-26). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the components of Lai to be a specific MoRe as taught in Carlen in order to have a material that simultaneously improves strength, plasticity and weldability; lowers the ductile-to-brittle transition temperature of wrought products; and reduces the degree of recrystallization embrittlement (Col. 1 lines 15-21).
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.
Claim 25-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 13-14 of U.S. Patent No. 12440253B2, referred herein as Pat. ‘253. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 25-26 and 28-29 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 of Pat. ‘253. Pat. ‘253 recites a receiver frame having a top surface, a bottom surface, a first surface, a second surface opposite and spaced apart from the first surface, an inner surface which extends between the first surface and said second surface and defines a cylindrical inner channel having a central axis [claim 1 Col. 8 lines 2-7], a cylindrically shaped top counterbore [claim 1 Col. 8 lines 8], and a cylindrically shaped bottom counterbore [claim 2 ]; said first surface is spaced downwardly from said top surface [claim 1 Col. 8 lines 9-14]; said second surface is spaced upwardly from said bottom surface [claim 1 Col. 8 lines 9-14]; said inner surface includes a threaded region [claim 1 Col. 8 lines 15-18]; said cylindrically shaped top counterbore extends from said top surface to said first surface, said cylindrically shaped top counterbore has a uniform diameter along a majority of the longitudinal length of said cylindrically shaped top counterbore [claim 1 Col. 8 lines 8-14]; said cylindrically shaped top counterbore is absent threading and said cylindrically shaped bottom counterbore is absent threading [claim 1 Col. 8 lines 15-18 and claim 2]; said threaded region extends helically about at least a portion of said inner surface [claim 1 Col. 8 lines 15-18]; a top of said threaded region terminates at a bottom surface of said cylindrically shaped top counterbore and a bottom of said threading terminations at a top surface of said cylindrically shaped bottom counterbore [claim 1 Col. 8 lines 15-18 and 35-44]; a maximum diameter of said threaded portion is less than a maximum diameter of said cylindrically shaped top counterbore; said maximum diameter of said threaded portion is less than a maximum diameter of said cylindrically shaped bottom counterbore [claim 2 and claim 1 Col. 8 lines 23-24]; and wherein the threaded region includes first and second threads that are helically spaced apart from one another, and first and second threads are positioned diametrically apart [claim 1 Col. 8 lines 35-44]; and wherein a depth of said cylindrically shaped top counterbore is sufficient to a) provide a flush surface between said first surface and a top portion of the screw head that is positioned furthest from said second surface when the screw is in the fastened position and a longitudinal axis is parallel to a central axis of said cylindrically shaped top counterbore, or b) a top portion of the screw is spaced downwardly from said first surface when the screw is in the fastened position and a longitudinal axis is parallel to a central axis of said cylindrically shaped top counterbore [claim 1 Col. 8 lines 24-34].
Claim 27 and 30-31 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 13-14 of Pat. ‘253 for reciting substantially similar limitations.
Allowable Subject Matter
Claim 35 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELA I SHIRSAT whose telephone number is (571)270-5269. The examiner can normally be reached M-F 9:00am-5:30pm MST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARCELA I. SHIRSAT/ Primary Examiner, Art Unit 3775
Prosecution Insights