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 .
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.
Claim(s) 1, 4-5, 8-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheng (6355071B1).
In regard to claim 1, Cheng discloses an orthopaedic joint device having an upper part (4000) and a lower part (1000), which are mounted on one another so as to be pivotable about a joint axis (at 3000, see fig 1; fig 4)
and between which a damper device (5000) is arranged in order to provide a resistance to pivoting of the upper part (4000) relative to the lower part (1000; see fig 3-4),
and the damper device (5000) is mounted on the upper part (4000) (see fig 3, mounted via 2000) and the lower part (1000) via fastening devices (2200, 3100 screw portion), wherein one fastening device (3100) has a head (2100), in which a bearing (2300) is arranged, which is supported on an axle (3000), which is mounted in the upper part (4000) or lower part (1000), characterized in that the axle (3000) is mounted rotatably in the upper part (4000) or lower part (1000). (see figure 3)
The examiner suggests further clarifying what rotatably mounted is referring to and the location of the damper relative to the axle, based on the applicant’s arguments.
In regard to claim 4, Cheng discloses the claim limitations as discussed in the rejection of claim 1, and further teaches that the bearing 2300 is mounted between covering disks (head of 3000, head of 3100) in the head 2100. (fig 2)
In regard to claim 5, Cheng discloses the orthopaedic joint device as claimed in claim 1, and further discloses that the axle (3000) is secured in the upper part (4000) or lower part (1000) by means of at least one sealing element (2500, 2400). The baffles assist in securing the axle 3000 by surrounding the proximal and distal portions of axle as shown in figure 3.
In regard to claim 8, Cheng discloses the orthopaedic joint device as claimed in claim 1, and further discloses in that the head (2100) is arranged or formed on a piston rod (see piston rod attached to 2100 via 5300 as shown in figure 3).
In regard to claim 9, Cheng discloses the orthopaedic joint device as claimed in claim 1, and further teaches that the bearing (2300) is mounted on the axle (3000) with an interference fit. (see for example fig 6, 5, 2; the bearing is mounted without any securing members and is therefore mounted by friction or an interference fit; Col 3, lines 30-45 description: friction)
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(s) 2 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng (6355071B1).
In regard to claims 2 and 10, Cheng meets the claim limitations as discussed in the rejection of claim 1 and further teaches the axle 3000 is mounted in radial bearings (interpreted as best understood to be additional bearings compared to the bearing of claim 1) 2510, 2410 (see fig 2, 5).
While Cheng remains silent to the type of bearings of 2510 and 2410, Cheng teaches that 2300 is a needle bearing (see fig 6).
It would have been obvious to one of ordinary skill in the art at the time the invention was to filed to make the bearings of Cheng 2510 and 2410 needle bearings as taught in figure 6 of Cheng through functional equivalents since both are ring shaped bearings assisting in the function of the axle. MPEP 2144.06II
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng (6355071B1) in view of Haynes (WO2007/025116A2).
In regard to claim 3, Cheng meets the claim limitations as discussed in the rejection of claim 1, and further teaches the bearing 2300 in the head 2100 (fig 2).
However, Cheng remains silent to the type of bearing being a self-aligning ball bearing, roller bearing or a spherical plain bearing.
Haynes teaches characterized in that the bearing 425 in the head is designed as a self-aligning ball bearing, a self-aligning roller bearing [0090; 0083: roller bearings may be used to facilitate rotation of any of the pivotally connected components; roller bearings by their nature are self-aligning; also see fig 9B where the roller bearing is a ring] or a spherical plain bearing.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use the bearings of Haynes in place of the bearings of Cheng because they are able to manage more shock and impact and handle a greater load capacity than other types of bearings.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng (6355071B1) in view of Krieg (EP0056602A1).
In regard to claim 6, Cheng discloses the orthopaedic joint device as claimed in claim1, characterized in that the axle (3000) is mounted so as to be supported axially on the upper part (4000) or lower part (1000).
However, Cheng does not teach the supporting element as claimed.
Kireg teaches the axle is mounted so as to be supported axially on the upper part or lower part by means of at least one supporting element 24.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use the supporting element of Krieg on the axle of Cheng because the washer keeps the parts in place (claim 1) and allows clearance (claim 3) while evenly distributing the load of the fastener.
In regard to claim 7, Cheng discloses the orthopaedic joint device as claimed in claim 6, but does not teach the supporting element as claimed.
Krieg further teaches that the supporting element is of elastic design or is elastically mounted. (claim 3: elastic disc; claim 1: elastic washer 24)
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use the supporting element of Krieg on the axle of Cheng because the washer keeps the parts in place (claim 1) and allows clearance (claim 3), while evenly distributing the load of the fastener.
Response to Arguments
In regard to the objection of claim 2, the amendment, the applicant’s amendments have been fully considered. Based on the applicant’s assertion these are not the same bearing, on the record, the objection is withdrawn.
In regard to the 112b rejection of claim 2, the amendment overcomes the rejection.
In regard to the 102(a)(1) rejection of claims 1, 4-5 and 8-9 as anticipated by Cheng (6355071B1), the applicant’s arguments have been fully considered.
The applicant asserts that the application was allowed internationally. The US has a separate examination process and this application has been translated from another language. It is also noted that the international search report submitted to the USPTO lists two X references and does not appear to be allowed.
The applicant states that the instant bearing situation is simpler, allowing smooth running bearings to be used. Smooth or running bearings are not claimed. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Any structural differences between the instant invention and prior art should be incorporated into the claims.
The applicant argues in Cheng the support of the piston rod does not occur on axle 3000 but on axle 5300 and states that axle 5300 of Cheng is mounted in a rotatably fixed manner. It is not clear to the examiner what the applicant intends to mean by using the terminology “rotatably fixed”. The claim language states “the axle is mounted rotatably in the upper part or the lower part”. Axle 5300 was not cited and the applicant is arguing against a rejection that was not made. As shown in figure 4, 3000 acts as an axle as the upper portion rotates around 3000. Further 3000 is “rotatably mounted” as the part rotates about 3000. Therefore 3000 is rotatable relative to the upper part. If the applicant has a different definition, please clarify the claim language.
The applicant further argues that rotational axis 3000 is mounted on Cheng’s needle bearings 2300 on which the damper is not supported. The applicant argues that the head is arranged on a piston rod but 3000 cannot support the damper. The claim language does not recite supporting the damper. The examiner suggests ensuring the translated claim language conveys the intended structural features. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Any structural differences between the instant invention and prior art should be incorporated into the claims.
The applicant argues that damper supporting axle be rotatably mounted reduces basic joint resistance. The claim language does not recite a damper supporting axle and the applicant seems to intend rotatably mounted to have a different meaning. The examiner suggests clarifying the claim language to ensure that the claims are reciting the intended structure.
In regard to the 103(a) rejection of claim 2 over Cheng (6355071B1), no further arguments have been presented.
In regard to the 103(a) rejection of claim 3 as unpatentable over Cheng (6355071B1) in view of Haynes (WO2007/025116A2), no further arguments have been presented.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTIE BAHENA whose telephone number is (571)270-3206. The examiner can normally be reached M-F 9-3.
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/CHRISTIE BAHENA/Primary Examiner, Art Unit 3774