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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/20/2026 has been entered.
Response to Arguments
Applicant's arguments filed 4/20/2026 have been fully considered. Arguments regarding the rejection of claims 1-13 and 15-20 under 35 U.S.C. 103 as being unpatentable over Tornier in view of Rydell have been fully considered but they are not persuasive. Applicant only argues with respect to the circumferential projections of figs. 3A-3B of Rydell. The rejection below relies on figs. 4A-4B of Rydell which has longitudinally extending projections having a top surface plane that does not intersect with the pin along a length of the pin. While Rydell discloses generally triangular cross-sections of the projections, selecting a shape having parallel opposite side walls is considered an obvious matter of design choice since this feature was not disclosed as critical to the practice of the invention. See the rejection below for further details.
Arguments regarding the rejection of claims 1-14 and 18-20 under 35 U.S.C. 103 as being unpatentable over Tornier in view of Schumacher are moot in view of the new grounds of rejection necessitated by the amendments.
Claim Objections
Claims 1 and 18 are objected to because of the following informalities: In claim 1, line 14 “the one or more protrusions” is believed to be in error for --the one or more projections--. In claim 18, lines 18-19, “the one or more protrusions” is believed to be in error for --the one or more projections--. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 18, claim 1, lines 13-14 and claim 18, lines 17-19 each recite “wherein the one or more projections each have opposite side walls that run parallel to each other for at least a portion of a length of each of the one or more protrusions”, but this feature is not clearly shown in the figures and the word “parallel” is not in the specification. Applicant points to fig.10 of the instant application for support for the new limitations, but fig.10 appears to show the sidewalls being somewhat curved and angled with respect to each other. Accordingly, this limitation is directed to new matter.
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.
Claims 1-13 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tornier US 2003/0083751 (hereafter referred to as Tornier) in view of Rydell et al. US 2006/0247787 (hereafter referred to as Rydell).
Regarding claim 1, Tornier discloses a patellar prosthesis 3, comprising an anterior surface (bone contacting surface shown in fig.7) adapted to mate with a corresponding prepared surface of a natural patella R (fig.2); the anterior surface having a plurality of pins 35 extending from the anterior surface, wherein at least one of the plurality of pins is formed from a plastic material (par.15 discloses one-piece plastic patellar component), and, wherein each of the plurality of pins has an outer surface between an end and the anterior surface (figs. 2, 4, 5, and 7 shown each pin has an outer surface between an end and the anterior surface); one or more projections (the lower wider portion extending outwardly from the outer surface of the pin as shown in figs. 2, 4, 5, and 7) on the at least one plastic pin extending outwardly from the outer surface of the at least one plastic pin; and wherein the one or more projections on the at least one plastic pin is capable of contacting a surface of a hole formed in the prepared surface of the patella into which the pin is intended to be inserted and thereby can mechanically restrains the patellar prothesis from moving relative to the natural patella while bone cement cures between the anterior surface and the prepared surface of the natural patella (fig.2 shows the pegs in the patellar bone). Note that lines 13-17 are directed to an intended use of the patellar prosthesis and the patellar prosthesis of Tornier is capable of being inserted into a hole in the natural patella as claimed. While no cement is positively claimed, Tornier does disclose using cement (par.43). The term “mechanically restrains” is dependent on not only the pegs but also on the size of the hole formed in the patella which cannot be positively claimed in a device claim. Therefore, at least when a hole is formed to be the same size or smaller than the pegs, a mechanical interference fit between the patellar prosthesis of Tornier and the bone can be formed. Tornier discloses the invention substantially as claimed but does not disclose that the projections comprise discrete raised features that are circumferentially spaced from one another with recessed groove regions between adjacent projections, wherein the one or more projections each have opposite side walls that run parallel to each other for at least a portion of a length of each of the one or more projections, and wherein the one or more projections have a top surface that defines a top surface plane that does not intersect with the pin along a length of the pin.
Rydell teaches a prosthesis 332 with a bone anchoring pin 336 (figs. 4A-4B), in the same field of endeavor, wherein the pin comprises projections 348, the projections comprising discrete raised features 348 that are circumferentially spaced apart from one another with recessed groove regions (considered the recesses between the barbs 338 in figs. 4A-4B) between adjacent projections (figs. 4A-4B), wherein the one or more projections each have opposite side walls that run next to each other for at least a portion of a length of each of the one or more projections, and wherein the one or more projections have a top surface that defines a top surface plane that does not intersect with the pin along a length of the pin (see annotated figs.4A-4B below) for the purpose of reducing the likelihood that the prosthesis will migrate out of position (par.26) and reducing the likelihood the prosthesis will rotate in situ (par.28).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify each of the pins of Tornier to include the projections comprising discrete raised features that are circumferentially spaced from one another with recessed groove regions between adjacent projections, wherein the one or more projections each have opposite side walls that run parallel to each other for at least a portion of a length of each of the one or more projections, and wherein the one or more projections have a top surface that defines a top surface plane that does not intersect with the pin along a length of the pin as taught by Rydell in order to better prevent the patellar prosthesis from migrating out of position and rotating in situ. Regarding the claim limitation of the opposite side walls of the projections being parallel to each other, while the projections of Rydell are described as “generally triangularly shaped in cross-section” (Rydell par.28), it would have been obvious to modify the cross-sectional shape such that the opposite side walls are parallel by changing the shape of the projections to rectangular or square shaped for example since it has been held that changes in shape are a matter of design choice, which a person of ordinary skill in the art would have found obvious as they were not disclosed as being critical to the practice of the invention (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) MPEP 2144.04 IV B). As discussed above, the specification of the instant application does not disclose parallel side walls, therefore the feature is not disclosed as being critical to the practice of the invention. Further, the projections of Tornier in view of Rydell would function equally well with parallel or non-parallel side walls as both designs would perform the same function of preventing rotation.
Regarding claim 2, see par.15 of Tornier for plastic. No specific polymer is claimed and because the plastic patellar prosthesis of Tornier is for use in the human body, the plastic is inherently medically safe.
Regarding claims 3 and 4, see “one-piece” in par.15 of Tornier as well as figs. 2, 4, 5, and 7 of Tornier and figs. 3A-4B of Rydell for the pins and projections being integral with the prostheses.
Regarding claims 5 and 6, the projections taught by Rydell extend along a length of the pin. Claim 6 does not require the projections extend along the entire length of the pins.
Regarding claim 7, see Tornier figs. 4, 5, and 7 for three pins.
Regarding claims 8 and 9, see Rydell figs. 4A-4B for at least three projections 348 which are equally spaced and extend axially along a length of the pin. Note that the claims do not limit the equally spaced projections to only three, therefore the four longitudinal projections taught by Rydell which are equally spaced to an adjacent projection meet the claim since four includes three. Even if the claims were amended to limit the projections to consist of three projections, such a modification would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention since it has been held that it is not inventive to discover the optimum or workable ranges by routine experimentation and would be an obvious extension of prior art teachings (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05 II A).
Regarding claims 10 and 11, see Tornier figs. 2 and 7 for the anterior surface further comprising a planar surface and at least one recess 36 in the planar surface, wherein the three pins emanate from the planar surface (figs.2 and 7).
Regarding claim 12, see Rydell figs. 3A-3B for the outer surface of the pin comprising one or more recesses 242.
Regarding claim 13, see Tornier figs. 2 and 7 for the anterior surface further comprising a planar surface and at least one recess 36 in the planar surface, wherein the three pins emanate from the planar surface (figs.2 and 7) and see Rydell figs. 3A-3B for the outer surface of the pin comprising one or more recesses 242.
Regarding claim 17, see Rydell figs. 4A-4B for circumferential 336 and longitudinal 348 projections. Note that claim 17 does not specify that the circumferential projection and non-circumferential projection are “the one or more projections” defined in claim 1.
Regarding claim 18, see the rejection of claim 1 above. Tornier further discloses a femoral component 2 and tibial component 1, wherein the patellar component 3 comprises a posterior surface 31-33 for engaging the femoral component (fig.1; par.32). Tornier as modified by Rydell comprises pins having projections that have a greater diameter than a pin diameter. The total knee prosthesis of Tornier in view of Rydell is capable of being used as claimed such that the projection diameters are equal to or greater than a diameter of a hole formed in the natural patella when the pin is pressed therein. As discussed above with respect to claim 1, the hole formed in the natural patella cannot be positively claimed and is directed to an intended use of the prosthesis.
Regarding claim 19, Tornier discloses three pins (fig.7) and Rydell teaches at least three equally spaced projections (figs. 4A-4B). Note that the claims do not limit the equally spaced projections to only three, therefore the four longitudinal projections taught by Rydell which are equally spaced to an adjacent projection meet the claim since four includes three. Even if the claims were amended to limit the projections to consist of three projections, such a modification would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention since it has been held that it is not inventive to discover the optimum or workable ranges by routine experimentation and would be an obvious extension of prior art teachings (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05 II A).
Regarding claim 20, the maximum diameter of each pin of the prosthesis of Tornier in view of Rydell can be greater than a diameter of a hole in the natural patella into which each pin is inserted. This claim is directed to the intended use of the prosthesis. A person could form a hole that is smaller than the maximum diameter of each pin in which case the maximum diameter of each pin is greater than the diameter of the hole in the natural patella.
Claims 1-14, 16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tornier in view of Schwartz et al. US 2013/0184820 (hereafter referred to as Schwartz).
Regarding claim 1, Tornier discloses a patellar prosthesis 3, comprising an anterior surface (bone contacting surface shown in fig.7) adapted to mate with a corresponding prepared surface of a natural patella R (fig.2); the anterior surface having a plurality of pins 35 extending from the anterior surface, wherein at least one of the plurality of pins is formed from a plastic material (par.15 discloses one-piece plastic patellar component), and, wherein each of the plurality of pins has an outer surface between an end and the anterior surface (figs. 2, 4, 5, and 7 shown each pin has an outer surface between an end and the anterior surface); one or more projections (the lower wider portion extending outwardly from the outer surface of the pin as shown in figs. 2, 4, 5, and 7) on the at least one plastic pin extending outwardly from the outer surface of the at least one plastic pin; and wherein the one or more projections on the at least one plastic pin is capable of contacting a surface of a hole formed in the prepared surface of the patella into which the pin is intended to be inserted and thereby can mechanically restrains the patellar prothesis from moving relative to the natural patella while bone cement cures between the anterior surface and the prepared surface of the natural patella (fig.2 shows the pegs in the patellar bone). Note that lines 17-21 are directed to an intended use of the patellar prosthesis and the patellar prosthesis of Tornier is capable of being inserted into a hole in the natural patella as claimed. While no cement is positively claimed, Tornier does disclose using cement (par.43). The term “mechanically restrains” is dependent on not only the pegs but also on the size of the hole formed in the patella which cannot be positively claimed in a device claim. Therefore, at least when a hole is formed to be the same size or smaller than the pegs, a mechanical interference fit between the patellar prosthesis of Tornier and the bone can be formed. Tornier discloses the invention substantially as claimed but does not disclose that the projections comprise discrete raised features that are circumferentially spaced from one another with recessed groove regions between adjacent projections, wherein the one or more projections each have opposite side walls that run parallel to each other for at least a portion of a length of each of the one or more projections, wherein the one or more projections have a top surface that defines a top surface plane that does not intersect with the pin along a length of the pin.
Schwartz teaches a prosthesis 400 with a bone anchoring pin 488 (figs. 54-56 and 58), in the same field of endeavor, wherein the pin comprises projections 482, the projections comprising discrete raised features that are circumferentially spaced apart from one another with recessed groove regions between adjacent projections (considered grooves in figs. 54-56 and 58 between the projections/fins 482), wherein the one or more projections 482 each have opposite side walls that run parallel to each other for at least a portion of a length of each of the one or more projections (see fig.58 for parallel side walls), wherein the one or more projections have a top surface that defines a top surface plane that does not intersect with the pin along a length of the pin (see annotated fig.56 below), wherein the projections are provided for the purpose of assisting in preventing rotation post implantation in the bone (par.148).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify each of the pins of Tornier to include the projections comprising discrete raised features that are circumferentially spaced from one another with recessed groove regions between adjacent projections, wherein the one or more projections each have opposite side walls that run parallel to each other for at least a portion of a length of each of the one or more projections, and wherein the one or more projections have a top surface that defines a top surface plane that does not intersect with the pin along a length of the pin as taught by Schwartz in order to better prevent the patellar prosthesis from rotating post implantation in the bone. It is noted that Schwartz discloses use of cement with the prosthesis in par.148.
Regarding claim 2, see par.15 of Tornier for plastic. No specific polymer is claimed and because the plastic patellar prosthesis of Tornier is for use in the human body, the plastic is inherently medically safe.
Regarding claims 3 and 4, see “one-piece” in par.15 of Tornier as well as figs. 2, 4, 5, and 7 of Tornier.
Regarding claims 5 and 6, the projections taught by Schwartz extend along a length of the pin. Claim 6 does not require the projections extend along the entire length of the pins.
Regarding claim 7, see Tornier figs. 4, 5, and 7 for three pins.
Regarding claims 8 and 9, see Schwartz fig. 58 for at least three projections 482 which are equally spaced and extend axially along a length of the pin. Note that the claims do not limit the equally spaced projections to only three, therefore the four longitudinal projections taught by Schwartz which are equally spaced to an adjacent projection meet the claim since four includes three. Even if the claims were amended to limit the projections to consist of three projections, such a modification would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention since it has been held that it is not inventive to discover the optimum or workable ranges by routine experimentation and would be an obvious extension of prior art teachings (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05 II A) and because Schwartz teaches in par.148 that the number of fins 482 may range between two and six which includes three.
Regarding claims 10 and 11, see Tornier figs. 2 and 7 for the anterior surface further comprising a planar surface and at least one recess 36 in the planar surface, wherein the three pins emanate from the planar surface (figs.2 and 7).
Regarding claim 12, see Schwartz figs. 54-56 and 58 for the outer surface of the pin comprising one or more recesses.
Regarding claim 13, see Tornier figs. 2 and 7 for the anterior surface further comprising a planar surface and at least one recess 36 in the planar surface, wherein the three pins emanate from the planar surface (figs.2 and 7) and see Schwartz figs. 54-56 and 58 for the outer surface of the pin comprising one or more recesses.
Regarding claim 14, Schwartz par.148 discloses the projections 482 comprise at least one notch 484 (see fig.54) for the purpose of allowing for bone ingrowth or cement securement. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide additional notches to further allow for bone ingrowth or cement securement since it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), MPEP 2144.04 VI B). As such, the projections having a plurality of notches include a serrated edge capable of engaging the hole surface. (Merriam-Webster online dictionary defines serrated as “notched or toothed on the edge”.)
Regarding claim 16, see Schwartz fig.54 for the projections 482 being tapered and therefore angled relative to a longitudinal pin axis.
Regarding claim 18, see the rejection of claim 1 above. Tornier further discloses a femoral component 2 and tibial component 1, wherein the patellar component 3 comprises a posterior surface 31-33 for engaging the femoral component (fig.1; par.32). Tornier as modified by Schwartz comprises pins having projections that have a greater diameter than a pin diameter. The total knee prosthesis of Tornier in view of Schwartz is capable of being used as claimed such that the projection diameters are equal to or greater than a diameter of a hole formed in the natural patella when the pin is pressed therein. As discussed above with respect to claim 1, the hole formed in the natural patella cannot be positively claimed and is directed to an intended use of the prosthesis.
Regarding claim 19, Tornier discloses three pins (fig.7) and Schwartz teaches at least three equally spaced projections (figs. 54-56 and 58). Note that the claims do not limit the equally spaced projections to only three, therefore the four longitudinal projections taught by Schwartz which are equally spaced to an adjacent projection meet the claim since four includes three. Even if the claims were amended to limit the projections to consist of three projections, such a modification would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention since it has been held that it is not inventive to discover the optimum or workable ranges by routine experimentation and would be an obvious extension of prior art teachings (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05 II A).
Regarding claim 20, the maximum diameter of each pin of the prosthesis of Tornier in view of Schwartz can be greater than a diameter of a hole in the natural patella into which each pin is inserted. This claim is directed to the intended use of the prosthesis. A person could form a hole that is smaller than the maximum diameter of each pin in which case the maximum diameter of each pin is greater than the diameter of the hole in the natural patella.
Claims 1-13, 15, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tornier in view of Baptista et al. US 2014/0031945 (hereafter referred to as Baptista).
Regarding claim 1, Tornier discloses a patellar prosthesis 3, comprising an anterior surface (bone contacting surface shown in fig.7) adapted to mate with a corresponding prepared surface of a natural patella R (fig.2); the anterior surface having a plurality of pins 35 extending from the anterior surface, wherein at least one of the plurality of pins is formed from a plastic material (par.15 discloses one-piece plastic patellar component), and, wherein each of the plurality of pins has an outer surface between an end and the anterior surface (figs. 2, 4, 5, and 7 shown each pin has an outer surface between an end and the anterior surface); one or more projections (the lower wider portion extending outwardly from the outer surface of the pin as shown in figs. 2, 4, 5, and 7) on the at least one plastic pin extending outwardly from the outer surface of the at least one plastic pin; and wherein the one or more projections on the at least one plastic pin is capable of contacting a surface of a hole formed in the prepared surface of the patella into which the pin is intended to be inserted and thereby can mechanically restrains the patellar prothesis from moving relative to the natural patella while bone cement cures between the anterior surface and the prepared surface of the natural patella (fig.2 shows the pegs in the patellar bone). Note that lines 17-21 are directed to an intended use of the patellar prosthesis and the patellar prosthesis of Tornier is capable of being inserted into a hole in the natural patella as claimed. While no cement is positively claimed, Tornier does disclose using cement (par.43). The term “mechanically restrains” is dependent on not only the pegs but also on the size of the hole formed in the patella which cannot be positively claimed in a device claim. Therefore, at least when a hole is formed to be the same size or smaller than the pegs, a mechanical interference fit between the patellar prosthesis of Tornier and the bone can be formed. Tornier discloses the invention substantially as claimed but does not disclose that the projections comprise discrete raised features that are circumferentially spaced from one another with recessed groove regions between adjacent projections, wherein the one or more projections each have opposite side walls that run parallel to each other for at least a portion of a length of each of the one or more projections, wherein the one or more projections have a top surface that defines a top surface plane that does not intersect with the pin along a length of the pin.
Baptista teaches a prosthesis 10 with a bone anchoring pin 16, 18, 20, 22 (figs. 1-2), in the same field of endeavor, wherein the pin comprises projections (fig.2 at reference characters 34 and 46), the projections comprising discrete raised features that are circumferentially spaced apart from one another with recessed groove regions 42 between adjacent projections (figs. 1-2), wherein the one or more projections each have opposite side walls that run parallel to each other for at least a portion of a length (interpreted as a circumferential length) of each of the one or more projections (see fig.2 for the top and bottom parallel surfaces of each projection), wherein the one or more projections have a top surface (considered the outer circumferential surface) that defines a top surface plane that does not intersect with the pin along a length of the pin (see fig.2 which shows a vertical plane of the outer surface of each projection never intersecting with the pin), wherein the projections and grooves are provided for the purpose of ensuring pressurized cement flows into the grooves to ensure positive interlocking between the bone and prosthesis (par.31).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify each of the pins of Tornier to include the projections comprising discrete raised features that are circumferentially spaced from one another with recessed groove regions between adjacent projections, wherein the one or more projections each have opposite side walls that run parallel to each other for at least a portion of a length of each of the one or more projections, and wherein the one or more projections have a top surface that defines a top surface plane that does not intersect with the pin along a length of the pin as taught by Baptista in order to better ensure positive interlocking between the bone and the prosthesis.
Regarding claim 2, see par.15 of Tornier for plastic. No specific polymer is claimed and because the plastic patellar prosthesis of Tornier is for use in the human body, the plastic is inherently medically safe.
Regarding claims 3 and 4, see “one-piece” in par.15 of Tornier as well as figs. 2, 4, 5, and 7 of Tornier.
Regarding claims 5 and 6, the projections taught by Baptista extend along a length of the pin. Claim 6 does not require the projections extend along the entire length of the pins.
Regarding claim 7, see Tornier figs. 4, 5, and 7 for three pins.
Regarding claims 8 and 9, see Baptista fig. 1 for at least three projections which are equally spaced and extend axially along a length of the pin (at least their axial width extends along a length of the pin). Note that the claims do not limit the equally spaced projections to only three, therefore the projections taught by Baptista which are equally spaced to an adjacent projection meet the claim. Even if the claims were amended to limit the projections to consist of three projections, such a modification would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention since it has been held that it is not inventive to discover the optimum or workable ranges by routine experimentation and would be an obvious extension of prior art teachings (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05 II A).
Regarding claims 10 and 11, see Tornier figs. 2 and 7 for the anterior surface further comprising a planar surface and at least one recess 36 in the planar surface, wherein the three pins emanate from the planar surface (figs.2 and 7).
Regarding claim 12, see Baptista figs. 1-2 for the outer surface of the pin comprising one or more recesses 36, 39, 42.
Regarding claim 13, see Tornier figs. 2 and 7 for the anterior surface further comprising a planar surface and at least one recess 36 in the planar surface, wherein the three pins emanate from the planar surface (figs.2 and 7) and see Baptista figs. 1-2 for the outer surface of the pin comprising one or more recesses 36, 39, 42.
Regarding claim 15, see Baptista figs. 1-2 for the projections extending circumferentially.
Regarding claim 18, see the rejection of claim 1 above. Tornier further discloses a femoral component 2 and tibial component 1, wherein the patellar component 3 comprises a posterior surface 31-33 for engaging the femoral component (fig.1; par.32). Tornier as modified by Baptista comprises pins having projections that have a greater diameter than a pin diameter. The total knee prosthesis of Tornier in view of Baptista is capable of being used as claimed such that the projection diameters are equal to or greater than a diameter of a hole formed in the natural patella when the pin is pressed therein. As discussed above with respect to claim 1, the hole formed in the natural patella cannot be positively claimed and is directed to an intended use of the prosthesis.
Regarding claim 19, Tornier discloses three pins (fig.7) and Baptista teaches at least three equally spaced projections (figs. 1-2). Note that the claims do not limit the equally spaced projections to only three, therefore the projections taught by Baptista which are equally spaced to an adjacent projection meet the claim. Even if the claims were amended to limit the projections to consist of three projections, such a modification would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention since it has been held that it is not inventive to discover the optimum or workable ranges by routine experimentation and would be an obvious extension of prior art teachings (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05 II A).
Regarding claim 20, the maximum diameter of each pin of the prosthesis of Tornier in view of Baptista can be greater than a diameter of a hole in the natural patella into which each pin is inserted. This claim is directed to the intended use of the prosthesis. A person could form a hole that is smaller than the maximum diameter of each pin in which case the maximum diameter of each pin is greater than the diameter of the hole in the natural patella.
Conclusion
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/MEGAN Y WOLF/Primary Examiner, Art Unit 3774
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