Prosecution Insights
Last updated: April 19, 2026
Application No. 18/215,316

Smart Shoulder Implant

Non-Final OA §103§112
Filed
Jun 28, 2023
Examiner
KIM, SAMUEL CHONG
Art Unit
3791
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Orthosensor Inc.
OA Round
1 (Non-Final)
48%
Grant Probability
Moderate
1-2
OA Rounds
4y 0m
To Grant
99%
With Interview

Examiner Intelligence

Grants 48% of resolved cases
48%
Career Allow Rate
107 granted / 221 resolved
-21.6% vs TC avg
Strong +72% interview lift
Without
With
+71.5%
Interview Lift
resolved cases with interview
Typical timeline
4y 0m
Avg Prosecution
43 currently pending
Career history
264
Total Applications
across all art units

Statute-Specific Performance

§101
11.1%
-28.9% vs TC avg
§103
39.7%
-0.3% vs TC avg
§102
7.7%
-32.3% vs TC avg
§112
36.5%
-3.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 221 resolved cases

Office Action

§103 §112
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. Claim Objections Claims 13, 18-20 are objected to because of the following informalities: Claim 13, line 9: –the– should be inserted “kinematic”; Claim 13, line 11: “a tracked” should be replaced with –the tracked–; Claim 13, line 11: “magnitude” should be replaced with –magnitudes–; Claim 18, line 1: –the– should be inserted before “magnetic” ; Claim 18, line 2: –the– should be inserted before “kinematic”; Claim 18, line 2: “a warning” should be replaced with –the warning–; Claim 19, line 2: –the– should be inserted before “kinematic”; Claim 20, line 2: –the– should be inserted before “kinematic”; and Claim 20, line 2: “is” should be replaced with –are–. Appropriate correction is required. Claim Interpretation The following is a quotation of 35 U.S.C. 112(f): (f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and (C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. No limitations were interpreted under 35 U.S.C. 112(f). 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 appl icant regards as his invention. Claim s 1 -21 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 1 recites “the marker reader” in line 10. Claim 1 also recites “at least one marker reader in line 6. If there are a plurality of magnetic sensors, it is unclear which of the plurality is being referred to by “the marker reader”. F or the purposes of examination, the recitation in line 10 will be interpreted to be “the at least one marker reader ”. Claim 4 also recites “the marker reader”, so it is rejected for similar reasons. Claims 2-12 are rejected by virtue of their dependence from claim 1. Claim 10 recites “wherein the at least one sensor includes any of a load sensor, pH sensor, temperature sensor and pressure sensor operatively coupled to the processor” in lines 1-2. Claim 1 recites “at least one sensor to measure kinematic data between the glenoid and humeral implants” in lines 8-9. It is unclear how the load, pH, temperature, and pressure sensors are configured to measure kinematic data. The specification indicates that the positional data and the kinematic data may include any of a flexion-extension, abduction-adduction, internal-external rotation, lift-off and direction vector of the lift-off of a patient's shoulder . See paragraph [0027] of the Applicant’s specification. Additionally, kinematics is generally understood to independent of load, pH, temperature, and pressure . However, one of ordinary skill would not understand how load, pH, temperature, and pressure sensors can be used to measure the kinematic data which may include the rotation and lift-off and direction vector of lift-off , and the specification does not provide clarification. For the purposes of examination, claim 10 will be interpreted to recite “The shoulder implant of claim 10, further comprising any of a load sensor, pH sensor, temperature sensor and pressure sensor operatively coupled to the processor”. Claim 13 recites “the magnetic sensor” in lines 9-10. Claim 13 also recites “at least one magnetic sensor” in line 6. If there are a plurality of magnetic sensors, it is unclear which of the plurality is being referred to by “the magnetic sensor”. For the purposes of examination, the recitation in lines 9-10 will be interpreted to be “the at least one magnetic sensor”. Claims 14-21 are rejected by virtue of their dependence from claim 13. Claim 14 recites “the warning includes any of shoulder dislocation and shoulder impingement” in lines 1-2. It is unclear how a warning inclu des any of a disl ocation and impingement. One of ordinary skill would not understand how a physiological phenomenon is included in a warning. For the purposes of examination, the recitation will be interpreted to be “the warning indicates any of a shoulder dislocation and a shoulder impingement”. Claim 17 recites “the positional data” in line 1. There is insufficient antecedent basis for this limitation in the claim because the claim does not previously recite positional data. For the purposes of examination, it will be interpreted to be “the magnetic flux density magnitudes”. 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. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness . This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claims 1 -5 , 9, and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0304595 A1 ( Kehres ) in view of US 2005/0010299 A1 ( Disilvestro ) FILLIN "Insert the prior art relied upon." \d "[ 2 ]" . With regards to claim 1, Kehres teaches a shoulder implant (Fig. 2 and ¶ [0022] depict a prosthetic shoulder joint 104) comprising: a glenoid implant capable of being coupled to a scapula (Fig. 2 and ¶ [0024] depict a prosthetic glenoid component such as a glenosphere ) , the glenoid implant including at least one sensor (Fig. 2 and ¶ [0024] depict a second sensor device 118 similar to the sensor device 102 and implanted on or within the prosthetic glenoid component; ¶¶ [0032]-[0033] depict sensor device 102 comprising a sensor 130 for sensing position; ¶ [0041] discloses calculating an position and orientation of the humerus from accelerometer and a gyroscope data; ¶ ¶ [0042]- [004 3 ] discloses tracking motion of the sensor device 102) , and a humeral implant capable of being coupled to a humerus and contacting the glenoid implant (Fig. 2 and ¶¶ [0023]-[0024] depict a humeral component 110 for contacting the prosthetic glenoid component) , the humeral implant including: at least one sensor to identify positional data of the glenoid implant with respect to the humeral implant (Fig. 2 and ¶ [0024] depict a second sensor device 118 similar to the sensor device 102 and implanted on or within the prosthetic glenoid component; ¶¶ [0032]-[0033] depict sensor device 102 comprising a sensor 130 for sensing position; ¶ [0041] discloses calculating an position and orientation of the humerus from accelerometer and a gyroscope data; ¶¶ [0042]-[0043] discloses tracking motion of the sensor device 102) , at least one sensor to measure kinematic data between the glenoid and humeral implants (Fig. 2 and ¶ [0022] depict a sensor device 102 affixed to a humeral component 110; ¶ [0047] discloses interpreting movement of the humerus 108 relative to the scapula 111 based on the sensor device 102) . Kehres is silent regarding whether the glenoid implant includes at least one marker, the humeral implant including at least one marker reader to detect a position of the marker to identify positional data of the glenoid implant with respect to the humeral implant. In a system relevant to the problem of monitoring position and movement data between implants, Disilvestro teaches a glenoid implant includes at least one marker (Fig s . 19-21 and ¶¶ [0089]-[0090] depict a glenoid component 94 including a signal source 26; ¶ [0052] indicates the signal source 27 is a permanent magnet) , a humeral implant including at least one marker reader to detect a position of the marker to identify positional data of the glenoid implant with respect to the humeral implant (Figs. 19-21 and ¶¶ [0089]-[0090] depict a humeral component including a sensor 28 for determining movements based on the relative positions between 25 and 28; ¶ [0053] indicates sensor 28 is a Hall effect switch or transducer). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sensor devices for determining the position between the implants of Kehres such that the glenoid implant includes at least one marker, the humeral implant including at least one marker reader to detect a position of the marker to identify positional data of the glenoid implant with respect to the humeral implant as taught by Disilvestro . Because both the sensor devices of Kehres and the marker and marker reader configuration of Disilvestro are capable of monitoring positions between implant components, it would have been the simple substitution of one known equivalent element for another to obtain predictable results. Although Kehres teaches a transmitter device for aggregating data and transmitting it to an external source (¶ [0025]), t he above combination is silent regarding the shoulder implant comprising a processor operatively capable of being communicatively coupled to the marker reader and to the at least one sensor, wherein the processor can output the positional data and the kinematic data to an external source. In a system relevant to the problem of monitoring position and movement data between implants, Disilvestro teaches an implant comprising a processor operatively capable of being communicatively coupled to a sensor (¶ [0059] discloses electronics components 30 of a knee endoprosthesis system 10 coupled to a sensor 28) , wherein the processor can output the data to an external source (¶ [0060], [0064] depict 30 comprising an internal transmitter 38 for transmitting data outside of the patient’s body) . It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the shoulder implant to incorporate, based on the teachings of Disilvestro , a processor operatively capable of being communicatively coupled to the marker reader and to the at least one sensor, wherein the processor can output the positional data and the kinematic data to an external source. The motivation would have been to allow for the data to be transmitted and used outside of the patient’s body using only components within the implant, thereby eliminating the need for a separate external transmitter and making the system easier to use. With regards to claim 2 , the above combination teaches or suggests the processor outputs post-operative positional data and post-operative kinematic data to the external source (¶ [0060], [0064] depict 30 of Disilvestro comprising an electronics components 30 comprising internal transmitter 38 for transmitting data outside of the patient’s body, wherein the data is necessarily post-operative because an operation was required for implanting the implants) . With regards to claim 3 , the above combination teaches or suggests the at least one sensor includes an inertial measurement unit (¶ [0032] of Kehres teaches sensor 130 being an IMU) . With regards to claim 4, the above combination teaches or suggests the marker is a magnet and the marker reader is a magnetic sensor (Figs. 19-21 and ¶¶ [0089]-[0090] of Kehres depict a glenoid component 94 including a signal source 26 and a humeral component including a sensor 28; ¶ [0052] of Kehres indicates the signal source 27 is a permanent magnet; ¶ [0053] of Kehres indicates sensor 28 is a Hall effect switch or transducer) . With regards to claim 5, the above combination teaches or suggests the magnetic sensor is a Hall sensor assembly including at least one Hall sensor (¶ [0053] of Kehres indicates sensor 28 is a Hall effect switch or transducer) . With regards to claim 9, the above combination teaches or suggests the positional data and the kinematic data include any of a flexion-extension, abduction-adduction, internal-external rotation, lift-off and direction vector of the lift-off of a patient's shoulder (¶ [0053] of Kehres indicates determining a maximum adduction/abduction, flex ion/extension, or internal/external rotation of the shoulder joint 104 ). With regards to claim 11, the above combination teaches or suggests including a transmitter to transmit the positional data and the kinematic data to an external source ( (¶ [0060], [0064] depict 30 of Disilvestro comprising an electronics components 30 comprising internal transmitter 38 for transmitting data outside of the patient’s body) . With regards to claim 12, the above combination teaches or suggests the external source is any of a tablet, computer, smart phone, and remote workstation (¶ [0070] of Disilvestro teaches an external receiver 44 and data interpretation device 46 for receiving data from the transmitter 38 , wherein the data interpretation device 46 can also be a hand-held personal computer, a personal desk assistant, a laptop computer or any custom-designed data acquisition device). With regards to claim 1 3 , Kehres teaches a method for monitoring a shoulder joint implant performance (Fig. 6 and ¶ [0062] depict a method 400 for tracking a center of rotation of a joint) comprising: coupling a glenoid implant to a first bone of the shoulder joint (Fig. 4 and ¶ [0063] depicts implanting a replacement glenohumeral joint; Fig. 2 and ¶ [0024] depict a prosthetic glenoid component such as a glenosphere ) , the glenoid implant including at least one sensor (Fig. 2 and ¶ [0024] depict a second sensor device 118 similar to the sensor device 102 and implanted on or within the prosthetic glenoid component; ¶¶ [0032]-[0033] depict sensor device 102 comprising a sensor 130 for sensing position; ¶ [0041] discloses calculating an position and orientation of the humerus from accelerometer and a gyroscope data; ¶¶ [0042]-[0043] discloses tracking motion of the sensor device 102) , and coupling a humeral implant to a second bone of the shoulder joint, the humeral implant contacting the glenoid implant (Fig. 4 and ¶ [0063] depicts implanting a replacement glenohumeral joint; Fig . 2 and ¶¶ [0023]-[0024] depict a humeral component 110 for contacting the prosthetic glenoid component) , the humeral implant including: at least one first sensor to identify positional data of the glenoid implant with respect to the humeral implant (Fig. 2 and ¶ [0024] depict a second sensor device 118 similar to the sensor device 102 and implanted on or within the prosthetic glenoid component; ¶¶ [0032]-[0033] depict sensor device 102 comprising a sensor 130 for sensing position; ¶ [0041] discloses calculating an position and orientation of the humerus from accelerometer and a gyroscope data; ¶¶ [0042]-[0043] discloses tracking motion of the sensor device 102) , at least one second sensor to measure kinematic data between the glenoid and humeral implants (Fig. 2 and ¶ [0022] depict a sensor device 102 affixed to a humeral component 110; ¶ [0047] discloses interpreting movement of the humerus 108 relative to the scapula 111 based on the sensor device 102) , tracking positional data and the kinematic data over time using the at least one first sensor and the at least one second sensor (¶ [0065] discloses generate data corresponding to motion of the first bone, during a specified time frame , to collect a first data set) ; and initiating a warning when any of the tracked positional data and the kinematic data differ from a predetermined value (¶¶ [0060]-[0061] depict comparing data points (e.g., locational coordinates) 314 to a best fit model and providing cautionary alerts during joint movements or excursions which deviate from the best fit model) . Kehres is silent regarding whether the glenoid implant includes at least one magnetic marker, the humeral implant including at least one magnetic sensor to detect a magnetic flux density of the magnetic marker to detect a position of the marker with respect to the humeral implant, and the warning is based on a tracked magnetic flux density magnitude In a system relevant to the problem of monitoring position and movement data between implants, Disilvestro teaches a glenoid implant includes at least one magnetic marker (Figs. 19-21 and ¶¶ [0089]-[0090] depict a glenoid component 94 including a signal source 26; ¶ [0052] indicates the signal source 27 is a permanent magnet) , a humeral implant including at least one magnetic sensor to detect a magnetic flux density of the magnetic marker to detect a position of the marker with respect to the humeral implant (Figs. 19-21 and ¶¶ [0089]-[0090] depict a humeral component including a sensor 28 for determining movements based on the relative positions between 25 and 28; ¶ [0053] indicates sensor 28 is a Hall effect switch or transducer responsive to the magnetic flux density of the permanent magnet ) , and an output is based on the magnetic flux density magnitude (¶¶ [0056], [0062] discloses the sensor 28 generating a signal based on an angle of the patient’s leg, which corresponds to a magnitude of the magnetic flux) . It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sensor devices for determining the position between the implants of Kehres such that the glenoid implant includes at least one marker, the humeral implant including at least one marker reader to detect a position of the marker to identify positional data of the glenoid implant with respect to the humeral implant , and the warning is based on the tracked magnetic flux density magnitude as taught by Disilvestro . Because both the sensor devices of Kehres and the magnet and magnetic sensor configuration of Disilvestro are capable of monitoring positions between implant components, it would have been the simple substitution of one known equivalent element for another to obtain predictable results. With regards to claim 14, the above combination teaches or suggests the warning includes any of shoulder dislocation and shoulder impingement (¶¶ [0060]-[0061] of Kehres depict comparing data points (e.g., locational coordinates) 314 to a best fit model and providing cautionary alerts during joint movements or excursions which deviate from the best fit model ; ¶ ¶ [0049], [00 61] of Kehres recites the alert is indicative of dislocation, subluxation, or impingement ) With regards to claim 15, the above combination teaches or suggests the first bone is a scapula and the second bone is a humerus (Fig. 2 of Kehres teaches or suggests the first bone is a scapula and the second bone is a humerus) . With regards to claim 16, the above combination teaches or suggests the at least one sensor includes an inertial measurement unit (¶ [0032] of Kehres teaches sensor 130 being an IMU) . With regards to claim 17, the above combination teaches or suggests the positional data and the kinematic data include any of a flexion-extension, abduction-adduction, internal-external rotation, lift-off and direction vector of the lift-off of a patient's shoulder (¶ [0053] of Kehres indicates determining a maximum adduction/abduction, flex ion/extension, or internal/external rotation of the shoulder joint 104 ). With regards to claim 18, the above combination teaches or suggests the the steps of tracking magnetic flux density magnitudes and kinematic data and initiating a warning are performed post-operatively (Fig. 4 of Kehres depicts the data and diagnoses are performed after the operation for implanting the replacement glenohumeral joint) . With regards to claim 19, the above combination teaches or suggests a step of transmitting the tracked magnetic flux density magnitudes and kinematic data to an external source (¶ [0065] of Kehres discloses t he computer system, or other intermediary devices such as a transmitter device, can periodically retrieve data sets from the sensor device ) . With regards to claim 20, the above combination teaches or suggests the tracked magnetic flux density magnitudes and kinematic data is transmitted wirelessly to the external source (¶ [0065] of Kehres discloses t he computer system, or other intermediary devices such as a transmitter device, can periodically retrieve data sets from the sensor device ; ¶ [0025] depicts wirelessly reading the sensor device) . Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0304595 A1 ( Kehres ) in view of US 2005/0010299 A1 ( Disilvestro ) FILLIN "Insert the prior art relied upon." \d "[ 2 ]" , as applied to claim 5 above, and further in view of US 2023/0148895 A1 (Khan). With regards to claim 6, the above combination is silent regarding whether the magnetic sensor includes three Hall sensor assemblies . In the same field of endeavor of monitoring implant positions and movement, Khan teaches a magnetic sensor includes three hall sensor assemblies (¶ [0017] discloses a magnetic sensor includes three one-dimensional, or scalar (e.g., Hall effect) sub-sensors arranged mutually orthogonally, each of the three one-dimensional sensors configured to measure a magnitude of a respective one of the three orthogonal components of the magnetic field at the sensor ). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the hall-effect sensor of the above combination with the magnetic sensor of Khan. It would have been the simple substitution of one known equivalent hall effect sensor for another to obtain predictable results. Claim s 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0304595 A1 ( Kehres ) in view of US 2005/0010299 A1 ( Disilvestro ) and US 2023/0148895 A1 (Khan) FILLIN "Insert the prior art relied upon." \d "[ 2 ]" , as applied to claim 6 above, and further in view of US 2018/0116823 A1 ( Johannaber ). With regards to claim 7, the above combination is silent with regards to whether the magnet is a magnetic track disposed within the glenoid implant. In a system relevant to the problem of determining positions of implants, Johannaber teaches a magnet of a first implant for interacting with a hall effect sensor of a second implant (¶ [0026] discloses a plurality of magnets or a magnetic ring of an a cetabular component and a sensor 108 of a femoral implant 102) , wherein the magnet is a magnetic track disposed within a first implant (Fig. 1 and ¶ [0026] depict the a magnetic ring within the acetabular component). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the magnet of the glenoid implant of the above combination to incorporate a magnetic ring configuration as taught by Johannaber because it would have been the simple substitution of one known equivalent element for another to obtain predictable results. With regards to claim 8, the above combination teaches or suggests the magnet includes two magnetic tracks coupled to each other within the glenoid implant (Fig. 1 of Johannaber teaches the magnetic ring, which includes a top ring half and a bottom ring half). Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0304595 A1 ( Kehres ) in view of US 2005/0010299 A1 ( Disilvestro ) FILLIN "Insert the prior art relied upon." \d "[ 2 ]" , as applied to claim 1 above, and further in view of US 2018/0116823 A1 ( Johannaber ). With regards to claim 10 , the claim is being interpreted to recite “The shoulder implant of claim 10, further comprising any of a load sensor, pH sensor, temperature sensor and pressure sensor operatively coupled to the processor” in view of the rejection under 35 U.S.C. §112(b). The above combination is silent regarding the shoulder implant further comprising any of a load sensor, pH sensor, temperature sensor and pressure sensor operatively coupled to the processor. In the same field of endeavor of monitoring joint implants, Johannaber teaches a shoulder implant comprising any of a load sensor, pH sensor, temperature sensor and pressure sensor operatively coupled to the processor (¶ [0074] teaches a first implant of a joint including a force sensor for detecting a load transferred through the implant , wherein the force measurement is output to a graphical user interface, which indicates that it is operatively coupled to a processor). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified shoulder implant of the above combination to incorporate that it includes any of a load sensor, pH sensor, temperature sensor and pressure sensor operatively coupled to the processor as taught by Johannaber . The motivation would have been to provide additional information regarding an offset selection , or impingement or subluxation (¶ [0074]), thereby improving the diagnostic capabilities of the sensor system. Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0304595 A1 ( Kehres ) in view of US 2005/0010299 A1 ( Disilvestro ) FILLIN "Insert the prior art relied upon." \d "[ 2 ]" , as applied to claim 16 above, and further in view of US 2018/0020978 A1 ( Kaifosh ) . With regards to claim 21 , the above combination is silent regarding a step of tracking kinematic data measured by an external inertial measurement unit on the patient's body, the external inertial measurement unit being located away from the glenoid implant and the humeral implant. However, Kehres tea ches the transmitter device 120 being located away from the glenoid implant and the humeral implant (Fig. 1), wherein the transmitter device 120 can be a consumer electronic device, such as a Fitbit ®, a Jawbone®, an Apple Watch®, or a mobile phone located externally to the patient 106 (¶ [0025]) In the same field of endeavor of monitoring joint motion, Kaifosh teaches tracking kinematic data measured by an external inertial measurement unit on the patient's body, the external inertial measurement unit being located away from the glenoid implant and the humeral implant (¶¶ [0125]-[0127] discloses tracking movement data using an Apple watch or Fitbit that provides relevant IMU-type data). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the above combination to incorporate a step of tracking kinematic data measured by an external inertial measurement unit on the patient's body, the external inertial measurement unit being located away from the glenoid implant and the humeral implant as taught by Kaifosh . The motivation would have been to provide additional kinematic data, which would allow for a more complete diagnostic picture of the patient’s joi nt. Additionally or alternatively, the motivation would have been to provide acceleration data using an external sensor to help correct positional drift of the sensor device, as described in ¶ [0045] of Kehres . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT SAMUEL C KIM whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-8637 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 8:00 AM - 5:00 PM EST . 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, FILLIN "SPE Name?" \* MERGEFORMAT Jacqueline Cheng can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571) 272-5596 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /S.C.K./ Examiner, Art Unit 3791 /JACQUELINE CHENG/ Supervisory Patent Examiner, Art Unit 3791
Read full office action

Prosecution Timeline

Jun 28, 2023
Application Filed
Mar 27, 2026
Non-Final Rejection — §103, §112 (current)

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SENSING CANNULA SYSTEMS
2y 5m to grant Granted Feb 03, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
48%
Grant Probability
99%
With Interview (+71.5%)
4y 0m
Median Time to Grant
Low
PTA Risk
Based on 221 resolved cases by this examiner. Grant probability derived from career allow rate.

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