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 .
Response to Arguments
Applicant's arguments filed 8/7/2025 have been fully considered but they are not persuasive. Applicant argues allowable claim 56 and intervening claim 54 have been amended into claim 26, therefore claim 26 is in condition for allowance. This is not persuasive because applicant further amended claim 26 to add “the baseplate being configured to be coupled with” so as to no longer positively recite a glenosphere, a glenosphere adapter, a glenoid liner, or a glenoid liner adapter. Everything after “the baseplate being configured to be coupled with” is directed to an intended use of the baseplate. Therefore, claim 26 only positively recites a baseplate having a first surface, a second opposing surface, and a cavity (this reads on most prior art glenoid baseplates). It is clear to the examiner that applicant intended for the claims to be interpreted in this manner (meaning claim 26 only requires a baseplate and not a glenosphere, a glenosphere adapter, a glenoid liner, or a glenoid liner adapter) since new claims 61 and 62 were added to positively recite the glenosphere, glenosphere adapter, glenoid liner, and glenoid liner adapter. Accordingly, since only claim 62 positively recites previously indicated allowable subject matter, only claim 62 is indicated as having allowable subject matter.
Terminal Disclaimer
The terminal disclaimer filed on 8/7/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Pat. No. 11,406,506 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. The claims should list claims 1-25 as canceled (as was listed in the claims of 12/13/2024).
Claim Rejections - 35 USC § 102
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 26-28, 40, 41, 43, 45-47, 51-53, 55, and 57-61 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dalla Pria US 2007/0100458 (hereafter referred to as Dalla Pria).
Regarding claim 26, Dalla Pria discloses a glenoid implant system comprising a baseplate 16 having a first surface (top surface), a second opposing surface (undersurface), and a cavity 18 (fig. 1) the baseplate being capable of being coupled with (claim 26 does not positively recite either of (i) or (ii) as follows due to the functional language “being configured to”) (i) a glenosphere via a glenosphere adapter, the glenosphere adapter being configured to be removably coupled to the baseplate, the glenosphere adapter having a first protuberance extending in a first direction and a second protuberance extending in a second opposite direction, the second protuberance being configured to be coupled with the cavity of the baseplate, the glenosphere being configured to be removably coupled with the first protuberance of the glenosphere adapter; and (ii) a glenoid liner via a glenoid liner adapter, the glenoid liner adapter being configured to be removably coupled to the baseplate, the glenoid liner adapter having a base, a wall, and a ledge, the wall extending from a first surface of the base, the ledge extending generally along at least a portion of a first side of the wall thereby forming an undercut, the wall having a slot formed in a second opposing side of the wall, the glenoid liner adapter having a third protuberance configured to be coupled with the cavity of the baseplate, the glenoid liner being configured to be removably coupled to the glenoid liner adapter, the glenoid liner having a cap portion, a main body, and a deflectable finger, the cap portion of the glenoid liner having a first surface and a second opposing surface, the main body of the glenoid liner extending from the second opposing surface of the cap portion and including a lip configured to engage the undercut of the glenoid liner adapter, the deflectable finger extending from the second opposing surface of the cap portion of the glenoid liner, the deflectable finger having a protrusion configured to engage the slot of the glenoid liner adapter to aid in securing the glenoid liner to the glenoid liner adapter, the ledge of the glenoid liner adapter including a first protrusion configured to engage a first corresponding notch formed in the main body of the glenoid liner, and the glenoid liner adapter including a second protrusion configured to engage a second corresponding notch formed in the lip of the main body of the glenoid liner. Claim 26 only positively recites the baseplate having a first surface, a second opposing surface, and a cavity. The baseplate of Dalla Pria is capable of being coupled with a glenosphere, glenosphere adapter, glenoid liner, and glenoid liner adapter as claimed. The glenosphere, glenosphere adapter, glenoid liner, and glenoid liner adapter are not positively claimed.
Regarding claims 27 and 28, see Dalla Pria fig.2 and par.45 for conical second protuberance 21 which forms an interference fit with the cavity 18.
Regarding claim 40, see figs.2 and 4 of Dalla Pria for the baseplate 16 configured to be anchored in a glenoid cavity 15.
Regarding claim 41, see Dalla Pria figs.1-4 for an anchoring peg extending from the undersurface of the baseplate 16.
Regarding claim 43, see Dalla Pria figs. 1 and 3 for through holes 17.
Regarding claim 45, Dalla Pria figs.2 and 4 show the undersurface of the baseplate 16 being convex for coupling to a corresponding concave surface of the glenoid 15.
Regarding claims 46 and 47, see Dalla Pria figs. 1-2 for the glenosphere having a convex cap portion (upper portion) and a main body (portion below the cap portion) configured to be coupled to the first protuberance 22.
Regarding claims 51 and 52, see figs. 2 and 4 and par.51 of Dalla Pria which disclose a central through hole capable of receiving a center screw. Claims 51 and 52 do not require a center screw since the claims recite “configured to be coupled to the baseplate via a center screw”.
Regarding claims 53, 55, and 57-60, as discussed above, the glenoid liner and glenoid liner adapter are not positively required by the claims. The baseplate of Dalla Pria is capable of coupling with a glenoid liner and glenoid liner adapter as claimed.
Regarding claim 61, Dalla Pria discloses the glenoid implant system further comprises a glenosphere 11 and a glenosphere adapter 10, the glenosphere adapter 10 being configured to be removably coupled to the baseplate, the glenosphere adapter having a first protuberance 22 extending in a first direction and a second protuberance 21 extending in a second opposite direction (fig.1), the second protuberance 21 being configured to be coupled with the cavity of the baseplate (fig.2), the glenosphere being configured to be removably coupled with the first protuberance 22 of the glenosphere adapter (fig.2).
Claim Rejections - 35 USC § 103
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 44 is rejected under 35 U.S.C. 103 as being unpatentable over Dalla Pria as applied to claim 43 above, and further in view of Shultz et al. US 2006/0020344 (hereafter referred to as Shultz). Dalla Pria discloses the glenoid implant system of claim 43 as discussed above, but Dalla Pria discloses a convex second opposing surface as opposed to a planar bone facing/second opposing surface.
Shultz teaches a glenoid implant system, in the same field of endeavor, wherein the bone facing surface of a glenoid baseplate may be either convex or planar (figs. 3A-3D) depending on the way the tray is to be attached to the glenoid (par.55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the convex second opposing surface of Dalla Pria to be planar as taught by Shultz in order to be implanted in a prepared glenoid fossa having a planar surface. Both convex and planar glenoid preparations are well-known in the art, therefore it would have been obvious to make the baseplate have a planar second surface depending on the surgeon’s preferred bone preparation.
Allowable Subject Matter
Claim 62 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 MEGAN Y WOLF whose telephone number is (571)270-3071. The examiner can normally be reached Mon-Fri 6am-3pm.
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/MEGAN Y WOLF/Primary Examiner, Art Unit 3774