DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/19/2026 has been entered.
Priority
This application claims foreign priority to 1058647, filed 10/22/2010.
Status of Claims
Claims 28, 30, 32, 33, 35, and 40 are pending.
Claims 1-27, 29, 31, 34, and 36-39 have been cancelled.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the keel extending longitudinally from the first end of the recess to the second end of the recess (Claim 1 see response to arguments for more explanation) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 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, if the 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 negated by the manner in which the invention was made.
Claim 28, 30, 32, 33, 35, and 40 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tornier US 2005/0049709 A1 in view of Stone et al (Stone) US 2005/0107882 A1, Alepee FR 2923154 A1, Freeman et al (Freeman) USPN 3,992,726, and Bhatnagar et al (Bhatnagar) US 2008/0195108 A1.
Tornier discloses the invention substantially as claimed a glenoid component (2 Figure 2) for use in a shoulder joint comprising:
a first glenoid component (2 Figure 2):
a first body (2) having
a first joint surface (20) comprising a first radius of curvature configured to engage at least one of a first prosthetic humeral head or a first natural humeral head (Figure 1), and
a first bearing surface (18) disposed opposite the first joint surface configured to engage a surface of a first glenoid included in the first shoulder joint (Figure 1), comprising a second radius of curvature (12 lower surface radius is shown best in Figure 2)
a first keel (14) extending from the first body past the first bearing surface (Figure 2).
However, Tornier does not disclose his invention comprises a plurality of not equal sized glenoid components, wherein there is a recess between the keel and the bearing surface, the bearing surfaces are planar, and the bearing surfaces include not equal radii of curvature.
It is old and extremely well known in the art of medical components to provide kits including a variety of components in different not equal sizes and configurations enabling the surgeon to find the perfect fit for each patient. This includes varying a single dimension such as the thickness of a component or a radius of curvature while preserving most of or all other dimensions in order to provide additional spacing and filler to restore bone loss or accommodate expansion or loosing of joints. (For example, additional qualifying prior art includes EP 2135587, WO 97/25943, US 6,436,102, and US 2007/0142918).
Alepee teaches the use of kit comprising at least 2 bone joint components comprising substantially the shape, specifically the radius of the upper articulating surfaces are the same (Abstract and Figure 1) but the thickness of the adjacent layer is varied (1a Figure 1) in the same field of endeavor for the purpose of providing a kit of varied sizes that will provide a specific match for best restoring the natural height to the joint.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the component of Tornier as a kit with additional glenoid components having constant shape and articulating radius of curvature but increasing the size of the some components by increasing thickness of the body of the component as taught by Alepee in order to allow the surgeon to match the component to each patients needed joint height.
Stone teaches the use of a variety of glenoid components with a variety of bearing surfaces which have recesses extending around the keel between it and the bearing surface (64 Figures 6-7) in the same field of endeavor for the purpose of providing space to mate with the component site and allow for ingrowth surrounding the keel.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide all of the glenoid components of the kit of Tornier with a recess positioned between the keel and bearing surface as taught by Stone in order to provide space to mate with the component site and allow for ingrowth.
The recess of Stone (64 Figures 6-7) is depicted in the same manner as the applicant’s Figures 1 and 2. The inner edge of the recess is defined by the keel itself. The outer edge of the recess is defined by the bearing surface. Finally, the recess extends around the entire keel. Therefore, once the same configuration is applied around the keel and abutting the bearing surface of Tonier, the keel of Tonier will extend in the same manner as the applicant’s invention. As seen in Figures 6-7 of Stone the keel extends from a first end (left side) longitudinally to the second end of the recess (right side).
Freeman teaches the use of articulating bone joint components wherein the bottom bearing surfaces are smooth (flat outer surfaces with anchors Figures 1-4) in the same field of endeavor for the purpose of allowing the surgeon to cut back the natural bone to a fresh healthy predetermined planar surface resulting in matching bearing and bone surfaces free from any disease or deformities for all components of the kit regardless of the size.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the bearing surfaces all of the components of the kit of Tonier to be smooth in order to provide the provide the surgeon with matching bearing surfaces and a clean uniform bone surface free from any disease or deformities that will match any component of the kit regardless of the size.
Bhatnagar teaches the use of a kit of articulating bone joint components wherein the bottom bearing surfaces have different dimensions (Figure 5 shows the kit can include groups of components with the bone contacting surface having the same dimension as well as groups of components with the bone contacting surface having different dimension) in the same field of endeavor for the purpose of allowing the surgeon to select the component with most appropriately sized bone contacting surface for each patient from a large kit of varied dimensions
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the kit of Tonier to include additional components with the above modifications as well as adding additional components with bearing surfaces having varied non-equal radius of curvature in order to provide the provide the surgeon with a plurality of options for bearing surfaces to choose from such that the patient gets the optimal contact between the bearing surface and bone.
With regards to claim 30, it is noted that the claim still does not define the thicknesses be taken at the same location of the body, it only need be taken within the middle which spans a large area. In this case Alepee teaches that it is old and well known in the art of articulating components to provide the height between the upper curved surface and lower planar surface with varied thicknesses.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the kit of Tonier to include additional components with varied thicknesses as taught by Alepee in order to accommodate the height needs (reduced height from bone degradation or damage) for each specific patient.
With regards to claims 32-33, Tonier discloses the glenoid components comprise anchors elements 2 extending from the bearing surfaces (Figures 2 and 3).
With regards to claim 35, Bhatnagar teaches that it is old and well known to provide the kit with components with larger and smaller edge to edge expanses (Figure 5).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the kit of Tonier to include additional components with larger and smaller edge to edge expanses as taught by Bhatnagar in order to accommodate the exact width and length needed for different sized patients.
With regards to claim 40, as explained previously both the thickness and expanse requirements of the combination are met by the modified glenoid components of the prior art combination. Specifically, Alepee teaches changing the thickness of the component and Bhatnagar discloses changing the expanses.
Response to Arguments
Applicant's arguments filed 01/23/2026 have been fully considered but they are not persuasive.
The applicant argues that the Stone does not define a recess. This is not persuasive because the applicant has clearly identified them on p7 of their arguments filed on 05/19/2026.
The applicant then argus that the keel of Stone does not extend longitudinally from the first end to the second end of the recess because it stops short of extending to the edges. This argument creates multiple issues for the application.
First, it is arguing a scope narrower than currently being claimed. The claims do not require the keel to extend to the edges. It merely requires the keel to extend to the ends of the recess. The ends are considered to be defined as the right and left halves of the recess on opposite sides of the component. Therefore, the recess of the prior art combination extends from the first end (left side of the recesses identified in the applicant’s marked up figure on page 7) to the second end (right side of the recesses identified in the applicant’s marked up figure on page 7).
Second, if this argument were true, then the applicant’s own invention fails to meet the claimed limitations. This means the limitation is new matter and the drawing objection above must be maintained. As seen in the side-by-side comparison below both the Applicant’s recess and the recess of Stone extend in the same manner. The inner edges of both recesses are defined by the keel itself. The outer edges of both recesses are defined by the bearing surface. The recesses both extend around the entire keel. It is impossible to identify where the keels and bearing surfaces start/stop relative to the recesses because they are all continuously connected. Therefore, the prior art combination reads upon this limitation in the same manner as the applicant’s own invention. If the applicant maintains the argument drawing objections and new matter rejections will also need to be overcome.
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The applicant further argues that claims have been amended to narrow the “different” recitations. This is not persuasive because as explained previously the prior art already teaches that providing kits with these different dimensions varied is old and well known in the art.
Therefore, the rejections are clearly articulated with proper motivations and have been maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER D PRONE whose telephone number is (571)272-6085. The examiner can normally be reached Monday-Friday 10 am - 6 pm (HST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melanie R Tyson can be reached on (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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/Christopher D. Prone/Primary Examiner, Art Unit 3774
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