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 .
Response to Arguments
Applicant argues in the response filed 12/19/2025 that previous rejections and objections with respect to claim 1 are moot since claim 1 has been canceled. The examiner agrees.
The applicant fails to argue with respect to the double patenting rejections. The double patent rejections are maintained below.
New claim objections and 112 rejections have been made below with respect to the new claims.
Claim Objections
Claim 13 is objected to because of the following informalities: In order to avoid any antecedent issues, the limitation “the anterior-posterior plane” in line 13 should be “an . Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4, 6-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 is directed to “one rod of the first set of rods has a larger surface area than an adjacent rod of the first set of rods”. Paragraph 66 states that select rods can be formed with larger diameter than peripheral rods and paragraph 67 of the specification does state that rod 102 has a larger surface area than rods 101, 103 but does not state that the rods are necessarily adjacent. Figures 9, 13, 14 also shows a rod having a larger surface area. However, having the larger surface area rod being adjacent to other rod is unclear. The rods in the figures are spaced along an arcuate pattern where the larger rods may not be exactly “next to” or adjacent to other rods but radially spaced. Further the spacing of the rods in paragraph 66 is unclear so the scope of “adjacent” is not defined. There is support that one rod can have a larger surface area than other rods but how the rod is “adjacent” to other rods is unclear. Since the scope of “adjacent” is unclear the limitation is considered to be new matter. It is suggested the term “adjacent” to be deleted.
Claim 6 is directed to the first set of rods comprise first, second, third and fourth rods. Claim 2 is dependent off of claim 2 which claims at least one rod of the first set of rods has a non-cylindrical shape. The specification of the application as originally filed supports at least one first is arcuate (non-cylindrical) in the embodiment of figures 8-11, paragraph 67. However, the embodiment of figure 8-11 (which supports a rod having a non-cylindrical shape) has only three first rods, not four. It is to be noted paragraph 53 does state the “a first set of elongated members or rods 100…the geometry of these elongated members can vary”. However it is unclear if “the first set of rods can vary” will be able to support the statement “non-cylindrical” and that the first set of rods can include four rods where at least one of the first set of rods is non-cylindrical. Therefore the limitation is considered to be new matter.
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 2-6, 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,896,215 in view of U.S. Patent Publication 2007/0198037 to Deland
As to the instant application’s claim 2, the reference patent claims an Achilles tendon repair device (claim 1) comprising: a handle (claim 1) having a first end and a second end (claim 1), defining a length along a longitudinal axis therebetween (claim 1), a base (claim 1) coupled to the first end of the handle; a first set of rods (claim 1) extending from the base, the first set of rods distributed in an arcuate pattern about the base (claim 3), a suture needle housing guide (claim 1), the suture needle housing guide having opposing sidewalls (claim 1), at least one side wall configured to receive a suture needle (claim 1), and a second set of rods (claim 1) extending from the base, the second set of rods configured to receive the suture needle housing guide (claim 1), the second set of rods including at least one pair of rods extending parallel to each other and spaced from the first set of rods (claim 1). However, the reference patent is silent about the at least one rod of the first set of rods has a non-cylindrical shape.
Deland teaches a similar (suture guide, abstract) having one rod which has a non-cylindrical shape for the purpose of facilitating contact between the rod and tissue (figure 1, paragraph 18). Deland further teaches a first set of rods being distributed in an arcuate pattern about the base (figure 17, 17a). It would have been obvious to one of ordinary skill in the art before the effective filing date to have at least one rod of the first set of rods of the reference patent have a non-cylindrical shape in order for facilitating contact between the rod and tissue.
As to the instant application’s claim 3, see teaching reference (figure 1).
As to the instant application’s claim 4, see teaching reference (figure 11-13).
As to the instant application’s claim 5, see reference patent claim 1.
As to the instant application’s claim 6, see reference patent claim 6. Teaching reference Deland also reads on the arcuate pattern (figure 17a) instead of relying on the reference patent claim 3. Therefore, the reference patent claim tree with respect to claim 6 can read on the instant application’s claim 6.
As to the instant application’s claim 9, see teaching reference (figure 11-13). If there are only 2 rods, they will be equidistantly spaced.
As to the instant application’s claim 10, see reference patent claim 7. Teaching reference Deland also reads on the arcuate pattern (figure 17a) instead of relying on the reference patent claim 3. Therefore, the reference patent claim tree with respect to claim 7 can read on the instant application’s claim 10.
As to the instant application’s claim 11, see teaching reference (figure 1, 7). Deland teaches a side wall of a rod with a plurality of apertures for the purpose of passing the suture through tissue as desired without hitting the other bars (paragraph 19-22). It would have been obvious to one of ordinary skill in the art before the effective filing date to have the reference patent using a plurality of aperture in order for passing the suture through tissue as desired.
As to the instant application’s claim 12, see teaching reference figure 7. The apertures are at different heights as viewed in figure 7.
Claims 2-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,390,212 in view of U.S. Patent Publication 2007/0198037 to Deland.
As to the instant application’s claim 2, the reference patent claims an Achilles tendon repair device (claim 1) comprising: a handle (claim 1) having a first end and a second end (claim 1), defining a length along a longitudinal axis therebetween (claim 1), a base (claim 1) coupled to the first end of the handle; a first set of rods (claim 1) extending from the base, the first set of rods distributed in an arcuate pattern about the base (claim 1), a suture needle housing guide (claim 1), the suture needle housing guide having opposing sidewalls (claim 1), at least one side wall configured to receive a suture needle (claim 1), and a second set of rods (claim 1) extending from the base, the second set of rods configured to receive the suture needle housing guide (claim 1), the second set of rods including at least one pair of rods extending parallel to each other and spaced from the first set of rods (claim 1). However, the reference patent is silent about the at least one rod of the first set of rods has a non-cylindrical shape.
Deland teaches a similar (suture guide, abstract) having one rod which has a non-cylindrical shape for the purpose of facilitating contact between the rod and tissue (figure 1, paragraph 18). It would have been obvious to one of ordinary skill in the art before the effective filing date to have at least one rod of the first set of rods of the reference patent have a non-cylindrical shape in order for facilitating contact between the rod and tissue.
As to the instant application’s claim 3, see teaching reference (figure 1).
As to the instant application’s claim 4, see teaching reference (figure 11-13).
As to the instant application’s claim 5, see reference patent claim 10.
As to the instant application’s claim 6, see reference patent claim 2.
As to the instant application’s claim 7, see reference patent claim 3.
As to the instant application’s claim 8, see reference patent claim 4.
As to the instant application’s claim 9, see reference patent claim 2.
As to the instant application’s claim 10, see reference patent claim 6.
As to the instant application’s claim 11, see teaching reference (figure 1, 7). Deland teaches a side wall of a rod with a plurality of apertures for the purpose of passing the suture through tissue as desired without hitting the other bars (paragraph 19-22). It would have been obvious to one of ordinary skill in the art before the effective filing date to have the reference patent using a plurality of aperture in order for passing the suture through tissue as desired.
As to the instant application’s claim 12, see teaching reference figure 7. The apertures are at different heights as viewed in figure 7.
Claim 13-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,390,212. Although the claims at issue are not identical, they are not patentably distinct from each other because, as to the instant application’s claim 13, the reference patent claims an Achilles tendon repair device (claim 12) comprising: a handle (claim 12) having a first end and a second end (claim 12), defining a length along a longitudinal axis therebetween (claim 12), a base (claim 12) coupled to the first end of the handle; a first set of rods (claim 12) extending from the base, the first set of rods distributed in an arcuate pattern about the base (claim 12), a suture needle housing guide (claim 12), the suture needle housing guide having opposing sidewalls (claim 12), at least one side wall configured to receive a suture needle (claim 1), a second set of rods (claim 12) extending from the base, the second set of rods configured to receive the suture needle housing guide (claim 12), the second set of rods including at least one pair of rods extending parallel to each other and spaced from the first set of rods (claim 12), a clamping mechanism (claim 12) and including a clamping arm (claim 12) configured for displacement in the anterior-posterior plane (claim 12), wherein at least one of the first set of rods or the second set of rods is adjustable (claim 12).
As to claim the instant application’s claim 14, see reference patent claim 13.
As to claim the instant application’s claim 15, see reference patent claim 14
As to claim the instant application’s claim 16, see reference patent claim 15.
As to claim the instant application’s claim 17, see reference patent claim 16.
As to claim the instant application’s claim 18, see reference patent claim 18.
As to claim the instant application’s claim 19, see reference patent claim 19.
As to claim the instant application’s claim 20, see reference patent claim 20.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER J ORKIN whose telephone number is (571)270-7412. The examiner can normally be reached Monday - Friday 9am - 5pm.
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, Elizabeth Houston can be reached on (571)272-7134. 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.
/ALEXANDER J ORKIN/Primary Examiner, Art Unit 3771