DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
This application claims priority from provisional application 61/238429, filed 08/31/2009
Status of Claims
Claims 26, 27, and 43-45 are pending.
Claims 1-25, 28-42, and 46-50 have been cancelled.
Election/Restrictions
Applicant’s election of Invention I (Apparatus) and Species 12 (Figures 21, 21A, and 22) in the reply filed on 03/13/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
Information Disclosure Statement
The Information Disclosure Statement filed on 09/22/2023 has been considered by the examiner.
Note that one reference is stricken through because it contains too many numbers.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the Non-round articulating surface (claim 26) and Opposing prosthetic articulating surface (claim 45 see 112 rejection below for more details) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 26, 27, and 43-45 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 26, 27, and 43-45 are rendered indefinite by the recitation requiring the articulation surface to be non-round. It appears the applicant intends to define this surface as being semi-ellipsoid or elongated, but non-round is much broader. Round is generally defined as being shaped like or approximately a circle or sphere. Round permits elongation and variations from a strict circle or sphere. Therefore the applicant’s invention qualifies as being round. A person of ordinary skill in the art would not be able to determine the scope of this phrase based on the applicant’s disclosure because the current articulating surface is clearly depicted and disclosed as meeting the broadest reasonable definition of round.
Claim 43 lacks antecedent basis for the recitation of “the semi-ellipsoidal articulation surface” in line 1. The applicant is advised to amend this recitation and that of line 3 to say “the non-round articulation surface”.
Claim 45 is rendered indefinite by the requirement for an opposing prosthetic articulating surface mateable with the articulating surface of the prosthetic head. The claims are directed at a single device and define that device as the prosthetic head (elected embodiment shown in Figure 21). This device does not disclose an opposing prosthetic or articulating surface opposing the articulating surface of the head. Therefore it is unclear how an opposing prosthetic could be considered to be part of the device identified in claim 26. The applicant is advised to amend claim 45 to define the prosthetic head as capable of functioning with the opposing prosthetic articulating surface of the second prosthetic.
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 pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claim(s) 26, 27, and 43-45 is/are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Amstutz US 4,261,062.
26. 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), and a bottom surface (Figure 2) comprising flat surface portions 20, a concave feature (Figure 2 adjacent reference numbers 14), and a peg 12 for engagement with a resurfaced portion of the bone joint (3:26-31) and to thereby, maintain 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 (3:32-36).
27. Amstutz discloses the prosthetic head is a prosthetic humeral head, the bone is a humerus, and the bone joint is a shoulder joint (3:15-18).
43. Amstutz discloses the semi-ellipsoidal articulation surface further comprises a spherical central portion that is centered about the central point of the semi-ellipsoidal articulation surface (3:19-20), the spherical central portion having a same as radius of curvature as a patent's native glenoid or a prosthetic glenoid component (this recitation is extremely broad because native and prosthetic glenoid come in all shapes and sizes because they accommodate custom configurations, deformities from growth or disease, and male/female/child/adult, therefore there is inherently a glenoid that has a radius matching that of the spherical portion of Amstutz).
44. 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. Amstutz discloses an opposing prosthetic articulating surface mateable with the articulating surface of the prosthetic head (Figures 5-9).
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