DETAILED ACTION
The following is a non-final office action is response to communications received on 12/29/2023. Claims 1-20 are currently pending and addressed below.
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. US 11,857,427. The elements of the instant application are to be found in the Patent and therefore are anticipated. Although the conflicting claims are not identical, they are not patentably distinct from each other because the Patent and the instant application all recite the same basic structure with a permutation of similar elements throughout.
Regarding Claims 1 & 5-8, patent claim 1 recites the same limitations.
Regarding Claim 2, patent claim 2 recites the same limitations.
Regarding Claim 3, patent claim 3 recites the same limitations.
Regarding Claim 4, patent claim 4 recites the same limitations.
Regarding Claim 9, patent claim 5 recites the same limitations.
Regarding Claim 10, patent claim 6 recites the same limitations.
Regarding Claim 11, patent claim 7 recites the same limitations.
Regarding Claim 12, patent claim 8 recites the same limitations.
Regarding Claim 13, patent claim 9 recites the same limitations.
Regarding Claims 14, 16 & 17, patent claim 10 recites the same limitations.
Regarding Claim 15, patent claim 11 recites the same limitations.
Regarding Claim 18, patent claim 12 recites the same limitations.
Regarding Claim 19, patent claim 13 recites the same limitations.
Regarding Claim 20, patent claim 14 recites the same limitations.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. US 10,722,373. The elements of the instant application are to be found in the Patent and therefore are anticipated. Although the conflicting claims are not identical, they are not patentably distinct from each other because the Patent and the instant application all recite the same basic structure with a permutation of similar elements throughout.
Regarding Claim 1, patent claims 1 & 2 recite the same limitations.
Regarding Claim 2-13, patent claims 3-14 (respectively) recite the same limitations.
Regarding Claim 14, patent claims 1 & 2 recite the same limitations.
Regarding Claim 15, patent claims 3 & 4 recite the same limitations.
Regarding Claim 16, patent claim 7 recites the same limitations.
Regarding Claim 17, patent claims 8, 9 & 11 recite the same limitations.
Regarding Claim 18, patent claim 10 recites the same limitations.
Regarding Claim 19, patent claim 12 recites the same limitations.
Regarding Claim 20, patent claim 14 recites the same limitations.
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 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) 1-4, 11, 13-16, 19 & 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Emerick et al. (US 10,463,499).
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Regarding Claim 1, Emerick teaches an anchor member (206), comprising: a base (237) positioned at a first end (shown) of the anchor member and including a top surface (shown); a circumferential groove (231) extending into the base from the first end of the anchor member; a central member (234) positioned within the base and the circumferential groove, wherein a top surface of the central member is positioned flush with or below the top surface of the base (Fig 15); and at least one support member (213) coupled to at least a portion of the central member at a first end and at least a portion of an interior surface of the base on a second end (Fig 15).
Regarding Claim 2, Emerick teaches wherein the circumferential groove (231) forms an interior lip (shown) of the base positioned between the circumferential groove and the central member, and wherein the at least one support member (213) couples to the interior lip.
Regarding Claim 3, Emerick teaches wherein the central member comprises: a through hole (shown) extending through the central member from the first end to the second end of the anchor member.
Regarding Claim 4, Emerick teaches wherein the through hole comprises: a first wall portion (shown) of the through hole extending from the first end toward the second end; a second wall portion (shown) of the through hole extending from the second end toward the first end; and a threaded portion (shown) positioned between the first wall portion and the second wall portion.
Regarding Claim 11, Emerick teaches wherein the anchor member further comprises: a stem (208) extending away from a bottom surface of the base to a second end, and wherein the stem comprises: an exterior surface; at least one interior surface positioned opposite the exterior surface; and a protrusion (224) extending away from the at least one interior surface (Fig 15).
Regarding Claim 13, Emerick teaches wherein the base further comprises: a plurality of fastener openings (shown) extending through the base from the first end toward the second end, and wherein the plurality of fastener openings is positioned between an exterior surface of the base and the circumferential groove (Fig 15).
Regarding Claim 14, Emerick teaches the implant as set forth in the rejection of claim 1. Further, Emerick teaches wherein the implant comprises an articulating portion (102); and a coupling member with a first end and a second end, wherein the articulating portion is coupled to the first end of the coupling member and the anchor member is coupled to the second end of the coupling member (Fig 1 & 16).
Regarding Claim 15, 19 & 20, Emerick teaches the implant as set forth in the rejections of claims 2, 3, 11 & 13.
Regarding Claim 16, Emerick teaches wherein the anchor member further comprises: windows (shown) positioned between each of the support members (213) of the at least one support member, the central member (234), and an interior surface of the base.
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.
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) 5, 6, 7, & 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Emerick et al. (US 10,463,499) as applied to claims 1-4, 11 & 15 above, and further in view of Perego et al. (US 2020/0214846).
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Regarding Claim 5, as set forth supra, Emerick discloses the invention substantially as claimed. Further, Emerick teaches wherein the support members are equally spaced around the central member (Fig 15).
However, Emerick does not specifically disclose wherein there are four support members.
Perego teaches a shoulder prosthesis in the same field of endeavor. Said prosthesis comprising a humeral body (13) comprising four arms (132) in order to give greater rotational stability and support to the prosthesis following implantation [0126].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to construct the device of Emerick to comprises four arms, as taught by Perego, in order to give greater rotational stability and support to the prosthesis following implantation.
Regarding Claim 6, the combination teaches wherein the anchor member further comprises: windows positioned between each of the support members, the central member, and an interior surface of the base.
Regarding Claim 7, the combination teaches wherein the anchor member further comprises: at least one leg member extending away from a bottom surface of the base.
Regarding Claim 12, the combination teaches wherein the at least one support member (213) comprises: a first support member aligned with and coupled to a first end of the protrusion (224); a second support member (213) aligned with and coupled to a first end of the stem and extending between the interior surface and the exterior surface; a third support member (213) positioned between and equally spaced from the first support member and the second support member; and a fourth support member (213) positioned between and equally spaced from the first support member and the second support member, wherein the third support member is positioned opposite the fourth support member.
Allowable Subject Matter
Claims 8-10, 17 & 18 would be allowable if (1) a timely filed terminal disclaimer(s) in compliance with 37 CFR 1.321(c) or 1.321(d) is filed to overcome the nonstatutory double patenting rejection(s) set forth in this Office action, and (2) rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Anthony et al. (US 9,700,437) teaches an anchor member, comprising: a base positioned at a first end of the anchor member and including a top surface; a circumferential groove extending into the base from the first end of the anchor member; a central member positioned within the base and the circumferential groove, wherein a top surface of the central member is positioned flush with or below the top surface of the base; and at least one support member coupled to at least a portion of the central member at a first end and at least a portion of an interior surface of the base on a second end.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN AINSLEY DUKERT whose telephone number is (571)270-3258. The examiner can normally be reached Mon-Fri 6am-4pm.
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, Melanie Tyson can be reached at (571)272-9062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN A DUKERT/Primary Examiner, Art Unit 3774
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