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 .
Response to Arguments
Applicant's arguments filed 03/03/2026 have been fully considered but they are not persuasive.
In regard to the argument that Palmer does not teach “the gliding blocks are configured to be inserted into the second component from an exterior side of the second component”. The gliding blocks enter into the bearing holder members 218 from the exterior/above and are then fit into the bearing holder inner surface 211. The examiner understands the Applicant’s intention for the gliding blocks to be inserted from the lateral surface toward the median surface of the bearing holder however, the term “exterior side” is broader than the intended functional limitation.
Claim Status
The drawing objection, claim objections, 35 U.S.C 112(a) rejection and the 35 U.S.C. 112(b) rejection of claim 1 have been overcome.
Claims 1-11, 16-18 and 20-24 are examined below.
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 3 and 23 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 3 recites “the second one of the two outward spherical sections” in lines 1-2. There is no first outward spherical section recited in the claims, thus it is unclear if this is the same “at least one of the outward spherical sections” recited in claim 1 lines 3-4 or an additional and separate outward spherical section.
Claim 3 recites “the second one of the two gliding blocks” in line 2. There is no first gliding block recited in the claims, thus it is unclear if this is the same “at least one of the gliding blocks” recited in claim 1 line 6 or an additional and separate gliding block.
Claim 3 recites “an end of the projection at the spherical section” in lines 5-6. However, claim 3 has only referred to the second projection. It is unclear if this is referring to the projections of claims 1 and 3 or only the second projection of claim 3.
Claim 23 recites “the hole of each of the two gliding blocks” in line 1. However, claim 1 only requires a hole in at least one of the gliding blocks. It is unclear if a hole in each of the gliding blocks is required or if only one of the gliding blocks requires a hole.
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) 1-4, 7-11, 16-18 and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Palmer (US 2019/0269517 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]), wherein the gliding blocks are configured to be inserted into the second component from an exterior side of the second component (the gliding blocks come from the exterior of the second component to the interior of the second component, as seen in fig. 1 the gliding blocks can be inserted from the top most exterior side of the second component toward the central/interior of the second component),
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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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 the second one of the two outward spherical sections has a second projection (102, projection, fig. 5) and the second one of the two gliding blocks also comprises a hole (304, opening, fig. 5) into which hole the second projection is inserted (fig. 5, ¶ [0063]), the second projection having a conical shape with an end of the projection away from the outward spherical section of the first component being smaller in circumference than an end of the projections at the spherical section (fig. 5).
Regarding claim 4, Palmer further teaches the second component comprises two mounting recesses (211, inner surface) in which the gliding block are inserted and attached (¶ [0062]).
Regarding claim 7, Palmer further teaches the mounting recesses comprise a step or a pin (see annotated fig. 1, below).
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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 16, Palmer further teaches the second component a yoke shape (216, yoke-like shape, fig. 1) comprising two branches (215, two arms, fig. 1), each branch of the two branches comprising a mounting recess (see annotated fig. 5, below), a median surface (see annotated fig. 5, below) and a lateral surface (see annotated fig. 5, below), wherein the mounting recess comprises an opening between the median surface and the lateral surface (see annotated fig. 5, below).
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Regarding claim 17, Palmer further teaches the second component is a yoke shape (216, yoke-like shape, fig. 1) comprising two branches (215, two arms, fig. 1), each branch of the two branches comprising a median surface (see annotated fig. 5, below) and a lateral surface (see annotated fig. 5, below), wherein an external face (see annotated fig. 5, below) of the gliding block extends through the lateral surface (fig. 5).
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Regarding claim 18, Palmer further teaches the second component is a yoke shape (216, yoke-like shape, fig. 1) comprising two branches (215, two arms, fig. 1), each branch of the two branches comprising a mounting recess (see annotated fig. 5, below), a median surface(see annotated fig. 5, below) and a lateral surface (see annotated fig. 5, below), wherein the mounting recess comprises a mounting recess step (see annotated fig. 5, below), and wherein the mounting recess step is adjacent the median surface (see annotated fig. 5, below).
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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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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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palmer in view of Berelsman (US 2003/0208276 A1).
Regarding claim 5, Palmer fails to teach the gliding blocks are secured with a screw in the mounting recesses. However, Berelsman teaches an elbow prosthesis with gliding blocks (60, condyle portions, fig. 1) that includes the gliding blocks are secured with a screw (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 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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palmer in view of Bergquist (US 2016/0220378 A1).
Regarding claim 6, Palmer fails to teach a projection on the mounting recesses. However, Bergquist teaches an elbow prosthesis with a first component (200, ulnar component, fig. 8), a second component (100, humeral component, fig. 8), gliding blocks (300, liners, fig. 8) and a mounting recess (126, hemispherical recess, fig. 12) wherein the mounting recesses comprise a projection (148, lock shoulder, fig. 12) to hinder rotational movement of the gliding blocks (¶ [0057]). 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 prothesis of Palmer to include the mounting recesses comprise a projection as taught by Bergquist in order to mechanically engage a flange on the articulation liners (¶ [0057], Bergquist).
Claim(s) 20-21 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palmer in view of Bartel (US 2014/0142712 A1).
Regarding claim 20, Palmer fails to teach a gap dimensioned to limit a varus-valgus movement. However, Bartel teaches an elbow prosthesis that includes a gap between the hole and the projection (see annotated fig. 16, below), wherein the gap is dimensioned to limit a varus-valgus movement of the joint prosthesis (¶ [0011], ¶ [0015], ¶ [0086], fig. 17). 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 to include a gap dimensioned to limit a varus-valgus movement as taught by Bartel since it is combining prior art elements according to known methods to yield predictable results, which courts have recognized supports a conclusion of obviousness (see MPEP 2143).
Regarding claim 21, Palmer fails to teach the projection is not in contact with a hole circumferential surface of the hole between a neutral position and a maximum deflection of a varus-valgus movement of the joint prosthesis. However, Bartel further teaches an elbow prosthesis that includes the projection is not in contact with a hole circumferential surface of the hole between a neutral position (fig. 16) 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. 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 to include the projection is not in contact with a hole circumferential surface of the hole between a neutral position and a maximum deflection of a varus-valgus movement of the joint prosthesis as taught by Bartel since it is combining prior art elements according to known methods to yield predictable results, which courts have recognized supports a conclusion of obviousness (see MPEP 2143).
Regarding claim 23, Palmer further teaches the hole of each of the two gliding blocks is cylindrical (figs. 1 and 5) and the projection is conical (fig. 5).
Palmer fails to teach an outer surface of the projection is in line contact with an inner surface of the hole at a maximum deflection of a varus-valgus movement. However, Bartel further teaches an outer surface of the projection is in line contact with an inner surface of the hole (fig. 17). 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 to include an outer surface of the projection is in line contact with an inner surface of the hole at a maximum deflection of a varus-valgus movement as taught by Bartel since it is combining prior art elements according to known methods to yield predictable results, which courts have recognized supports a conclusion of obviousness (see MPEP 2143).
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palmer in view of Lowe (US 3,879,766 A).
Regarding claim 22, Palmer fails to teach a first opening of the two mounting recesses nearer the first component is smaller than a second opening of the two mounting recesses further from the first component. However, Lowe teaches a joint prothesis that includes a first opening of the two mounting recesses nearer the first component is smaller than a second opening of the two mounting recesses further from the first component (see annotated fig. 2, below). 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 to include two openings where the first is smaller than the second as taught by Lowe in order to in order for the smaller flange to snap into the countersunk area (Lowe, col 2 lines 1-14).
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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 TERESA M DUDDEN whose telephone number is (571)272-0435. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, THOMAS BARRETT can be reached at (571) 272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.M.D./Examiner, Art Unit 3774
/THOMAS C BARRETT/SPE, Art Unit 3799
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