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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/493238, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Application No. 63/493238 does not describe the subject matter of claim 30 (four wings spaced 90 degrees). Accordingly, the effective filing date of claim 30 is 11/17/23 while the effective filing date of claims 1, 4, 6-9, 12-14, 24-29, 31-34 is 3/30/23.
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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,527,603 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 includes all the limitations of claim 1 with some additional features, making claim 15 more specific. Claim 1 of the current application is verbatim found in claim 1 of claim 1 of U.S. Patent No. 12,527,603 B2 except for the limitation of the second bone anchor cooperating with the coupling device to “facilitate polyaxial pivoting of the second bone anchor”. This feature is found in dependent claim 15 of U.S. Patent No. 12,527,603 B2 in the limitation “wherein the second bone anchor is configured to pivot in a plurality of planes that include the central axis relative to the receiving part”. Pivoting in a plurality of planes is equivalent to polyaxial pivoting.
It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 UPQ2d 2010 (Fed. Cir. 1993). Since Claim 1 of Application No. 19/451,260 is anticipated by Claim 15 of U.S. Patent No. 12,527,603 B2, it is not patentably distinct from U.S. Patent No. 12,527,603 B2.
Claims of US Patent 12383312 have also been reviewed for double patenting, no rejection is present at this time.
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) 25-26, 28-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jankovic et al. (US Publication No. 2014/0018866 A1) in view of Jackson (US Patent No. 8308782 B2).
Regarding Claim 25, Jankovic discloses a bone anchoring device (Fig. 1B) for coupling a rod (92) to bone, the bone anchoring device comprising: a bone anchor (70) comprising a shank (threaded part in Fig. 1B) that extends along a shank axis for anchoring to bone, and a head (72) comprising a spherical segment-shaped surface and a projection (77, see Fig. 6B, [0022]) that extends outwardly from the spherical segment-shaped surface, wherein the projection extends in an elongate manner such that an axial length of the projection measured in a direction of the shank axis is greater than a maximum width of the projection measured in a circumferential direction around the shank axis (see below);
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and a coupling device (50+20+96+94) comprising: a receiving part (50) having a first end (53 shown in Fig. 3), an opposite second end (54 shown in Fig. 3), a central axis that extends between the first and second ends (line running down between them shown in Fig. 3), a rod receiving portion at the first end for receiving a rod (shown receiving the rod 92 in Fig. 1B below), and a head receiving portion for receiving the head of the bone anchor (shown below), the head receiving portion defining an opening at the second end (see below);
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and a pressure member (96) configured to exert pressure on the head in the receiving part to clamp the head relative to the receiving part [0012] (Fig. 1B); wherein the coupling device (50+20+96+94) is configured to cooperate with the projection (77) on the head to restrict pivoting of the bone anchor relative to the receiving part in at least one direction (e.g. grooves 40 (fig. 6A) engage with the projections 77 to wedge screw when pressure is applied thereby limiting pivoting of the screw, see [0021]).
Jankovic shows the bone screw assembled in Fig. 1B but does not clearly show or describe that the opening at the second end that has a width that is greater than a greatest outer diameter of the head of the bone anchor to facilitate insertion of the head through the opening into the head receiving portion. Jankovic does not disclose how the bone screw is assembled (i.e. top loaded or bottom loaded) or the order of operations of assembling the clam shell element and bone screw head within the receiver.
Jackson discloses a bone screw assembly in the same field of endeavor which comprises a clam shell element which holds the head of the screw (44) within the receiver. Jackson explicitly discloses that the screw is bottom loaded into the clam shell element (101+102) in the receiver (shown in Fig. 6-7) and that the head receiving portion (receiver 60) has an opening (96) at the second end that has a width that is greater than a greatest outer diameter of the head of the bone anchor (shown in Fig. 7) to facilitate insertion of the head through the opening into the head receiving portion and ultimate assembly of the head within the clam shell within the receiver (col. 14; ln. 22-62).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the opening at the second end of the receiving part of Jankovic to be wider than the widest diameter of the head of the screw to facilitate insertion of the head through the opening into the head receiving portion as taught by Jackson and use an assembly method known in the art to place a head of a bone screw within a clam shell structure of a receiver.
Regarding Claim 26, the coupling device(50+20+96+94) comprises a restraining surface (40, Fig. 6A) configured to cooperate with the projection on the head to restrict the pivoting of the bone anchor relative to the receiving part (e.g. grooves 40 (fig. 6A) engage with the projections 77 to wedge screw when pressure is applied thereby limiting pivoting of the screw, see [0021, Jankovic]).
Regarding Claim 28, the projection (77) of the head of the bone anchor is formed as at least one wing that extends in a direction of the shank axis (shown in Fig. 6B, Jankovic).
Regarding Claim 29, the at least one wing comprises two wings positioned on diametrically opposite sides of the head (shown in Fig. 6B, Jankovic).
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Regarding Claim 30, Jankovic in view of Jackson is silent to the at least one wing (77, Jankovic) comprises four wings that are spaced apart by 90 degrees from one another around the shank axis, Jankovic only shows two evenly spaced 180 degrees apart in Fig. 6B (above). However, doubling the number of wings to four evenly spaced wings 90 degrees apart would have had a direct and predictable effect of increasing the wedging points on the screw head and therefore it would have been obvious to one having ordinary skill in the art to construct the assembly of Jankovic in view of Jackson to have four instead of two evenly spaced wings, since it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
Allowable Subject Matter
Claims 4, 6-9, 12-14, 24, 27, 35 are 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.
Claims 31, 32, 34 are allowed.
Response to Arguments
Applicant’s arguments with respect to claim(s) 25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant did not amend or provide arguments with respect to the double patenting rejection of claim 1, therefore the rejection is being upheld.
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 JACQUELINE T JOHANAS whose telephone number is (571)270-5085. The examiner can normally be reached Mon. - Fri. 9:00-5:00.
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, 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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/JACQUELINE T JOHANAS/Primary Patent Examiner, Art Unit 3773
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