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 .
The Amendment filed 6/26/2026 has been entered. Claims 49-70 remain pending in this application. Claims 64-68 are withdrawn.
Terminal Disclaimer
The terminal disclaimer filed on 6/26/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 11,103,353 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 102
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 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) 70 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 2006/0229730 A1 to Railey et al. (Railey).
Railey teaches a prosthesis suited for orthopedic implantation that possesses a multi-piece stem component that supports an artificial joint surface that can articulate with another artificial joint surface in various ways (abstract).
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Railey meets the limitations of a method of implanting an intermediate implant (22) of an ankle prosthesis (fig. 13), the method comprising: providing a talar implant (24) and a tibial implant (12), the tibial implant comprising an upper surface (see annotated fig. 13 above), a lower surface (see annotated fig. 13 above), and a slot formed between the upper surface and the lower surface (groove; 92); inserting the intermediate implant between the tibial implant and the talar implant (figs. 13 and 15A-C show the intermediate implant; 22 being inserted between the tibial and talar implants); and inserting an implant lock (detent; 98) at least partially within the slot (92) to fix the position of the intermediate implant relative to the tibial implant (fig. 15C shows the detent/lock inserted within the slot to fix the intermediate implant 22 to the tibial implant 12), the implant lock applying a force that is substantially perpendicular to an axis of rotation of the intermediate implant (22) (the intermediate implant is construed to have an axis of rotation, as shown in annotated fig. 13 above, because it is fully capable of rotating about that axis, at least when the implant is not in an implanted state; further, the lock/detent, applies a force that is substantially perpendicular to the axis of rotation of, at least during the step of the intermediate implant sliding into snap-fit engagement with the tibial implant, as shown in fig. 15A, and therefore meets this limitation as claimed).
Allowable Subject Matter
Claims 49-63 and 69 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not teach or fairly suggest the combination of elements claimed, particularly a method of adjustably implanting an ankle prosthesis made up of an intermediate implant, a tibial implant, and a talar implant, that includes rotating the intermediate implant relative to the tibial implant about a rotational axis defined by a projecting member on the intermediate implant while the tibial implant, talar implant, and intermediate implant are implanted in the ankle and also fixing the position of the intermediate implant relative to the tibial implant by inserting an implant lock between the tibial and talar implants such that the implant lock applies a force that is substantially perpendicular to the axis of rotation of the projecting member of the intermediate implant.
The closest prior art to Railey teaches an ankle prosthesis similar to the claimed invention, including tibial (30), intermediate (combination of 12 and 22), and talar (24) components. However, Railey does not teach rotating the intermediate implant about the axis of rotation of the projecting member relative to the tibial implant while the tibial (30), talar (24), and intermediate implants (combination of 12 and 22) are implanted in the ankle. It would not have been obvious to modify Railey to be rotatable in this manner because the tibial implant is fixedly secured to the intermediate implant such that the joint surface (22) of the intermediate implant is positioned for stable articulation with the talar joint surface (24), as disclosed in paragraph 0136. Railey also teaches an implant lock (312) applying a substantially perpendicular force during connection of the two pieces (12 and 22) of the intermediate component. However, Railey does not teach that the lock is used to fix the position of the intermediate implant relative to the tibial implant. It would not have been obvious to modify Reiley such that the lock fixes the intermediate implant (combination of 12 and 22) relative to the tibial implant (30) since the lock is removed prior to fixation of the intermediate implant relative to the tibial implant, as disclosed in paragraph 0135.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 MELISSA A HOBAN whose telephone number is (571)270-5785. The examiner can normally be reached Monday-Friday 8:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melanie Tyson can be reached at 571-272-9062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.A.H/Examiner, Art Unit 3774
/BRIAN A DUKERT/Primary Examiner, Art Unit 3774
