UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMIVIERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P O. Box 1450
`Alexandria. Virginia 2231371450
`WWW usptogov
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`MARTIN & FERRARO, LLP
`1557 LAKE O'PINES STREET, NE
`HARTmemmsz
`
`EX AMINER
`
`BROWN,MICHAELA
`
`3772
`
`DATE MAILED: 07/ 19/2012
`
`APPLICATION NO.
`FILING DATE
`FIRST NAMED INVENTOR
` ATTORNEY DOCK:T NO.
`
`CONFIRMATION NO.
`
`13/306583
`11/29/2011
`Gary Karlin Michelson
`102.0010-04000
`5414
`TITLE OF INVENTION: METHOD FOR INSERTING AN ARTIFICIAL IMPLANT BETWEEN TWO ADJACENT VERTEBRAE ALONG A CORONAL
`
`PLAN1
`
`APPLN. TYPE
`
`SMALL ENTITY
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`nonpiovisional
`
`$1740
`
`DATE DUE
`
`10/19/2012
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION ON TIIE MERITS IS CLOSED. TIIIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGIITS.
`THIS APPLICATION IS SUBJECT TO VVITHDRAVVAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
`MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED.
`THIS
`STATUTORY PERIOD CANNOT BE EXTENDED.
`SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`IF AN ISSUE FEE HAS
`PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
`WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
`DUE.
`
`HOW TO REPLY TO THIS NOTICE:
`
`I. Review the SMALL ENTITY status shown above.
`
`If the SMALL ENTITY is shown as YES, verify your current
`SMALL ENTITY status:
`
`If the SMALL ENTITY is shown as NO:
`
`A. If the status is the same, pay the TOTAL FEE(S) DUE shown
`above.
`
`A. Pay TOTAL FEE(S) DUE shown above, or
`
`B. If the status above is to be removed, check box 5b on Part B -
`Fee(s) Transmittal and pay the PUBLICATION FEE (11' required)
`and twice the amount of the ISSUE FEE shown above, or
`
`B. If applicant claimed SMALL ENTITY status before, or is now
`claiming SMALL ENTITY status, check box 5a on Part B — Fee(s)
`Transmittal and pay the PUBLICATION FEE (if required) and 1/2
`the ISSUE FEE shown above.
`
`II. PART B — FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
`(I JSPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section ”4b"
`of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
`request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
`the paper as an equivalent of Part B.
`
`III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
`Mail Stop ISSUE FEE unless advised to the contrary.
`
`IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
`maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.
`
`PTOL—SS (Rev. 02/11)
`
`Page 1 of 3
`
`NUVASIVE 1003
`
`1
`
`

`

`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), to: Mil Mail Stop ISSUE EEE
`Commissioner for Patents
`PO. Box 1450
`Alexandria,
`'irginia 22313-1450
`or m (571)-273-2885
`through 5 should be completed where
`INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE (if required). Blocks 1
`
`icated unless corrected below or directed otherwise in Block 1 by (a) specifying a new correspondence address: and/or (b) indicating a separate "FEE ADDRESS" for
`ippropriate. All further correspondence including the Patent. advance orders and notification of maintenance fees will be mailed to the current correspondence address as
`maintenance fee notifications.
`CURRENT CORRESPONDENCEADDRESS (Nola: USO Block 1 fOI any change of aderSS)
`
`22882
`
`7590
`
`07/19/2012
`
`.
`.
`.
`.
`.1 n.
`.
`MARTIN&FERRARO,LLP
`1557 LAKE O PINES 811031317 Nb
`HARTVILLE, OH 44632
`
`Note: A certificate of mailin can only be used for domestic mailings of the
`Fee(s) T1a11sn1ittal. This certi icate cannot be used for any other accompanying
`ave its own certificate of mailing or transmission
`papers Each additional paper such as an assignment or formal drawing must
`Certificate of Mailin or Transmission
`ere yeertiy att 1S
`ee s)
`ransmitta 1s eing epos1te w1
`e
`n1te
`d
`.f m h. F (\ T
`_g1_ b.
`d
`_d Ml U.
`M h
`States Postal Service with sufficient postage for first class mail in an envelope
`addressed to the Mail Stop ISSUE FEE address above, or being facsimile
`transmitted to the USPTO (571) 273-28851 on the date indicated below.
`
`
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`102.0010—04000
`Gary Karlin Michelson
`11/29/2011
`13/3 06.583
`TITLE OF INVENTION: METHOD FOR INSERTING AN ARTIFICIAL IMPLANT BETWEEN TWO ADJACENT VERTEBRAE ALONG A CORONAL
`
`PLAN1
`
`5414
`
`(Signature)
`
`APPLN. TYPE
`
`SMALL ENTITY
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`nonpi‘ovisional
`
`$1740
`
`DATE DUE
`
`10/19/2012
`
`BROWN, MICHAEL A
`
`37 72
`
`GOG—061000
`
`
`
`1. Change of correspondence address or indication of ”Fee Address" (37
`CFR 1.363).
`3 Change of correspondence address (or Change of Correspondence
`Address orm PTO/SB/l 22) attached.
`3 ”Fee Address” indication (01‘ ”Fee Address" Indication form
`PTO/SB/47; Rev 03—02 or more recent) attached. Use of a Customer
`Number is required.
`
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`If an assignee is identified below. the document has been filed for
`PLEASE NOTE: Unless an assignee is identified below, no assignee data will appear on the patent.
`recordation as set forth in 37 CFR 3.11. Completion of this form is NOT a substitute for filing an assignment.
`
`(A) NAME OF ASSIGNEE
`(B) RESIDENCE: (CITY and STATE OR COUNTRY)
`
`2. For printing on the patent front page. list
`(1) the names of up to 3 registered patent attorneys
`or agents 0R. alternatively.
`(2) the name of a single firm (having as a member a
`registered attorney or agent) and the names of up to
`2 registered patent attorneys or agents. If no name is
`listed no name will be plinted.
`
`IQ
`
`1
`I
`
`
`
`Please check the appropriate assignee category or categories (will not be printed on the patent) : D Individual
`
`'3 Corporation or other private group entity D Government
`
`4a. The following fee(s) are submitted:
`3 Issue Fee
`:1 Publication Fee (No small entity discount permitted)
`3 Advance Order — # of Copies
`
`
`
`4b. Payment of Fee(s): (Please first reapply any previously paid issue fee shown above)
`3 A check is enclosed.
`:1 Payment by credit card. Form PTO-2038 is attached
`3 The Director1s hereby authorized to charge the required fee(s). any deficiency or credit any
`overpayment. to Deposit Account Number
`(enclose an extra copy of this form)
`
`
`
`5. Change in Entity Status (from status indicated above)
`3 b. Applicant is no longer claiming SMALL ENTITY status. See 37 CFR 1.27(g)(2).
`3 a. Applicant claims SVIALL ENTITY status. See 37 CI‘R 1.27.
`
`NOTE: The Issue Fee and Publication Fee (if required) will not be accepted from anyone other than the applicant; a registered attorney or agent; or the assignee or other party in
`interest as shown by the records of the Lnited States Patent and Trademark Office.
`
`Date
`
`Authorized Signature
`
`Typed or printed name
`
`Registration No.
`
`This collection of informationis required by 37 CFR 1.311. The informationis re nired to obtain or retain a benefit by the public whichis to file (and by the USPTO to process)
`an application. Confidentiality1s governed by 35 U.S.C. 122 and 37 CFR 1.14.
`‘11s collection13 estimated to take 12 minutes to complete including gathering. preparmg, and
`submitting the completed application form to the USPTO. Time will v
`de endin upon the individual case Any comments on the amount of time you requi1e to complete
`this form and/or su gestions for reducing this burden. should be sent to
`e C ief In ormation Officer. U.S. Patent and Trademark Office. U.S. Department of Commerce P.O
`Box 1450. Alexandgria Virginia 22313 F450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents P.O. Box 1450
`Alexandria. Virginia 22313g1450.
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`l-‘TOL-SS (Rev. 02/1 1) Approved for use through 08/31/2013.
`
`OMB 0651-0033
`
`US. Patent and Trademark Office; US. DEPARTMENT OI" COMMERCE
`
`2
`
`2
`
`

`

`
`
`.
`
`_
`
`_
`
`Applicant(s)
`Application No.
`
`13/306,583
`MICHELSON, GARY KARLIN
`
`MICHAEL BROWN
`
`3772
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application.
`If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOWABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`
`1. IX This communication is responsive to the amendment filed 13/20/12.
`
`2. [I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`requirement and election have been incorporated into this action.
`
`;the restriction
`
`3. IE The allowed claim(s) is/are 2-31.
`
`4. El Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a) [I All
`b) El Some*
`c) El None
`of the:
`1. El Certified copies of the priority documents have been received.
`2. El Certified copies of the priority documents have been received in Application No.
`3. El Copies of the certified copies of the priority documents have been received in this national stage application from the
`International Bureau (PCT Rule 17.2(a)).
`* Certified copies not received:
`
`Applicant has THREE MONTHS FROM THE “MAILING DATE” of this communication to file a reply complying with the requirements
`noted below. Failure to timely comply will result in ABANDONMENT of this application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`
`5. [I A SUBSTITUTE OATH OR DECLARATION must be submitted. Note the attached EXAMINER'S AMENDMENT or NOTICE OF
`INFORMAL PATENT APPLICATION (PTO-152) which gives reason(s) why the oath or declaration is deficient.
`
`6. I] CORRECTED DRAWINGS (as “replacement sheets") must be submitted.
`(a) El including changes required by the Notice of Draftsperson’s Patent Drawing Review ( PTO-948) attached
`1) El hereto or 2) El
`to Paper No./Mai| Date _.
`(b) El including changes required by the attached Examiner’s Amendment / Comment or in the Office action of
`
`Paper No./Mai| Date
`Identifying indicia such as the application number (see 37 CFR 1.84(c)) should be written on the drawings in the front (not the back) 01
`each sheet. Replacement sheet(s) should be labeled as such in the header according to 37 CFR 1.121(d).
`
`7. I] DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner’s comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. El Notice of References Cited (PTO-892)
`2. El Notice of Draftperson's Patent Drawing Review (PTO—948)
`
`3. IZI Information Disclosure Statements (PTO/SB/OS),
`
`Paper No./Mai| Date 3/20/12
`4. I] Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`
`5. El Notice of Informal Patent Application
`6. El Interview Summary (PTO—413),
`Paper No./Mai| Date
`.
`7. El Examiner's Amendment/Comment
`
`8. El Examiner‘s Statement of Reasons for Allowance
`
`.
`9. El Other
`/Michael Brown/
`
`Primary Examiner, Art Unit 3772
`
`U 8 Patent and Trademark Office
`PTOL—37 (Rev. 03-11)
`
`Notice of Allowability
`
`Part of Paper No./Mai| Date 20120620
`
`
`
`3
`
`

`

` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 223134450
`www.usplo.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`13/306,583
`
`1 1/29/20] I
`
`,
`
`Gary Karlin Michelson
`
`102.0010-04000
`
`5414
`
`7590
`22882
`MARTMFERRARQLLP
`1557 LAKE O'PINES STREET, NE
`HARTVILLE, OH 44632
`
`05/20/2012
`
`BROWN, MICHAEL A
`ART UNIT
`PAPER NUMBER
`
`3772
`
`MAIL DATE
`
`06/20/2012
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`4
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box I450
`Alexandria, VA 22313—1450
`www. usplo.gov
`
`MARTIN 85 FERRARO, LLP
`1557 LAKE O'PINES STREET, NE
`
`I-IARTVILLE OH 44632
`
`In re Application of
`MICHELSON, GARY KARLIN
`Appl. No: 13/306,583
`Attorney’s Docket No. 102.0010—04000
`Filed: Nov. 29, 2011
`For: DUAL FLUSH ACTIVATION
`
`’
`
`:
`:
`:
`
`DECISION ON PETITION
`UNDER 37 CFR 1.59
`'
`
`This is a decision on the petition filed on May 4, 2012 by which petitioner requests that certain
`material be expunged from the application. The petition is being considered pursuant to 37 CFR
`1.59 and MPEP § 724.06.‘
`
`The petition is granted.
`
`Petitioner requests that documents listed on the Information Disclosure Statement under
`M.P,E.P. § 724 filed on May 4, 2012 be expunged from the record. The information in question
`also has been determined by the undersigned to not be material to the examination of the instant
`application. The proprietary information disclosure statement filed on May 4, 2012 is now
`removed from the official file. The material will remain in the artifact folder sealed from the
`
`public.
`
`‘
`
`Applicant is required to retain the expunged material(s) for the life on any patent which issues on
`the above-identified application.
`
`Any questions regarding this petition decision should be directed to Henry Yuen, Technology
`Center, and Special Programs Examiner at 571 — 272-4856.
`
`PETITION GRANTED.
`
`ago
`
`
`Angela D. Sykes, Director
`Technology Center 3700
`
`5
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PD. Box 1450
`Alexandria, Virginia 223134450
`ww.uspm.gnv
`
`APPLICATION NO‘
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO,
`
`13/306,583
`
`II/29/201l
`
`Gary Karlin Michelson
`
`102.0010—04000
`
`5414
`
`7590
`22882
`MARTIN&FERRARO,LLP
`1557 LAKE O'PINES STREET, NE
`HARTVILLE, OH 44632
`
`OSII7QOI 2
`
`BROWN, MICHAEL A
`ART UNIT
`PAPER NUMBER
`
`3772
`
`MAIL DATE
`
`05/17/2012
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-QOA (Rev. 04/07)
`
`6
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`‘
`
` MW
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`wwwusptogov
`
`MARTIN & FERRARO, LLP
`1557 LAKE O'PINES STREET, NE
`HARTVILLE OH 44632
`
`In re Application of
`MICHELSON, GARY K
`Appl. No.: 13/306,583
`Filed: Nov. 29, 2011
`Atty Docket No
`:.102 0010-04000
`For: METHOD FOR INSERTING AN ARTIFICIAL IMPLANT BETWEEN TWO
`ADJACENT VERTEBRAE ALONG A CORONAL PLANE
`
`'
`_
`‘
`:
`: DECISION ON PETITION
`: Under 37 CFR l 59
`
`.
`
`1
`
`This is a decision on the petition under 37 CFR 1.59(b), filed May 4, 2012 to expunge
`information from the above identified application. The petition fee of $200.00 set forth in 37
`CFR l.l7(g) has been charged to Deposit Account in accordance with the petition.
`
`The decision on the petition will be held in abeyance until allowance of the application or
`mailing of an Ex parte Quayle action or a Notice of Abandonment, at which time the petition
`will be decided.
`
`In the petition, petitioner requests that the information submitted on May 4, 2012 is material
`subject to protective order for examiner’s consideration under MPEP § 724.
`'
`
`In the petition, petitioner States either: (A) that the information contains trade secret material,
`proprietary material and/or material that is subject to a protective order which has not been made
`public; or (B) that the information submitted was unintentionally submitted and the failure to
`obtain its return would cause irreparable harm to the party who submitted the information or to
`the party in interest on whose behalf the information was submitted, and the information has not
`otherwise been made public.
`
`.
`
`The decision on the petition is also held in abeyance because prosecution on the merits is not
`closed. Accordingly, it is not appropriate to make a final determination of whether or not the
`material requested to be expunged is “material,” with “materiality” being defined as any
`information which the examiner considers as being important to a determination of patentability
`of the claims. Thus, the decision on the petition to expunge must be held in abeyance at this _
`time.
`
`7
`
`

`

`During prosecution on the merits, the examiner will determine whether or not the identified
`document is considered to be “material.” If the information is not considered by the examiner to
`be material, the information will be removed from the official file. Currently, the information
`has been closed from public view for the remainder of prosecution.
`
`Questions concerning this decision should be directed to Special Programs Examiner Henry C.
`Yuen at 571-272-4856.
`
`Decision held in ABEYANCE.
`
`2
`/‘s
`.
`C L-I'I 1‘ of:
`Ange a R. Sykes, Di 'ector
`Technology Center 3700
`
`g
`
`8
`
`

`

`PTOISBISOEFS (07—09)
`Doc code: RCEX
`Approved for use through 0713112012. OMB 0551—0031
`Doc description: Request for Continued Examination (RCE)
`u.s. Patent and Trademark Office; us. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995. no persons are required to respond to a collection of information unless it contains a valid OMB control number.
`
`REQUEST FOR CONTINUED EXAMINATION(RCE)TRANSMITTAL
`
`(Submitted Only via EFS-Web)
`
`Application
`Number
`
`13/306,583
`
`F'I'“9
`Date
`
`2011—11—29
`
`p°°ket .Number
`(If applicable)
`
`F'rSt Named Gary Karlin Michelson
`Inventor
`
`Examiner
`Name
`
` Applicant Signature
`
`
`
`102001004000
`
`Michael A- Brown
`
`
`
`
`
`This is a Request for Continued Examination (ROE) under 37 CFR 1.114 of the above-identified application.
`Request for Continued Examination (RCE) practice under 37 CFR 1.114 does not apply to any utility or plant application filed prior to June 8,
`1995, or to any design application. The Instruction Sheet for this form is located at WWW.USPTO.GOV
`
`SUBMISSION REQUIRED UNDER 37 CFR1.114
`
`
`Note: If the RCE is proper, any previously filed unentered amendments and amendments enclosed with the RCE will be entered in the order
`in which they were filed unless applicant instructs otherwise. If applicant does not wish to have any previously filed unentered amendment(s)
`entered, applicant must request non—entry of such amendment(s).
`Previously submitted. If a final Office action is outstanding, any amendments filed after the final Office action may be considered as a
`submission even if this box is not checked.
`
`
`
`:I Consider the arguments in the Appeal Brief or Reply Brief previously filed on
`
` :| Other
`
`Enclosed
`
`
`
`:| Amendment/Reply
`
`:| Information Disclosure Statement (IDS)
`
`:| Affidavit(s)/ Declaration(s)
`
` x
`
`acopyo
`an
`.
`.
`.
`.
`r er un er
`r0 ec we
`e I Ion o xpunge aerias u Jec 0
`u missmno
`er
`f
`d(2)
`Oth Sb" f(1)Pt't'
`t E
`Mt 'le' ttP t
`t' 0d
`d 370FR159(b)
`the Transmittal Letter for Materials Subiect to Protective Order under MPEP 724.02.
`
`MISCELLANEOUS
`
`El Suspension of action on the above—identified application is requested under 37 CFR 1.103(c) for a period of months
`(Period of suspension shall not exceed 3 months; Fee under 37 CFR 1.17(i) required)
`
`|:| Other
`
`
`FEES
`
`The RCE fee under 37 CFR 1.17(e) is required by 37 CFR1.114 when the RCE is filed.
`The Director is hereby authorized to charge any underpayment of fees, or credit any overpayments, to
`
`Deposit Account No 503726
`
`SIGNATURE OF APPLICANT, ATTORNEY, OR AGENT REQUIRED
`
`Patent Practitioner Signature
`
`EFS - Web 2.1.15
`
`9
`
`

`

`PTorssiaoEFs (07—09)
`Doc code: RCEX
`Approved for use through 0713112012. OMB 0551—0031
`Doc description: Request for Continued Examination (RCE)
`u.s. Patent and Trademark Office; us. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.
`
`Signature of Registered US. Patent Practitioner
`
`
`
`Signature
`
`iThomas H. Martin/
`
`W Thomas H. Martin
`
`Date (YYYY-MM-DD)
`
`2012—05—04
`
`Registration Number
`
`34383
`
`This collection of information is required by 37 CFR 1.114. The information is required to obtain or retain a benefit by the public which is to
`file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is
`estimated to take 12 minutes to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time
`will vary depending upon the individual case. Any comments on the amount of time you require to complete this form and/or suggestions for
`reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce,
`PO. Box 1450, Alexandria, VA 22313-1450.
`if you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`EFS - Web 2.1.15
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`Decision Date:
`In re Application of:
`
`Gary Michelson
`
`May 4, 2012
`
`Application No:
`Filed:
`
`13306583
`29-Nov-2011
`
`Attorney Docket NO i
`
`102.0010-04000
`
`DECISION ON PETITION
`
`UNDER CFR1.313(c)(2)
`
`This is an electronic decision on the petition under 37 CFR1.313(c)(2),filed May 4, 2012
`application from issue after payment of the issue fee.
`
`, to withdraw the above-identified
`
`The petition is GRANTED.
`
`The above-identified application is withdrawn from issue for consideration ofa submission under 37 CFR 1.1 14 (request for
`continued examination). See 37 CFR1.313(c)(2).
`
`Petitioner is advised that the issue fee paid in this application cannot be refunded. If, however, this application is again
`allowed, petitioner may request that it be applied towards the issue fee required by the new Notice of Allowance.
`
`Telephone inquiries concerning this decision should be directed to the Patent Electronic Business Center (EBC) at 866—217—91 97.
`
`This application file is being referred to Technology Center AU
`under 37 CFR 1.114.
`
`3772 for processing ofthe request for continuing examination
`
`Office of Petitions
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`Doc Code: PET.AUTO
`
`PTO/SB/ 1 40
`US. Patent and Trademark Office
`
`Document Description: Petition automatically granted by EFS—Web
`Department of Commerce
`
`
`Electronic Petition Request
`
`PETITION TO WITHDRAW AN APPLICATION FROM ISSUE AFTER PAYMENT OF
`THE ISSUE FEE UNDER 37 CFR1.313(c)
`
`
`
`
`
`Application Number 13306583
`
`Filing Date
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`29-Nov-2011
`
`First Named Inventor
`
`Gary Michelson
`
`
`
`Art Unit 3772
`
`
`
`Examiner Name MICHAEL BROWN
`
`Attorney Docket Number
`
`102.0010-04000
`
`METHOD FOR INSERTING AN ARTIFICIAL IMPLANT BETWEEN TWO ADJACENT VERTEBRAE
`ALONG A CORONAL PLANE
`
`An application may be withdrawn from issue for further action upon petition by the applicant. To request that the Office
`withdraw an application from issue, applicant must file a petition under this section including the fee set forth in § 1.17(h) and a
`showing of good and sufficient reasons why withdrawal of the application from issue is necessary.
`
`APPLICANT HEREBY PETITIONS TO WITHDRAW THIS APPLICATION FROM ISSUE UNDER 37 CFR1.313(C).
`
`A grantable petition requires the following items:
`(1) Petition fee; and
`(2) One of the following reasons:
`(a) Unpatentability ofone or more claims, which must be accompanied by an unequivocal statement that one or more claims
`are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or
`claims to be patentable;
`(b) Consideration ofa request for continued examination in compliance with § 1.1 14 (for a utility or plant application only); or
`(c) Express abandonment of the application. Such express abandonment may be in favor ofa continuing application, but not a
`CPA under 37 CFR 1.53(d).
`
`
`
`Petition Fee
`
`Applicant claims SMALL ENTITY status. See 37 CFR 1.27.
`
`Applicant is no longer claiming SMALL ENTITY status. See 37 CFR 1.27(g)(2).
`
`
`
`
`
`
`Applicant(s) status remains as SMALL ENTITY.
`
`Applicant(s) status remains as other than SMALL ENTITY
`
`Reason for withdrawal from issue
`
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`0 One or more claims are unpatentable
`
`@ Consideration ofa request for continued examination (RCE)
`
`(List of Required Documents and Fees)
`
`0 Applicant hereby expressly abandons the instant application (any attorney/agent signing for this reason must
`have power of attorney pursuant to 37 CFR 1.32(b)).
`
`RCE request,submission, and fee.
`
`I certify, in accordance with 37 CFR 1.4(d)(4) that:
`The RCE request ,submission, and fee have already been filed in the above-identified application on
`
`l:l
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`Are attached.
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`THIS PORTION MUST BE COMPLETED BY THE SIGNATORY OR SIGNATORIES
`
`I certify, in accordance with 37 CFR1.4(d)(4) that I am:
`
`
`
`© An attorney or agent registered to practice before the Patent and Trademark Office who has been given power of attorney
`in this application.
`
`O An attorney or agent registered to practice before the Patent and Trademark Office, acting in a representative capacity.
`
`0 A sole inventor
`
`O Ajoint inventor; I certify that I am authorized to sign this submission on behalfof all ofthe inventors
`
`O Ajoint inventor; all of whom are signing this e—petition
`
`O The assignee of record of the entire interest that has properly made itselfof record pursuant to 37 CFR 3.71
`
`
`
`Signature [Thomas H. Martin/
`
`
`
`Name Thomas H. Martin
`
`Registration Number
`
`34383
`
`13
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`05/07/194
`
`3%
`
`Attorney Docket No. 102.0010-04000
`Customer No. 22882
`
`Via US. Express Mail Label No. EG116131094US
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`'
`
`)
`MATERIAL SUBJECT TO PROTECTIVE
`ORDER - NOT OPEN TO PUBLIC. TO BE )
`OPENED ONLY BY THE EXAMINER OR
`)
`OTHER AUTHORIZED U.S. PATENT AND )
`TRADEMARK OFFICE EMPLOYEE
`)
`DO NOT SCAN
`)
`Tribunal Issuing Protective Order:
`)
`US. District Court for the Southern District of )
`California
`)
`Case No.: 3:08-CV-1512 MMA (AJB)
`)
`Date of Order: April 8, 2010
`)
`Current Status of Proceeding: On Appeal
`)
`In re Application of:
`'
`)
`Gary Karlin Michelson
`)
`Application No.: 13/306,583
`)
`Filed: November 29, 2011
`)
`For: METHOD FOR INSERTING AN
`)
`ARTIFICIAL IMPLANT BETWEEN ,
`)
`TWO ADJACENT VERTEBRAE
`)
`ALONG A CORONAL PLANE
`)
`
`'
`
`Confirmation No.: 5414
`
`Group Art Unit: 3772
`Examiner: Michael A. Brown
`
`Mail Stop 313(c)
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`TRANSMITTAL LETTER FOR MATERIALS SUBJECT TO
`PROTECTIVE ORDER SUBMITTED UNDER MPEP
`724.02
`
`Pursuant to 37 CPR. § 1.56, Applicant brings to the attention of the Examiner
`
`the documents listed in the table below. Pursuant to MPEP § 724.02, copies of the
`
`listed documents, marked subject to protective order, are enclosed herewith. A Petition
`
`to Expunge Materials Subject to Protective Order under 37 C.F.R. § 1.59 (a copy of
`
`which is submitted herewith) was submitted with a Request for Continued Examination
`65/68/2812 CNGUYENE 39933315 593725
`31 chea
`233.03 DA
`
`13396583
`
`14
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`14
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`

`

`Attorney Docket No. 102.0010-04000
`
`dated May 4, 2012. The Petition'under 37 C.F.R. § 1.59 requests that the materials
`
`submitted herewith, if found not to be material to patentability, be expunged.
`
`As stated in a previously filed lnformatio'n Disclosure Statement, the present
`
`application is a continuation application of Serial No. 10/371,757, now U.S. Patent No.
`
`8,066,705; which is a continuation application of Serial No. 08/480,461, now US.
`
`Patent No. 7,491,205; which is a divisional application of Serial No. 08/394,836, now
`
`US. Patent No. 5,772,661 ("’661 patent”); and Serial No. 08/741,301, now US. Patent
`
`No. 5,860,973 (““973 patent”), is a continuation of Serial No. 08/479,596, which is a
`
`continuation-in-part of the ’661 patent. The ‘973 and ‘661 patents were the subject of
`
`litigation in the United States District Court for the District-of Southern California; Civil
`
`Action No. 3:08-CV-1512 MMA (AJB), entitled Medtronic Sofamor Danek USA, Inc., et
`
`al., v. Nuvasive, Inc. The documents from the above-identified litigation may be
`
`considered material to the patentability of the ‘973 patent and/or the “661 patent.
`
`Accordingly, Applicant is providing herewith copies of the below-listed documents.
`
`Medtronic Sofamor Danek USA, Inc. et al., v. Nuvasive, lnc.; Medtronic's Disclosure of Asserted Claims
`and infringement Contentions; 14 pages; dated January 23, 2009; Attachment 1, 23 pages; Attachment
`2, 23 pages; Attachment 3, 48 pages.
`
`Medtronic Sofamor Danek USA, lnc. et al., v. Nuvasive, lnc.; Objections and Answers of Medtronic
`Sofamor Danek USA, Inc., et al.’s to Nuvasive, lnc.s First Set of lnterrogatories (Nos. 1-15); 40 pages;
`dated February 20, 2009.
`
`Medtronic Sofamor Danek USA, Inc. et al., v. Nuvasive, lnc.; Nuvasive, Inc’s Preliminary Invalidity
`Contentions Pursuant to Patent Local Rule 3.3 Regarding US. Patent No. 5,772,661, US. Patent No.
`5,860,973, and US. Patent No. 6,945,933; 16 pages; dated March 24, 2009; Appendix A1, 32 pages;
`Appendix A2, 148 pages; Appendix A3, 78 pages; Appendix A.4, 79 pages; Appendix A5, 75 pages;
`Appendix A6, 71 pages; Appendix A], 95 pages; Appendix A8, 79 pages; Appendix A9, 67 pages;
`Appendix A10, 46 pages; Appendix A11, 74 pages; Appendix A12, 64 pages; Appendix A13, 56
`pages; Appendix A14, 74 pages; Appendix A15, 49 pages; Appendix B.1, 63 pages; Appendix B2, 61
`pages; Appendix BS, 55 pages; Appendix 34, 61 pages; Appendix B5, 51 pages; Appendix B6, 73
`pages; Appendix B], 61 pages; Appendix 8.8, 53 pages; Appendix B9, 43 pages; Appendix 8.10. 60
`pages; Appendix B.11, 81 pages; Appendix 8.12, 54 pages; Appendix B13, 88 pages.
`
`
`
`Medtronic Sofamor Danek USA, Inc. et al., v. Nuvasive, lnc.; Medtronic's Supplemental Disclosure of
`Asserted Claims and Infringement Contentions; 5 pages; dated April 2, 2009; Attachment 12, 21 pages;
`Attachment 13, 21 pages; Attachment 14, 54 pages.
`
`Medtronic Sofamor Danek USA, lnc. et al., v. Nuvasive, lnc.; Objections and Answers of Medtronic
`Sofamor Danek USA, Inc., et al. to Nuvasive, lnc.s Second Set of lnterrogatories (No. 16); 13 pages;
`dated April 23, 2009.
`
`Medtronic Sofamor Danek USA, Inc. et al., v. Nuvasive, lnc.; Medtronic's Final Disclosure of Asserted
`Claims and infringement Contentions; 7 pages; dated May 3, 2010; Attachment B, 23 pages;
`Attachment C, 20 pages; Attachment D, 21 pages; Attachment E, 22 pages.
`
`15
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`15
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`

`

`Attorney Docket No. 102.0010-04000
`
`Medtronic Sofamor Danek USA, Inc. et al., v. Nuvasive, |nc.; Nuvasive, Inc's Preliminary Invalidity
`Contentions Pursuant to Patent Local Rule 3.3 Regarding US. Patent No. 5,860,973, US. Patent No.
`6,945,933, and US. Patent No. 6,592,586; 16 pages; dated September 18, 2009; Appendix 8.1, 63
`pages; Appendix 8.2, 61 pages; Appendix 8.3, 55 pages; Appendix 8.4, 61 pages; Appendix 8.5, 51
`pages; Appendix 8.6, 73 pages; Appendix 8.7, 61 pages; Appendix 8.8, 53 pages; Appendix 8.9, 43
`pages; Appendix 8.10, 60 pages; Appendix 8.11, 81 pages; Appendix 8.12, 54 pages; Appendix 8.13,
`88 pages; Appendix 8.14, 27 pages; Appendix 8.15, 50 pages; Appendix 8.16, 35 pages.
`
`Medtronic Sofamor Danek, Inc., v. Nuvasive, |nc.; Appendices 8.12 and 8.13 from Nuvasive, lnc.'s
`Corrected Final Invalidity Contentions Regarding US Patent Nos. 5,860,973; 6,592,586; and
`6,945,933; June 14, 2010; 142 pages.
`
`
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`
`
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`
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`
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`Dezider lmre’s Deposition Transcript; dated October 5, 2001; 69 pages.
`
`Invoice from Dezider lmre; dated January 4, 1994; 1 page.
`
`Photographs; undated; 3 pages.
`
`Medtronic Sofamor Danek, Inc., v. Nuvasive, |nc.