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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/01/26 has been entered.
Response to Arguments
Applicant's arguments filed 01/01/26 have been fully considered but they are not persuasive.
On pages 10-19 Applicant argues amendments overcome the rejection of record.
The Examiner respectfully refers to the rejection below regarding amended claims.
Election/Restrictions
Newly amended/submitted claims 27 and 45-47 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Newly amended claim 27 is independent and distinct from the originally filed invention, since it is a subcombination to claim 1’s combination. The combination does not require the particulars of the subcombination, since it does not require a notch. The subcombination has separate utility such as acting as a prosthesis that does not include straight tapered dorsal and volar surfaces within the proximal section.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 27 and 45-47 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5-11, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roux et al. (US 20150342745 A1) hereinafter known as Roux in view of Linscheid et al. (US 5405400 A ) hereinafter known as Linscheid, further in view of Parisi et al. (US 20120101585 A1) hereinafter known as Parisi, and further in view of Naidu (US 20130226306 A1).
Regarding claim 1 Roux discloses a prosthesis for a carpometacarpal joint of a thumb (This is stated as an “intended use” of the claimed device. The applicant is advised that a recitation of the intended use of an invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02 (II). In this case, the patented structure of Roux was considered capable of performing the cited intended use. See, for example [0002]) comprising:
a metacarpal component (2) with a first articular surface that comprises a top surface (11) and a stem (4) configured for insertion into a metacarpal canal of a thumb metacarpal bone to anchor the component to the bone (this is also stated as an “intended use” limitation (See the explanation above regarding these types of limitations). See also Figure 5),
wherein the stem has a discrete proximal section and an opposing discrete distal section that is adjacent to the proximal section (see the annotated figures, below where two distinct and discrete proximal and distal sections are labeled), wherein the proximal and distal sections are defined by tapered dorsal surface and an opposing tapered volar surface (see the annotated figures), wherein the volar surface of the proximal section has a volar taper angle, defined by a change in a thickness of the stem along an entire length of the proximal section, greater than a volar taper angle than the volar surface in the distal section (see the annotated figures), and a dorsal taper angle of the dorsal surface in the proximal section, defined by a change in a thickness of the stem along an entire length of the proximal section, is less than the volar taper angle of the volar surface in the proximal section of the stem defined by a change in the thickness of the stem along an entire length of the distal section of the dorsal surface (see the annotated figures),
a trapezial component (3) having a second articular surface (bottom of item 3) which cooperates with the first articular surface (Figure 1), the trapezial component being configured to be coupled to a trapezium bone (this is stated as an “intended use” of the trapezial component (see the explanation regarding intended use statements, above). See also [0044].);
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but is silent with regards to the shape of the two articular surfaces being saddle shaped, the first surface including a ventral and dorsal lip with a cut-out,
and the proximal and distal sections’ tapers in their distal/volar surfaces being a straight taper so the distal/volar surfaces of the proximal section has a constant taper angle defined by a constant linear change in thickness of the stem along the sections’ entire lengths.
However, regarding claim 1 Linscheid teaches that a prosthesis for a carpometacarpal joint of a thumb can include a metacarpal component with a first articular surface (Column 2 lines 36 first member) and a trapezial component with a second articular surface (Column 2 line 47), each of which include a saddle-shape, which articulate with one another (Abstract; Figures 4-7), wherein the first articular surface includes a ventral lip and a dorsal lip (see the ventral and dorsal lips in Figures 2a-b and d). Roux and Linschied are involved in the same field of endeavor, namely prostheses for the carpometacarpal joint of a thumb. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the prosthesis of Roux by having the articular surfaces be saddle shaped as is taught by Linscheid in order to provide a biomimetic joint which mimics the native joint being replaced.
Further, regarding claim 1 Parisi teaches that joint prostheses which articulate against one another can impinge on adjacent bone, and so the inclusion of a cutout in a joint-adjacent surface can reduce impingement in the direction they bend ([0081]; chamfer prevents impingement in deep flexion). Roux and Parisi are involved in the same field of endeavor, namely joint prostheses. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the prosthesis of the Roux Linscheid Combination for the first articular surface to include a cutout on one (or both) of the lips as is taught by Parisi in order to prevent the potential for impingement on adjacent bone once implanted in one (or both) directions of bending. This Combination is understood to allow the prosthesis to reduce impingement on the trapezium bone during flexion/extension as the claim requires.
Further, as regards whether the cut-out is on the first or second articular surface, the person of ordinary skill would understand that to have the cutout on either the first or second articular surface would have been equally obvious, since its presence would serve the same function on either/both.
Further, regarding claim 1 Naidu teaches a prosthesis for a carpometacarpal joint of a thumb that includes a main body portion (Figure 6 items 72 or 92), a proximal portion (Figure 6 item 76 or 66), and a distal portion (Figure 6 item 94 or 74), wherein the proximal and distal portions are defined by straight tapered distal and volar surfaces (Figure 6 shows both distal and volar surfaces of each part of the proximal/distal sections extending at a straight angle), so the volar surface has a constant taper angle defined by a constant linear change in thickness of the stem along the sections’ entire lengths (see Annotated Figure 6). Roux and Naidu are involved in the same field of endeavor, namely carpometacarpal joint prostheses. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the angles of the tapers of Roux so that they are straight as is taught by Naidu since it has been held by the courts that a change in shape or configuration, without any criticality in operation of the device, is nothing more than one of numerous shapes that one of ordinary skill in the art will find obvious to provide based on the suitability for the intended final application. See MPEP 2144.04 (IV)(B). It appears that the disclosed device would perform equally well shaped as disclosed by Roux. In this case, the Applicant has not described there being any benefit or special reasoning for providing a constant taper angle as opposed to a variable one, which indicates this is not an essential or critical shape difference.
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Regarding claim 6 the Roux Linscheid Parisi Naidu Combination teaches the prosthesis of claim 1 substantially as is claimed,
but is silent with regards to the volar taper angle of the proximal and distal section.
However, regarding claim 6, while the figures of Roux are not understood to be drawn to scale, they are not understood to be completely inaccurate either. The annotated figures of Roux show the volar taper angle of the proximal section being slightly less than 45 degrees, indicating that it is less than about 45 degrees, and the annotated figures of Roux show the volar taper angle of the distal section being only a few degrees deviating from straight vertical (e.g. 00), indicating that it a few degrees above an angle of 00. The person of ordinary skill in the art at the time the invention was filed would have found it obvious to modify the angles of the proximal and distal volar taper angles shown by Roux since a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 (I).
Regarding claim 7 the Roux Linscheid Parisi Naidu Combination teaches the prosthesis of claim 1 substantially as is claimed,
wherein the Combination further teaches the stem is defined by a radio-ulnar taper angle (see the annotated figure where figure 3 shows the stem having two taper angles),
but is silent with regards to the specific angles of the taper angles in each of the proximal and distal sections.
However regarding claim 6, while the figures of Roux are not understood to be drawn to scale, they are not understood to be completely inaccurate either. The annotated figures of Roux show the ratio-ulnar taper angle of the proximal section being small (e.g. less than about 15 degrees), but larger than that of the taper angle in the distal section (which is closer to 0 degrees). The person of ordinary skill in the art at the time the invention was filed would have accordingly found it obvious to modify the radio-ulnar angles of the proximal and distal section shown by Roux so they are 8° and 4° respectively, since a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 (I).
Regarding claim 8 the Roux Linscheid Parisi Naidu Combination teaches the prosthesis of claim 1 substantially as is claimed,
but is silent with regard to the dorsal taper angle in the proximal and distal sections.
However, regarding claim 8, while Roux’s figures are not understood as being drawn to scale, they are not understood to be completely inaccurately drawn either. The annotated figures of Roux show the dorsal taper angle in the distal section being only slightly more than 00, and the dorsal taper angle in the proximal section being only slightly more than 00, but also being slightly larger than the dorsal taper angle of the distal section. The person of ordinary skill in the art at the time the invention was filed would have found it obvious to modify the angles of the proximal and distal dorsal taper angles shown by Roux since a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 (I).
Regarding claim 9 the Roux Linscheid Parisi Naidu Combination teaches the prosthesis of claim 1 substantially as is claimed,
wherein Roux further teaches a length of the distal section of the stem is greater than a length of the proximal section of the stem (while the figures of Roux are not understood to be drawn to scale, the person of ordinary skill in the art, would have viewed the figures of Roux and seen the dorsal side of the distal section of the stem has a longer length than the dorsal side of the proximal section of the stem (see the annotated figures, where the distal and proximal sections delineate to have the dorsal side of the distal section longer).
Regarding claim 10 the Roux Linscheid Parisi Naidu Combination teaches the prosthesis of claim 1 substantially as is claimed,
wherein Roux further discloses, in a cross-section of the stem that is taken perpendicular to a longitudinal axis of the stem, the dorsal surface is flat and the volar surface is curved (see the annotated figures above).
Regarding claim 11 the Roux Linscheid Parisi Naidu Combination teaches the prosthesis of claim 1 substantially as is claimed,
wherein Roux further discloses the stem has rounded corners with a rounding radius for volar corners of the stem being greater than a rounding radius for dorsal corners of the stem, resulting in a cross-section of the stem being flatter dorsally than volarly (see the annotated figures, for example figure 4).
Regarding claim 20 the Roux Linscheid Parisi Naidu Combination teaches the prosthesis of claim 1 substantially as is claimed,
but is silent with regard to whether the first articular surface includes both cutouts.
However, regarding claim 20, it would have been obvious to one of ordinary skill at the time the invention was filed to include cutouts on both surfaces which lie adjacent any bone (opposite one another on the implant), since the simple presence of a bone adjacent the implant indicates the possibility of impingement during motion (e.g. flexion and extension). Since the thumb joint of the Combination both flexes and extends, the cutout on both surfaces would have been obvious to a person of ordinary skill.
Claims 2, 19, 21, and 28-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roux, Linscheid, Parisi, and Naidu as is applied above, further in view of Coon et al. (US 8092545 B2) hereinafter known as Coon.
Regarding claims 2 and 28 the Roux Linscheid Parisi Naidu Combination teaches the prosthesis of claim 1 substantially as is claimed,
but is silent with regards to the trapezial component including a baseplate and insert coupled thereto.
However, regarding claims 2 and 28 Coon teaches a joint component which includes a baseplate (Figure 19 item 202) and an insert with an articular surface coupled thereto (Figure 19 item 206). Roux and Coon are involved in the same field of endeavor, namely prosthetic joints. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the trapezial component of the Combination to include a baseplate and insert as is taught by Coon in order to allow the orientation of the articular surface can be adjusted relative to the fixation portion, to create a physiologically optimized implant.
Regarding claim 29 the Roux Linscheid Parisi Naidu Coon Combination teaches the prosthesis of claim 28 substantially as is claimed,
wherein Coon further teaches the baseplate (Figure 19 item 202) include a first flange portion (Figure 19; Column 10 lines 38-49 describes how the baseplate includes a rib/rim into which part of the stem 213 is inserted (“flange” is defined by Merriam-Webster as “a rib or rim for strength, for guiding, or for attachment to another object”)) and the insert includes a second flange portion (Figure 19 shows the center of the insert including an opening which includes a flange which receives the screw 236 (Column 10 lines 62-34) which are superimposed with respect to one another when the baseplate and insert are also superimposed with respect to one another (Figure 19),
and wherein the joint component includes a through-hole formed therein, with the through-hole passing through the first and second flange portion (Figure 19 shows two through-holes passing through the baseplate 202, and insert 206) for receiving a fastener through both the first and second flange portions (this is stated as an “intended use” of the through-hole (see the explanation in the rejection to claim 1 above), which the through-holes are considered capable of doing. See for example, Figure 19 item 236).
As regards the edge of the prosthesis the flange is located on, the person of ordinary skill in the art at the time the invention was filed would have found it obvious to have the flange located on any surface of the joint component of the Combination, as long as it allows the fastening of the baseplate and insert.
Further, as regards the intended use of the (not-claimed) screw intended to extend through the through-holes, the Examiner notes that when the invention is utilized within the trapezial prosthesis of the Combination, which does not require an anchoring stem into bone, the person of ordinary skill would understand that the fastening screw of Coon would be obviously capable of fixing the trapezial component to the trapezium bone, as the claim requires it to be capable of.
Regarding claim 30 the Roux Linscheid Parisi Naidu Coon Combination teaches the prosthesis of claim 29 substantially as is claimed,
wherein Coon further teaches the fastener includes a bone screw (this is not a part of the positively claimed prosthesis; see also Figure 19 item 236), and
wherein the baseplate further includes an integral fixation peg (Figure 19 item 204; “integral” is defined by Merriam-Webster as “essential to completeness; constituent; formed as a unit with another part; composed of constituent parts; lacking nothing essential: entire”),
wherein the through-hole is formed along an axis parallel to the longitudinal axis of the peg, or along an axis which diverges from that axis (this is inherent. See also Figure 19).
Regarding claim 19 the Roux Linscheid Parisi Naidu Combination teaches the prosthesis of claim 1 substantially as is claimed,
wherein Linschied further teaches the articulation of the first surface on the second surface comprises a toroid-on-toroid articulation (Figures 4-7),
but the Combination is silent with regards to the second articular surface being formed in an insert that is coupled to a baseplate of the trapezial component.
However, regarding claim 19 Coon teaches a joint component which includes a baseplate (Figure 19 item 202) and an insert with an articular surface coupled thereto (Figure 19 item 206). Roux and Coon are involved in the same field of endeavor, namely prosthetic joints. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the trapezial component of the Combination to include a baseplate and insert as is taught by Coon in order to allow the orientation of the articular surface can be adjusted relative to the fixation portion, to create a physiologically optimized implant.
Regarding claim 21 the Roux Linscheid Parisi Naidu Coon Combination teaches the prosthesis of claim 19 substantially as is claimed,
wherein Linscheid further teaches the first saddle shape is defined by a first radius in a radio-ulnar direction and by a second radius in a dorsal-volar direction, and the second saddle shape is defined by a third radius in the radio-ulnar direction and a fourth radius in the dorsal-volar direction (Figures 4-7),
but is silent with regards to the ratio of the fourth:second radius, and the ratio of the first:third radius.
However, regarding claim 21, Linscheid also teaches how the interface between the metacarpal and trapezial components mimic the normal anatomy of the joint being replaced (Column 6 lines 49-53). The person of ordinary skill in the art at the time the invention was filed would have accordingly found it obvious to adjust the ratios of the fourth:second and first:third radii to fall within the claimed range in order to mimic the natural and expected ratios for the joint interface being replaced.
Claims 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roux, Linscheid, Parisi and Naidu as is applied above, further in view of Wallick (US 20130345827 A1).
Regarding claim 12 the Roux Linscheid Parisi Naidu Combination teaches the prosthesis of claim 1 substantially as is claimed,
but is silent with regards to the stem including a solid inner portion and a porous outer portion, the stem having a non-homogenous elastic modulus due to a ratio of a thickness of the solid inner portion and a thickness of the porous outer portion varying in a longitudinal direction of the stem.
However, regarding claim 12 wherein Wallick teaches a prosthetic joint component’s stem includes a solid inner portion (Figure 3 item 20) and a porous outer portion (Figure 3 item 30), the stem having a ratio of a thickness of the solid inner portion and a thickness of the porous outer portion varying in a longitudinal direction of the stem to have a non-homogenous elastic modulus (Figure 3; the elastic modulus inherently varies to result in the desired stress shielding (Wallick Abstract)). Roux and Wallick are involved in the same field of endeavor, namely joint prostheses. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the prosthesis of the Combination so that the stem includes a solid inner portion and a porous outer portion with a ratio of thickness varying between the outer portion and inner solid portion, as is taught by in order to minimize stress shielding (Wallick Abstract).
Regarding claim 13 the Roux Linscheid Parisi Naidu Wallick Combination teaches the prosthesis of claim 1 substantially as is claimed,
wherein Wallick further teaches the higher elastic modulus is at the proximal end of the stem (Figure 3 shows the ratio of the porous polymer to solid metal core varying so the highest amount of (high modulus) metal is at the proximal end).
Claims 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roux, Linscheid, Parisi, Naidu, and Wallick as is applied above, further in view of Turner et al. (US 20110202140 A1) hereinafter known as Turner.
Regarding claim 14 the Roux Linscheid Parisi Naidu Wallick Combination teaches the prosthesis of claim 12 substantially as is claimed,
but is silent with regards to whether or not there is a linear progression from the proximal to distal end.
However, regarding claim 14 Turner teaches the elastic modulus of a stem component of a prosthetic joint can have an elastic modulus that varies with a linear progression from the proximal end to the distal end ([0023]), whereby the elastic modulus progressively decreases in a direction from the proximal to the distal end (Figure 2a shows the stem varying its modulus along gradient lines 134; [0022]). Roux and Turner are involved in the same field of endeavor, namely joint prostheses. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the Combination to have a linearly progressing change in the elastic modulus as is taught by Turner in order to ensure the prosthesis does not include any strong points of stress concentration throughout the body of the stem which would transfer to surrounding bone after implantation and cause fracture of either the implant or the bone.
Regarding claims 15-16 the Roux Linscheid Parisi Naidu Wallick Turner Combination teaches the prosthesis of claim 13 substantially as is claimed,
wherein Turner further teaches the elastic modulus at the proximal end is 80 GPa (between 50-120 GPa) (clm 16) and the elastic modulus at the distal end is 49 GPa (between 12-118 GPa (clm 16) ([0023] the modulus can be between 1.1-110 GPa).
Claims 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roux, Linscheid, Parisi, and Naidu as is applied above, further in view of O’Driscoll et al. (US 20050216090 A1) hereinafter known as O’Driscoll.
Regarding claim 17 the Roux Linscheid Parisi Naidu Combination teaches the prosthesis of claim 1 substantially as is claimed,
wherein Roux further discloses the proximal section of the stem has a porous surface ([0042]),
but is silent with regards to the distal section of the stem has a polished surface.
However, regarding claim 17 O’Driscoll teaches a prosthesis in which a proximal section of a prosthesis has a porous surface and a distal section of the prosthesis has a polished surface ([0049]). Roux and O’Driscoll are involved in the same field of endeavor, namely joint prostheses. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the prosthesis of the Combination to include a porous region near the proximal end and a polished surface near the distal end as is taught by O’Driscoll in order to facilitate stem insertion into bone, while also allowing the stem to encourage bone ongrowth or ingrowth.
Regarding claim 18 the Roux Linscheid Parisi Naidu O’Driscoll Combination teaches discloses the prosthesis of claim 17 substantially as is claimed,
wherein Roux further discloses the distal section is longer than the proximal region of the stem (see the annotated figures above),
but is silent with regards to the proximal section being 30-45% the length of the stem.
However, the person of ordinary skill in the art, when viewing Roux, would have found it obvious for the proximal region to be 30-45% the length of the stem, since the courts have held that choosing from a finite number of identified, predictable solutions with a reasonable expectation of success results in a prima facie case of obviousness. See MPEP 2143 (I)(E). In this case, the person of ordinary skill would find it obvious to try any amount of proximal/distal ratio to optimize bone ingrowth, strength of anchoring, and implant longevity.
Claims 22-24, 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roux, Linscheid, Parisi, and Naidu as is applied above, further in view of Ball et al. (US 20030216813 A1) hereinafter known as Ball.
Regarding claim 22 the Roux Linscheid Parisi Naidu Combination teaches the prosthesis of claim 1 substantially as is claimed,
wherein Linscheid further teaches the trapezial component has an articulation region that includes the second articular surface (Figure 3a-d) and a fixation region (Figure 3a-d item 30) for contacting and extending into the trapezium bone (this is stated as an “intended use” of the fixation region (see the explanation in the rejection to claim 1 above regarding intended use limitations). See also Linscheid Column 5 lines 2-3),
wherein the fixation region includes at least one fixation peg (Figures 3a-d item 30),
but is silent with regards to there being a plurality of spikes that extend outwardly from an underside of the articulation region.
However, regarding claim 22 Ball teaches a joint component which includes a fixation peg (Figure 1 item 42) and a plurality of spikes that extend outwardly from an underside of an articulation region (Figure 1 item 80). Roux and Ball are involved in the same field of endeavor, namely joint prostheses. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the prosthesis of the Combination to include spikes as is taught by Ball in order to provide additional fixation into the bone for additional securement.
Regarding claim 23 the Roux Linscheid Parisi Naidu Ball Combination teaches the prosthesis of claim 22 substantially as is claimed,
wherein Ball further teaches the fixation peg has a cruciform shaped cross section with a cylindrical center and radial flutes that extend radially outwardly from the cylindrical center (Figure 13 shows peg 42 with radial flutes 44) and are configured to engage bone (this is stated as an “intended use” of the fixation peg (see the explanation in the rejection to claim 1 above regarding intended use claims). See also [0049]).
Regarding claim 24 the Roux Linscheid Parisi Naidu Ball Combination teaches the prosthesis of claim 22 substantially as is claimed,
wherein Linscheid further teaches the fixation peg is perpendicular to the underside of the articulation region (see Figures 3a-d).
Regarding claim 26 the Roux Linscheid Parisi Naidu Ball Combination teaches the prosthesis of claim 22 substantially as is claimed,
wherein Ball further teaches each spike is oriented perpendicular to the underside of the articulation region OR is oriented parallel to the fixation peg (Figure 1).
Claims 42-44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roux, Linscheid, Parisim, and Naidu as is applied above, further in view of Clarke et al. (US 20190167437 A1) hereinafter known as Clarke.
Regarding claims 42-44 the Roux Linscheid Parisi Naidu Combination teaches the prosthesis of claim 1 substantially as is claimed,
wherein Roux further discloses the metacarpal component is defined by a main body portion with an underside from which the stem extends (see the annotated figures above),
but is silent with regards to the main body portion including a dorsal access cut-out OR a second cut-out.
However, regarding claims 42-44 Clarke teaches a prosthesis which includes a dorsal access cut-out in the form of a notch formed along a dorsal surface which extends completely along the dorsal edge from the articular surface to the underside (Figure 4b between 31 and 34), the cut-out being centrally located (claim 43) and the edge being in an outermost surface of the main body (claim 44) (Figure 4b). Roux and Clarke are involved in the same field of endeavor, namely joint prostheses. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the prosthesis of the Combination to include the dorsal access cut-out in order to provide a neck region between the articular surface and stem to enable the articular surface to function better ([0108]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jacqueline Woznicki whose telephone number is (571)270-5603. The examiner can normally be reached M-Th 10am-6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerrah Edwards can be reached on 408-918-7557. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jacqueline Woznicki/Primary Examiner, Art Unit 3774 04/29/26
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