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 .
According to the Amendment filed on 11/6/25, Claims 72-77, 90-93, 99 are amended, and claims 100-106 are added.
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 72-77, 90-95, 99-106 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.
Claim 72 recites the limitation "the femur" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 72, 75-77, 90-95, 99-106 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by van der Walt (US 20140052149 A1).
van der Walt discloses a method of positioning a medical prosthesis comprising: positioning a probe 228, fig. 6 to contact a single point FM, wherein the femur is in a first position fig. 6; registering the single point FM before positioning an acetabular cup with an electronic orientation device comprising at least one inertial sensor 204, fig. 17; positioning the acetabular cup fig. 21b; positioning a femur in the first position such that the femur is in the same position before positioning the acetabular cup and after positioning the acetabular cup fig. 21b; and positioning the probe to contact the single point FM after positioning the acetabular cup to determine a change in leg length or joint offset fig. 21b, wherein the single point is an anatomical landmark fig. 6,
wherein a change in the single point along a vertical plane indicates a change in leg length (para. 26, 56, 59, 94, 105, 106, 104, 170-172,191), wherein a change in the single point along a horizontal plane indicates a change in joint offset (para. 26, 56, 59, 94, 105, 106, 104, 170-172,191), further comprising measuring an orientation of the femur relative to pelvis during one or more measurements of the single point with the electronic orientation device (para. 59, 176, 202), further comprising storing two- dimensional coordinates of the single point with the electronic orientation device (para. 80, 83, 86), further comprising correcting for changes in orientation by doing a rotation about a center of rotation of the femur with the electronic orientation device (para. 97, 103, 117, 167, 169, 172), further comprising registering gravitational zero with the electronic orientation device (para. 85, 102,160, 214), further comprising manually realigning the femur about a center of rotation para. 105, further comprising coupling a target portion with a contact portion positioned on the leg before positioning the acetabular cup figs. 3-4, wherein a target positioned on the leg assists the user in positioning the femur such that the femur is in the same first position before positioning the acetabular cup and after positioning the acetabular cup figs. 6, 21, further comprising providing a visual output of a change in leg length, a direction of a change of leg length , a change in joint offset , a direction of a change of joint offset on a screen para. 94,101,156, 167, further comprising providing instructions on a screen para. 167, wherein the at least one inertial sensor comprises an accelerometer or a gyroscope (para. 71, 158).
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) 73-74 is/are rejected under 35 U.S.C. 103 as being unpatentable over van der Walt in view of McCABE (US 20170119475 A1).
van der Walt fails to teach that the single point is located on a fixture or in a divot in the femur.
McCABE teaches point is located on a fixture 1602, fig. 16a, 16c or in a divot in the femur 1614, fig. 16b
It would have been obvious to a person of ordinary skill in the art at the time of the invention was made to locate the single point of van der Walt on a fixture or in a divot on the femur in view of McCABE in order to take it’s advantage of being small in size and is easily installed on a range of patients.
Response to Arguments
Applicant’s arguments, with respect to the rejection(s) of the claim(s) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of van der Walt.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SAMEH RAAFAT BOLES whose telephone number is (571)270-5537. The examiner can normally be reached 9-5 pm.
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/SAMEH R BOLES/Primary Examiner, Art Unit 3775