DETAILED ACTION
The following is a final office action is response to communications received on 04/22/2026. Claims 1-13, 15, 18-20, 27, 44, 50 & 51 are currently pending and addressed below. Claims 1-11 & 27
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 with respect to claims 12 & 20 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection. The Examiner notes the change in prior art was necessitated by the Applicant’s amendments.
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.
Claim(s) 12, 13, 15, 18, 19, 20, 44, 50 & 51 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scrafton et al. (US 8,642,112) in view of Parisi et al. (US 10,441,429).
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Regarding Claim 12, Scrafton discloses the invention substantially as claimed. Scrafton teaches a device for repairing a part of a bone in a subject (Fig 1), the device comprising:
a first section (26) having a first material property (Col 3: lines 54-67);
a second section (30) having a second material property (Col 5: lines 48-60);
the first section being connected (shown) to the second section at a portion of a cross-sectional plane (any cross-section) of the device,
wherein the first section is dimensioned to form a first bone-implant interface (16) with the bone on a first side of the cross-sectional plane, and
wherein the second section is dimensioned to form a second bone-implant (14) interface with the bone on a second side of the cross-sectional plane.
However, Scrafton does not specifically disclose wherein the implant is an asymmetric implant.
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Parisi teaches an asymmetrical femoral implant (20) in the same field of endeavor. Said asymmetric femoral implant designed to replace the native articular surfaces of the knee (Col 1: lines 25-28).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to construct the device of Scrafton with the asymmetric design, as taught by Parisi, in order to best replicate and replace the articular surfaces of the native knee.
Regarding Claim 13, the combination teaches wherein the first material property (Col 3: lines 54-67) includes at least one of elasticity, porosity, thickness, or shape (all inherent properties), and wherein the second material property (Col 5: lines 48-60) includes at least one of elasticity, porosity, thickness, or shape (all inherent properties).
Regarding Claim 15, the combination teaches wherein the first section (26) includes a first surface coating treatment (Col 3: lines 54-67) of the device creating the first material property and/or the second section (30) includes a second surface coating treatment (Col 5: lines 48-60) of the device creating the second material property, and wherein at least one of the first surface coating treatment and the second surface coating treatment corresponds to a location of uneven stress distribution (as the coating is applied to the entire surface), and wherein the first surface coating treatment and the second surface coating treatment are asymmetric on the surface of the device (as taught by Parisi), and wherein the location of uneven stress distribution of the bone corresponds to a location of reduced bone thickness (at the resection surface(s)).
Regarding Claim 18, the combination teaches wherein the bone is a humerus and a joint that includes the bone is a shoulder (Col 2: lines 53-59).
Regarding Claim 19, the combination teaches wherein the first section and the second section are configured to reduce stress shielding (as the coating covers the entire surface).
Regarding Claim 20, Scrafton discloses the invention substantially as claimed. Scrafton teaches a device for repairing a part of a bone in a subject (Fig 1), the device comprising:
a first section (26) having a first material property;
a second section (30) having a second material property,
the first section being connected (shown) to the second section at a portion of a cross-sectional plane of the device; and
wherein the first section (26) includes a first surface coating treatment of the device creating the first material property and the second section includes a second surface coating treatment of the device creating the second material property configured to optimize the bone-implant interface.
However, Scrafton does not specifically disclose wherein the implant is an asymmetric implant.
Parisi teaches an asymmetrical femoral implant (20) in the same field of endeavor. Said asymmetric femoral implant designed to replace the native articular surfaces of the knee (Col 1: lines 25-28).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to construct the device of Scrafton with the asymmetric design, as taught by Parisi, in order to best replicate and replace the articular surfaces of the native knee.
Regarding Claim 44, the combination teaches wherein: at least one of the first surface coating treatment or the second surface coating treatment is fully capable of reducing stress shielding to a region of the bone (as the coating covers the entire surface).
Regarding Claim 50 & 51, the combination teaches wherein the asymmetric implant is asymmetrical with respect to the cross-sectional plane of the device such that the asymmetric implant lacks bilateral symmetry across the cross-sectional plane (Parisi Fig 3A) of the device and such that no orientation of the cross-sectional plane of the device results in bilateral symmetry (Parisi Fig 3A).
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 BRIAN AINSLEY DUKERT whose telephone number is (571)270-3258. The examiner can normally be reached Mon-Fri 6am-4pm.
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, Melanie Tyson can be reached at (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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/BRIAN A DUKERT/Primary Examiner, Art Unit 3774
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