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 .
Specification
The abstract of the disclosure is objected to because of the following informalities:
At line 1, “Disclosed is” can be inferred and therefore should be removed. Applicant is reminded of the proper language for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
At line 7, it appears that “another” should be changed to --other--. Appropriate clarification or correction are required.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 1:
“reference portion” (i.e., portion or means for reference),
“first adjustment device” (i.e., first device or means for adjustment),
“second adjustment device” (i.e., second device or means for adjustment),
“adjustment portion” (i.e., portion or means for adjustment);
Claim 3:
“tool interface adapted to engage a tool” (i.e., a tool interface or means for engaging a tool);
Claim 5:
“coupling interface for being coupled to a tool” (i.e., a coupling interface or means for being coupled to a tool);
Claim 6:
“latch mechanism” (i.e., a mechanism or means for latching);
Claim 10:
“latching member” (i.e., a member or means for latching),
“engagement member” (i.e., a member or means for engagement); and
Claim 13:
“actuation portion” (i.e., a portion or means for actuation).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, line 6, “the distance” lacks antecedent basis.
Claim 1, line 8, “the orientation” lacks antecedent basis.
Claim 4, lines 3-4, “the maximum width” lacks antecedent basis.
Claim 6, lines 3-4, “the distance” lacks antecedent basis.
Claim 6, line 4, “the orientation” lacks antecedent basis.
Claim 9, line 2, “its end regions” lacks antecedent basis.
Claim 9, line 2, “the longitudinal direction” lacks antecedent basis.
Claim 10, line 6, “said engaging members” lacks antecedent basis.
Claim 12, line 2, “the distance” lacks antecedent basis.
Claim 12, line 2, “the engagement location” lacks antecedent basis.
Claim 13, line 2, “the elastic arm” lacks antecedent basis.
Claim 13, line 3, “the latching member” lacks antecedent basis.
Claim 13, line 3, “the elastic arm” lacks antecedent basis.
It is noted that claim 13, as best understood and for examination purposes, will be treated as depending from claim 10, which provides antecedent basis for the limitations of claim 13.
Claim 14, line 3, “the distance” lacks antecedent basis.
Claim 14, line 4, “the orientation” lacks antecedent basis.
Claim 15, line 7, “the bone tissue” lacks antecedent basis.
Claim 15, line 10, “an” should be changed to --the-- for proper antecedent basis.
Claim 15, line 11, “a” should be changed to --the-- for proper antecedent basis.
Claim 15, line 12, “a” should be changed to --the-- for proper antecedent basis.
Claim 15, line 14, “a” should be changed to --the-- for proper antecedent basis.
In addition, dependent claims are rejected because they depend from and include the limitations of their respective parent claim(s).
Appropriate correction is required.
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.
Claims 1-6, 10, 11 and 13-15, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McGovern et al. (2008/0177337).
Regarding claim 1, McGovern et al. disclose an offset selector 242, 266 (Figs. 2A, 3A, 4 and paras. 0005, 0020, 0025-0028) for determining an offset between an anchoring section and a joint section of a joint implant component (id. and para. 0001), said offset selector comprising:
a reference portion 274 for determining the offset,
a first adjustment device 270/268 (Fig. 3A) to adjust the distance to the reference portion 274, and
a second adjustment device 268/242 (id.) to adjust the orientation about an offset rotary axis (VA) relative to the reference portion 274,
wherein the first adjustment device 270/268 and the second adjustment device 268/242 are coupled to each other (Figs. 3A and 4 and, e.g., paras. 0020, 0025-0027), the first adjustment device 270/268 is connected to the reference portion 274 (id.) and the second adjustment device 268/242 is connected to an adjustment portion 242 (id.), the adjustment portion 242 being movable relative to the reference portion 274 by a distance adjustable via the first adjustment device 270/268 or by an angle adjustable via the second adjustment device 268/242 (id.).
Regarding claim 2, the first adjustment device 270/268 is connected to the reference portion 274 and the second adjustment device 268/242 is connected to the adjustment portion 242 (id.).
Regarding claim 3, the reference portion 274 is provided as a tool interface adapted to engage a tool, e.g., such as a reamer (para. 0026 and Fig. 4).
Regarding claim 4, the reference portion 274 is formed as a recess (defined thereby), having a length which is at least a maximum width of the recess (Fig. 3A).
Regarding claim 5, the adjustment portion 242 comprises a coupling interface 247 (Fig. 2A) for being coupled to a tool 30 in any desired positions or orientations of the coupling interface and tool together, including at least two positions or orientations thereof.
Regarding claim 6, the second adjustment device 268/242 comprises a latch mechanism 258, 260, 2108 (Figs. 2A, 3A) which is adapted to adjust the orientation in steps (paras. 0005, 0020 and 0025).
Regarding claim 10, the latch mechanism 258, 260, 2108 comprises an elastic latch mechanism including an elastic arm 258, 260, the elastic arm being connected to a first body 246 of two bodies 246, 268 (lower cylindrical portion) and comprising a latching member 258 engageable with an engagement member 2108, wherein the two bodies 246, 268 (lower cylindrical portion) are movable in relation to each other and the second body 268 (lower cylindrical portion) comprises a plurality of said engagement members 2108 (Figs. 2A, 3A and paras. 0020 and 0025).
Regarding claim 11, the first body 246 is mounted about the second body 268 (lower cylindrical portion) which has a central axis that acts as a pivot axis for first body 246 being pivotable relative to the second body 268 (lower cylindrical portion) (Fig. 4 and paras. 0005, 0020 and 0025).
Regarding claim 13, the elastic arm 258, 260 has an actuation portion (e.g., the tip thereof; para. 0020, describing how a force can be applied to the tip to disengage the latching member 258) for disengaging the latching member 258 of the elastic arm 258, 260.
Regarding claim 14, the second adjustment device 268/242 comprises an indicator (Fig. 3A; cf. 100 in Fig. 3A) for indicating the orientation of the offset.
Regarding claim 15, McGovern et al. disclose a method for adjusting an offset between an anchoring section and a joint section of a joint implant component using an offset selector 242, 266 (Figs. 2A, 3A, 4 and paras. 0001, 0005, 0020, 0025-0028), in particular an offset selector 242, 266 according to claim 1, wherein the offset is defined by a distance and an orientation (id.) and wherein the method comprises the steps:
bringing a reference portion 274 of the offset selector 242, 266 in contact with a first tool (e.g., a reamer; para. 0026 and Fig. 4) for preparing an anchoring recess in the bone tissue of a patient;
bringing a second tool 30 into engagement with an adjustment portion 242 of the offset selector 242, 266 (Fig. 4 and para. 0026);
adjusting a distance between the reference portion 274 and the adjustment portion 242 by means of a first adjustment device 270/268 (Figs. 3A and paras. 0005, 0020, 0025-0027);
adjusting an orientation between the reference portion 274 and the adjustment portion 242 by means of a second adjustment device 268/242 (id.);
wherein the reference portion 274 and the adjustment portion 242 are coupled in series via the first adjustment device 270/268 and the second adjustment device 268/242 (id. and Fig. 4).
Claim Rejections - 35 USC § 103
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 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.
Claims 7-9 and 12, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over McGovern et al. (2008/0177337).
Regarding claim 7, the latch mechanism 258, 260, 2108 (Figs. 2A, 3A) is a snap body latch mechanism comprising a snap body 258, 260 acting between an outer body 246 and an inner body 268 (lower cylindrical portion) (Figs. 2A, 3A; paras. 0020 and 0025) and being biased in a radial direction (id.), wherein the inner body 268 (lower cylindrical portion) is rotatably arranged in the outer body 246 (id.) and the outer body comprises a plurality of snap recesses 2108 (Fig. 3A), the snap bodies 258, 260 being reversibly engageable with the snap recesses (para. 0020).
Thus, McGovern et al. disclose the claimed invention except for providing at least two of such snap bodies.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date to provide additional snap bodies as desired, e.g., for increased holding strength between the bodies.
Regarding claim 8, the snap body 258, 260 is biased by an elastic insert 260 (i.e., an insert for providing an opposing force to the elastic snap body 258, 260); therefore, the additional snap bodies 258, 260 would likewise be biased by an elastic insert 260.
McGovern et al. disclose the claimed invention except that in McGovern et al. the elastic insert 260 is arranged in a recess in an outward-facing side of the outer body 246 (Fig. 2A) of the rotatable bodies 246, 268 (lower cylindrical portion) instead of a recess in an inner side of the inner body 268 (lower cylindrical portion).
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date to configure the snap bodies in a reverse manner, with the elastic insert 260 arranged in a recess in an inner side of the inner body 268 (lower cylindrical portion) and the detents on the outer body 246, e.g., to predictably achieve an alternate effective means of providing stepwise adjustment.
Regarding claim 9, the elastic insert 260 of the modified device has, in at least one of its end regions along its longitudinal direction, a snap body receiving recess for partially receiving one of the snap bodies 258/260 (Fig. 2A and para. 0020).
Regarding claim 12, a distance between the pivot axis, i.e., the central axis of the second body 268 (lower cylindrical portion) (supra at claim 11) and an engagement location between the latching member 258 and the engagement member 2108 appears to be at least 5 mm (Figs. 2A and 3A). However, the particular dimensions are not explicitly recited.
Nevertheless, it would have been obvious to a person having ordinary skill in the art before the effective filing date to configure the distance between the pivot axis and an engagement location between the latching member and the engagement member to be at least 5 mm, e.g., to provide sufficient distance to accommodate the necessary size and structure of the offset selector 242, 266.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID C COMSTOCK whose telephone number is (571)272-4710. The examiner can normally be reached M-F 9:00-5:00 PST.
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DAVID C. COMSTOCK
Examiner
Art Unit 3773
/DAVID C COMSTOCK/Examiner, Art Unit 3773
/JACQUELINE T JOHANAS/Primary Patent Examiner, Art Unit 3773