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 .
Response to Arguments
Applicant’s arguments, see page 2 of remarks (pg 8 of response), filed 7/20/26, with respect to the rejection over Claypool have been fully considered and are persuasive. The anticipatory rejection of claims over Claypool has been withdrawn. The examiner would like to note though while withdrawing the rejection over Claypool, the amendment essentially adds a negative limitation to exclude Claypool without any clear added structure. In addition another potential reference that could anticipate the claims, to Zouaghi mentioned below except for in addressing all limitations, including the negative recitation in the claim (s) the reference would not anticipate due to the negative limitation. However, without a clear indication by the Applicant what the exclusionary structure is and where such structure cannot be is required because Applicant’s claim recites engaging structures that one of ordinary skill in the art in giving a broadest reasonable interpretation might say the features of the claim actually define mechanically coupled elements. Thus, the examiner presents here below an indefinite rejection and a requirement that Applicant admit whether a 112 6th is being invoked.
Claim Rejections - 35 USC § 112
Claim limitations “mechanical coupling features” or “mechanical coupling” has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation uses the phrase of a generic placeholder coupled with functional language, but it is modified by some structure defined by “distal surface configured to seat within the pocket” or “base component constructed and arranged to seat within the pocket” as recited respectively in claims 1 and 21 are ambiguous regarding whether that structure implied is sufficient for performing the claimed function. It is not evident how the recited engaging structures meet the scope of “without mechanical coupling features” or “without mechanical coupling” since one does not know what exclusions are meant especially since the claim 1 recited distal surface placed in a pocket or as alternatively recited in claim 21 an arbitrary section of the base component seated in a pocket could be reasonably interpreted as a mechanical coupling between two structures when no special definition is being given to the feature. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claims 1-15, 21-26 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. It is impossible to discern what structure exactly the applicant intends to claim with just an arbitrary structure in the form of either a “distal surface” or some arbitrary structure for the base component both of which are recited to be seated in some form of a “pocket” without any specific boundaries to limit these structures. However, more importantly it is not evident how one does not consider this a mechanical coupling when according to Applicant’s specification, a boss for example is disclosed to be not allowed allegedly according to the applicant stating this might be an excluded structure, yet how is a pocket receiving some distal surface or some arbitrary structure of a base component, not analogous to a boss coupled with some receiving structure like a pocket? It seems there is ambiguity as to what Applicant is intending to cover and thus claims are indefinite. Dependent claims carry the same issue as the independent they depend on.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Zouaghi (WO 2023/280749) discloses a provisional tibial prosthesis system 1 comprising: a tibial component 200 having a rail that defines a pocket 208 and a distal surface configured to seat on a resected proximal surface of a tibia; a base component 302 having a distal surface configured to seat within the pocket of the tibial component when positioned thereon, see page 11, lines 8-11. Zouaghi also disclose the system include a shim having a feature configured to couple with a second feature of the base component when disposed thereon, wherein the shim has a substantially flat proximal surface.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E PELLEGRINO whose telephone number is (571)272-4756. The examiner can normally be reached 8:30am-5:00pm M-F.
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/BRIAN E PELLEGRINO/Primary Examiner, Art Unit 3799
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