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 .
Election/Restrictions
Applicant’s election without traverse of Species I (corresponding figures 15-16E) in the reply filed on 5/1/2026 is acknowledged.
Claim(s) 1-2, 4, 6-7, 9-10, 12-23, 25-26, 35-36, 51-52 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/1/2026. (Please note: Applicant withdrew claim(s) 1-2, 4, 6-7, 9-10, 12-23, 25-26; Examiner further withdrew claim(s) 45-46, 51-52. Claim 35 is withdrawn due to the dual-taper trunnion and the glenosphere component which are features of non-elected species J, O or P; claim 36 is withdrawn due to the angled underside which is a feature of non-elected species L; claim 51 is withdrawn due to the central bossed portion extending from it’s top side which is a not a feature of elected species I; claim 52 is withdrawn due to the plurality of deflectable extension which are features on non-elected species Y or Z.)
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(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.
Claim(s) 32 is/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.
Within claim 32, lines 2-5: Applicant claims, “a plurality of peripheral holes, each having a sidewall with a bottom-most portion that mechanically engages a head of the central anchor screw and decreases to a zero height toward the central aperture”; as best can be understood the “each” is referring to the “plurality of peripheral holes”, which are associated with feature 1106 in fig. 11 (paragraph [0136]). The holes (1106) all are bound by an “innermost portion” (1107) which may align to the “bottom-most portion” within the aforementioned claim requirement and an “intermediate portion” (1108) which may align with the “sidewall” within the aforementioned claim requirement; however there is no description of decreasing a zero height toward the central aperture nor is it clear from the figure what is being described – if this the tapering away (in the radial direction from the central aperture 1104) of the inner most portion (1107) toward the outermost portion (1109) then this would be the opposite of what is currently being claimed by Applicant?
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.
Claim(s) 30-32, 50 is/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.
Within claim 30, lines 9-10: Applicant claims, “a locking interface mating the baseplate and the central anchor screw”; it is unclear, and therefore indefinite, what Applicant considers the scope of the claim – “mating” positively recites the “mating” (i.e. the connection) between the base and the central anchor screw which is a method of use requirement (because it requires the interconnection thereof). In contrast, amending the aforementioned claim requirement to --a locking interface configured to mate the baseplate and the central anchor screw-- does not positively recite the mating/ connection between the base and the central anchor screw merely a structure that is configured to/ capable thereof. Claim(s) 31-32 and 50, which depend from claim 30, inherit the problems associated with claim 30.
Within claim 32, lines 3-5: Applicant claims, “each having a sidewall with a bottom-most portion that mechanically engages a head of the central anchor screw and decreases to a zero height toward the central aperture”; it is unclear, and therefore indefinite, what the aforementioned claim requirement is referring to. First, it is unclear what is being referred to by the “each” – the central aperture? The plurality of peripheral holes? Or both? Second, “mechanically engages” positively recites the mechanical engagement (i.e. the connection) between the “each” and the head of the central anchor screw which is a method of use requirement (because it requires the connection thereof).
Within claim 32, lines 2-8: Applicant claims, “a central aperture configured to receive an implant locking screw therethrough […] wherein distal threads of the implant locking screw are configured to mate with complementary threads in the head of the central anchor screw, thereby directly coupling the central anchor screw to the underside of the baseplate”; it is unclear, and therefore indefinite, what Applicant considers the scope of the claim – in the first part of the aforementioned claim requirement Applicant is not positively reciting the implant locking screw, merely the capability to receive one; however, in the second part of the aforementioned claim requirement Applicant is positively reciting the implant locking screw as this is responsible for “directly coupling” (i.e. the connection) the screw and the baseplate which is a method of use requirement (because it requires the connection of all three structures).
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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) 30-31, 50 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Frankle (US 2012/0253467 A1).
With respect to claim 30:
Frankle discloses a convertible shoulder arthroplasty system, as can be seen in figs. 51-53, comprising:
a central anchor screw (baseplate 1800), as can be seen in better detail in figs. 67-70, comprising threads (threads 1802) configured to provide an anchor into patient bone (paragraph [0145]); and
a baseplate (adaptor 1900), as can be seen in better detail in figs. 54-58, comprising a central aperture (bore 1910) disposed therethrough, and an underside comprising a locking interface (trunion 1908) configured for mating the baseplate (adaptor 1900) and the central anchor screw (baseplate 1800) (paragraph [0146]).
With respect to claim 31:
Wherein the locking interface (trunion 1908) has a substantially circular form factor, as can be seen in figs. 54-58.
With respect to claim 50:
Wherein the baseplate (adaptor 1900) includes a substantially planar top surface (lateral side 1904), as can be seen in figs. 54-58 (paragraph [0146]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
PRESSACCO et al. (US 2018/0064537 A1) discloses a convertible shoulder arthroplasty system comprising a locking interface with plurality of interlocking structures (33) configured to mate with a complementary structure (17) of an anchor.
McTighe et al. (5653765) discloses a locking interface (48) having a plurality of holes in the bottom surface thereof (52) configured to mate with a complementary structure (32) of a neighboring implant component.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA S PRESTON whose telephone number is (571)270-5233. The examiner can normally be reached M, W: 9-5; T, Th, F: 9-1.
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, Jerrah Edwards can be reached at (408)918-7557. 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.
REBECCA STRASZHEIM PRESTON
Primary Examiner
Art Unit 3774
/REBECCA S PRESTON/ Primary Examiner, Art Unit 3774
Prosecution Insights