DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
This Office Action is responsive to the preliminary amendment filed September 1, 2025. As directed by the preliminary amendment: Claims 1-10 have been amended. Claims 11-20 have been cancelled. Claims 21-29 are newly added. Claims 1-10 and 21-29 are presently pending in this application.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “an extending mechanism coupled with a positioning element such that movement of the positioning element causes the extending mechanism to move with respect to the positioning element” in claim 21.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1, 2, 5, and 6 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by McLuen (US 7,727,280).
Regarding claim 1, McLuen discloses a bone fusion device (1000’) (figures 14A and 14B) for insertion into a desired location (col. 11, ll. 64-67 and col. 12, ll. 1-26) comprising an extending mechanism (1002, 1010) including one or more extending blocks (1010) coupled with a positioning element (1002) such that movement of the positioning element (1002) causes the one or more extending blocks (1010) to move with respect to the positioning element (1002) (figures 14A and 14B), a first plate (1006’), and a second plate (another element 1006’), the first and second plates (elements 1006’) coupled with the one or more extending blocks (1010) (figures 14A and 14B) such that when the one or more extending blocks (1010) move with respect to the positioning element (1002), the first and second plates (elements 1006’) move along a path (figures 14A and 14B) with respect to each other between a retracted position (figure 14A) in which the first and second plates (elements 1006’) are adjacent to each other (figure 14A) to an extended position (figure 14B) in which the first and second plates (elements 1006’) are spread apart from each other (figure 14B), wherein a portion of the first plate (1006’) directly contacted by the one or more extending blocks (1010) (figures 14A and 14B) changes as the one or more extending blocks (1010) move with respect to the positioning element (1002) (figures 14A and 14B).
Regarding claim 2, McLuen discloses wherein the first and second plates (elements 1006’) are sized such that an entirety of a perimeter of the first and second plates (elements 1006’) about the path (figures 14A and 14B) align with an outermost perimeter of the device (1000’) about the path (figures 14A and 14B).
Regarding claim 5, McLuen discloses wherein the one or more extending blocks (1010) each comprise an angled surface (figures 14A and 14B) between a left side (figures 14A and 14B) and a right side (figures 14A and 14B), wherein the left sides of the one or more extending blocks (1010) are aligned with a left face of the first and second plates (elements 1006’) and the right sides of the one or more extending blocks (1010) are aligned with a right face of the first and second plates (elements 1006’).
Regarding claim 6, McLuen discloses wherein the angled surface forms a continuous sheet between the left and right sides (figures 14A and 14B) of the one or more extending blocks (1010) in order to increase the surface area of the angled surface (figures 14A and 14B).
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 1-10 and 21-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,409,050. 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”.
Claims 21-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,963,884. 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”.
Claims 1-10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,399,956. Although the claims at issue are not identical, they are not patentably distinct from each other. For example, claim 1 of the instant application discloses all the features/elements of claim 1 of USP ‘956 such as an extending mechanism, a first plate, and a second plate. Yet, claim 1 of the instant application lacks one or more biasing elements. However, claim 3 of the instant application clearly contemplates this feature.
Claims 21-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-19 of U.S. Patent No. 11,399,956. 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”.
Claims 1-10 and 21-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 10,098,757. 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”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SI MING KU whose telephone number is (571)270-5450. The examiner can normally be reached Monday-Friday, 9:30am-6pm.
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/SI MING KU/Primary Examiner, Art Unit 3775
