DETAILED ACTION
The following is a non-final office action is response to communications received on 06/29/2023. Claims 2-20 are currently pending and addressed below.
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 .
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 2-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,666,449. Although the claims at issue are not identical, they are not patentably distinct from each other because the Patent and the instant application all recite the same basic structure with a permutation of similar elements throughout.
Regarding Claims 2-10, patent claims 1-9 (respectively) recite the same limitations.
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.
Claim(s) 2-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hodorek et al. (US 10,722,374) in view of Roche et al. (US 2007/0142917).
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Regarding Claim 2, Hodorek discloses the invention substantially as claimed. Hodorek teaches a method of replacing a native glenoid with a prosthetic glenoid implant (2), the method comprising the steps of: placing a base component (20) of a glenoid implant (2) into a glenoid vault such that a keel (30) of the base component is received within a recess of the native glenoid (Fig 3C), the keel defining a length, a width and a height (Fig 2C), the length extending away from a bone-contacting surface of the base component along a length direction, the height extending along a first direction transverse to the length direction and the width extending in a second direction transverse to the length direction and the first direction (Fig 2C);
inserting a first fixation member (60) through a superior aperture of the base component and into the glenoid vault (Fig 3C), the superior aperture extending through a superior extension of a base portion of the base component;
inserting a second fixation member (60) through an inferior aperture of the base component and into the glenoid vault (Fig 3C), the inferior aperture extending through an inferior extension of the base portion of the base component, and
attaching a bearing component (6) to the base component (20) by coupling a first mating feature (32b) of the base component (20) to a second mating feature (19a) of the bearing component (6), the bearing component having a first articulating surface (shown) adapted to articulate with a native or prosthetic humeral head and a second surface (shown) including the second mating feature (19a).
However, Hodorek does not disclose wherein the width being smaller than the length and the height.
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Roche teaches a glenoid prosthesis (Figs 2A-2C) in the same field of endeavor. Said prosthesis comprising a keel (202B) defining a length (shown), a width (shown) and a height (shown), the length extending away from a bone-contacting surface (shown) of the base component along a length direction, the height extending along a first direction transverse to the length direction and the width extending in a second direction transverse to the length direction and the first direction (Figs 2A-2C), wherein the width being smaller than the length and the height (as shown). Said keel conserves bone stock and provides multiple windows/holes to aid in long term fixation via bone ingrowth [0036]-[0037].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the keel, as taught by Hodorek, for the keel as taught by Roche, in order to conserve bone stock and provide the keel with multiple windows/holes to aid in long term fixation via bone ingrowth [0036]-[0037]. As both the Hodorek and Roche keels are constructed and designed in order to effectively anchor a prosthetic glenoid component, it would have been obvious to one of ordinary skill to substitute the design of one keel for the other. The proposed combination would involve no more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement. “Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” Id. at 301, 213 USPQ at 536.
Regarding Claim 3, the combination teaches wherein the step of attaching the bearing component (6) to the base component (20) includes coupling a peripheral rim (shown) of the bearing component to a peripheral recess (32a & 32b) of the base component.
Regarding Claim 4, the combination teaches wherein the step of attaching the bearing component (6) to the base component (20) includes coupling a peripheral rim (shown) of the base component to a peripheral recess (14) of the bearing component.
Regarding Claim 5, the combination teaches wherein the keel is generally trapezoidal (Roche Fig 2A).
Regarding Claim 6, the combination teaches wherein the keel includes a window (shown) defining a recess (shown).
Regarding Claim 7, the combination teaches wherein the recess is generally trapezoidal (Roche Fig 2A).
Regarding Claim 8, the combination teaches wherein the recess includes an array of circular openings (Roche Fig 2B and [0038]).
Regarding Claim 9, the combination teaches wherein the base component includes a first slot (shown) extending from a first surface (facing bearing component) of the base component to the bone-contacting surface (29) of the base component, the first slot being positioned adjacent the keel on a first side of the keel (Hodorek Fig 2C).
Regarding Claim 10, the combination teaches wherein the base component includes a second slot (shown) extending from the first surface (facing bearing surface) of the base component to the bone-contacting surface (29) of the base component, the second slot being positioned adjacent the keel on a second side of the keel opposite the first side of the keel (Hodorek Fig 2C).
Allowable Subject Matter
Claims 11-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Regarding Claim 11, the prior art of record, which is the most pertinent art found, fails to teach and/or fairly suggest the instant invention. As set forth supra, the combination of Hodorek et al. (US 10,722,374) in view of Roche et al. (US 2007/0142917) discloses the invention substantially as claimed. Further, the combination teaches the steps of: detaching a bearing component of an implanted glenoid implant from a base component of the glenoid implant by uncoupling a first mating feature of the base component from a second mating feature of the bearing component (in the transition from anatomical implant to reverse as illustrated in Figs 2A-2F).
However, the combination does not teach inserting a cutting tool through any of a first slot and a second slot of the base component located on opposite sides of a keel extending away from a bone-contacting surface of the base component into the glenoid vault; removing bone adjacent the keel, and removing the base component from the glenoid vault, wherein the first and second slots extend from a first surface of the base component to the bone-contacting surface of the base component, the first slot being positioned adjacent the keel on a first side of the keel and the second slot being positioned adjacent the keel on a second side of the keel opposite the first side of the keel.
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Kelley (US 9,603,720) teaches inserting a cutting tool (60) through any of a first slot (26) and a second slot (26) located on opposite sides of an implant (111); removing bone adjacent the implant, and removing the implant, wherein the first and second slots extend from a first surface of the base component, the first slot being positioned adjacent the implant on a first side and the second slot being positioned adjacent the implant on a second side opposite the first side of the keel (Figs 5-6).
However, the prior art either individually or in combination, does not teach or render obvious wherein the first and second slots are positioned on the glenoid base component.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN AINSLEY DUKERT whose telephone number is (571)270-3258. The examiner can normally be reached Mon-Fri 6am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melanie Tyson can be reached at (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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/BRIAN A DUKERT/Primary Examiner, Art Unit 3774