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 .
Reopening
In view of the appeal brief filed on 1/20/2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth above.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/THOMAS C BARRETT/ SPE, Art Unit 3799
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 10-11, 14-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (EP2774580A1).
In regard to claim 10, Wang discloses an orthopaedic implant, comprising:
an implant body 502 comprising a surface having an opening formed therein (opening fits 504, 506; fig 20);
a bonded insert 506 comprising a bare portion 516 disposed within the opening and a bonded portion 504 coupled to the bare portion (516 is bare below 504; since 504 is a separate layer it is bonded: pg 8, Col 14, lines 5-10: molded onto, selective laser melting techniques),
the bare portion (516) being diffusion bonded to the implant body 502 (diffusion bonded is a product by process limitation, patentable only based on the end structure of a bonded insert to the implant body which has been met; Col 14 lines 4-10: selective laser sintering),
wherein the bare portion 516 comprises at least one flange (see annotated figure, the ends are flanges), the opening defining an opening width and the at least one flange (see annotated figure) defining a flange width that is greater than the opening width (the flange width is larger than at least a portion of the opening towards the proximal end);
and a porous ingrowth material 504 diffusion bonded (product by process; Col 14, lines 4-10: selective laser sintering) to the bonded portion 516 and disposed between the bonded portion and the opening (fig 20), wherein the bonded portion of the bonded insert 516 comprises a metal. [0035: fully dense intermediate second metal layer] Diffusion bonded is a product by process limitation, patentable only based on the end structure of a bonded insert to the implant body which has been met.
In regard to claim 11, Wang discloses the claim limitations as discussed in the rejection of claim 10, and further teaches the porous ingrowth material 504 covers the opening (covers at least a portion of the opening as shown in figure 20).
In regard to claim 14, Wang discloses the claim limitations as discussed in the rejection of claim 10, and further teaches the opening is defined by a plurality (defined as two or more) of walls extending from a bottom surface. (see figure 20, side walls around external flange, top wall)
In regard to claim 15, Wang discloses the claim limitations as discussed in the rejection of claim 14, and further teaches the walls perpendicularly extend from the bottom surface. Since as shown in figure 21 the flange fits into the walls of implant 502 and the two pieces fit together flushly as shown in figure 20, at least a small portion of the walls must perpendicularly extend from the bottom surface.
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Claim Rejections - 35 USC § 103
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) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (EP2774580A1).
In regard to claim 17, Wang meets the claim limitations as discussed in the rejection of claim 10, and teaches a plurality (defined as two or more) of bonded inserts 506 (figures 19-20) but does not teach the implant body comprises a plurality of openings comprising a plurality of bonded inserts. The claim is currently written in a manner that does not link the opening or bonded insert of claim 1 to those in claim 17. If the opening and bonded insert of claim 1 are one of the plurality of openings and bonded inserts, this should be made clear in the claims.
The embodiment of figures 11-12 of Wang teach the implant body comprises a plurality of openings (see openings through which inserts 332 fit in figures 11-12), the orthopaedic implant comprising a plurality of bonded inserts 332a each having a respective bare portion 332 disposed in a respective one of the openings. (see figures 11-12) The central bare portion is within the opening. If the applicant intends the bare portion to be externally against the opening, the claim should be amended accordingly.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to make the inserts of the embodiment of figures 19-20 modularly connected as taught by the embodiments of figures 14-16, 12, because this allows the implant to be modified for different shapes of spikes to be used depending on the individual needs of the user and allows multiple different shapes to be used in one implant if required.
Response to Arguments
The applicant’s arguments regarding the combination of references have been found convincing and the application has been reopened with new grounds of rejection as noted above. Accordingly, all arguments are moot in view of new grounds of rejection.
Conclusion
Barnett (WO2008/048821A2) is also relevant prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIE BAHENA whose telephone number is (571)270-3206. The examiner can normally be reached M-F 9-3.
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/CHRISTIE BAHENA/Primary Examiner, Art Unit 3774