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 .
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 1-10 and 12 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 1 and 12 recite the limitation "the fixing portion" in line 8 of claim 1 and lines 4-5 of claim 12. There are insufficient antecedent basis for these limitations in the claims. The language “fixing portion” has been replaced by ---protrusion---.
Regarding claim 5, it seems like some words are missing after the words: “fitted to” and the Examiner believes that the word “recessed” in line 3 is not required.
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: The term integral was held not to be limited to a fabrication of the parts from a single piece of material, but was inclusive of other means of maintaining the parts fixed together as a single unit. In re Larson et al., 340 F 2d 965, 144 U.S.P.Q. 347 (C.C.P.A. 1965). Integral is sufficiently broad to embrace constructions united by such means as fastening and welding. In re Hotte, 475 F 2d 644, 177 U.S. P.Q. 326 (C.C.P.A. 1973).
Claims 1-4, 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2013-94331.
Regarding claims 1 and 11, ‘331 discloses a neck trial (3) comprising a body portion (21) comprising a contact surface (24a); and a protrusion (23). The protrusion (23) protruding from the contact surfac
Regarding claims 2 and 12, the tip of element 23 has been interpreted as the protection portion.
Regarding claim 3, see Fig. 15a showing that the protection portion protrudes farther than the protrusion (23).
Regarding claim 4, the protection portion is integrally formed with the protrusion, see note above referring to the term “integral”.
Regarding claim 8, see attached document page 2 disclosing a n implant made of titanium.
Regarding claim 9, see Figs. 13 and 14 disclosing the broach handle.
Regarding claim 10, the reference is silent regarding the ball trial, however, it is inherent to have different sizes of ball during a trial procedure.
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2020/193005A1.
Regarding claims 1 and 11, ‘331 discloses a neck trial (10) comprising a body portion (12) comprising a contact surface (18); and a protrusion (40). The protrusion (40) protruding from the contact surfac
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Regarding claim 7, see figure above disclosing a hole (20) capable of receiving a protruding portion (22) of the stem broach (25).
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.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over JP2013-94331.
‘331 discloses the invention substantially as claimed. However, ‘331 is silent regarding the manufacturing process of making the trial member. For example, does not disclose the manufacturing process of cutting with a wire cutter, machining or molding.
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 produce a trial member by using a wire cutter or machining or using a molding technique because Applicant has not disclosed that by using these different techniques 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 any manufacturing technique because it would perform equally as well.
Therefore, it would have been an obvious matter of design choice to modify the ‘331 reference to obtain the invention as specified in claims 13-15.
Allowable Subject Matter
Claims 5 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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.
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/ALVIN J STEWART/Primary Examiner, Art Unit 3799 8/27/25