DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/23/2025 has been entered.
Priority
This application claims priority from application 11/743097 filed, 05/01/2007
Status of Claims
Claims 45 and 54-64 are pending.
Claims 1-44 and 46-53 have been cancelled.
It is noted that the content of cancelled claims is not required, the applicant is advised to amend the claims to say 46-53 (Canceled).
Election/Restrictions
Applicant elected Species 19 (Figures 28-29) on 12/26/2024. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
Claim Objections
Claims 59 and 64 are objected to for having incorrect status identifiers. Claim 59 should be labeled Previously Amended and Claim 64 should be labeled Previously Presented.
Claim Rejections - 35 USC § 112
The previous 112 rejections have been withdrawn In view of the applicant’s amendments.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim(s) 45 and 54-64 is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Manspeizer US 2007/0106299 A1.
Manspeizer discloses a system for manipulating energy transferred by members defining a joint including a joint capsule (central section between the bones in Figure 3), the members collectively defining a path of motion and having a cartilage configured therebetween (Figure 3 shows the system is inserted in the same location as the applicant’s elected embodiment), the system including an energy absorption assembly, comprising:
a first attachment structure a (upper narrow straight portion 10) configured to be attached to a first member of the joint 30;
a second attachment structure (lower narrow straight portion 20) configured to be attached to a second member of the joint 32;
a first curved load bearing surface structure (extending from 18 to the base of narrow portion 10) an entirety of which is sized and shaped to be positioned completely outside of the joint capsule, the first curved load bearing surface structure connected to the first attachment structure; and
a second curved load bearing surface structure (extending from 24 to the base of narrow portion 20) an entirety of which is sized and shaped to be positioned completely outside of the joint capsule, the second curved load bearing surface structure connected to the second attachment structure; wherein the first curved load bearing surface and the second curved load bearing surface are configured to off load the joint, to engage and rotate with respect to each other (Figures 3-4) and to absorb energy as the first and second members of the joint move through flexion (Figures 3-4); wherein the first attachment structure is shorter in length or width than the first curved load bearing structure and the second attachment structure is shorter in length or width than the second curved load bearing structure (both curved load bearing structures are wider than both attachment structures as seen clearly in Figure 1, they are also wider when viewed in the orientation of Figure 2, and they are both longer left to right as well as up and down when noting just the narrow portions of the device as the attachment structures).
With respect to the joint capsule and positioning of the bearing surface structures outside of the joint capsule, these are conditions dependent upon the patient and method of using the system. The claims are currently directed at the system itself not a method of using the system. Therefore these claim recitations defining how and where the applicant’s invention is used are considered to be intended use limitations. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case the of system of Manspeizer is fully capable of being used such that the bearing surface structures are completely outside of the joint capsule. For example the system of Manspeizer could be used on the opposite side of the knee shown in Figure 3, flipped over on the same side shown in Figure 3, or implanted with a spacer such that it is anchored to the adjacent bones but the bearing surfaces are spaced outside of the capsule.
54. and 55. Manspeizer discloses the first and second curved load bearing surface defines a cam surface 18/24 Figure 2.
56. Manspeizer discloses the first and second members of the joint transition between extension and flexion (normal range of motion for the knee), the first and second curved load bearing surfaces move between varying degrees of engagement (curved surfaces 18/24 translate to have different degrees of overlapping).
57. Manspeizer discloses wherein when the first and second members of the joint are in an extension configuration, off-loading and energy manipulation is at its greatest (Figure 3 shows the maximum amount of overlap when in extension).
58. Manspeizer discloses varying degrees of engagement between the first and second curved load bearing surfaces are pre-selected (every aspect of the implant is preselected because it has preselected size and shape).
59. Manspeizer discloses the system transfers energy that the cartilage would normally experience during gait to bone portions outside of a contact surface of the joint (14/20 transfer the forces outside of the joint in the same manner as the applicant’s invention).
60. Manspeizer discloses the joint is a knee joint affected with osteoarthritis and variable amounts of energy absorption occurs while the members defining the joint follow the path of motion. (These claim recitations are considered to be intended use limitations. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case the system of Manspeizer is fully capable of being used in a knee joint affected with osteoarthritis exposing it to varied amounts of energy absorption.)
61-63. Manspeizer discloses the energy absorption assembly complements / augments / mimics energy absorbing function of the cartilage (all of these terms are interchangeable synonyms with the broadest reasonable interpretation being to support or add in the act of absorbing energy which the system of Manspeizer does).
64. Manspeizer discloses each of the first curved load bearing surface and the second curved load bearing surface define an arc and each arc includes a surface that extends laterally away from the joint further than the first attachment structure and the second attachment structure (The recitations describing the configuration of the surfaces relative to the joint are considered to be intended use limitations and given limited weight. As explained above the system of Manspeizer could be installed in a variety of configurations including where it is positioned on the opposite side of the joint or flipped such that the bearing surfaces now extend laterally away from the joint further than the upper and lower attachment structures).
Response to Arguments
Applicant's arguments filed 09/23/2025 have been fully considered but they are not persuasive. The applicant’s arguments are all directed at the newly claimed requirement for the attachment structures to be shorter in length or width. This is not persuasive because as explained above both curved load bearing structures are wider regardless of the orientation than both attachment structures as seen clearly in Figures 1 and 2. Additionally, they also have greater lengths regardless of orientation, left to right as well as up and down. This is due to the office action only calling the narrowed portions of the device as the attachment structures.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 CHRISTOPHER D PRONE whose telephone number is (571)272-6085. The examiner can normally be reached Monday-Friday 10 am - 6 pm (HST).
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 R Tyson can be reached on (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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/Christopher D. Prone/Primary Examiner, Art Unit 3774