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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2, line 9, after “cap assembly”, “configured having” is unclear.
Dependent claims included the limitations of their respective parent claim(s) and therefore also rejected.
Appropriate correction is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lessig et al. (8,523,858) in view of Kimak (4,990,044).
Regarding claim 2, Lessig et al. disclose an external fixator assembly (Figs. 1 and 2) comprising:
a shaft 6 having a longitudinal axis;
a first clamp assembly 2 having a passage 8a, 10a (Figs. 3A, 4A) configured to receive a proximal end of the shaft 6 (Figs. 1 and 2);
a second clamp assembly 4 having a passage 12a, 14a (Figs. 5A, 6A) configured to receive the proximal end of the shaft 6 (Figs. 1 and 2);
a biasing member 130 configured to be disposed along the shaft 6 and between the first clamp assembly 2 and the second clamp assembly 4 (Fig. 2); and
a cap assembly 86 configured to receive the proximal end of the shaft 6 (Figs. 1 and 2) and configured to secure the first clamp assembly 2 and the second clamp assembly 4 to the shaft 6 (id.).
Lessig et al. do not disclose the cap assembly having a capped passage.
Kimak discloses a push-on ratcheting cap assembly 48, 50, 52 (Fig. 8; col. 1, lines 9-10 and 33-53) having a capped 52 passage 73 (Fig. 6). This configuration seals the connection and facilitates efficient push-on assembly that can also be rotated and securely tightened (Figs. 1, 7 and 8; col. 1, lines 9-10 and lines 33-53).
It would have been obvious to a person having ordinary skill in the art before the effective filing date to configure the cap assembly of Lessig et al. as a push-on ratcheting cap assembly having a capped passage, in view of Kimak, to seal the connection and facilitate efficient push-on assembly that can also be rotated and securely tightened.
Regarding claim 3, the biasing member 130 of the combination (supra) is a helical spring (Lessig et al., Fig. 2).
Regarding claim 4, the shaft of the combination (supra) comprises a radially-extending flange 90 (id.).
Regarding claim 5, the distal end of the shaft of the combination (supra) comprises one or more flat surfaces 92 extending proximally of the flange 90 (id.).
Regarding claim 6, when the external fixation assembly of the combination (supra) is fully assembled, the first clamp assembly 2 engages the flange 90 (Lessig et al., Fig. 1) and the second clamp assembly 4 engages the first clamp assembly 2 (id.).
Regarding claim 7, each of the first clamp assembly 2 and the second clamp assembly 4 of the combination (supra) comprises a lower member 8 and 12, respectively, and an upper member 10 and 14, respectively, extending proximally of the respective lower member (Lessig et al., Fig. 2).
Regarding claim 8, the lower member 8 of the first clamp assembly 2 of the combination (supra) comprises a passage 8a (Lessig et al., Fig. 3A) configured to receive the proximal end of the shaft 6 and an internal surface of the passage comprises one or more flat surfaces 96 (id.) configured to engage the one or more flat surfaces 92 of the distal end of the shaft 6 to prevent the lower member 8 of the first clamp assembly 2 from rotating with respect to the shaft 6.
Regarding claim 9, the lower member 8, 12 of each of the first clamp assembly 2 and the second clamp assembly 4, respectively, of the combination (supra) comprises a first u-shaped portion 16, 46 (Figs. 4B, 5B), respectively, configured to receive a portion of a rod (e.g., col. 4, lines 48-65).
Regarding claim 10, the lower member 8, 12 of each of the first clamp assembly 2 and the second clamp assembly 4, respectively, of the combination (supra) comprises a second u-shaped portion 18, 48, respectively, radially disposed away from the first u-shaped portion 16, 46, respectively, and configured to receive a portion of a pin (e.g., col. 6, lines 28-47).
Regarding claim 11, the lower member 8 of the first clamp assembly 2 of the combination (supra) comprises a tang 106/108, the upper member 10 of the first clamp assembly 2 comprises a slot (col. 9, lines 20-42), and the slot is configured to releasably receive the tang to prevent the upper member from rotating relative to the lower member (id.). The second clamp assembly 4 likewise comprises a tang 114/116 and slot on the upper 14 and lower members 12, respectively.
The only difference is the example shown (Fig .2) includes the tang 114/116 on the upper member 14 and the slot on the lower member 12 (id.).
However, this is shown only by way of example (col. 9, lines 20-42) and it would have been obvious to a person having ordinary skill in the art before the effective filing date to include the tang 114/116 on the lower member, and the slot on the upper member 14, of the second clamp assembly 4, as this would be an equivalent and effective structure for preventing relative rotation between the upper and lower members.
Regarding claim 12, the lower member 12 of the second clamp assembly 4 and the upper member 10 of the first clamp assembly 2 of the combination (supra) comprises a spring cavity configured to receive an end of the biasing member 130 (Figs. 2, 4B, 5B; col. 10, lines 1-20)
Regarding claim 13, the cap assembly 48, 50, 52 of the combination (supra at claim 2) comprises a ratchet assembly 50 (Kimak, Figs. 7, 8; col. 1, lines 9-10 and 33-53).
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 2-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 9,872,707.
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences amount to minor changes in the arrangement and phraseology of the claim limitations. The only substantive difference between the application claims and the patent claims resides in the fact that the patent claims include more elements and are more specific (e.g., the external thread on the shaft and the ratcheting buttress). Thus, the invention of the patent claims is 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.
Regarding independent application claim 2, patent claim 1 discloses an external fixator assembly comprising:
a shaft having a longitudinal axis;
a first clamp assembly (plurality of clamp assemblies) having a passage configured to receive a proximal end of the shaft;
a second clamp assembly (plurality of clamp assemblies) having a passage configured to receive the proximal end of the shaft;
a biasing member configured to be disposed along the shaft and between the first clamp assembly and the second clamp assembly; and
a cap assembly configured having a capped passage (adapted to translate along the shaft) configured to receive the proximal end of the shaft and configured to secure the first clamp assembly and the second clamp assembly to the shaft.
The claims of the present application and the issued patent are mapped as follows:
Appl. 19/289,773
Pat. 9,872,707
1 (canceled)
N/A
2
1
3
1
4
2
5
3
6
1
7
5
8
4
9
7
10
7
11
6
12
1
13
1
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (see attached PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID C COMSTOCK whose telephone number is (571)272-4710. The examiner can normally be reached M-F 9:00-5:00 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eduardo Robert can be reached at 571-272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID C. COMSTOCK
Examiner
Art Unit 3773
/DAVID C COMSTOCK/Examiner, Art Unit 3773
/EDUARDO C ROBERT/Supervisory Patent Examiner, Art Unit 3773
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