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 .
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.
Claim Objections
Claims 80 and 84 objected to because of the following informalities:
In claim 80, line 3, “prepared into the glenoid” should be “prepared in the glenoid”.
In claim 84, line 3, “prepared into the glenoid” should be “prepared in the glenoid”.
. Appropriate correction is required.
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 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 73 recites the limitation "the retaining legs" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 78 recites the limitation "the retaining legs" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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) 72, 78, and 84 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Capon (US20120089233).
Regarding claim 72, Capon discloses a glenoid implant (1) comprising: a circular body comprising an articulation surface (see Figs. 2-3, load-bearing (1a)) and an anchoring surface (see Fig. 4, bottom of implant (1) attached to tray (2)) on the opposite side; and an annular side wall extending around the periphery of the circular body (see Figs. 2-3), wherein the annular side wall is configured to be press fitted into a recess prepared in a glenoid (see Fig. 4).
Regarding claim 78, Capon further discloses wherein the circular body (see Fig. 2-3) and retaining legs (lamellae (1b)) are integrally formed from a same material (Figs. 2-3).
Regarding claim 84, Capon further discloses wherein the annular side wall comprises a plurality of retaining legs (lamellae (1b)) that are provided along the annular side wall (see Figs. 2-3) to enable the glenoid implant to be press fitted into the recess prepared into the glenoid (see Fig. 4).
Claim Rejections - 35 USC § 103
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.
Claim(s) 73 is/are rejected under 35 U.S.C. 103 as being unpatentable over Capon et al. (US20120089233) as applied to claim 72 above, and further in view of Courtney et al. (US20100228352)
Regarding claim 73, Capon further discloses the glenoid implant further comprises retaining legs (lamellae 1b) wherein the retaining legs are extensions of the annular side wall but fails to disclose that the retaining legs are folded over towards the articulation surface and forming a U-shaped leaf spring.
Courtney discloses a glenoid implant (500) and teaches fins (518 and 520) that curved upwards towards the articulation surface (see Fig. 7B) forming a U-shape leaf spring to engage bone (see paragraph [0007] and Fig. 7B, fins are deformable and tips point upwards, thereby forming a U-shape leaf spring).It would have been obvious to one having ordinary skill in the art before the effective date of the claimed invention to have substituted the extensions of the annular side wall of Capon with retaining legs that are folded over towards the articulation surface and forming a U-shaped leaf spring as taught by Courtney in order to improve the stabilization of the implant in the recess of the glenoid (see paragraph [0060]).
Claim(s) 74-77 is/are rejected under 35 U.S.C. 103 as being unpatentable over Capon as applied to claim 72 above, and further in view of Wiley et al. (US20040122519) .
Regarding claim 74, Capon fails to disclose wherein the implant is made of a metal.
Wiley also discloses a glenoid implant (100) and teaches the implant is made of a metal (see paragraphs [0021] and [0023]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the glenoid implant of Capon to be made out of metal, as taught by Wiley, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of design choice. In re Leshin, 125 USPQ 46.
Regarding claim 75, Capon in view of Wiley further teaches the metal is CoCr or titanium (see paragraphs [0021] and [0023]).
Regarding claim 76, Capon fails to disclose wherein the implant is made of a high modulus polymer.
Wiley also discloses a glenoid implant (100) and teaches the implant can be made of a high modulus polymer (see paragraph [0021], bearing component is can comprise of polyethylene, ultra high molecular weight polyethylene (UHMWPE) or cross-linked UHMWPE which is a high modulus polymer). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the glenoid implant of Capon to be made out of a high modulus polymer, as taught by Wiley, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of design choice. In re Leshin, 125 USPQ 46.
Regarding claim 77, Capon in view of Wiley further teaches the implant is made of UHMW polyethylene (see paragraph [0021]).
Claim(s) 79 is rejected under 35 U.S.C. 103 as being unpatentable over Capon as applied to claim 72 above, and further in view of Burkhead et al. (US4964865).
Regarding claim 79, Capon fails to disclose wherein the anchoring surface (26) is coated with a porous metallic material.
Burkhead also discloses a glenoid implant (300) and teaches the anchoring surface (medial surface 312) of the implant is coated with a porous metallic material (see col 8 lines 10-13). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the anchoring surface of Capon to be coated with a porous metallic material, as taught by Wiley in order to promote bone ingrowth and thus increase fixation and stability of the implant in the recess of the glenoid (see col 8 lines 10-13).
Claim(s) 80 is/are rejected under 35 U.S.C. 103 as being unpatentable over Capon as applied to claim 72 above, and further in view of Wang et al. (US6638311).
Regarding claim 80, Capon fails to disclose wherein the annular side wall is a fluted surface that comprises a plurality of grooves with blades formed in between two adjacent grooves to enable the glenoid implant to be press fitted into the recess prepared into the glenoid.
Wang discloses an acetabular cup for a hip prosthesis that is a related device to help bare the load of a prosthetic. Wang teaches the use of an annular side wall (see Fig. 5) comprising a fluted surface that comprises a plurality of grooves (spaces between strakes 18) with blades (strakes 18) formed in between two adjacent grooves to enable the acetabular cup to be fitted into the acetabulum (see col 3 lines 35-38). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the annular side wall of Capon to comprise a fluted surface with a plurality of grooves with blades formed in between two adjacent grooves in order to enable the glenoid implant to be press fitted into the recess prepared into the glenoid, as taught by Wang, to provide better anchoring in the recess of the glenoid (see col 3 lines 35-38).
Claim(s) 81-82 is/are rejected under 35 U.S.C. 103 as being unpatentable over Capon in view of Wang as applied to claim 80 above, and further in view of Wiley.
Regarding claim 81, Capon in view of Wang fails to teach wherein the implant is made of a metal.
Wiley also discloses a glenoid implant (100) and teaches the implant is made of a metal (see paragraphs [0021] and [0023]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the glenoid implant of Capon to be made out of metal, as taught by Wiley, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of design choice. In re Leshin, 125 USPQ 46.
Regarding claim 82, Capon in view of Wang and Wiley further teaches the metal is CoCr or titanium (see paragraphs [0021] and [0023]).
Claim(s) 83 is/are rejected under 35 U.S.C. 103 as being unpatentable over Capon in view of Wang as applied to claim 80 above, and further in view of Burkhead.
Regarding claim 83, Capon in view of Wang fails to teach wherein the anchoring surface is coated with a porous metallic material.
Burkhead also discloses a glenoid implant (300) and teaches the anchoring surface (medial surface 312) of the implant is coated with a porous metallic material (see col 8 lines 10-13). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the anchoring surface of Capon to be coated with a porous metallic material, as taught by Wiley in order to promote bone ingrowth and thus increase fixation and stability of the implant in the recess of the glenoid (see col 8 lines 10-13).
Conclusion
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/JUSTIN ZHI-DE YAO/Patent Examiner, Art Unit 3774
/MELANIE R TYSON/Supervisory Patent Examiner, Art Unit 3774