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 08/12/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Huebner is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Hubner is a bone implant and from the same field of endeavor as the claimed invention.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant’s arguments, see remarks pages 8-9, filed 08/12/2026, with respect to the rejection(s) of claim(s) 1 and 9 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Oni (GB 2166654 A) in view of Huebner (US 2016/0022425 A1).
Claim Status
Claims 1-2, 5-10 and 13-15 are examined below
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.
Claim(s) 1-2, 5-6, 8-10 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oni (GB 2166654 A) in view of Huebner (US 2016/0022425 A1).
Regarding claim 1, Oni teaches an apparatus (fig. 1) comprising:
a humeral tray (runner, fig. 1) configured to be mounted to a proximal end of a humeral stem (fig. 1, lines 88-96); and
an insert (meniscus, fig. 1) positioned on an outer surface of the humeral tray (fig. 1) configured to articulate with a glenosphere (nipple, fig. 1, lines 88-96);
wherein the insert is not attached to the humeral tray such that the insert can articulate and move relative to the humeral tray (lines 88-96).
Oni fails to teach a constraint ridge. However, Huebner teaches a bone implant with a floating articular member that includes wherein the humeral tray includes a constraint ridge located around a periphery of the humeral tray (72, sidewall, fig. 20), wherein a height of the constraint ridge and a height of the insert are such that the insert is constrained from moving past the constraint ridge (fig. 20, ¶ [0100]); and
wherein the insert includes a circular shape (¶ [0064], fig. 3)and the outer surface of the humeral tray within the constraint ridge defines a circular shape (¶ [0065], fig. 3), wherein the circular shape of the insert is of a smaller diameter than a diameter of the outer surface of the humeral tray within the constraint ridge such that the insert articulates and moves in any direction relative to the humeral tray (fig. 3), and wherein the constraint ridge defines a continuous upstanding straight wall extending around the periphery of the humeral tray without an inward-facing lip or snap-fit retention feature (fig. 20), such that the constraint ridge presents a straight inner surface against which the insert is constrained by contact (fig. 3).
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 humeral tray of Oni to include a constraint ridge as taught by Huebner in order to stop the insert from moving off the humeral tray and 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 2, Oni further teaches the humeral tray includes a concave articulation surface (fig. 1).
Regarding claims 5 and 13, Oni as modified by Heubner discloses the invention substantially as claimed and as discussed above with respect to claim 1, and additionally teaches the insert includes a circumferential groove around an outer periphery of the insert (410, circumrenal groove, fig. 24).
Regarding claims 6 and 14, Oni as modified by Heubner discloses the invention substantially as claimed and as discussed above with respect to claim 1, and additionally teaches the insert has a height higher than a height of the constraint ridge (fig. 20).
Regarding claim 8, Oni further discloses the insert includes a convex articulation surface for articulating with the humeral tray (fig. 1, lines 99-104) and a concave articulation surface for articulating with the glenosphere (fig. 1, lines 99-104), wherein the convex articulation surface has a greater radius than the concave articulation surface (fig. 1).
Regarding claim 9, Oni teaches a system comprising (fig. 1):
a humeral stem configured to be implanted within a humerus (see annotated fig. 1, below);
a glenosphere (nipple, fig. 1) configured to be mounted on a scapula (see annotated fig. 1, below);
a humeral tray (runner, fig. 1) mounted to a proximal end of the humeral stem (fig. 1, lines 88-96);
an insert (meniscus, fig. 1) positioned on an outer surface of the humeral tray (fig. 1) configured to articulate with the glenosphere (lines 88-96);
wherein the insert is not attached to the humeral tray such that the insert can articulate and move relative to the humeral tray (lines 88-96).
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Oni fails to teach a constraint ridge. However, Huebner teaches a bone implant with a floating articular member that includes wherein the humeral tray includes a constraint ridge located around a periphery of the humeral tray (72, sidewall, fig. 20), wherein a height of the constraint ridge and a height of the insert are such that the insert is constrained from moving past the constraint ridge (fig. 20, ¶ [0100]); and
wherein the insert includes a circular shape (¶ [0064], fig. 3) and the outer surface of the humeral tray within the constraint ridge defines a circular shape (¶ [0065], fig. 3), wherein the circular shape of the insert is of a smaller diameter than a diameter of the outer surface of the humeral tray within the constraint ridge such that the insert articulates and moves in any direction relative to the humeral tray (fig. 3), and wherein the constraint ridge defines a continuous upstanding straight wall extending around the periphery of the humeral tray without an inward-facing lip or snap-fit retention feature (fig. 20), such that the constraint ridge presents a straight inner surface against which the insert is constrained by contact (fig. 3).
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 humeral tray of Oni to include a constraint ridge as taught by Huebner in order to stop the insert from moving off the humeral tray and 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 10, Oni further discloses the humeral tray includes a concave articulation surface (see annotated fig. 1, below).
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Claim(s) 7 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oni in view of Heubner as applied to claims 1 and 9 above, and further in view of Lawrence (US 2019/0021867 A1).
Regarding claim 7 and 15, Oni in view of Heubner fails to teach the humeral tray includes a cut-out and the insert includes a post. However, Lawrence teaches a shoulder joint prosthesis that includes the humeral tray includes a cut-out in a central surface of the humeral tray (12, aperture, fig. 3a) and wherein the insert includes a post extending from a bottom surface of the insert (16, trunion, fig. 4a), wherein the post is configured to ride in the cut-out so as to prevent excessive motion of the insert relative to the humeral tray (functional language). The phrase “the post is configured to ride in the cut-out so as to prevent excessive motion of the insert relative to the humeral tray” 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 trunion is considered to be capable of preventing excessive motion of the insert relative to the humeral tray. 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 apparatus and system of Oni and Heubner to include the humeral tray includes a cut-out and the insert includes a post as taught by Lawrence since it is a combining prior art elements according to known methods to yield predicable results, which courts have recognized supports a conclusion of obviousness (see MPEP 2143) and in order to improve range of motion (¶ [0003-0004], Lawrence).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JERRAH C EDWARDS can be reached at 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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/T.M.D./Examiner, Art Unit 3774
/JERRAH EDWARDS/Supervisory Patent Examiner, Art Unit 3774
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