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 .
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 final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/31/25 has been entered.
Specification/Priority
The replacement specification filed 12/31/25 has been entered.
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.
Claim(s) 1-7 & 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frankle (US PG Pub No. 2012/0253467) in view of Schroder et al. (US Patent No. 5,951,564).
Regarding Claim 1 as best understood, Frankle discloses a joint prosthesis implant (glenoid implant 700/200, Figs. 28, 4-7 & 24-27, Paragraph [0035, 0107-0115]) comprising: a main body (glenosphere 700, Figs. 24-27) made mainly of ceramic (Paragraph [0115]) and comprising a joint outer surface (external articular surface 716, Fig. 27) made of ceramic (Paragraph [0115]) and comprising a convex shape (Fig. 27, Paragraph [0112]), and a housing (proximal/first opening 719 into bore 718, Fig. 25, Paragraph [0112]) on the joint outer surface (Figs. 24-25), the housing having a shape complementary to a shape (upper portion of 720) of an assembly member (720, Fig. 25) to be installed in the housing (Paragraph [0112]), wherein the assembly member adapted to be connected (via hex shaped aperture therein, Figs. 24-25) to a gripping device (installation tool, not shown, Paragraph [0112])(“The retaining screw 720 can be attached to, or provided separately from, the glenosphere component 700, and acts as a secondary means of attachment between the glenosphere component 700 and the baseplate 200. The proximal end of the retaining screw 720 is adapted to receive a tool used to assist with installing the baseplate 200 and/or glenosphere component 700 into the scapula of a patient.”).
Frankle does not disclose wherein the complementary shapes of the housing and the assembly member allow the main body and the gripping device to rotate together, wherein the housing has an oblong shape.
Schroder et al. discloses an orthopedic positioning apparatus (24, Figs. 1-2) for gripping, positioning and rotating a joint implant (22, Fig. 2), wherein the apparatus is configured to engage the joint implant such that an elliptical-shaped tip (40, Fig. 4) of a shaft of the apparatus is disposed in a correspondingly-shaped slot (28, Fig. 3) of the implant (Figs. 2-4) to position the implant relative to a portion of a bone using the apparatus (Col. 5, Lines 35-45), wherein Col. 3, Lines 38-44 further state that “Fixed impactor tip 40 has an oblong cross-section (FIG. 4) which is adapted to be received within a correspondingly shaped implant slot 28. Such an oblong shape allows implant 22 to be rotated about the longitudinal axis of shaft 32 when engaged therewith, although other shapes may be used for the tip, as desired.”
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the circular perimeter shapes of the housing (719) of the implant and the head of the assembly member (720) of Frankle to be elliptical as taught by Schroder et al. as an alternate and functionally equivalent shape for a connection arrangement between an implant, fastener, and insertion tool which allows a correspondingly-shaped tip of a positioning apparatus to engage and rotate the assembly member and the main body simultaneously during installation of the implant into a surgical site during a procedure.
Regarding Claim 2, the combination of Frankle and Schroder et al. discloses the claimed invention as stated above in Claim 1, and Frankle further discloses wherein the housing comprises a hole crossing through the main body from one side to the other (bore 718 includes a blind, enlarged upper portion and a narrower lower lumen which extends through 700 from the top side 708 to the bottom side 706, Fig. 27, Paragraph [0112]).
Regarding Claim 3, the combination of Frankle and Schroder et al. discloses the claimed invention as stated above in Claim 1, and Frankle further discloses wherein the housing comprises a blind hole (bore 718 includes a blind, enlarged upper portion and a narrower lower lumen which extends through 700 from the top side 708 to the bottom side 706, Fig. 27, Paragraph [0112]) located within a thickness of the main body (Fig. 25).
Regarding Claim 4, the combination of Frankle and Schroder et al. discloses the claimed invention as stated above in Claim 1, and Frankle further discloses wherein the main body is a glenosphere (glenosphere component 700, Paragraph [0112], Fig. 28).
Regarding Claim 5, the combination of Frankle and Schroder et al. discloses the claimed invention as stated above in Claim 1, except wherein a diameter of the glenosphere is between 30 mm and 46 mm. However, Paragraph [0113] states that “The geometry of the articulating surface 716 can be provided in a variety of different radii and sizes, such as with varying diameters and varying heights to enable a surgeon to select an optimal glenosphere component 700 needed for the anatomy of a particular patient.” Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to modify an overall outer diameter of the glenosphere of the combination to be between 30 mm and 46 mm as taught by Frankle since it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 105 USPQ 233.
Regarding Claim 6, the combination of Frankle and Schroder et al. discloses the claimed invention as stated above in Claim 1, and Frankle further discloses wherein the main body is a glenoid component (glenosphere component 700, Paragraph [0112], Fig. 28).
Regarding Claim 7 as best understood, Frankle discloses an assembly comprising: a joint prosthesis implant (glenoid implant 1700/1900 Figs. 63-65, Paragraph [0146]) including: a main body (glenosphere 1700 + adapter 1900, Fig. 64) made mainly of ceramic (Paragraph [0115]) and comprising a joint outer surface (external articular surface of 1700, Fig. 66) made of ceramic (Paragraph [0115]) and comprising a convex shape (Fig. 64 & 66]), and a housing (opening into external articular surface of 1700, Figs. 65-66]) on the joint outer surface, the housing having a shape complementary to a shape of an assembly member (head of 1712, Fig. 66) to be installed in the housing (Paragraph [0146]), the assembly member adapted to be connected (via hex shaped aperture therein, Fig. 66) to a gripping device (installation tool, not shown), and a guiding portion (trunnion 1908 OR tip of 1712, Figs. 63-65 & 66) protruding from the main body of the implant from a side (underside, Figs. 63-65 & 66) of the main body opposite the joint outer surface.
Frankle does not disclose wherein the complementary shapes of the housing and the assembly member allow the main body and the gripping device to rotate together, wherein the housing of the implant and a corresponding portion of the assembly member installed therein have complementary oblong shapes.
Schroder et al. discloses an orthopedic positioning apparatus (24, Figs. 1-2) for gripping, positioning and rotating a joint implant (22, Fig. 2), wherein the apparatus is configured to engage the joint implant such that an elliptical-shaped tip (40, Fig. 4) of a shaft of the apparatus is disposed in a correspondingly-shaped slot (28, Fig. 3) of the implant (Figs. 2-4) to position the implant relative to a portion of a bone using the apparatus (Col. 5, Lines 35-45), wherein Col. 3, Lines 38-44 further state that “Fixed impactor tip 40 has an oblong cross-section (FIG. 4) which is adapted to be received within a correspondingly shaped implant slot 28. Such an oblong shape allows implant 22 to be rotated about the longitudinal axis of shaft 32 when engaged therewith, although other shapes may be used for the tip, as desired.”
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the circular perimeter shapes of the opening into the external articular surface of the implant and the head of the assembly member (1712) of Frankle to be elliptical as taught by Schroder et al. as an alternate and functionally equivalent shape for a connection arrangement between an implant, fastener, and insertion tool which allows a correspondingly-shaped tip of a positioning apparatus to engage and rotate the assembly member and the main body simultaneously during installation of the implant into a surgical site during a procedure.
Regarding Claim 9, the combination of Frankle and Schroder et al. discloses the claimed invention as stated above in claim 7, and Frankle further discloses wherein the guiding portion is made in one piece with the main body. (trunnion 1908 is made on one piece with 1900 as seen in Fig. 66).
Regarding Claim 10, the combination of Frankle and Schroder et al. discloses the claimed invention as stated above in claim 7, and Frankle further discloses wherein the guiding portion is one end of the assembly member (tip of 1712 defines the distal end of 1712 as seen in Figs. 64 & 66).
Response to Arguments
The replacement specification, filed 12/31/25, has been considered and entered and has overcome the specification objection.
Applicant’s amendments, filed 12/31/25, have overcome the objections to claims 1 & 7.
Applicant’s amendments, filed 12/31/25, have overcome the 112(b) rejections for claims 1 & 7 (which was erroneously referred to as Claim 11 in the final office action).
In regards to Applicant’s arguments, filed 12/31/25, with respect to claims 1-7 & 9-10 as rejected under 35 USC 103 as being obvious over Frankle in view of Maisonnueve, respectively: The Applicant’s arguments have been fully considered but are moot in view of the new grounds of rejection based on the newly amended claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WEISS whose telephone number is (571) 270-5597. The examiner can normally be reached Monday through Friday, 8:00 am to 4:00 pm EST. If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, KEVIN T. TRUONG, at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JESSICA WEISS/Primary Examiner, Art Unit 3775