`Customer No. 22882
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of:
`)
`)
`Peter M. Bonutti
`)
`Serial No.: 13/407,448
`)
`Filed: February 28, 2012
`)
`For: METHODS FOR USING A
`PATIENT SPECIFIC ALIGNMENT)
`DEVICE
`)
`
`Confirmation No.: 4919
`
`Group Art Unit: 3733
`Examiner: Pedro Philogene
`
`Mail Stop AMENDMENT
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`INFORMATION DISCLOSURE STATEMENT UNDER 37 C.F.R.
`
`1.97 b
`
`Pursuant to 37 C.F.R. §§ 1.56 and 1.97(b), Applicant brings to the attention of
`
`the Examiner the documents listed on the attached Form PTO/SB/08. This Information
`
`Disclosure Statement is being filed before the mailing date of a first Office Action on the
`
`merits for the above-referenced application.
`
`The present Application is a continuation of Application No. 13/221 ,033, filed
`
`August 30, 2011 (Publication No. 2012/0010623), which is pending; which is a
`
`continuation of Application No. 12/795,935, filed June 8, 2010 (Publication No.
`
`2010/0312350), which is pending; which is a continuation of Application No. 11/684,103,
`
`filed March 9, 2007, now US. Patent No. 7,828,852 (“‘852 patent”); which is a
`
`continuation of Application No. 10/681 ,526, filed October 8, 2003, now US. Patent No.
`
`7,635,390; which is a continuation of Application No. 10/191 ,751, filed July 8, 2002, now
`
`US. Patent No. 7,104,996; which is a continuation-in-part of each of the following:
`
`Application No. 09/976,396, filed October 11, 2001, now US. Patent No. 6,770,078;
`
`Application No. 09/941,185, filed August 28, 2001, now US. Patent No. 6,702,821
`
`(“‘821 patent”); Application No. 09/566,070, filed May 5, 2000, now US. Patent No.
`
`6,575,982; Application No. 09/737,380, filed December 15, 2000, now US. Patent No.
`
`
`
`6,503,267; Application No. 09/569,020, filed May 11, 2000, now U.S. Patent No.
`
`6,423,063; Application No. 09/483,676, filed January 14, 2000, now U.S. Patent No.
`
`6,468,289; Application No. 09/798,870, filed March 1, 2001, now U.S. Patent No.
`
`6,503,277; Application No. 09/526,949, filed March 16, 2000, now U.S. Patent No.
`
`6,620,181; and Application No. 09/789,621, filed February 21, 2001, now U.S. Patent
`
`No. 6,635,073; upon which Applicant relies for the benefits provided in 35 U.S.C. § 120.
`
`Applicant brings to the attention of the Examiner the following applications which
`
`claim priority to the present application: Application Nos. 13/407,968, filed February 29,
`
`2012 (Publication No. 2012/0221017), which is pending; 13/802,886, filed March 14,
`
`2013, now U.S. Patent No. 8,632,552; 13/802,914, filed March 14, 2013, now U.S.
`
`Patent No. 8,641,726; 13/802,942, filed March 14, 2013, now U.S. Patent No.
`
`8,623,030; 14/065,545, filed October 29, 2013 (Publication No. 2014/0088598), which is
`
`pending; 14/065,585, filed October 29, 2013 (Publication No. 2014/0058408), which is
`
`pending; and 14/065,630, filed October 29, 2013 (Publication No. 2014/0058393), which
`
`is pending.
`
`Additionally, Applicant brings to the attention of the Examiner Application Nos.
`
`07/926,481, filed August 6, 1992, now U.S. Patent No. 5,344,458; 08/234,974, filed April
`
`28, 1994, now U.S. Patent No. 5,549,683; 10/005,017, filed December 4, 2001, now
`
`U.S. Patent No. 6,652,532; 10/795,887, filed March 8, 2004, now U.S. Patent No.
`
`7,959,635 (“‘635 patent”); 10/684,904, filed October 14, 2003, now U.S. Patent No.
`
`8,133,229 (“‘3229 patent”); 10/722,102, filed November 25, 2003, now U.S. Patent No.
`
`7,806,896 (“‘896 patent”); 10/727,290, filed December 3, 2003, now U.S. Patent No.
`
`7,615,054; 11/037,855, filed January 18, 2005, now U.S. Patent No. 7,892,236;
`
`10/003,996, filed November 15, 2001, now U.S. Patent No. 7,896,880; 11/037,535, filed
`
`January 18, 2005, now U.S. Patent No. 7,510,557; 11/170,969, filed June 30, 2005,
`
`now U.S. Patent No. 7,749,229 (“‘9229 patent”); 11/171,676, filed June 30, 2005, now
`
`U.S. Patent No. 7,708,740 (“‘740 patent”); 11/171,700, filed June 30, 2005, now U.S.
`
`Patent No. 7,806,897 (“‘897 patent”); 11/171,902, filed June 30, 2005, now U.S. Patent
`
`No. 7,708,741; 11/684,178, filed March 9, 2007, now U.S. Patent No. 7,931,690 (“‘690
`
`patent”); 11/928,898, filed October 30, 2007, now U.S. Patent No. 7,837,736 (“‘736
`
`patent”); 12/784,724, filed May 21, 2010, now U.S. Patent No. 8,425,522; 13/859,509,
`
`
`
`filed April 9, 2013 (Publication No. 2013/0226185), which is pending; 07/799,560, filed
`
`November 27, 1991, now US. Patent No. 5,514,143; 13/859,516, filed April 9, 2013
`
`(Publication No. 2013/0237989), which is pending; 10/888,783, filed July 9, 2004, which
`
`is pending; and 13/929,861, filed June 28, 2013 (Publication No. 2013/0289729), which
`
`is pending.
`
`Applicant also brings to the attention of the Examiner the file history (the Office
`
`Actions and responses) of each of the above-referenced patents and applications.
`
`While the individual Office Actions and responses are not attached hereto, they are
`
`available in each of the file wrappers in the Patent Office, through PAIR, or will be
`
`provided by the Applicant at the Examiner’s request.
`
`Copies of the listed non-U.S. patent documents not previously submitted are
`
`attached. Copies of the other listed non-U.S. patent documents were previously
`
`submitted in a prior application, upon which Applicant relies for the benefits provided in
`
`35 U.S.C. § 120. Applicant respectfully requests that the Examiner consider the listed
`
`documents and indicate that they were considered by making appropriate notations on
`
`the attached form.
`
`The ‘821, ‘9229, ‘896, ‘736, ‘635, and ‘3229 patents are the subject of litigation in
`
`the United States District Court for the District of Delaware, Civil Action No. 1:12-cv-
`
`01107, hereinafter referred to as Litigation 1.
`
`The ‘821, ‘896, and ‘3229 patents are the subject of litigation in the United States
`
`District Court for the District of Delaware, Civil Action No. 1:12-cv-01110, hereinafter
`
`referred to as Litigation 2.
`
`The ‘821, ‘9229, ‘896, and ‘3229 patents were the subject of litigation in the
`
`United States District Court for the District of Delaware, Civil Action No. 1:12-cv-01111,
`
`hereinafter referred to as Litigation 3. Pursuant to agreement of the parties, Litigation 3
`
`was dismissed without prejudice.
`
`The ‘896 patent is the subject of litigation in the United States District Court for
`
`the District of Delaware, Civil Action No. 1:12-cv-01109, hereinafter referred to as
`
`Litigation 4.
`
`
`
`The ‘896 patent is also the subject of litigation in the United States District Court
`
`for the District of Massachusetts, Civil Action No. 1:13-cv-10377, hereinafter referred to
`
`as Litigation 5.
`
`The ‘821, ‘740, ‘897, ‘896, ‘852, ‘690, and ‘3229 patents are the subject of
`
`litigation in the United States District Court for the Northern District of Indiana, Civil
`
`Action No. 3:13-cv-00176, hereinafter referred to as Litigation 6.
`
`The ‘896, ‘821, and ‘3229 patents are the subject of litigation in the United States
`
`District Court for the District of Massachusetts, Civil Action No. 1:12-cv-11667,
`
`hereinafter referred to as Litigation 7. Documents associated with Litigation 7 are
`
`identified in the Examiner’s lnitials column on the attached Form PTO/SB/08 by the
`
`designation “Lit. 7.”
`
`Applicant notes that the ‘9229 patent is the subject of Inter Partes Review No.
`
`lPR2013-00605, filed September 25, 2013, hereinafter referred to as the ‘9229 IPR.
`
`The requester of the ‘9229 IPR asserted that various references were pertinent to the
`
`issue of validity of the ‘9229 patent. Applicant notes for the Examiner on the attached
`
`Form PTO/SB/08 in the column for the Examiner’s initials the references from the ‘9229
`
`IPR. The references from the ‘9229 IPR are identified by the designation “‘9229 IPR.”
`
`The ‘9229 IPR has been terminated pursuant to agreement of the parties.
`
`Applicant notes that the ‘3229 patent was the subject of Inter Partes Review No.
`
`lPR2013-00621, filed September 25, 2013, hereinafter referred to as the ‘3229 IPR.
`
`The requester of the ‘3229 IPR asserted that various references were pertinent to the
`
`issue of validity of the ‘3229 patent. Applicant notes for the Examiner on the attached
`
`Form PTO/SB/08 in the column for the Examiner’s initials the references from the ‘3229
`
`IPR. The references from the ‘3229 IPR are identified by the designation “‘3229 IPR.”
`
`The ‘3229 IPR was terminated pursuant to a disclaimer of the subject claims.
`
`Applicant notes that the ‘896 patent is the subject of Inter Partes Review No.
`
`lPR2013-00629, filed September 26, 2013, hereinafter referred to as the ‘896 IPR. The
`
`requester of the ‘896 IPR asserted that various references were pertinent to the issue of
`
`validity of the ‘896 patent. Applicant notes for the Examiner on the attached Form
`
`PTO/SB/08 in the column for the Examiner’s initials the references from the ‘896 IPR.
`
`The references from the ‘896 IPR are identified by the designation “8% IPR.”
`
`
`
`Applicant notes that the ‘896 patent is the subject of a second Inter Partes
`
`Review No. lPR2014-00321, filed January 3, 2014, hereinafter referred to as the ‘896
`
`IR2. The requester of the ‘896 |R2 asserted that various references were pertinent to
`
`the issue of validity of the ‘896 patent. Applicant notes for the Examiner on the attached
`
`Form PTO/SB/08 in the column for the Examiner’s initials the references from the ‘896
`
`IR2. The references from the ‘896 |R2 are identified by the designation “8% IR2.”
`
`Applicant notes that the ‘896 patent is the subject of a third Inter Partes Review
`
`No. lPR2014-00354, filed January 15, 2014, hereinafter referred to as the ‘896 IR3.
`
`The requester of the ‘896 |R3 asserted that various references were pertinent to the
`
`issue of validity of the ‘896 patent. Applicant notes for the Examiner on the attached
`
`Form PTO/SB/08 in the column for the Examiner’s initials the references from the ‘896
`
`IR3. The references from the ‘896 |R3 are identified by the designation “8% IR3.”
`
`Applicant notes that the ‘821 patent was the subject of Inter Partes Review No.
`
`lPR2013-00620, filed September 25, 2013, hereinafter referred to as the ‘821 lPR. The
`
`requester of the ‘821 lPR asserted that various references were pertinent to the issue of
`
`validity of the ‘821 patent. Applicant notes for the Examiner on the attached Form
`
`PTO/SB/08 in the column for the Examiner’s initials the references from the ‘821 lPR.
`
`The references from the ‘821 lPR are identified by the designation “‘821 lPR.” The ‘821
`
`lPR was terminated pursuant to a disclaimer of the subject claims.
`
`Applicant notes that the ‘736 patent is the subject of Inter Partes Review No.
`
`lPR2014-00191, filed November 22, 2013, hereinafter referred to as the ‘736 lPR. The
`
`requester of the ‘736 lPR asserted that various references were pertinent to the issue of
`
`validity of the ‘736 patent. Applicant notes for the Examiner on the attached Form
`
`PTO/SB/08 in the column for the Examiner’s initials the references from the ‘736 lPR.
`
`The references from the ‘736 lPR are identified by the designation “‘736 lPR.”
`
`Applicant notes that the ‘635 patent is the subject of Inter Partes Review No.
`
`lPR2014-00311, filed December 31, 2013, hereinafter referred to as the ‘635 lPR. The
`
`requester of the ‘635 lPR asserted that various references were pertinent to the issue of
`
`validity of the ‘635 patent. Applicant notes for the Examiner on the attached Form
`
`PTO/SB/08 in the column for the Examiner’s initials the references from the ‘635 lPR.
`
`The references from the ‘635 lPR are identified by the designation “‘635 lPR.” Copies
`
`
`
`of litigation and IPR documents not already provided are available to the Examiner upon
`
`request.
`
`An asterisk “*” identifies references that were disclosed by Applicant with
`
`previously filed lDSs that are being relisted to ensure that the Examiner is aware that
`
`the defendant in Lit. 7 or the requester from one of ‘9229 IPR, ‘896 IPR, ‘896 IR2, ‘896
`
`IR3, ‘821 IPR, ‘635 IPR, ‘736 IPR, or ‘3229 IPR has asserted that these references are
`
`pertinent to at least one of the ‘9229, ‘896, ‘821, ‘635, ‘736, and ‘3229 patents.
`
`This submission does not represent that a search has been made or that no
`
`better art exists and does not constitute an admission that each or all of the listed
`
`documents are material or constitute "prior art." If the Examiner applies any of the
`
`documents as prior art against any claim in the application and Applicant determines
`
`that the cited documents do not constitute "prior art" under United States law, Applicant
`
`reserves the right to present to the office the relevant facts and law regarding the
`
`appropriate status of such documents.
`
`Applicant further reserves the right to take appropriate action to establish the
`
`patentability of the disclosed invention over the listed documents, should one or more of
`
`the documents be applied against the claims of the present application.
`
`If there is any fee due in connection with the filing of this Statement, please
`
`charge the fee to our Deposit Account No. 50-1068.
`
`Respectfully submitted,
`
`MARTIN & FERRARO, LLP
`
`By:
`
`/Brent D. Martin/
`Brent D. Martin
`
`Registration No. 62,717
`
`Dated: April 9, 2014
`
`5151 Headquarters Drive, Suite 170
`
`Plano, Texas 75024
`Telephone:
`(972) 668-3050
`Facsimile:
`(972) 668-3056
`
`