`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO Box 1450
`Alexandna, Virgmia 22313-1450
`www.uspto gov
`
`95/002,380
`
`09/14/2012
`
`
`
`
`
`8021430
`
`101.0051-05REX
`
`2742
`
`EXAMINER
`
`MARTIN&FERRAR0,LLP —
`
`1557 LAKE O'PINES STREET, NE
`CLARK- JEABNE MAR ‘
`
`HARTVILLE, OH 44632
`ART UNIT
`PAPE 2 NUMBER
`
`3993
`
`MAIL DATE
`
`06/ 1 7/201 3
`
`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-9OA (Rev. 04/07)
`
`NUVASIVE1 1 1 1
`
`1
`
`

`

`Transmittal of Communication to
`
`Third Party Requester
`_
`_
`Inter Partes Reexamination
`
`Control No.
`
`Patent Under Reexamination
`
`
`95/002380
`8021430
`Examiner
`Art Unit
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`JEANNE M. CLARK
`
`3993
`
`'— (THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS) —|
`
`Fish & Richardson PC (TC)
`PO. Box 1022
`Minneapolis, MN 55440-1022
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified reexamination prceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the inter partes reexamination may once file written comments within a
`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
`
`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the interpartes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`US. Patent and Trademark Office
`PTOL-2070 (Rev. 07-04)
`
`Paper No. 20130611
`
`
`
`2
`
`

`

`
`
`
`
`Right of Appeal Notice
`(37 CFR 1 953)
`
`Control No.
`
`Patent Under Reexamination
`
`
`95/002,380
`8021430
`Examiner
`Art Unit
`JEANNE M. CLARK
`3993
`
`
`
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on
`
`Third Party(ies) on
`
`Patent owner and/or third party requester(s) may file a notice of appeal with respect to any adverse decision
`with payment of the fee set forth in 37 CFR 41 .20(b)(1) within one-month or thirty-days (whichever is
`longer). See MPEP 2671. In addition, a party may file a notice of cross appeal and pay the 37 CFR
`41 .20(b)(1) fee within fourteen days of service of an opposing party's timely filed notice of appeal. See
`MPEP 2672.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`If no party timely files a notice of appeal, prosecution on the merits of this reexamination proceeding will be
`concluded, and the Director of the USPTO will proceed to issue and publish a certificate under 37 CFR 1.997 in
`accordance with this Office action.
`
`The proposed amendment filed
`
`|:| will be entered
`
`|:l will not be entered*
`
`*Reasons for non-entry are given in the body of this notice.
`
`1a. X Claims 1-32 are subject to reexamination.
`
`are not subject to reexamination.
`1b. I:| Claims
`2. E Claims fl have been cancelled.
`
`are confirmed. [Unamended patent claims].
`3.
`|:| Claims
`are patentable. [Amended or new claims].
`4. El Claims
`5. E Claims Q are rejected.
`6. El Claims
`are objected to.
`
`I:l are not acceptable.
`D are acceptable.
`7. D The drawings filed on
`8. D The drawing correction request filed on
`is I:l approved. I:I disapproved.
`9. D Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d) or (f). The certified copy
`has:
`
`|:| been received.
`
`10. II Other
`
`Attachments
`
`|:| not been received.
`
`|:| been filed in Application/Control No.
`
`I:| Notice of References Cited by Examiner, PTO-892
`1.
`I:| Information Disclosure Citation, PTO/SB/08
`2.
`3.I:I
`
`
`
`US. Patent and Trademark Office
`PTOL-2066 (08-06)
`
`Right of Appeal Notice (37 CFR 1.953)
`
`Part of Paper No. 2013061 1
`
`3
`
`

`

`Application/Control Number: 95/002,380
`Art Unit: 3993
`
`Page 2
`
`This is a RIGHT OF APPEAL NOTICE (RAN); see MPEP§ 2673.02 and § 2674. The
`
`decision in this Office action as to the patentability or unpatentability of any original patent
`
`claim, any proposed amended claim and any new claim in this proceeding is a FINAL
`
`DECISION.
`
`No amendment can be made in response to the Right of Appeal Notice in an inlerpartes
`
`reexamination. 37 CFR 1.953(c). Further, no affidavit or other evidence can be submitted in an
`
`inter partes reexamination proceeding after the right of appeal notice, except as provided in 37
`
`CFR 1.981 or as permitted by 37 CFR 41.77(b)(l). 37 CFR 1.116(f).
`
`
`Each party has a thirty—day or one—month time period,
`
`whichever is longer,
`
`to file a notice of appeal. The patent
`
`owaer may appeal
`
`
`
`to the Board of Patent Appeals and
`
`In,er_ferences with respect to any decision adverse to the
`
`
`
`
`
`paeeneability 0.. any original or proposed amended or new claim
`
`
`o:
`
`
`
`
`the patent by filing a notice 0:: appeal and paying the fee
`
`
`set ,for,h in 37 CFR 41.20(b) (l) .
`
`The third party requester may
`
`
`
`appeal
`
`
`to the Board of Patent Appeals and Interferences with
`
`
`respect to any decision favorable to the patentability 0:: any
`
`original or proposed amended or new claim of the patent by
`
`
`
`filing a notice of appeal and paying the fee set forth in 37 CFR
`
`
`
`41.20 (b) (l) .
`
`In addition, a patent owner who has not filed a notice of appeal may file a notice of cross
`
`appeal within fourteen days of service of a third party requester’s timely filed notice of appeal
`
`and pay the fee set forth in 37 CFR 41.20(b)(l). A third party requester who has not filed a
`
`4
`
`

`

`Application/Control Number: 95/002,380
`Art Unit: 3993
`
`Page 3
`
`notice of appeal may file a notice of cross appeal within fourteen days Of service of a patent
`
`owner’s timely filed notice of appeal and pay the fee set forth in 37 CFR 41 .20(b)(1).
`
`Any appeal in this proceeding must identify the claim(s) appealed, and must be signed by
`
`the patent owner (for a patent owner appeal) or the third party requester (for a third party
`
`requester appeal), or their duly authorized attorney or agent.
`
`Any party that does not file a timely notice of appeal or a timely notice of cross appeal
`
`will lose the right to appeal from any decision adverse to that party, but will not lose the right to
`
`file a respondent brief and fee Where it is appropriate for that party to do so. If no party files a
`
`timely appeal, the reexamination prosecution will be terminated, and the Director will proceed to
`
`issue and publish a certificate under 37 CFR 1.997 in accordance with this Office action.
`
`Summary of Proceeding to Date
`
`For a summary of the proceeding up until the Action Closing Prosecution (ACP), see
`
`pages 2-5 of the ACP dated April 18, 2013.
`
`No response was received after the mailing of the ACP and the time for responding has
`
`expired.
`
`Claim Rejections - 35 USC §§ 103 and 112
`
`This Right of Appeal Notice maintains all the rejections as set forth in the ACP dated
`
`April 18, 2013. These rejections, as set forth on pages 5-24 of the ACP, are incorporated by
`
`reference.
`
`5
`
`

`

`Application/Control Number: 95/002,380
`Art Unit: 3993
`
`Page 4
`
`The response to arguments on pages 24—25 of the ACP is also incorporated
`
`by reference.
`
`Extensions of Time
`
`Extensions of time under 37 CFR l .l36(a) will not be permitted in these proceedings
`
`because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a
`
`reexamination proceeding. Additionally, 35 U.S.C. 314(c) requires that inter partes
`
`reexamination proceedings "will be conducted with special dispatch" (37 CFR 1.937). Patent
`
`owner extensions of time in inter partes reexamination proceedings are provided for in 37 CFR
`
`1.956. Extensions of time are not available for third party requester comments, because a
`
`comment period of 30 days from service of patent owner’s response is set by statute. 35 USC
`
`314(b)(3).
`
`Notification of Concurrent Proceedings
`
`The patent owner is reminded of the continuing responsibility under 37 CFR 1.985 to
`
`apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving the
`
`‘501 patent throughout the course of this reexamination proceeding. The third party requester is
`
`also reminded of the ability to similarly apprise the Office of any such activity or proceeding
`
`throughout the course of this reexamination proceeding. See MPEP § 2686 and 2686.04.
`
`Service of Papers
`
`Any paper filed by either the patent owner or the third party requester must be served on
`
`the other party in the reexamination proceeding in the manner provided by 37 CFR 1.248. See
`
`37 CFR 1.903 and MPEP 2666.06.
`
`6
`
`

`

`Application/Control Number: 95/002,380
`Art Unit: 3993
`
`Page 5
`
`Conclusion
`
`All correspondence relating to this inter partes reexamination proceeding should be directed:
`
`By EFS:
`
`Registered users may submit via the electronic filing system EFS—Web, at
`htt s://efs.us toigov/efile/mv .ortal/efsre istered.
`
`
`
`
`By Mail to: Mail Stop Inter Partes Reexam
`Attn: Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`For EFS—Web transmissions, 37 CFR l.8(a)(l)(i) (C) and (ii) states that correspondence
`
`(except
`
`for
`
`a
`
`request
`
`for
`
`reexamination and a corrected or
`
`replacement
`
`request
`
`for
`
`reexamination) will be considered timely filed if (a) it is transmitted Via the Office’s electronic
`
`filing system in accordance with 37 CFR l.6(a)(4), and (b) includes a certificate of transmission
`
`for each piece of correspondence stating the date of transmission, which is prior to the expiration
`
`of the set period of time in the Office action.
`
`Any inquiry concerning this communication or earlier communications from the examiner, or
`
`as to the status of this proceeding, should be directed to the Central Reexamination Unit at
`
`telephone number (571) 272-7705.
`
`/Jeanne M Clark/
`Jeanne M Clark
`
`Primary Examiner
`Central Reexamination Unit
`
`(571) 272—77 14
`
`Conferee_/BMF/_
`
`Conferee _/AK/_
`
`7
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box I450 .
`‘
`AlexandriIL Virglnin 22313-1450
`www.113plngOV
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/002,330
`
`22332
`
`09/14/2012
`
`8021430
`
`101.0051-05REX
`
`2742
`
`7590
`
`04/18/2013
`
`MARTMFERRARQLLP
`1557 LAKE O'PINES STREET, NE
`HARTVILLE, OH 44632
`
`CLARKJEANNE MARIE
`ART UNIT
`PAPER NUMBER
`
`3993
`
`MAIL DATE
`
`04/l 8/20! 3
`
`DELIVERY MODE
`
`. PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, isset in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`8
`
`

`

`Transmittal of Communication to
`
`Third Party Requester
`Inter Partes Reexamination
`
`Control No.
`
`95/002,380
`
`
`
`Patent Under Reexamination
`
`8021430
`
`
`
`
`
`
`Art Unit -
`Examiner
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`
`
` r— (THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS) '—‘|
`
`
`JEANNE M. CLARK
`
`3993
`
` Fish & Richardson PC (TC)
`
`PO. Box 1022
`Minneapolis, MN 55440—1022
`
`
`
`
`
`
`
`
`
`
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified reexamination prceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the inter partes reexamination may once file written comments within a
`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See'also 37 CFR 1.947.
`
`if an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`US Patent and Trademark Office
`PTOL-2070 (Rev. 07-04)
`
`Paper No. 20130415
`
`9
`
`

`

`ACTION CLOSING PROSECUTION
`
`8021430
`
`‘
`
`JEANNE M. CLARK
`
`3993
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on 19 Februag 2013
`
`Third Party(ies) on
`
`Patent owner may once file a submission under 37 CFR 1.951(a) within 1 month(s) from the mailing date of this
`Office action. Where a submission is filed, third party requester may file responsive comments under 37 CFR
`1.951(b) within 30-days (not extendable- 35 U.S.C. § 314(b)(2)) from the date of service of the initial
`
`submission on the requester. Appeal cannot be taken from this action. Appeal can only be taken from a
`Right of Appeal Notice under 37 CFR 1.953.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand—carry addresses given at the end of this Office action.
`
`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1. I] Notice of References Cited by Examiner, PTO-892
`2. IXI Information Disclosure Citation, PTO/SB/O8
`
`3E]
`'
`
` 1b. [:l Claims
`
`PART II. SUMMARY OF ACTION:
`
`1a. IE Claims 1-32 are subject to reexamination.
`
`are not subject to reexamination.
`2. E Claims 151 have been canceled.
`3. El Claims
`are confirmed. [Unamended patent claims]
`4. E] Claims
`are patentable.
`[Amended or new claims]
`
`
`
`5. E Claims Q; are rejected.
`
`are objected to.
`[:1 Claims
`6.
`
`[3 are not acceptable.
`E] are acceptable
`7. D The drawings filed on
`8
`[:1 The drawing correction request filed on
`is:
`[:1 approved. D disapproved.
`9 E] Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`1:] been received.
`E] not been received.
`E] been filed in Application/Control No __
`
`10. I] Other_
`
`US. Patent and Trademark Office
`PTOLv2065 (08/06)
`
`Paper No. 20130415
`
`10
`
`10
`
`

`

`Application/Control Number: 95/002,380
`Art Unit: 3993
`
`.
`
`Page 2
`
`Inter Partes Reexamination Office Action
`
`Reexamination was requested and ordered for claims 1-32 of United States Patent
`
`Number 8,021,430 to Michelson (hereinafter, “the ‘430 patent”).
`
`This is an ACTION CLOSING PROSECUTION (ACP); see MPEP § 2671.02.
`(1) Pursuant to 37 CFR 1.951(a), the patent owner may once file written comments
`limited to the issues raised in the reexamination proceeding and/or present a proposed
`amendment to the claims which amendment will be subject to the criteria of 37 CFR 1.116 as to
`whether it shall be entered and considered. Such comments and/or proposed amendments must
`be filed within a time period of 30 days or one month (whichever is longer) from the mailing
`date of this action. Where the patent owner files such comments and/or a proposed amendment,
`the third party requester may once file comments under 37 CFR 1.951(b) responding to the
`patent owner’s submission within 30 days from the date of service of the patent owner’s
`submission on the third party requester.
`(2) If the patent owner does not timely file comments and/or a proposed amendment
`pursuant to 37 CFR 1.951(a), then the third party requester is precluded from filing comments
`under 37 CFR 1.951(b).
`(3) Appeal cannot be taken from this action, since it is not a final Office action.
`
`Summary ofProceeding to Date
`
`The Third Party Requester requested reexamination of claims 1-32 of the ‘430 patent
`
`based upon the following twenty-six grounds:
`
`Ground lz'Claims 1-7, 9-14, 16-21, 23-28, and 30-32 are anticipated by PCT patent
`
`document WO 93/01771 (“Senter”) under 35 U.S.C. § 102(b).
`
`Ground 2: Claims 3, 10, 17, 24, and 31 are obvious over Senter in View of US. Patent
`
`No. 5,192,327 (“Brantigan ‘327”) under 35 U.S.C. § 103(a).
`
`Ground 3: Claims 8, 15, 22, and 29 are obvious over Senter in View of US. Patent No.
`
`5,425,772 (“Brantigan “772”) under 35 U.S.C. § 103(a).
`
`Ground 4: Claims 1, 2, 5—7, 9, 12—14, 16, 19-21, 23, 26-28, and 30 are anticipated by US.
`
`Patent No. 4,349,921 (“Kuntz”) under 35 U.S.C. § 102(b).
`
`Ground 5: Claims 3, 4, 10, 11, 17, 18, 24, 25, 31, and 32 are obvious over Kuntz in View
`
`ofBrantigan ‘327 under 35 U.S.C. § 103(a).
`
`11
`
`11
`
`

`

`Application/Control Number: 95/002,380
`
`Art Unit: 3993
`
`Page 3
`
`Ground 6: Claims 8, 15, 22, and 29 are obvious over Kuntz in view of Brantigan ‘772
`
`under 35 U.S.C. § 103(a).
`
`Ground 7: Claims 1-7, 10-14, 17-21, 24-28, 31, and 32‘are anticipated by US. Patent No.
`
`5,645,596 (“Kim”) under 35 U.S.C. § 102(e).
`
`Ground 8: Claims 3, 4, 10, 11, 17, 18, 24, 25, 31, and 32 are obvious over Kim in view of
`
`Brantigan ‘327 under 35 U.S.C. § 103(a).
`
`Ground 9: Claims 8, 15, 22, and 29 are obvious over Kim in view of Brantigan ‘772
`
`under 35 U.S.C. § 103(a).
`
`Ground 10: Claims 9, 16, 23, and 30 are obvious over Kim in view ofSenter under 35
`
`U.S.C. § 103(a).
`
`Ground 1 1: Claims 1-7, 10-14, 17—21, 24, and 25 are anticipated by PCT patent document
`
`WO 95/08306 (“Beckers”) under 35 U.S.C. § 102(a).
`
`Gmund 12: Claims 8, 15, 22, and 29 are obvious over Beckers in View of Brantigan ‘772
`
`under 35 U.S.C. § 103(a).
`
`Ground 13: Claims 9, 16, 23, and 20 are obvious over Beckers in view of Senter under 35
`
`U.S.C. § 103(a).
`
`Ground 14: Claims 26-28, 31, and 32 are obvious over Beckers under 35 U.S.C. § 103(a).
`
`Ground 15: Claims 1-7, 9—14, 16-21, 23—28, and 30-32 are anticipated by US. Patent No.
`
`5,607,424 (“Tropiano”) under 35 U.S.C. § 102(e).
`Ground 16: Claims 8, 15, 22, and 29 are obvious over Tropiano in view of US. Patent
`
`No. 5,397,364 (“Kozak”) under 35 U.S.C. § 103(a).
`
`Ground 17: Claims 5-7, 11-14, 18-21, and 25 are anticipated by US. Patent No.
`
`5,306,309 (“Wagner”) under 35 U.S.C. § 102(b).
`
`Ground 18: Claims 1, 2, 4, 9, 16, 23, 26-28, 30, and 32 are obvious over Wagner in view
`
`of Senter under 35 U.S.C. § 103(a).
`
`Ground 19: Claims 3 and 31 are obvious over Wagner and Senter, and in further view of
`
`Brantigan ‘327 under 35 U.S.C. § 103(a).
`
`Ground 20: Claims 8, 15, and 22 are obvious over Wagner in view of Brantigan ‘772
`
`under 35 U.S.C. § 103(a).
`
`12
`
`12
`
`

`

`Application/Control Number: 95/002,380
`Art Unit: 3993
`
`Page 4
`
`Ground 21: Claims 10, 17, and 24 are obvious over Wagner in view of Brantigan ‘327
`
`under 35 U.S.C. § 103(a).
`
`Ground 22: Claim 29 is obvious over Wagner and Senter, and in further view of
`
`Brantigan ‘772 under 35 U.S.C. § 103(a).
`
`Ground 23: Claims 1-7, 9-14, 16-21, and 23-25 are obvious over US. Patent No.
`
`5,514,180 (“Heggeness”) in view of Wagner under 35 U.S.C. § 103(a).
`
`Ground 24: Claims 8, 15, and 22 are obvious over Heggeness and Wagner, and in further
`
`View of Brantigan ‘772 under 35 U.S.C. § 103(a).
`
`Ground 25: Claims 26-28 and 30-32 are obvious over Heggeness and Wagner, and in
`
`further View of Senter under 35 U.S.C. § 103(a).
`
`Ground 26: Claim 29 is obvious over Heggeness, Wagner, and Senter, and in further
`
`View of Brantigan ‘772 under 35 U.S.C. § 103(a).
`
`An order granting reexamination found a reasonable likelihood of prevailing raised by
`
`above-mentioned proposed rejections. See the Order. The first Office action, mailed
`
`concurrently with the order, adopted all the above-mentioned proposed rejections. On February
`
`19, 2013, after receiving an extension of time, patent owner timely responded to the Office
`
`action. The response proposed to cancel patent claims 1-4 and to amend independent claims 5,
`
`12, 19, and 26. See pages 16-17 of the response for a description of the proposed amendments.
`
`On March 21, 2013, the requester timely filed comments. However, the comments were
`
`inappropriate papers and were expunged from the record. See the March 26, 2013 notice.
`
`Therefore, this Office action only addresses patent owner’s response.
`
`The Information Disclosure Statement (IDs) filed on February 19, 2013 has been
`
`considered by the examiner. Consideration by the examiner of the information submitted in an
`
`IDS means that the examiner will consider the documents in the same manner the party filing the
`
`13
`
`13
`
`

`

`Application/Control Number: 95/002,380
`Art Unit: 3993
`
`Page 5
`
`information citation has explained the content and relevance of the information. Information
`
`which complies with information disclosure requirements of 37 CPR. 1.98 but which is in a
`
`non-English language will be considered in view of the concise explanation submitted (see
`
`MPEP 609.04(a), subsection III.) and insofar as it is understood on its face, e.g., drawings,
`
`chemical formulas, in the same manner that non-English language information in Office search
`
`files is considered by examiners in conducting searches. The initials of the examiner placed
`
`adjacent to the citations on the form PTO/SB/08A and 08B or its equivalent, without an
`
`indication to the contrary in the record, mean that the information has been considered by the
`
`examiner to the extent noted above. See MPEP 609.05(b), 2256, and 2656.
`
`Statutory Basis for Claim Rejections - 35 USC §§ 103 and 112
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 ofthis title, ifthe differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), first paragraph:
`The specification shall contain a written description ofthe invention, and ofthe 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.
`
`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.
`
`14
`
`14
`
`

`

`Application/Control Number: 95/002,380
`Art Unit: 3993
`
`-
`
`Page 6
`
`Proposed Claim Rejections — Adopted as Modified or Withdrawn
`
`Rejections Based on Senter as Primary Reference:
`
`1. Ground 1 : Claims 5-7, 9-14, 16-21, 23-28, and 30-32 are anticipated by PCT patent
`
`document W0 93/01771 (“Senter”) in view of WO 90/00037 ("WO ‘037") (submitted in
`
`the 19 February 2013 IDS) under 35 U.S.C. § 103(a).
`
`See the explanation provided on pages 29-37, 39-50, 52-64, 66—76, and 78—80 of
`
`the September 14, 2012 request, which is incorporated by reference. See also Figures 3
`
`,
`and 4, page 4 line 25 to page 6 line 16, and page 10 line 2 to page 12 line 19 ofSenter.
`Also, in regard to the subject matter added by the 19 February 2013 proposed amendment
`
`to independent claims 5, 12, 19, and 26, W0 ‘037 teaches the added subject matter (e.g.,
`
`extendable spikes limitations) including, but not limited to, openings 306 in the upper and
`
`lower bearing surfaces 302, 304, first and second projections 308 as claimed, pivotal
`
`member 307 as claimed, first and second wedges 312, 314 as claimed and a screw 318 as
`
`claimed. See, e.g., Figures 15-17 and pages 5-8 & page 15 line 27 to page 16 line 30.
`
`It
`
`would have been obvious to modify Senter to include the added subject matter of the 19
`
`February 2013 amendment in order to provide a device that would fit any patient without
`
`alteration to the interspace of the intervertebral discs, allow for accurate and firm
`
`placement without the need for drilling, and provide a modular design.
`
`In other words,
`
`one of ordinary skill in the art would have recognized that applying the known technique
`
`for improvement, as taught by Reference W0 ‘037, to the implant of Senter would have
`
`predictably resulted in an improved device. See Daim v. Johnston, 425 US. 219, 189
`
`USPQ 257 (Fed. Cir. 1976); and In re Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir.
`
`15
`
`15
`
`

`

`Application/Control Number: 95/002,380
`Art Unit: 3993
`
`.
`
`Page 7
`
`1988). Also, combining the known extendable spikes, as taught by W0 ‘03 7, with the
`
`implant of Senter would have predictably resulted in a combination of known elements,
`
`each performing the same function as taught by the prior art references. Accordingly, it
`
`would have been obvious to one of ordinary skill in the art at the time the invention was
`
`made to apply the known technique to improve the implant or to combine knoWn
`
`elements, which would predictably result in the claimed invention.
`
`In regard to claims 6, 13, 20, and 27, see also page 14 lines 6-10 of Senter.
`
`2. Ground 2: Claims 10, 17, 24, and 31 are obvious over Senter in View of WO 90/00037
`
`("WO ‘037") (submitted in the 19 February 2013 IDS) and in further view of US. Patent
`
`No. 5,192,327 (“Brantigan ‘327”) under 35 U.S.C. § 103(a).
`
`In regard to claims 10, 17, 24, and 31, see the explanation provided for claim 10
`
`provided on page 41 of the September 14, 2012 request, which is incorporated by
`
`reference.
`
`3. Ground 3: Claims 8, 15, 22, and 29 are obvious over Senter in view of WO 90/00037
`
`("WO ‘037") (submitted in the 19 February 2013 IDS) and in further View of US. Patent
`
`No. 5,425,772 (“Brantigan ‘772”) under 35 U.S.C. § 103(a).
`
`In regard to claim 8, see the explanation provided on pages 37-39 of the
`
`September 14, 2012 request, which is incorporated by reference.
`
`In regard to claims 15, 22, and 29, see the explanation provided for claim 8.
`
`16
`
`16
`
`

`

`Application/Control Number: 95/002,380
`Art Unit: 3993
`
`Rejections Based on Kuntz as Primary Reference:
`
`Page 8
`
`4. Ground 4: Claims 5-7, 9, 12-14, 16, 19-21, 23, 26-28, and 30 are anticipated by US.
`
`Patent No. 4,349,921 (“Kuntz”) in'view of WO 90/00037 ("WO ‘037") (submitted in the
`
`19 February 2013 IDS) under 35 U.S.C. § 103(a).
`
`See the explanation provided on pages 96-101, 103,.106-112, 114, 117-123, 125,
`
`128-133, and 135 of the September 14, 2012 request, which is incorporated by reference.
`
`See also Figures 1-4, column 6 lines 9-38 & 58-67 and column 7 lines 1-5 & 51—65 of
`
`Kuntz. Also, in regard to the subject matter added by the 19 February 2013 proposed
`
`amendment to independent claims 5, 12, 19, and 26, W0 ‘037 teaches the added subject
`
`matter (e. g., extendable spikes limitations) including, but not limited to, openings 306 in
`
`the upper and lower bearing surfaces 302, 304, first and second projections 308 as
`
`claimed, pivotal member 307 as claimed, first and second wedges 312, 314 as claimed
`
`and a screw 318 as claimed. See, e.g., Figures 15-17 and pages 5-8 & page 15 line 27 to
`
`page 16 1ine'30.
`
`It would have been obvious to modify Kuntz to include the added
`
`subject matter of the 19 February 2013 amendment in order to provide a device that
`
`would fit any patient without alteration to the interspace of the intervertebral discs, allow
`
`for accurate and firm placement without the need for drilling, and provide a modular
`
`design. In other words, one of ordinary skill in the art would have recognized that
`
`applying the known technique for improvement, as taught by Reference W0 ‘037, to the
`
`implant of Kuntz would have predictably resulted in an improved device. See Dann v.
`
`Johnston, 425 US. 219, 189 USPQ 257 (Fed. Cir. 1976); and In re Nilssen, 851 F.2d
`
`1401, 7 USPQ2d 1500 (Fed. Cir. 1988). Also, combining the known extendable spikes,
`
`17
`
`17
`
`

`

`Application/Control Number: 95/002,380
`Art Unit: 3993
`
`Page 9
`
`as taught by W0 ‘03 7, with the implant of Kuntz would have predictably resulted in a
`
`combination of known elements, each performing the same function as taught by the
`
`prior art references. Accordingly, it would have been obvious to one of ordinary skill'in
`
`the art at the time the invention was made to apply the known technique to improve the
`
`implant or to combine known elements, which would predictably result in the claimed
`
`invention.
`
`5. Ground 5: Claims 10, 11, 17, 18, 24, 25, 31,’ and 32 are obvious over Kuntz in view of
`
`WO 90/00037 (“WO ‘037") (submitted in the 19 February 2013 IDS) and in further view
`
`ofBrantigan ‘327 under 35 U.S.C. § 103(a).
`
`In regard to claims 10, 11, 17, 18, 24, 25, 31, and 32, see the explanation
`
`provided for claims 10 and 11 provided on pages 103-106 of the September 14, 2012
`
`request, which is incorporated by reference.
`
`6. Ground 6: Claims 8, 15, 22, and 29 are obvious over Kuntz in view of WO 90/00037
`
`(”W0 ‘037") (submitted in the 19 February 2013 IDS) and in further view of Brantigan
`
`‘772 under 35 U.S.C. § 103(a).
`
`In regard to claim 8, see the explanation provided on pages 101-103 of the
`
`September 14, 2012 request, which is incorporated by reference.
`
`In regard to claims 15, 22, and 29, see the explanation provided for claim 8.
`
`18
`
`18
`
`

`

`Application/Control Number: 95/002,380
`Art Unit: 3993
`
`Rejections Based on Kim as Primag Reference:
`
`Page 10
`
`7.
`
`Ground 7: Claims 5-7, 10—14, 17-21, 24-28, 31, and 32 are anticipated by US.
`
`Patent No. 5,645,596 (“Kim”) in view of WO 90/00037 ("WO ‘037") (submitted in the
`
`19 February 2013 IDS) under 35 U.S.C. § 103(a).
`
`See the explanation provided on pages 153-159, 163-172, 176-186, 190-199, and
`
`202-205 of the September 14, 2012 request, which is incorporated by reference. See also
`
`Finges 1-4, column 2 lines 29—41, column 3 lines 3-16, column 4 lines 18-46, column 5
`
`lines 13-19, and column 5 line 61 to column 6 line 52 of Kim. Also, in regard to the
`
`subject matter added by the 19 February 2013 proposed amendment to independent
`
`claims 5, 12, 19, and 26, W0 ‘037 teaches the added subject matter (e.g., extendable
`
`spikes limitations) including, but not limited to, openings 306 in the upper and lower
`
`bearing surfaces 302, 304, first and second projections 308 as claimed, pivotal member
`
`307 as claimed, first and second wedges 312, 314 as claimed and a screw 318 as claimed.
`
`See, e.g., Figures 15-17 and pages 5-8 & page 15 line 27 to page 16 line 30.
`
`It would
`
`have been obvious to modify Kim to include the added subject matter of the 19 February
`
`2013 amendment in order to provide a device that would fit any patient without alteration
`
`to the interspace of the intervertebral discs, allow for accurate and firm placement
`
`without the need for drilling, and provide a modular design. In other words, one of
`
`ordinary skill in the art would have recognized that applying the known technique for
`
`improvement, as taught by Reference W0 ‘03 7, to the implant of Kim would have
`
`predictably resulted in an improved device. See Dann v. Johnston, 425 US. 219, 189
`
`USPQ 257 (Fed. Cir. 1976); and In re Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir.
`
`19
`
`19
`
`

`

`Application/Control Number: 95/002,380
`Art Unit: 3993
`
`Page 11
`
`1988). Also, combining the known extendable spikes, as taught by W0 ‘03 7, with the
`
`implant of Kim would have predictably resulted in a combination of known elements,
`
`each performing the same function as taught by the prior art references. Accordingly, it
`
`would have been obvious to one of ordinary skill in the art at the time the invention was
`
`made to apply the known technique to improve the implant or to combine known
`
`elements, which would predictably result in the claimed invention.
`
`In regard to claims 10, 17, 24, and 31, see the explanation provided on pages
`
`163-164 of the request regarding Kim. I In addition, Kim teaches a chamber 11 that is in
`
`communication with the bearing surfaces via the porous material (see column 4 lines 32-
`
`45 of Kim).
`
`8.
`
`Ground 8: Claims 10, 11, 17, 18, 24, 25, 31, and 32 are obvious over Kim in
`
`view of WO 90/00037 ("WO ‘037") (submitted in the :19 February