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 with respect to claims 1, 2, 4, 5, 7, 10-12, 14-19 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 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.
Claims 14, 15 and 17 are 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.
Claims 14, 15 and 17 recites the limitation "the planar base" in line 1. There are insufficient antecedent basis for this limitation in the claims.
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.
NOTE: as disclosed in the previous rejection, the Examiner is looking for the structural limitations claimed in the claims and the Examiner just needs a reference capable of performing the functional language. Additionally, language such as “humeral head attachment region”, “glenoid attachment region” and “rotator cuff tendon attachment region” have been interpreted as just the name of the structure and not for the intended use and location of the implant.
Claims 1, 2, 4, 5, 7, 10-12 and 14-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP0358324A1 (‘324).
‘324 discloses a medical implant system (10) capable of treating a shoulder joint, comprising a humeral head attachment region (22) configured to be attached to a humeral head of the shoulder joint, a glenoid attachment region (24) capable of being attached to a glenoid of the shoulder joint and a rotator cuff tendon attachment region (30) capable of being attached to a rotator cuff tendon of the shoulder joint. a first bone anchor (46) capable of anchoring the humeral head attachment region to the humeral head of the shoulder joint and a second bone anchor (48) capable of anchoring the glenoid attachment region to the glenoid of the shoulder joint.
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Claims such as claims 2, 10 and 17-19 are not disclosing how the implant is used in the targeted area, therefore, this reference is capable of being used in the rotator cuff region.
Regarding claims 1, 4, ‘324 discloses an implant (10) comprising three attachment regions (22,24 and 30) forming a Y-shaped configuration (see Figure above).
Regarding claims 1, 2, the implant (10) is capable of attaching to a humeral head, a rotator cuff tendon and a glenoid region.
Regarding claims 5, 16, see Fig. above disclosing the acute angle and capable of having a 30 degrees angle since, the implant is malleable.
Regarding claims 7 and 14, the whole implant is monolithic. Regarding claim 14 the Examiner can interpret any area of element 101 as the base.
Regarding claim 11, see figure above (intersection between elements 30 and 24) showing an end of each member that joins every other end (where elements 12, 30 and 24 connects. see Fig. above showing that each attachment region comprises a second end extending away from the bifurcation region.
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Regarding claim 12, see Fig. above showing the humeral head attachment member (22 and 12) and the glenoid attachment member (24) defining a planar base. Also, see figure below. The rotator cuff tendon attachment region (30) bifurcates from the base at the bifurcation region.
Regarding claim 14, as disclosed in col. 2, lines 45-55 and col. 3, lines 1-4, the whole implant is made at the same time by weaving yarns and warps.
Regarding claim 15, see figure above showing the first top surface and the bottom surface.
Regarding claim 16, the bottom surface is offset at a first angle between o to 30 degrees, since, the rotator cuff tendon attachment member is flexible and moldable.
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 21 is rejected under 35 U.S.C. 103 as being unpatentable over EP0358324A1 (‘324).
‘324 discloses the invention substantially as claimed. However, ‘324 only discloses a single humeral head bone anchor and a single glenoid bone anchor.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to modify the single bone anchor by adding additional bone anchors if necessary because Applicant has not disclosed that by having more than one anchor provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with the single anchors in the glenoid and rotator cuff regions because it would perform equally as well.
Therefore, it would have been an obvious matter of design choice to modify the ‘324 reference to obtain the invention as specified in claim 21.
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 ALVIN J STEWART whose telephone number is (571)272-4760. The examiner can normally be reached Monday-Friday 8:30AM-6PM 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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/ALVIN J STEWART/Primary Examiner, Art Unit 3799 1/9/26