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 .
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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 08/17/2026 has been entered.
Claim Status
Upon review of the IDS filed 08/17/2026, the indication of allowability is withdrawn.
Claims 1-14, 16-18 and 20-22 are examined below.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sperling-604 (WO 2022/119604 A1).
Regarding claim 1, Sperling-604 teaches an apparatus, comprising:
a humeral anchor (500, implant, fig. 5) configured to be mounted to a humerus (figs. 5-10) and configured to receive a humeral component (1104, articulating surface body, fig. 11);
wherein the humeral anchor includes a central hub (center of implant, figs. 5-10) and a plurality of fins extending from the central hub (510, 520, fins, fig. 5), wherein the plurality of fins are arranged in an asymmetric pattern (abstract, ¶ [0073-0078], figs. 5-10),
wherein the plurality of fins includes six fins (figs. 5-10),
wherein the six fins include a first fin which is a laterally positioned fin configured to be positioned proximate to a greater tubercle of the humerus (see annotated fig. 5, below), a second fin configured to be positioned proximate to a lesser tubercle of the humerus (see annotated fig. 5, below), a fourth fin positioned 180 degrees from the first fin (see annotated fig. 5, below), a third fin which is centered between the second fin and the fourth fin (see annotated fig. 5, below), a fifth fin positioned such that there is an equal angle between the third fin and the fourth fin and the fourth fin and the fifth fin (see annotated fig. 5, below), and a sixth fin which is centered between the fifth fin and the first fin (see annotated fig. 5, below). Figure 5 shows the fins can be placed at the claimed anatomical locations.
PNG
media_image1.png
397
378
media_image1.png
Greyscale
Regarding claim 2, the humeral component is a part of the functional language in claim 1. The phrase “the humeral component includes a humeral head configured to be mounted on the anchor ” is a part of the functional recitation in claim 1 (see MPEP 2114.II). The prior art is not required to explicitly disclose the recited function, but merely have the capability of performing [or being manipulated to] the recited function in order to meet the claim requirements. In this case, the implant is considered to be capable of receiving a humeral component wherein the humeral component includes a humeral head configured to be mounted on the anchor (fig. 11, ¶ [0072]).
Regarding claim 3, the humeral component is a part of the functional language in claim 1. The phrase “the humeral component includes a humeral head configured to be mounted on the anchor ” is a part of the functional recitation in claim 1 (see MPEP 2114.II). The prior art is not required to explicitly disclose the recited function, but merely have the capability of performing [or being manipulated to] the recited function in order to meet the claim requirements. In this case, the implant is considered to be capable of receiving a humeral component wherein the humeral component includes a concave recessed articulating component including a humeral tray and bearing assembly.
Regarding claim 4, Sperling-604 further teaches the anchor includes a porous metal (¶ [0081]).
Claim 5 is a product by process claim. Patentable weight has only been given to the structure of the end product, not to the method of manufacture. The end product being considered a humeral anchor with fin. Manufacturing steps such as selecting relative sizes and positions of the plurality of fins are not given patentable weight in the claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (MPEP 2113).”
Regarding claim 6, Sperling-604 further teaches the anchor is configured to selectively receive either a humeral head or a humeral tray (fig. 11, ¶ [0072]).
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.
Claim(s) 9-10, 14, 18 and 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sperling-604 in view of Sperling-169 (US 2019/0105169 A1).
Regarding claim 9, Sperling-604 fails to teach the angle between the first and second fins is therebetween 70-90 degrees. However, Sperling-169 teaches a stemless humeral implant with fins and teaches varying the angles of the fins in order to achieve the desired position of the prosthetic component within a patient (¶ [0087-0095]). It would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the angle between the first and second fins to be therebetween 70-90 degrees, while also maintaining the relative angles required by claim 1, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (MPEP 2144.05). The combined device maintains the requirement from claim 1 of the spacing of fins 3, 5 and 6 between their respective adjacent fins, because the optimization includes the angles between each pairing of fins (figs. 4A-4J). Sperling-169 makes it clear that determining the angle between the native location of the greater and lesser tubercles and any other pair of adjacent fins involves only routine skill in the art.
Regarding claim 10, Sperling-604 fails to teach suture holes. However, Sperling-169 teaches a stemless humeral implant with fins that includes suture holes (236, through-holes, fig. 10B) configured to receive a suture (¶ [0103]). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the fins of Sperling-604 to include suture holes as taught by Sperling-169 in order to help hold portions of the fractured bone together (¶ [0103], Sperling-169).
Regarding claim 14, Sperling-604 teaches a system, comprising:
a humeral anchor configured to be mounted to a humerus (500, implant, fig. 5), the humeral anchor including a central hub defining a cylindrical hole (center of implant, figs. 5-12);
a humeral component configured to be mounted to the cylindrical hole of the humeral anchor (1104, articulating surface body, fig. 11); and
wherein the humeral anchor includes a plurality of fins extending from the central hub (510, 520, fins, fig. 5), wherein the plurality of fins are arranged in an asymmetric pattern (abstract, ¶ [0073-0078], figs. 5-10) and have varying heights and radial lengths than other of the plurality of fins (figs. 5-10),
wherein the plurality of fins includes six fins (fig. 5), wherein the six fins includes a first fin which is a laterally positioned fin configured to be positioned proximate to a greater tubercle of the humerus (see annotated fig. 5, below), a second fin configured to be positioned proximate to a lesser tubercle of the humerus (see annotated fig. 5, below), a fourth fin positioned 180 degrees from the first fin (see annotated fig. 5, below), a third fin which is centered between the second fin and the fourth fin (see annotated fig. 5, below), a fifth fin positioned such that there is an equal angle between the third fin and the fourth fin and the fourth fin and the fifth fin (see annotated fig. 5, below), and a sixth fin which is centered between the fifth fin and the first fin (see annotated fig. 5, below). Figure 5 shows the fins can be placed at the claimed anatomical locations.
PNG
media_image1.png
397
378
media_image1.png
Greyscale
Sperling-604 fails to teach a complementary component and the angle between the first and second fins is therebetween 70-90 degrees. However, Sperling-169 teaches a stemless humeral implant with fins that includes a complementary component (¶ [0004]) configured to be mounted to a glenoid cavity, wherein the humeral component is adapted to operate with the complementary component(¶ [0004]). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the system of Sperling-604 to include a complementary component as taught by Sperling-169 in order to articulate with the humeral component (¶ [0004], Sperling-169).
Sperling-169 teaches varying the angles of the fins in order to achieve the desired position of the prosthetic component within a patient (¶ [0087-0095]). It would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the angle between the first and second fins to be therebetween 70-90 degrees, while also maintaining the relative angles required by claim 1, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (MPEP 2144.05). The combined device maintains the requirement of the spacing of fins 3, 5 and 6 between their respective adjacent fins, because the optimization includes the angles between each pairing of fins (figs. 4A-4J). Sperling-169 makes it clear that determining the angle between the native location of the greater and lesser tubercles and any other pair of adjacent fins involves only routine skill in the art.
Regarding claim 18, Sperling-604 teaches a method of implanting a humeral component, comprising:
mounting a humeral anchor to a humerus (500, implant, fig. 5), the humeral anchor including a central hub defining a cylindrical hole(center of implant, figs. 5-12); and
mounting a humeral component to the cylindrical hole of the humeral anchor (1104, articulating surface body, fig. 11);
wherein the humeral anchor includes a plurality of fins extending from the central hub (510, 520, fins, fig. 5), wherein the plurality of fins are arranged in an asymmetric pattern (abstract, ¶ [0073-0078], figs. 5-10) and have varying heights and radial lengths than other of the plurality of fins (figs. 5-10),
wherein the plurality of fins includes six fins (fig. 5), wherein the six fins includes a first fin which is a laterally positioned fin configured to be positioned proximate to a greater tubercle of the humerus (see annotated fig. 5, below), a second fin configured to be positioned proximate to a lesser tubercle of the humerus (see annotated fig. 5, below), a fourth fin positioned 180 degrees from the first fin (see annotated fig. 5, below), a third fin which is centered between the second fin and the fourth fin (see annotated fig. 5, below), a fifth fin positioned such that there is an equal angle between the third fin and the fourth fin and the fourth fin and the fifth fin (see annotated fig. 5, below), and a sixth fin which is centered between the fifth fin and the first fin (see annotated fig. 5, below). Figure 5 shows the fins can be placed at the claimed anatomical locations.
PNG
media_image1.png
397
378
media_image1.png
Greyscale
Sperling-604 fails to teach the angle between the first and second fins is therebetween 70-90 degrees. However, Sperling-169 teaches a stemless humeral implant with fins and teaches varying the angles of the fins in order to achieve the desired position of the prosthetic component within a patient (¶ [0087-0095]). It would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the angle between the first and second fins to be therebetween 70-90 degrees, while also maintaining the relative angles required by the claim, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (MPEP 2144.05). The combined device maintains the requirement from claim 1 of the spacing of fins 3, 5 and 6 between their respective adjacent fins, because the optimization includes the angles between each pairing of fins (figs. 4A-4J). Sperling-169 makes it clear that determining the angle between the native location of the greater and lesser tubercles and any other pair of adjacent fins involves only routine skill in the art.
Regarding claim 20, Sperling-604 fails to teach mounting a complementary component. However, Sperling-169 further teaches mounting a complementary component to a glenoid cavity (¶ [0004]), wherein the humeral component is adapted to operate with the complementary component(¶ [0004]). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the system of Sperling-604 to include a complementary component as taught by Sperling-169 in order to articulate with the humeral component (¶ [0004], Sperling-169).
Regarding claims 21 and 22, Sperling-604 fails to teach the angle between the first and second fins is therebetween 75 degrees. However, Sperling-169 teaches a stemless humeral implant with fins and teaches varying the angles of the fins in order to achieve the desired position of the prosthetic component within a patient (¶ [0087-0095]). It would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the angle between the first and second fins to be therebetween 75 degrees, while also maintaining the relative angles required by claims 1 and 14, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (MPEP 2144.05). The combined device maintains the requirement from claim 1 of the spacing of fins 3, 5 and 6 between their respective adjacent fins, because the optimization includes the angles between each pairing of fins (figs. 4A-4J). Sperling-169 makes it clear that determining the angle between the native location of the greater and lesser tubercles and any other pair of adjacent fins involves only routine skill in the art.
Claim(s) 7-8 and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sperling-604 in view of Jensen (EP 2 959 867 B1).
Regarding claim 11, Sperling-604 fails to teach fins with a T-shaped cross section. However, Jensen teaches a humeral anchor with fins wherein fins include a T-shaped cross section (¶ [0012]) having a first portion (58, elongated rib, fig. 2) extending from the central hub and a second portion perpendicular to the first portion (52, engaging plate, fig. 2). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the fins of Sperling-604 to include a T-shaped cross section as taught by Jensen since it is a simple substitution of one known element for another to obtain predictable results, which courts have recognized supports a conclusion of obviousness (see MPEP 2143).
Regarding claim 7, Sperling-604 as modified by Jensen discloses the invention substantially as claimed and as discussed above with respect to claim 11, discloses the claimed invention except explicitly stating the first, second, fourth and sixth fin each include the T-shaped cross section. It would have been an obvious matter of design choice to the first, second, fourth and sixth fin each include the T-shaped cross section, since applicant has not disclosed that the first, second, fourth and sixth fin each include the T-shaped cross section solves any stated problem or is for any particular purpose and it appears that the invention would perform equally as well with the first, second, fourth and sixth fin each include the T-shaped cross section.
Regarding claim 8, Sperling-604 as modified by Jensen discloses the invention substantially as claimed and as discussed above with respect to claim 7, and additionally teaches the third fin and the fifth fin each include a straight shape (fig. 11) including a single portion extending from the central hub (fig. 11).
Regarding claim 12, Sperling-604 as modified by Jensen discloses the invention substantially as claimed and as discussed above with respect to claim 11, and additionally teaches one or more of the plurality of fins includes a straight shape (fig. 11) including a single portion extending from the central hub (fig. 11).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sperling-604 in view of Stone (US 6,783,549 B1).
Regarding claim 13, Sperling-604 fails to teach fins include a tapered shape and a V-shaped bottom edge. However, Stone teaches a humeral implant with a plurality of fins that includes a tapered shape (236, triangular fin, figs. 23a-23e) and a V-shaped bottom edge (236, triangular fin, figs. 23a-23e). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the fins of Sperling-604 to include a tapered shape and a V-shaped bottom edge as taught by Stone since it is a simple substitution of one known element for another to obtain predictable results, which courts have recognized supports a conclusion of obviousness (see MPEP 2143).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sperling-604 in view of Sperling-169 as applied to claim 14 above, and further in view of Jensen (EP 2 959 867 B1).
Regarding claim 16, Sperling-604 in view of Sperling-169 fails to teach fins with a T-shaped cross section. However, Jensen teaches a humeral anchor with fins wherein fins include a T-shaped cross section (¶ [0012]) having a first portion (58, elongated rib, fig. 2) extending from the central hub and a second portion perpendicular to the first portion (52, engaging plate, fig. 2). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the fins of Sperling-604 and Sperling-169 to include a T-shaped cross section as taught by Jensen since it is a simple substitution of one known element for another to obtain predictable results, which courts have recognized supports a conclusion of obviousness (see MPEP 2143).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sperling-604 in view of Sperling-169 and Jensen as applied to claim 16 above, and further in view of Stone (US 6,783,549 B1).
Regarding claim 17, Sperling-604 in view of Sperling-169 and Jensen fails to teach fins include a tapered shape and a V-shaped bottom edge. However, Stone teaches a humeral implant with a plurality of fins that includes a tapered shape (236, triangular fin, figs. 23a-23e) and a V-shaped bottom edge (236, triangular fin, figs. 23a-23e). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the fins of Sperling-604, Sperling-169 and Jensen to include a tapered shape and a V-shaped bottom edge as taught by Stone since it is a simple substitution of one known element for another to obtain predictable results, which courts have recognized supports a conclusion of obviousness (see MPEP 2143).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERESA M DUDDEN whose telephone number is (571)272-0435. The examiner can normally be reached Monday - Tuesday and Thursday - Friday 7:30 am - 6:00 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, JERRAH C 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.
/T.M.D./Examiner, Art Unit 3774
/YASHITA SHARMA/Primary Patent Examiner, Art Unit 3774
Prosecution Insights