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 Group I in the reply filed on 12/1/2025 is acknowledged. Claims 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/1/2025. The requirement is deemed proper and is therefore made FINAL.
Claim Objections
Claims 1 and 9 are objected to because of the following informalities: a misspelling of the term “comprising.” 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 1, 3, 8, and their dependent claims 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. Claim 1, lines 4-6, recite “the rod comprising through-holes, and by screws for anchoring the rod configured to cross radially the rod, via the through-holes, and the bone, when the glenoid implant is implanted on the bone.” Claim 8 recites “two stabilizing ends configured to extend each side of the bone when the glenoid implant is implanted on the bone.” This language has grammatical and idiomatic errors and does not clearly define the metes and bounds of the claims. Appropriate correction is required.
Claim 1 recites the limitation "the thickness" in line 3. Claim 3 recites the limitation "the glenosphere" in line 2. There is insufficient antecedent basis for these limitations in the claims. Appropriate correction is required.
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) 1 and 3-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bonin et al. (WO 2014/075037 A1; hereinafter “Bonin”).
Bonin discloses the following regarding claim 1: a glenoid implant for reverse shoulder prosthesis compring, a base (e.g., 112) for anchoring the implant to a bone formed by a rod (e.g., Figs. 3-4) configured to extend through the thickness of the bone from a glenoid fossa (Figs. 3-4), the rod comprising through-holes (114), and by screws (e.g., 130) for anchoring the rod configured to cross radially the rod (e.g., Figs. 3-4), via the through-holes, and the bone, when the glenoid implant is implanted on the bone (paras. 0005-0006, 0038-0039).
Bonin discloses the following regarding claim 3: the glenoid implant according to claim 1, wherein the rod comprises a surface (e.g., 150) for receiving a spacer (e.g., 140) for attaching the rod to the glenosphere (paras. 0038-0039). Please note that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Regarding claims 3 and 5, the spacer of Bonin is fully capable of attaching or connecting the rod to a glenosphere upon the full assembly of implant, as Bonin is designed to interact with a humeral head and/or a prosthetic implant (paras. 0005-0006, 0038).
Bonin discloses the following regarding claim 4: the glenoid implant according to claim 3, wherein the receiving surface comprises a bore (central opening in element 150) configured to collaborate with the spacer (Fig. 4) and a groove (please see annotated Figure A, below) surrounding the bore (Fig. 4), the groove being configured to interact with a tool for gripping and guiding the rod. Please note that the groove of Bonin is fully capable of interacting with a tool when the spacer is not inserted.
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Figure A.
Bonin discloses the following regarding claim 5: the glenoid implant according to claim 3, wherein the spacer is formed by a first portion (lower, perimeter portion of element 140) for attaching the spacer to the rod (Fig. 4) and a second portion (upper, central portion) for attaching the spacer to the glenosphere, the first portion and the second portion being offset with respect to each other (Figs. 3-4).
Bonin discloses the following regarding claim 6: the glenoid implant according to claim 5, wherein the first portion and the second portion are inclined with respect to each other (Figs. 3-4).
Bonin discloses the following regarding claim 7: the glenoid according to claim 1, further comprising a part (e.g., 116) for stabilizing the glenoid implant with respect to the bone when the glenoid implant is implanted on the bone (para. 0038).
Bonin discloses the following regarding claim 8: the glenoid according to claim 7, wherein the stabilizing part comprises two stabilizing ends (medial and lateral ends of element 116) configured to extend each side of the bone when the glenoid implant is implanted on the bone (Figs. 3-4). The claim language is being interpreted to mean that the stabilizing ends extend into a bone.
Bonin discloses the following regarding claim 9: a reverse shoulder prosthesis compring a glenoid implant according to claim 1 (paras. 0005-0006, 0038-0039).
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bonin in view of Lappin (Pub. No.: US 2013/0261750 A1).
Bonin discloses the limitations of the claimed invention, as described above. It further recites that its glenoid implant articulates against a humeral head or a prosthetic implant (paras. 0005-0006, 0038). However, it does not explicitly recite that the prosthetic implant is a glenosphere. Lappin teaches that it is well known in the art that a shoulder implant comprises a glenoid device and a glenosphere (paras. 0004-0010, 0054), for the purpose of providing the patient with the desired shoulder motion and articulation. It would have been obvious to one having ordinary skill in the art to modify the device of Bonin to comprise a glenosphere, as taught by Lappin, in order to allow for the desired shoulder motion and articulation. Such a modification would be made with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ann Hu whose telephone number is (571) 272-6652. The examiner can normally be reached on Monday-Friday (9:00 am-5:30 pm EST).
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Jerrah Edwards, at (408) 918-7557. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/ANN HU/Primary Examiner, Art Unit 3774