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, see pages 17-18, filed 01/21/2026, with respect to double patenting have been fully considered and are persuasive. The double patenting rejection of claims 66-74 has been withdrawn.
Applicant’s arguments, see pages 20-22, filed 01/21/2026, with respect to the rejection(s) of claim(s) 66, 70, 72 and 74 under 35 U.S.C. 102(a)(1) 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 Therefore, the rejection has been withdrawn.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 newly found prior art references.
Election/Restrictions
Claims 75-83 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/21/2026. The traversal is on the ground(s) that c. This is not found persuasive because the special technical feature of a baseplate with attachment points does not make a contribution over the prior art (see Baumgarten in view of Nowak below).
The requirement is still deemed proper and is therefore made FINAL.
Claim Status
The double patenting rejection, drawing objections and 35 U.S.C. 112(b) rejections have been overcome.
Claims 66-74 are examined below.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: G. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 66-74 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.
Regarding claim 66, it is unclear what constitutes “at least in” when referring to the attachment points. “At least in” indicates the attachment points can extend in additional directions such as in, out, up and/or down. The scope of “at least in” is indefinite. Dependent claims 67-74 are likewise rejected.
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) 66-67, 70 and 74 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baumgarten (US 2018/0085226 A1) in view of Nowak (US 2024/0341971 A1).
Regarding claim 66, Baumgarten teaches a modular shoulder prosthesis baseplate (24, baseplate, fig. 2) comprising:
a base with a plurality of attachment holes passing therethrough from a top surface to a bottom surface (28, connection holes, fig. 3)
a central stem extending from said bottom surface of said base and axially centered with one of said plurality of attachment holes (34, receiver, figs. 2-3), and
wherein said baseplate is capable of attachment to different modular components to facilitate both traditional anatomic total shoulder replacement and reverse total shoulder replacement with a change in the modular component (abstract, figs. 3-4).
Baumgarten fails to teach a pair of attachment points. However, Nowak teach a bone prosthesis configured to work with an installation tool that includes a pair of attachment points on opposed outer circumferential sides of said base, said attachment points extend at least in from said outer circumferential sides of said base, said attachment points are spaced from said top surface (41, 42, elongated slots, fig. 1); said attachment points are configured to provide leverage points to facilitate extraction of said baseplate from a patient (¶ [0108]). The phrase “said attachment points are configured to provide leverage points to facilitate extraction of said baseplate from a patient” 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 elongated slots is considered to be capable of providing leverage points to facilitate extraction of said baseplate from a patient. 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 baseplate of Baumgarten to include attachment points spaced from the top surface as taught by Nowak in order to receive a prong of an installation tool (¶ [0108], Nowak).
Regarding claim 67, Baumgarten fails to teach the attachment point includes at least one slot spaced from the top and bottom surface of the base. However, Nowak further teaches at least one slot spaced from said bottom surface and said top surface of said base (41, 42, elongated slots, 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 baseplate of Baumgarten to include the attachment point includes at least one slot spaced from the top and bottom surface of the base as taught by Nowak in order to receive a prong of an installation tool (¶ [0108], Nowak).
Regarding claim 70, Baumgarten further teaches a modular component configured to be removably attached to said baseplate (44, glenosphere component, fig. 2, ¶ [0018-00019]), said modular component having a plug for insertion into at least one attachment hole of said base (48, shaft part, fig. 3).
Regarding claim 74, Baumgarten further teaches a base (54, head portion, fig. 2), a glenosphere extending at an angle from said base (46, glenosphere part, fig. 2, extending at a 0o angle), and said plug extends from a surface of said base opposite said glenosphere (figs. 2-3).
Claim(s) 68-69 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baumgarten in view of Nowak as applied to claim 66 above, and further in view of Poncet (US 9,610,165 B2).
Regarding claim 68, Baumgarten and Nowak fail to teach leverage notches extending down from the top surface and in from the outer circumrenal side. However, Poncet teaches a humeral component of a should prosthesis that includes a pair of leverage notches on opposed outer circumferential sides of said base (see annotated fig. 2, below), said leverage notches extend down from the top surface of said base (fig. 2) and in from said outer circumferential sides of said base (fig. 2). 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 implant of Baumgarten and Nowak to include leverage notches as taught by Poncet since combining prior art elements according to known methods to yield predicable results requires only routine skill in the art.
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Regarding claim 69, Baumgarten and Nowak fail to teach the leverage notches are on the anterior and posterior sides of the base. However, Poncet further discloses said leverage notches are on anterior and posterior sides of said base (fig. 2) and said attachment points are laterally offset from said leverage notches (the attachment points of Nowak are on opposite sides of the baseplate, they would be placed without impeding the leverage notches of Poncet and would be laterally offset from the leverage notches). 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 implant of Baumgarten and Nowak to include the leverage notes are on the anterior and posterior sides of the base as taught by Poncet since combining prior art elements according to known methods to yield predicable results requires only routine skill in the art. Further, it would have been an obvious matter of design choice to place said leverage notches are on anterior and posterior sides of said base and place said attachment points are laterally offset from said leverage notches, since applicant has not disclosed that the specific orientation of the attachment points and leverage notches solves any stated problem or is for any particular purpose and it appears that the invention would perform equally as well with the attachment points and the leverage notches not being laterally offset.
Claim(s) 71 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baumgarten in view of Nowak as applied to claim 70 above, and further in view of Ball (US 2019/0046326 A1).
Regarding claim 71, Baumgarten and Nowak fail to teach a pair of leverage notches extending down from a mounting surface and a pair of protrusions configured to engage with the leverage notches. However, Ball teaches a shoulder prosthesis that includes said baseplate includes a pair of leverage notches on opposed outer circumferential sides of said base (488, recess, fig. 18), said leverage notches extend down from a mounting surface of said baseplate and in from said outer circumferential sides of said base (Examiner notes the notches are in the liner but takes the stance a reversal of part is involved only routine skill in the art (MPEP 2144.04.VI)), said modular component includes a pair of protrusions extending radially out and/or down from opposing sides of said modular component (424, protrusion, fig. 18), said protrusions configured to engage with an interference fit said leverage notches when said modular component is attached to said base (¶ [0063] and ¶ [0081]), and a length of said protrusion is less than or equal to a height of said leverage notch (fig. 17, ¶ [0081]), and said protrusions configured to provide additional surface area on which to apply leverage for removal of said modular component after installation onto said baseplate. The phrase “said protrusions configured to provide additional surface area on which to apply leverage for removal of said modular component after installation onto said baseplate” 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 protrusions is considered to be capable of providing additional surface area on which to apply leverage for removal of said modular component after installation onto said baseplate. 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 baseplate and modular component of Baumgarten and Nowak to include a pair of leverage notches extending down from a mounting surface and a pair of protrusions configured to engage with the leverage notches as taught by Ball in order to assist with alignment and coupling (¶ [0081], Ball).
Claim(s) 72-73 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baumgarten in view of Nowak as applied to claim 70 above, and further in view of Ries (US 2019/0202671 A1).
Regarding claim 72, Baumgarten and Nowak fail to teach a base and a flange extending down from a bottom the of base. However, Ries teaches a bone joint implant that includes a base (102, rim, fig. 1A) and a flange extending down from a bottom of said base (104, tabs, fig. 1A), said flange configured to extend down the peripheral sides of said baseplate when said modular component is attached to said baseplate (fig. 2A). 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 modular component of Baumgarten and Nowak to include a based and a flange extending down from a bottom of the base as taught by Ries in order to guide the insert onto the liner (¶ [0025], Ries).
Regarding claim 73, Baumgarten and Nowak fail to teach the flange includes a pair of opposed slots. However, Ries further teaches a pair of opposed slots extending up from a bottom of said flange (see annotated fig. 1A, below), said slots configured to align with said attachment points of said baseplate when said modular component is attached to said base and to provide a leverage point on which to apply leverage for removal of said modular component after installation onto said baseplate. The phrase “slots configured to align with said attachment points of said baseplate when said modular component is attached to said base and to provide a leverage point on which to apply leverage for removal of said modular component after installation onto said baseplate” 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 pair of opposed slots as denoted in annotated Fig. 1A is considered to be capable of aligning with said attachment points of said baseplate when said modular component is attached to said base and providing a leverage point on which to apply leverage for removal of said modular component after installation onto said baseplate. 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 modular component of Baumgarten and Nowak to include a flange with a pair of opposed slots as taught by Ries in order to guide the insert onto the liner (¶ [0025], Ries).
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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 - Friday 7:30 am - 5:00 pm EST.
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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
