DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/22/2026 has been entered.
Priority
This application claims priority from provisional application 61/238429, filed 08/31/2009
Status of Claims
Claims 26, 27, 43-45, 51, and 53-56 are pending.
Claims 1-25, 28-42, 46-50, and 52 have been cancelled.
Election/Restrictions
Applicant elected Invention I (Apparatus) and Species 12 (Figures 21, 21A, and 22) without traverse on 03/13/2025.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 26, 27, 43-45, and 53-56 are rejected under 35 U.S.C. 103 as being unpatentable over Buechel et al (Buechel) USPN 4,752,296 in view of Amstutz US 4,261,062.
26. Buechel discloses a device 70 for replacing a portion of a bone joint (Figures 4A-B), comprising: a prosthetic head 70 comprising:
articulation surface 72 having, and
a concave spherical bone facing surface (78 as shown in Figure 4B is concave and spherical based on the broadest interpretation of the term spherical, which is related to a sphere, this is taking into account that the applicant’s own invention provides a surface that is less than a hemisphere with a stem blocking a major portion) configured to abut a resurfaced portion of a bone of a joint (since a bone can be resurfaced to any shape, the concave bone surface inherently is configured to abut some resurfaced portion of a bone in a matching configuration),
a linear stem 80 extending from the concave spherical bone facing surface (Figure 4b shows the concave surface flattens out near the stem but it is still spherical and the stem extends directly from it) beyond a perimeter of the articulation surface (Figure 4B) for engagement with the bone of the bone joint (in use it functions similar to the stem shown in Figure 8) and to, thereby, aid in maintaining alignment of the superior-to-inferior surface curvature length of the articulation surface along a superior-to-inferior axis of a cut surface of a bone of the bone joint (the stem functions in the same manner as the applicant’s invention and thereby airs in the anchoring any desired orientation); and
a circumferentially continuous flat surface portion that surrounds the concave spherical bone facing surface, and is substantially perpendicular to the linear stem (see the flat circumferentially continuous surface adjacent the angled surface identified in the zoomed in Figure 4B below).
[AltContent: connector][AltContent: textbox (Circumferentially Continuous Flat Surface Portion)]
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However, Buechel does not disclose the claimed curvature configurations.
Amstutz teaches the use of Amstutz discloses a device for replacing a portion of a bone joint (Figures 1-4), comprising: a prosthetic head 14 comprising: a non-round articulation surface having a superior-to-inferior surface curvature length intersecting a central point of the articulation surface that is greater than a perpendicular, anterior-to-posterior surface curvature length intersecting the central point (Figures 2-3 3:20-25) in the same field of endeavor for the purpose of forming an articulating surface that better mimics the natural shape and range of motion.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the overall shape of the device of Buechel to include a superior-to-inferior surface curvature length intersecting a central point of the articulation surface that is greater than a perpendicular, anterior-to-posterior surface curvature length intersecting the central point as taught by Amstutz in order to better mimic the natural shape and range of motion of the patients healthy joint.
27. Buechel discloses the prosthetic head is a prosthetic humeral head, the bone is a humerus, and the bone joint is a shoulder joint (4:64-5:21).
43. Buechel discloses the articulation surface further comprises a spherical central portion that is centered about the central point of the articulation surface (the central portion shown in Figure 4B near reference number 72 is considered to be spherical),
44. Buechel as modified by Amstutz discloses the articulation surface further comprises: a first band extending along the superior-to-inferior surface curvature length from the spherical central portion in a first direction towards a periphery of the articulation surface; and a second band extending along the superior-to-inferior surface curvature length from the spherical central portion in a second direction opposite the first direction towards the periphery of the articulation surface, wherein the first and second bands maintain a same radius of curvature as the spherical central portion throughout their extent, while a radius of curvature along the anterior-to-posterior surface curvature gradually decreases toward the periphery of the articulation surface (Amstutz discloses the same semi-ellipsoid shape as the applicant’s invention with the longer superior/inferior dimension and shorter anterior to posterior dimensions combined with a central spherical section, as explained above, therefore the bands will have the same configurations and radii relationships).
45. Buechel discloses the prosthetic head is configured to mate with an opposing prosthetic articulating surface of a second prosthetic (the shape of the articulating surface of Buechel is fully capable of mating with an similar sized prosthetic with a concave surface).
53. Buechel discloses the bone facing surface of the prosthetic head has a shape that corresponds to at least a portion of a shape of the resurfaced portion of the bone (since a bone can be resurfaced to any shape, the prosthetic inherently is configured to abut some resurfaced portion of a bone in a matching configuration).
54. Buechel discloses at least one of the concave spherical bone facing surface and the circumferentially continuous flat surface portion includes a porous coating for interference fit fixation with the bone of the bone joint (4:68-5:8 disclose the inner surface comprises a porous coating extending across 76/78/79) However, Buechel does not specifically disclose the porous coating extends along the bottom flat surface or adjacent angled surface. It would have been obvious to one of ordinary skill in the art at the time the application was filed to extend the porous coating to the bottom flat and angled surfaces in order to promote direct ingrowth or bone cement attachment to better secure the entire lower surface of the prosthetic head.
55. Buechel discloses the concave spherical bone facing surface defines an open recess in a bottom of the prosthetic head (Figures 4A and 4B clearly show the open recess), the open recess configured to directly face a surface of the bone of the bone joint (this is best illustrated in Figure 8).
56. Buechel discloses the prosthetic head is a single, unitary component comprising the articulation surface, the concave spherical bone facing surface, and the circumferentially continuous flat surface portion (Figures 4A and 4B clearly show these components made as a single unitary component).
Claim 51 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Buechel and Amstutz (Combination 1) as applied to claims 26, 27, 43-45, and 53-56 above, and further in view of Maroney et al (Maroney) US 2004/0193278 A1.
Combination 1 discloses the invention substantially as claimed being described above. However, Combination 1 does not disclose the use of a modular stem.
Maroney teaches the use of a modular shoulder prosthetic comprising a removable stem in the same field of endeavor for the purpose of providing the ability to select the optimal stem and to remove the cup portion after implantation thereby reducing damage to the implant site.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the stem of Combination 1 to be modular/removable as taught by Maroney in order to give the surgeon more options during insertion of the implant as well as the ability to replace just the cup shaped portion in a follow-up surgery.
Response to Arguments
Applicant's arguments filed 04/22/2026 have been fully considered but they are not persuasive. The applicant failed to provide any specific arguments with respect the prior art references. As explained above the prior art combination reads upon the old and new claim elements. Zooming in on Figure 4B shows that there is a flattened perpendicular surface between the angled end and inner surface portion 79.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER D PRONE whose telephone number is (571)272-6085. The examiner can normally be reached Monday-Friday 10 am - 6 pm (HST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melanie R 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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/Christopher D. Prone/Primary Examiner, Art Unit 3774
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