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
Arguments filed 09/09/2025 are found persuasive. A new restriction was discussed with George Metzenthin on 10/09/2025 and is detailed below.
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group II, claim(s) 62-65, drawn to a modular component.
Group II, claim(s) 66-74, drawn to a modular shoulder prosthesis baseplate.
Group III, claim(s) 75-85, drawn to a modular shoulder prothesis system.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a baseplate, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Winslow (US 2012/0277880 A1). Winslow discloses a baseplate (104, platform, fig. 6).
Groups I and III lack unity of invention because even though the inventions of these groups require the technical feature of a modular component with a plug, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Shultz (US 2006/0020344 A1). Shultz discloses a modular component (108b, head, fig. 5A) with a plug (140, male taper, fig. 5A)
Groups II and III lack unity of invention because even though the inventions of these groups require the technical feature of a baseplate with a base, a plurality of attachment holes, a par 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, and a central stem, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Winslow (US 2012/0277880 A1). Winslow discloses a baseplate (104, platform, fig. 6) with a base (120, coupling portion, fig. 6) with a plurality of attachment holes passing therethrough from a top surface to a bottom surface (60a, 60b, 62, bores, fig. 6) and a pair of attachment points on opposed outer circumferential sides of said base (126, groove, fig. 6), said attachment points extend at least in from said outer circumferential sides of said base (fig. 6), said attachment points are spaced from said top surface (fig. 6); and a central stem (46, base, fig. 6).
During a telephone conversation with George Metzenthin on 10/09/2025 a provisional election was made with traverse to prosecute the invention of group II, claims 66-74. Affirmation of this election must be made by applicant in replying to this Office action. Claims 62-65 and 75-85 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 66, 70 and 74 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 8 of U.S. Patent No. 10,583,012. Although the claims at issue are not identical, they are not patentably distinct from each other the table below denotes the patent claims which map to the claims of the case.
Instant App.
66
70
74
Patent No. US 10,583,012 B1
1
1
8
Claim 67-69, 71-73 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 and 8 of U.S. Patent No. 10,583,012 in view of Knox (US 2019/0175354 A1), Poncet (US 9,610,165 B2), Biomet Orthopedics, Inc. and Shultz (US 2006/0020344 A1).
Regarding claim 67, all of the claim limitations are disclosed in US Patent No. 10,583,012 except at least one notch and/or at least one slot. However, Knox discloses at least one slot spaced from said bottom surface and said top surface of said base (950, opening, 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 implant of Winslow to include a slot as taught by Knox in order to allow insertion of a tool (¶ [0084], Knox).
Regarding claim 68, all of the claim limitations are disclosed in US Patent No. 10,583,012 except a pair of leverage notches. However, Poncet discloses 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 Winslow 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, all of the claim limitations are disclosed in US Patent No. 10,583,012 except the leverage notches are on the anterior and posterior sides of the base. However, Poncet further discloses said leverage notches are on the anterior and posterior sides of said base (fig. 2) and said attachment points are laterally offset from said leverage notches (the attachment points of US Patent No. 10,583,012 are on opposite sides of the baseplate, they would placed without impeding the leverage notches 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 Winslow 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.
Regarding claim 71 all of the claim limitations are disclosed in US Patent No. 10,583,012 except a pair of protrusions. However, Biomet Orthopedics, Inc. discloses said modular component includes a pair of protrusions extending, extending radially, and/or extending down from opposing sides of said modular component (see annotated fig. A, below, Examiner notes the protrusions are in the humeral tray but takes the stance a reversal of partis involved only routine skill in the art (MPEP 2144.04.VI), said protrusions (see annotated fig. A, below) configured to engage with an interference fit said leverage notches when said modular component is attached to said base (The phrase “said protrusions configured to engage with an interference fit said leverage notches when said modular component is attached to said base” 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 and leverage notches of Biomet Orthopedics, Inc. is considered to be capable of engaging with an interference fit.), and a length of said protrusion is less than or equal to a height of said leverage notch (fig. A), and
said protrusions (see annotated fig. A) 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 of fig. A are considered to be capable of providing additional surface area on which to apply leverage.). 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 Winslow to include leverage notches and protrusions as taught by Biomet Orthopedics, Inc. in order to prevent rotation of between the humeral bearing and the humeral tray (pg. 2, Biomet Orthopedics, Inc.).
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Regarding claim 72, all of the claim limitations are disclosed in US Patent No. 10,583,012 except a flange extending down from a bottom of the base. However, Shultz discloses a flange extending down from a bottom of said base (see annotated fig. 5B, below), said flange configured to extend down the peripheral sides of said baseplate when said modular component is attached to said baseplate (fig. 5B). 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 Winslow to include a pair of opposed slots that extend up form a bottom of the flange as taught by Shultz 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 73, all of the claim limitations are disclosed in US Patent No. 10,583,012 except the flange includes a pair of opposed slots. However, Shultz discloses a pair of opposed slots extending up from a bottom of said flange (see annotated fig. 5B, below), said slots configured to align with said attachment points of said baseplate when said modular component is attached to said base (fig. 5B) and to provide a leverage point on which to apply leverage (slots, see annotated fig. 5B, below) for removal of said modular component after installation onto said baseplate (The phrase “configured . . . 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 slot in annotated fig. 5B is considered to be capable of providing a leverage point on which to apply leverage.). 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 Winslow to include a pair of opposed slots that extend up form a bottom of the flange as taught by Shultz since combining prior art elements according to known methods to yield predicable results requires only routine skill in the art.
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Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "212" and "214" have both been used to designate flange.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because:
Reference character “120” has been used to designate both stem and plug.
Reference character “212” has been used to designate both flange and protrusion.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 111, 100C, 122, 300B and 312".
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: 214' and G.
The drawings are objected to because it is unclear why 213 is in fig. 1A. Fig. 1A is the base of the baseplate, while 213 is a surface of the modular component. Examiner believes 213 in Fig. 1A should be 110.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 69 and 71 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.
Claim 69 recites the limitation "the anterior and posterior sides of said base" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 71 recites “a pair of protrusions extending, extending radially, and/or extending down” in lines 5-6. It is unclear if this is a grammatical error or if applicant intends extending as an option and any direction of extending fulfills the claim limitation.
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.
Claim(s) 66, 70, 72 and 74 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Winslow (US 2012/0277880 A1).
Regarding claim 66, Winslow discloses a modular shoulder prosthesis baseplate (104, platform, fig. 6) comprising:
a base (120, coupling portion, fig. 6) with a plurality of attachment holes passing therethrough from a top surface to a bottom surface (60a, 60b, 62, bores, fig. 6) and a pair of attachment points on opposed outer circumferential sides of said base (126, groove, fig. 6), said attachment points extend at least in from said outer circumferential sides of said base (fig. 6), said attachment points are spaced from said top surface (fig. 6); and
a central stem extending from said bottom surface of said base (46, base, fig. 6) and axially centered with one of said plurality of attachment holes (¶ [0027]), 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 (¶ [0042]); and
said attachment points (126, groove, fig. 6) are configured to provide leverage points to facilitate extraction of said baseplate from a patient (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 groove is considered to be capable of providing leverage points to facilitate extraction (e.g. by engaging an extraction tool).
Regarding claim 70, Winslow further discloses a modular shoulder prosthesis system comprising (100, modular glenoid prosthesis, fig. 6): a baseplate according to claim 66; and a modular component configured to be removably attached to said baseplate (16 and 102, plug and glenoid component, fig. 6), said modular component having a plug for insertion into at least one attachment hole of said base (16, plug, fig. 6).
Regarding claim 72, Winslow further discloses a base (102, glenoid component, fig. 6) and a flange extending down from a bottom of said base (110, augment, fig. 6), said flange configured to extend down the peripheral sides of said baseplate when said modular component is attached to said baseplate (fig. 7).
Regarding claim 74, Winslow further discloses a base (see annotated fig. 4, below), a glenosphere extending at an angle from said base (84, head, fig. 4, 1800 angle), and said plug extends from a surface of said base opposite said glenosphere (86, stem, fig. 4).
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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) 67 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winslow (US 2012/0277880 A1) in view of Knox (US 2019/0175354 A1).
Regarding claim 67, Winslow fails to teach at least one slot. However, Knox discloses a shoulder prosthesis that includes at least one slot spaced from said bottom surface and said top surface of said base (950, opening, 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 implant of Winslow to include a slot as taught by Knox in order to allow insertion of a tool (¶ [0084], Knox).
Claim(s) 68-69 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winslow (US 2012/0277880 A1) in view of Poncet (US 9,610,165 B2).
Regarding claim 68, Winslow fails to teach leverage notches. However, Poncet discloses 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 Winslow 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, Winslow fails to teach the leverage notches are on the anterior and posterior sides of the base. However, Poncet further discloses said leverage notches are on the anterior and posterior sides of said base (fig. 2) and said attachment points are laterally offset from said leverage notches (the attachment points of Winslow are on opposite sides of the baseplate, they would placed without impeding the leverage notches 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 Winslow 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.
Claim(s) 71 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winslow (US 2012/0277880 A1) in view of Biomet Orthopedics, Inc.
Regarding claim 71, Winslow further discloses a mounting surface of said baseplate (56, first surface, fig. 6).
Winslow fails to teach a par of leverage notches and a pair of protrusions. However, Biomet Orthopedics Inc. discloses a shoulder system that includes
said baseplate includes a pair of leverage notches on opposed outer circumferential sides of said base (see annotated fig. A, below, Examiner notes the notches are in the humeral bearing but takes the stance a reversal of partis involved only routine skill in the art (MPEP 2144.04.VI)), said leverage notches extend down from a mounting surface of said baseplate (fig. A) and in from said outer circumferential sides of said base (by the nature of the protrusions locking with the leverage notches there must be a dimension inward to create space for the protrusion to set into),
said modular component includes a pair of protrusions extending, extending radially, and/or extending down from opposing sides of said modular component (see annotated fig. A, below, Examiner notes the protrusions are in the humeral tray but takes the stance a reversal of partis involved only routine skill in the art (MPEP 2144.04.VI), said protrusions (see annotated fig. A, below) configured to engage with an interference fit said leverage notches when said modular component is attached to said base (The phrase “said protrusions configured to engage with an interference fit said leverage notches when said modular component is attached to said base” 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 and leverage notches of Biomet Orthopedics, Inc. is considered to be capable of engaging with an interference fit.), and a length of said protrusion is less than or equal to a height of said leverage notch (fig. A), and
said protrusions (see annotated fig. A) 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 of fig. A are considered to be capable of providing additional surface area on which to apply leverage.). 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 Winslow to include leverage notches and protrusions as taught by Biomet Orthopedics, Inc. in order to prevent rotation of between the humeral bearing and the humeral tray (pg. 2, Biomet Orthopedics, Inc.).
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Claim(s) 73 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winslow (US 2012/0277880 A1) in view of Shultz (US 2006/0020344 A1).
Regarding claim 73, Winslow fails to teach a pair of opposed slots that extend up from a bottom of the flange. However, Shultz discloses a shoulder implant assembly that includes a pair of opposed slots extending up from a bottom of said flange (see annotated fig. 5B, below), said slots configured to align with said attachment points of said baseplate when said modular component is attached to said base (fig. 5B) and to provide a leverage point on which to apply leverage (slots, see annotated fig. 5B, below) for removal of said modular component after installation onto said baseplate (The phrase “configured . . . 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 slot in annotated fig. 5B is considered to be capable of providing a leverage point on which to apply leverage.). 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 Winslow to include a pair of opposed slots that extend up form a bottom of the flange as taught by Shultz since combining prior art elements according to known methods to yield predicable results requires only routine skill in the art.
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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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T.M.D./Examiner, Art Unit 3774
/JERRAH EDWARDS/Supervisory Patent Examiner, Art Unit 3774
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