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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/07/2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-11 and 20-27 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Status
The 35 USC 112(b) rejections have been overcome.
Claims 1-11 and 20-27 are examined below.
Claim Objections
Claim 11 objected to because of the following informalities: "a diameter of curvature of the outward spherical sections" should read ". Appropriate correction is required.
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.
Claim 26 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 26 recites “the projection” in line 2. It is unclear if this is the projection on at least one of the outward spherical sections in claim 1 line 4 or the projection of a corresponding mounding recess in claim 25 line 2. The Examiner is examining as if it is the projection of a corresponding mounting recess in claim 25.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4, 7-11, 20-24 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palmer (US 2019/0269517 A1) in view of Pressacco (US 2016/0338840 A1).
Regarding claim 1, Palmer teaches a joint prosthesis (10, elbow prosthesis, fig. 1), comprising a first component (100, ulnar component, fig. 1) and a second component (200, humeral component, fig. 1) being connected via a ball (101, bearing end, fig. 1)-and-socket (300, bearing, fig. 1)-joint, wherein
the first component comprises two outward spherical sections (see annotated fig. 5, below), at least one of the outward spherical sections having a projection (102, projections, fig. 5);
the ball-and-socket-joint comprises two gliding blocks (300, bearing member, fig. 1) each having an inward spherical section (301, articulating surface, fig. 1, ¶ [0062]) and at least one of the gliding blocks comprising a hole (304, opening, fig. 1), the gliding blocks being attached to the second component (fig. 4, ¶ [0062]), the second component comprising two branches facing each other (215, two arm, fig. 1), each branch of the two branches comprising a median surface facing the other branch (211, inner surface, fig. 5), a lateral surface facing away from the other branch (218, bearing holding member, fig. 5, the outside surface),
the outward spherical sections are in gliding engagement with the inward spherical sections of the gliding blocks so that the first component is movably attached to the second component (fig. 5, ¶ [0063]); and
the projection is inserted into the hole of one of the gliding blocks (fig. 5, ¶ [0063]), so as to limit the mobility of the ball-and-socket-joint.
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Palmer fails to teach a mounting recess formed through the branch and the gliding blocks configured to be inserted into the mounting recess from the lateral surface towards the median surface. However, Pressacco teaches an elbow joint replacement that includes a mounting recess formed through the branch from an opening in the lateral surface to the median surface (117, bushing holes, fig. 21), wherein each of the gliding blocks is configured to be inserted into the mounting recess of a respective one of the two branches through the opening in the lateral surface in a direction the lateral surface towards the median surface (¶ [0117]). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the branches of Palmer to include a mounting recess formed through the branch and the gliding blocks configured to be inserted into the mounting recess from the lateral surface towards the median surface as taught by Pressacco in order to provide reciprocal connection and stable positioning (¶ [0115], Pressacco) and since it would be obvious to try as there are a limited number of reasonable ways the gliding blocks can be inserting into the branches.
Regarding claim 2, Palmer further teaches the projection is a conical projection (fig. 5) and an end of the conical projection away from the outward spherical section of the first component is smaller in circumference than an end of the conical projection at the spherical section (fig. 5).
Regarding claim 3, Palmer further teaches a second one of the two outward spherical sections has a second projection ( 102, projection, fig. 5)and a second one of the two gliding blocks also comprises a second hole into which second hole the second projection is inserted (304, opening, fig. 5, ¶ [0063]), the second projection having a conical shape with an end of the second projection away from the second one of the two outward spherical sections being smaller in circumference than an end of the second projection at the second one of the two outward spherical sections (fig. 5).
Regarding claim 4, Palmer as modified by Pressacco discloses the invention substantially as claimed and as discussed above with respect to claim 1, and additionally teaches the second component comprises two mounting recesses in which the gliding blocks are inserted and attached (117, bushing holes, fig. 21, Pressacco).
Regarding claim 7, Palmer as modified by Pressacco discloses the invention substantially as claimed and as discussed above with respect to claim 4, and additionally teaches the mounting recesses comprise a step or a pin (115, annular walls, fig. 25, Pressacco).
Regarding claim 8, Palmer further teaches the first component comprises a bone member (106, stem, fig. 1) and a joint member (101, bearing end, fig. 1) comprising the outward spherical sections and the at least one projection (¶ [0047]).
Regarding claim 9, Palmer further teaches the two outward spherical sections are arranged so that they form a spherical convex joint surface (104, bearing surface, fig. 1 and 5, ¶ [0047]).
Regarding claim 10, Palmer further teaches the second component comprises at least one cut out portion (220, notch, fig. 1) through which the at least one projection of the first component can be inserted (¶ [0059]).
Regarding claim 11, Palmer further teaches a diameter of curvature of the outward spherical sections and the diameter of curvature of the inward spherical sections are substantially equal (fig. 5).
Regarding claim 20, Palmer as modified by Pressacco discloses the invention substantially as claimed and as discussed above with respect to claim 1, and additionally teaches a gap between the hole and the projection (figs. 16 and 25), wherein the gap is dimensioned to limit a varus-valgus movement of the joint prosthesis (¶ [0011], ¶ [0016], ¶ [0104], fig. 17).
Regarding claim 21, Palmer as modified by Pressacco discloses the invention substantially as claimed and as discussed above with respect to claim 1, and additionally teaches the projection is not in contact with a whole circumferential surface of the hole between a neutral position (figs. 16 and 25) and a maximum deflection of a varus-valgus movement of the joint prosthesis (fig. 17). Between a neutral position and a maximum deflection is understood as the first movement out of the neutral position up until just before a maximum deflection is reached. A maximum deflection is not reached until the projection touches the circumferential surface of the hole, thus the projections does not contact the circumferential surface when between the neutral and maximum deflection positions.
Regarding claim 22, Palmer as modified by Pressacco discloses the invention substantially as claimed and as discussed above with respect to claim 1, and additionally teaches a first opening of the two mounting recesses nearer the first component (see annotated fig. 25, below, Pressacco) is smaller than a second opening of the two mounting recesses further from the first component (see annotated fig. 25, below, Pressacco).
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Regarding claim 23, Palmer as modified by Pressacco discloses the invention substantially as claimed and as discussed above with respect to claim 1, and additionally teaches the hole is cylindrical (fig. 1, Palmer) and the projection is conical (fig. 5, Palmer), such that at a maximum deflection of a varus-valgus movement, an outer surface of the projection is in line contact with an inner surface of the hole (fig. 17, Pressacco).
Regarding claim 24, Palmer further teaches a gap between an inner circumference of the hole and an outer circumference of the projection (see annotated fig. 5, below) increases in a direction away from a center of the outward spherical sections (fig. 5).
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Regarding claim 27, Palmer as modified by Pressacco discloses the invention substantially as claimed and as discussed above with respect to claim 10, and additionally teaches the at least one cut-out portion comprises cut-out portions formed in each of the mounting recesses (220, notch, fig. 1, Palmer). The phrase “the cut-out portions are configured to receive the at least one projection of the first component for arranging the first component between the two branches before the gliding blocks are inserted into the mounting recesses” is a functional recitation (see MPEP 2114.II). The prior art is not required to explicitly disclose the recited function, but merely have the capability of performing [or being manipulated to] the recited function in order to meet the claim requirements. In this case, the notches are considered to be capable of receiving the at least one projection of the first component for arranging the first component between the two branches before the gliding blocks are inserted into the mounting recesses.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palmer in view of Pressacco as applied to claim 4 above, and further in view of Berelsman (US 2003/0208276 A1).
Regarding claim 5, Palmer in view of Pressacco fails to teach a screw for securing the gliding blocks. However, Berelsman teaches an elbow joint prosthesis that includes the gliding blocks are secured with a screw in the mounting recesses (64, fastener, fig. 1). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the prosthesis of Palmer and Pressacco to include a screw to secure the gliding blocks as taught by Berelsman in order to prevent the condyle portion from rotating relative to the furcation (¶ [0062], Berelsman).
Claim(s) 6 and 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palmer in view of Pressacco as applied to claims 1 and 4 above, and further in view of Katrana (US 2010/0241236 A1).
Regarding claim 6, Palmer in view of Pressacco fails to teach a projection to hinder rotational movement of the gliding blocks. However, Katrana teaches a modular orthopedic implant that includes a projection to hinder rotational movement (82, protrusion, figs. 21A and 23). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the mounting recesses of Palmer and Pressacco to include a projection to hinder rotational movement as taught by Katrana in order to connect modular parts (figs. 21A and 22) and since it is applying a known technique to a known device ready for improvement to yield predictable results, which courts have recognized supports a conclusion of obviousness (see MPEP 2143).
Regarding claim 25, Palmer in view of Pressacco fails to teach a recess or groove configured to engage a projection. However, Katrana further teaches a recess or groove (84, channel, figs. 21A and 23) configured to engage a projection to prevent rotation (82, protrusion, figs. 21A and 23) and configured to guide insertion of the gliding block into the corresponding mounting recess (figs. 21A and 22). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the gliding blocks of Palmer and Pressacco to include a recess or groove as taught by Katrana in order to connect modular parts (figs. 21A and 22) and since it is applying a known technique to a known device ready for improvement to yield predictable results, which courts have recognized supports a conclusion of obviousness (see MPEP 2143).
Regarding claim 26, Palmer as modified by Pressacco and Katrana discloses the invention substantially as claimed and as discussed above with respect to claim 25, and additionally teaches an opening of the recess or groove is chamfered (fig. 21A) and the engagement between the recess or groove and the projection is configured to align a through hole of the second component (92, fastener aperture, figs. 19B and 22) with a threaded hole of the gliding block (92, fastener aperture, figs. 19B and 22) for receiving a screw (60, fastener, figs. 19B and 22, ¶ [0097]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERESA M DUDDEN whose telephone number is (571)272-0435. The examiner can normally be reached Monday - Tuesday and Thursday - Friday 7:30 am - 6:00 pm EST.
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/T.M.D./Examiner, Art Unit 3774
/YASHITA SHARMA/Primary Patent Examiner, Art Unit 3774
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