Detailed Action
This is the final office action for US application number 18/442,230. Claims are evaluated as filed on March 17, 2026.
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 .
Response to Arguments
Applicant's arguments filed March 17, 2026 and January 8, 2026 have been fully considered but they are not persuasive. The rejections in this office action have been amended to address the amended claims. Examiner asserts that Tulkis and Kim teach all the newly-amended limitations and are capable of performing the functions as claimed. Examiner directs Applicant to the rejection below for a more in-depth description of the limitations.
As an initial matter, Examiner notes that claims dated March 17, 2026 are annotated without regards to the claims dated January 8, 2026. That is, the claims dated March 17, 2026 appear to be an exact copy of the claims dated January 8, 2026, which is improper. In the interests of compact prosecution, claims dated March 17, 2026 and claims dated January 8, 2026 have been treated as being one and the same in scope and content. Examiner requests that future claim amendments “be presented with markings to indicate the changes that have been made relative to the immediate prior version” as required by MPEP 714(II)(C) subsection B.
With regards to Applicant’s argument that Figs. 9-14 depict the cutting element comprising two sections having different longitudinal axis directions Applicant has disclosed that the expression “hook-shaped” indicates a portion 115 that comprises at least two sections having different longitudinal axis directions and paragraph 79 discloses that Fig. 9-11 include hook-shaped portion 215, which is depicted in Fig. 10 (Remarks p. 5-6 dated March 17, 2026), Examiner agrees that the non-elected species of Figs. 1-8 comprises cutting elements 111 comprising hook-shaped portion 115 and that “hook-shaped” indicates a portion 115 that comprises at least two sections having different longitudinal axis directions (page 9 lines 22-25) and that elected species of Figs. 9-14 comprises hook-shaped portion 215. However, as also disclosed by Applicant, discloses that the hook-shaped cutting element 211 is different from the hook-shaped element 111 of the first embodiment and include hook-shaped portion 215 with a less arched conformation (page 12 lines 11-15 or ¶81 of the PG publication of the instant application), i.e. “The hook-shaped cutting element 211, in the described exemplifying and non-limiting embodiments, is different from the hook-shaped element 111 of the first embodiment. Specifically, the cutting element 211 includes the hook-shaped portion 215 with a less arched conformation”. Further, as comparison of Fig. 8 of the non-elected species with the claimed at least two sections and Figs. 10 and 12A of the elected species with a less arched conformation shows that the elected species comprises a generally arcuate hook-shaped portion that has no clear sections with differing longitudinal axes when the ordinary meaning of the terms are applied or the interpretation of Applicant’s disclosure with regards to hook-shaped portion 115. Further, it does not appear that Applicant has identified any disclosure of a cutting element that is originally disclosed to comprise all of the claimed pivot, hook-shaped portion, and two section. However, it is apparent that Applicant intends that there appears to be some yet to be identified interpretation of this language that is supported by Fig. 10. Therefore, in the interest of furthering compact prosecution, Examiner has applied a consistent interpretation between Applicant’s disclosure and the prior art to enable consideration of the prior art and provided the corresponding new matter and clarity rejections below.
With regards to Applicant’s argument that the fixing screw of claims 8 and 20 is shown and disclosed in Fig. 3 and that Applicant has disclosed that similar elements have the same numbers throughout and adapter 117b is present in both Figs. 1-8 and 9-14 (Remarks p. 7-8 dated March 17, 2026 and Remarks p. 6 and 7 January 8, 2026), Examiner notes that while there is an adapter labeled as 117b in both Figs. 1-8 and 9-14 these structures comprise unlabeled and mutually exclusive features as readily shown by a comparison of Fig. 3/8 and Fig. 10/12B, which are provided below for ease of comparison. That is, the only feature that appears to be common is the protrusion/projection on the left side of the adapter and that such functions to adapt the device for a prosthesis. Thus, it is unclear how one can reasonably assert that mutually exclusive shapes are similar. Further, page 10 lines 25-29 discloses fixing screw 122, which is shown in Figs. 3 and 8 to resemble a screw, whereas the corresponding structure in Fig. 10 is shaped like a dumbbell and is not described in the disclosure. Further, page 13 lines 18-22 (or ¶85 of the PG publication) discloses that there are a plurality of adapter elements selected for a specific prosthesis. Thus, it is unclear how one can reasonably assert that the shown dumbbell shape that is not described in the specification is both shown and supported in the specification for the claimed fixing screw of claims 8 and 20.
Applicant’s Adapter of non-elected Fig. 3/8
Applicant’s Adapter of elected Fig. 10/12B
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With regards to Applicant’s argument that the adapter angle of claim 19 is shown and disclosed in Fig. 3 and that Applicant has disclosed that similar elements have the same numbers throughout and adapter 117b is present in both Figs. 1-8 and 9-14 (Remarks p. 7-8 dated March 17, 2026 and Remarks p. 6 and 7 January 8, 2026), Examiner notes that while there is an adapter labeled as 117b in both Figs. 1-8 and 9-14 these structures comprise unlabeled and mutually exclusive features as readily shown by a comparison of Fig. 3/8 and Fig. 10/12B, which are provided below for ease of comparison. That is, the only feature that appears to be common is the protrusion/projection on the left side of the adapter and that such functions to adapt the device for a prosthesis. Thus, it is unclear how one can reasonably assert that mutually exclusive shapes are similar. Further, page 13 lines 18-22 (or ¶85 of the PG publication) discloses that there are a plurality of adapter elements selected for a specific prosthesis. Thus, it is unclear how one can reasonably assert that the shown adapter of Figs. 9-14 that has a shape that has not been described in the specification is both shown and supported in the specification as having projections with an approximately 20 degree angle therebetween, i.e. how one can reasonably assert that the adapter angle that is not described in the specification and not labeled on the drawings is both shown and supported in the specification for the claimed angle of claim 19.
With regards to Applicant’s argument that in the published application paragraph 82 element 208 is only used to refer to the first circular sector and 209 is only used to refer to the second sector and is unclear regarding the alleged discrepancy as such are used consistently throughout the application (Remarks p. 8 dated March 17, 2026 and Remarks p. 7 January 8, 2026), Examiner notes that, as detailed below and on pages 4-5 of the non-final office action dated October 21, 2025, Applicant’s specification provides that “bottom 206 comprises a first circular sector 208 having a substantially cylindrical longitudinal development and a second circular sector 209 having a curved track-shaped longitudinal development and projecting toward the adapter element 117B. Moreover, the distal end 204 provides a lateral surface 210 having a conformation substantially mirroring that of the bottom 206, with a second hole 212 thus generated at the terminal end 212E of the second circular sector 209.” (paragraph 12 lines 19-28, which appears to correspond to paragraph 82 of the PG publication of the instant application). Thus, sector 208 is disclosed to be substantially cylindrical and section 209 is disclosed to be a curved track-shaped that projects toward the adapter element and has a hole 212 at its terminal end 212E. However, when one views Figs. 10 and 11 sector 209 is shown to be generally cylindrical and section 208 has a curved shape with a hole at its terminal end 212E. In short, the numbers 208 and 209 are switched and are therefore not used consistently throughout the original disclosure. Thus, Examiner suggests amending so that the element numbering is consistent between the specification and the drawings.
With regards to Applicant’s argument that the rejection of claim 6 under 35 USC 112b has been addressed by amending to the preamble of claim 1 to read ‘the device comprising:’ (Remarks p. 8 dated March 17, 2026 and Remarks p. 8 January 8, 2026), Examiner notes that amending to the preamble of claim 1 to read ‘the device comprising:’ corrected the grammar such that the device (and not the prosthetic component that the device is claimed to be usable with) comprises the claimed body, coupling portion, and cutting element. However, this does nothing to resolve the ambiguity identified in the rejection of claim 6 under 35 USC 112b which is both missing a noun and appears to include limitations that are not shown as detailed in the rejection and repeated below.
With regards to Applicant’s argument that Tulkis’ blade 34 is spherical for use with an acetabular cup and does not contemplate geometry described in the claimed invention as such would not reach all the way under the acetabular cup and therefore does not teach the cutting element including two sections having different longitudinal axis directions (Remarks p. 9-11 and 14 dated March 17, 2026 and Remarks p. 8-10 and 13 January 8, 2026), Examiner notes that this argument is unclear as to relevance of the ability of the geometry to reach to the claimed invention. Further, as shown in at least Applicant’s Fig. 10/12B and Tulkis Fig. 8, such has similarly shaped, generally arcuate blades. Thus, it is unclear how one can reasonably assert that such similar shapes differ in regards to the number of sections and longitudinal axis directions. As detailed above and below, a similarly broad interpretation of this limitation has been applied to consider such to be disclosed by Applicant and thus such is also disclosed by Tulkis.
With regards to Applicant’s argument that Kim’s blade 100 is spherical for use with an acetabular cup and does not contemplate geometry described in the claimed invention as such would not reach all the way under the acetabular cup and therefore does not teach the cutting element including two sections having different longitudinal axis directions (Remarks p. 11-13 dated March 17, 2026 and Remarks p. 10-12 January 8, 2026), Examiner notes that Kim’s blade 100 has not been cited or relied upon. Instead, Kim’s blade 300 and the embodiment of Figs. 6 and 7 are cited in the below rejection and that of the non-final office action dated October 21, 2025. Further, this argument is unclear as to relevance of the ability of the geometry to reach to the claimed invention. As shown in at least Applicant’s Fig. 10/12B and Kim Figs. 6/7, such has similarly shaped, generally arcuate blades. Thus, it is unclear how one can reasonably assert that such similar shapes differ in regards to the number of sections and longitudinal axis directions. As detailed above and below, a similarly broad interpretation of this limitation has been applied to consider such to be disclosed by Applicant and thus such is also disclosed by Kim.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
As to claim 1, the specification appears to lack proper antecedent basis for “the cutting element including two sections having different longitudinal axis directions” of lines 6-7 with respect to the elected species of Figs. 9-14. That is, page 12 lines 6-8 discloses that the embodiment of Figs. 9-11 comprises cutting element 211 having hooked-shaped portion 215 and page 12 lines 11-15 discloses that the hook-shaped cutting element 211 is different from the hook-shaped element 111 of the first embodiment and include hook-shaped portion 215 with a less arched conformation. Instead, page 9 lines 22-25 discloses that the cutting elements 111 comprise hook-shaped portion 115 and that “hook-shaped” indicated a portion 115 that comprises at least two sections having different longitudinal axis directions. A comparison of Figures 8 and 12B shows that hook-shaped portion 115 clearly comprises 3 generally linear segments that form a hook; whereas hook-shaped portion 215 comprises a single segment that is generally arcuate. The specification is silent as to any other “sections” related to the disclosed cutting element or any potential alternate definition of “section”. Further review of the disclosure appears to show that the cutting element 211 comprises hook-shaped portion 215 (page 12 line 7), sharp end 215E (page 12 line 8), and pivot 224 (page 13 line 3). Nowhere in the disclosure does there appear to be an embodiment with a cutting element that comprises a pivot, a hook-shaped portion, and two sections. Thus, the specification fails to provide proper antecedent basis for the cutting element comprising a pivot, a hook-shaped portion, and two sections. Examiner suggests cancelling this limitation.
As to claim 8, the specification appears to lack proper antecedent basis for the elected species of Figs. 9-14 having “a fixing screw configured to make the adapter element integral with the prosthesis component”. That is, the specification appears to be silent as to the unlabeled portions of adapter 117b in elected Figs. 9-14, which is clearly shown to have a different structure than that of non-elected species A) of Figs. 1-8 which clearly discloses a fixing screw 122 that is not shown for elected species B) of Figs. 9-14. Thus, the specification fails to provide proper antecedent basis for “a fixing screw configured to make the adapter element integral with the prosthesis component” of claim 8 for the elected species of Figs. 9-14.
As to claim 19, the specification appears to lack proper antecedent basis for the elected species of Figs. 9-14 having “the angle is about 20 degrees”. That is, the specification appears to be silent as to the unlabeled portions of adapter 117b in elected Figs. 9-14, which is clearly shown to have a different structure than that of non-elected species A) of Figs. 1-8 which clearly discloses a fixing screw 122 that is not shown for elected species B) of Figs. 9-14. Thus, the specification fails to provide proper antecedent basis for “the angle is about 20 degrees” of claim 19 for the elected species of Figs. 9-14.
As to claim 20, the specification appears to lack proper antecedent basis for the elected species of Figs. 9-14 having “the fixing screw includes external threads configured to threadably attach to the prosthesis component”. That is, the specification appears to be silent as to the unlabeled portions of adapter 117b in elected Figs. 9-14, which is clearly shown to have a different structure than that of non-elected species A) of Figs. 1-8 which clearly discloses a fixing screw 122 that is not shown for elected species B) of Figs. 9-14. Thus, the specification fails to provide proper antecedent basis for “the fixing screw includes external threads configured to threadably attach to the prosthesis component” of claim 20 for the elected species of Figs. 9-14.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "208" and "209" have both been used to designate a first circular sector in Figs .10 and 11 and on page 12 line 22-23. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "208" and "209" have both been used to designate a second circular sector in Figs .10 and 11 and on page 12 line 22-23. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “208” has been used to designate both first circular sector and second circular sector in Figs .10 and 11 and on page 12 line 22-23. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “209” has been used to designate both first circular sector and second circular sector in Figs .10 and 11 and on page 12 line 22-23. That is, paragraph 12 lines 19-28 discloses that bottom 206 “comprises a first circular sector 208 having a substantially cylindrical longitudinal development and a second circular sector 209 having a curved track-shaped longitudinal development and projecting toward the adapter element 117B. Moreover, the distal end 204 provides a lateral surface 210 having a conformation substantially mirroring that of the bottom 206, with a second hole 212 thus generated at the terminal end 212E of the second circular sector 209.”. However, Figs. 10 and 11 show 208 as the sector that is a curved shape projecting toward 117B with hole 212 at the terminal end and 209 as the sector that is perhaps intended to be substantially cylindrical. Thus, Examiner suggests amending the specification to be consistent with the labeling of Figs. 10 and 11.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “a cutting element comprising a pivot and a hook-shaped portion, the cutting element including two sections having different longitudinal axis directions” of claim 1 lines 6-7, “a fixing screw configured to make the adapter element integral with the prosthesis component” of claim 8 for the elected species of Figs. 9-14, the “kit for removing prosthetic components, comprising the device of claim 7 and a plurality of adapter elements configured for a plurality of prosthetic components.” of claim 12, and “the fixing screw includes external threads configured to threadably attach to the prosthesis component” of claim 20 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim(s) 8 is/are objected to because of the following informalities:
Claim 8 line 2 should read ““a_fixing screw configured to”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1 and 6-21 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claims 1 and 6-21, “the cutting element including two sections having different longitudinal axis directions” of claim 1 lines 6-7 appears to be new matter with respect to the elected species of Figs. 9-14. That is, such was not originally claimed, has not been shown for the elected species, and page 12 lines 6-8 discloses that the embodiment of Figs. 9-11 comprises cutting element 211 having hooked-shaped portion 215 and page 12 lines 11-15 discloses that the hook-shaped cutting element 211 is different from the hook-shaped element 111 of the first embodiment and include hook-shaped portion 215 with a less arched conformation. Instead, page 9 lines 22-25 discloses that the cutting elements 111 comprise hook-shaped portion 115 and that “hook-shaped” indicated a portion 115 that comprises at least two sections having different longitudinal axis directions. Figures 8 and 12B are provided below to aid in identification of the differences of the hook-shaped portions/elements 211 and 111 as noted in page 12 lines 11-15 as a ‘less arched conformation’ in Fig. 12B. A comparison of these figures shows that hook-shaped portion 115 clearly comprises 3 generally linear segments that form a hook; whereas hook-shaped portion 215 comprises a single segment that is generally arcuate. The specification is silent as to any other “sections” related to the disclosed cutting element or any potential alternate definition of “section”. Further review of the disclosure appears to show that the cutting element 211 comprises hook-shaped portion 215 (page 12 line 7), sharp end 215E (page 12 line 8), and pivot 224 (page 13 line 3). Nowhere in the disclosure does there appear to be an embodiment with a cutting element that comprises a pivot, a hook-shaped portion, and two sections. Thus, the cutting element comprising a pivot, a hook-shaped portion, and two sections constitutes new matter. Examiner suggests cancelling this limitation.
Non-elected species with cutting elements 111 comprising hook-shaped portion 115
Elected species with cutting element 211 comprising hooked-shaped portion 215
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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.
Claim(s) 1 and 6-21 is/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 pre-AIA the applicant regards as the invention.
As to claim 1 is/are unclear with regards to “the cutting element including two sections having different longitudinal axis directions” of lines 6-7 and how such can be reasonably interpreted to read on the elected species of Figs. 9-14. That is, page 12 lines 6-8 discloses that the embodiment of Figs. 9-11 comprises cutting element 211 having hooked-shaped portion 215 and page 12 lines 11-15 discloses that the hook-shaped cutting element 211 is different from the hook-shaped element 111 of the first embodiment and include hook-shaped portion 215 with a less arched conformation. Page 9 lines 22-25 discloses that the cutting elements 111 comprise hook-shaped portion 115 and that “hook-shaped” indicated a portion 115 that comprises at least two sections having different longitudinal axis directions. A comparison of Figures 8 and 10/12B shows that hook-shaped portion 115 clearly comprises 3 generally linear segments that form a hook; whereas hook-shaped portion 215 comprises a single segment that is generally arcuate when the ordinary meaning of the terms is applied. The specification is silent as to any other “sections” related to the disclosed cutting element or any potential alternate definition of “section”. Further review of the disclosure appears to show that the cutting element 211 comprises hook-shaped portion 215 (page 12 line 7), sharp end 215E (page 12 line 8), and pivot 224 (page 13 line 3). Nowhere in the disclosure does there appear to be an embodiment with a cutting element that comprises a pivot, a hook-shaped portion, and two sections. However, it is apparent that Applicant intends that there appears to be some yet to be identified interpretation of this language that is supported by Fig. 10. Therefore, in the interest of furthering compact prosecution, Examiner has interpreted this very broadly and applied a consistent interpretation between Applicant’s disclosure and the prior art to enable consideration of the prior art. Examiner suggests amending to clarify, identifying a reasonable interpretation of Fig. 10 for the cutting element having all of a pivot, a hook-shaped portion, and two sections, or cancelling this limitation.
Claim(s) 6 is/are unclear with regards to “the first end being configured to move the cutting element on the curved-track, at least partially wrapping the prosthesis component” in lines 8-10 and what is claimed to “at least partially wrapping the prosthesis component”, i.e. the missing noun prior to ‘at least’. This is particularly unclear as none of the first end, second end, or curved-track are shown to partially wrap the prosthesis component, e.g. Figs. 12A and 12B show this to never be the situation. Examiner is interpreting this as referring to, and suggests amending as, “the first end being configured to move the cutting element on the curved-track
Claim(s) 7-21 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for its/their dependence on one or more rejected base claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 6-9, 11, 12, 14-18, 20, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tulkis (US 2006/0200165).
As to claim 1, Tulkis discloses a device (10, Figs. 1-16) capable of removing a prosthesis component (72, Figs. 8 and 13-16, ¶33), the device comprising: an elongated body (12) having a proximal handle (16, 22, 80, Fig. 2, ¶41) and a distal end (Fig. 2, 20); a coupling portion (18, Figs. 1 and 8) at the distal end (Fig. 8) capable of coupling with the prosthesis component (Fig. 8, ¶39); and a cutting element (34, 36) comprising a pivot (36, 52, 50, 48, Fig. 3, ¶35) and a hook-shaped portion (34), the cutting element including two sections (in as much as Applicant’s, Figs. 1, 3, 4, and 8) having different longitudinal axis directions (in as much as Applicant’s, Figs. 1, 3, 4, and 8), the cutting element being capable of moving about the pivot (¶38) between a first position (Fig. 1, ¶38) in which the hook-shaped portion is retracted to allow the coupling portion to abut onto the prosthesis component (¶38), and a second position (Figs. 14-16) in which the hook-shaped portion is capable of at least partially wrapping the prosthesis component (Figs. 14-16), the hook-shaped portion comprising a sharp end (37, 39, Figs. 4 and 16) capable of cutting off a bone portion at a rear surface of the prosthesis component (Figs. 8 and 14-16, ¶39 and 44-47).
As to claim 6, Tulkis discloses that the elongated body comprises a sliding groove (26, 28, Figs. 1, 6A-6D, and 8) and a curved-track shape at the distal end (tubular shape of 12, Figs. 3 and 7, ¶34); and wherein the device further comprises: a pushing rod (right portion of 54 as shown in Fig. 5, Fig. 5) having: a first end (61) capable of sliding in the sliding groove (Figs. 1, 6A-6D, and 8, ¶s 37 and 38) and a second end (60) connected to the pivot of the cutting element (Fig. 8, ¶36 discloses that aperture 62of 60 engaging pivot portion 52) and capable of abutting onto the curved-track (Figs. 1, 6A-6D, and 8, ¶s 37 and 38), the first end being capable of moving the cutting element on the curved-track (Figs. 1, 6A-6D, and 8, ¶s 37 and 38).
As to claim 7, Tulkis discloses that the coupling portion comprises an adapter element (as defined, Fig. 8) removably mounted on the elongated body (Fig. 8, ¶40 discloses removable attachment to 12 by 18 being screwed onto 12), and wherein the hook-shaped portion is further capable of at least partially wrapping the adapter element (Figs. 1 and 8).
As to claim 8, Tulkis discloses that the adapter element comprises a fixing screw (78, Fig. 8, ¶s 39 and 40, where ¶39 discloses being rotatably received in prosthesis hole and ¶40 discloses 18 engaging 72 with cooperating threaded elements) capable of making the adapter element integral with the prosthesis component (Fig. 8, ¶39).
As to claim 9, Tulkis discloses at least one actuator element (56, 58) longitudinally sliding (Fig. 1, ¶38) and capable of reversibly moving the at least one cutting element between the first position and the second position (¶38).
As to claim 11, Tulkis discloses that the coupling portion comprises a coupling surface (right facing surfaces of 18 as shown in Fig. 1, Fig. 1) capable of coupling to a glenoid prosthesis baseplate (due to the shape, Fig. 1).
As to claim 12, Tulkis discloses a kit (¶40) capable of removing prosthetic components (¶40), comprising the device of claim 7 (as detailed above) and a plurality of adapter elements (18s, ¶40) capable of use with a plurality of prosthetic components (¶40).
As to claim 14, Tulkis discloses the handle includes a longitudinally grooved surface (Fig. 1).
As to claim 15, Tulkis discloses that the distal end of the elongated body includes a coupling hole coaxial with the distal end (Figs. 7 and 8, ¶40 discloses removable attachment to 12 by 18 being screwed onto 12).
As to claim 16, Tulkis discloses that the coupling portion comprises an adapter element (as defined, Fig. 8) having a first cylindrical projection (Fig. 8, ¶40 discloses removable attachment to 12 by 18 being screwed onto 12) capable of being inserted into the coupling hole (Fig. 8, ¶40 discloses removable attachment to 12 by 18 being screwed onto 12), and a second cylindrical projection (78, Fig. 8, ¶s 39 and 40, where ¶39 discloses being rotatably received in prosthesis hole and ¶40 discloses 18 engaging 72 with cooperating threaded elements) capable of coupling with the prosthesis component (Fig. 8, ¶s 39 and 40, where ¶39 discloses being rotatably received in prosthesis hole and ¶40 discloses 18 engaging 72 with cooperating threaded elements).
As to claim 17, Tulkis discloses that the elongated body is free to rotate around the first cylindrical projection when the first cylindrical projection is inserted into the coupling hole (in order to screw 18 onto 12 as disclosed in ¶40, ¶40, or to unscrew 18 from 12).
As to claim 18, Tulkis discloses that longitudinal axes of the first cylindrical projection and the second cylindrical projection define an angle therebetween (Fig. 8).
As to claim 20, Tulkis discloses that the fixing screw includes external threads (on 78, Fig. 8, ¶s 39 and 40, where ¶39 discloses being rotatably received in prosthesis hole and ¶40 discloses 18 engaging 72 with cooperating threaded elements) capable of threadably attaching to the prosthesis component (Fig. 8, ¶s 39 and 40, where ¶39 discloses being rotatably received in prosthesis hole and ¶40 discloses 18 engaging 72 with cooperating threaded elements).
As to claim 21, Tulkis discloses that the coupling portion is integral with the distal end of the elongated body (when screwed together as disclosed in ¶40, Fig. 8, ¶40).
Claim(s) 1, 9, 10, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (US 2015/0196402).
As to claim 1, Kim discloses a device (Figs. 6 and 7) capable of removing a prosthesis component (10, Figs. 6 and 7, abstract, ¶27), the device comprising: an elongated body (332) having a proximal handle (336/366) and a distal end (334);a coupling portion (360) at the distal end (Figs. 6 and 7, ¶62) capable of coupling with the prosthesis component (Figs. 6 and 7, ¶s 62 and 37); and a cutting element (300, 112) comprising a pivot (112) and a hook-shaped portion (300), the cutting element including two sections (in as much as Applicant’s, Figs. 6 and 7) having different longitudinal axis directions (in as much as Applicant’s, Figs. 6 and 7), the cutting element being capable of moving about the pivot (Figs. 6 and 7) between a first position (Fig. 6) in which the hook-shaped portion is retracted to allow the coupling portion to abut onto the prosthesis component (Fig. 6), and a second position (Fig. 7) in which the hook-shaped portion is capable of at least partially wrapping the prosthesis component (Fig. 7), the hook-shaped portion comprising a sharp end (318, Figs. 6 and 7, ¶59) capable of cutting off a bone portion at a rear surface of the prosthesis component (Fig. 7, ¶s 59 and 68).
As to claim 9, Kim discloses at least one actuator element (381, 380, 346, 396) longitudinally sliding (Figs. 6 and 7, ¶s 66 and 68) and capable of reversibly moving the at least one cutting element between the first position and the second position (¶69).
As to claim 10, Kim discloses at least one spring element (328) associated with the actuator element (Figs. 6 and 7, ¶69), the spring element being capable of being compressed toward the distal end and to bring the device into the second position (Figs. 6 and 7, ¶69);
As to claim 13, Kim discloses that the at least one spring element comprises a helical spring (Figs. 6 and 7) arranged longitudinally between the proximal handle and the pivot of the cutting element (Figs. 6 and 7).
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 of this title, 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) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tulkis.
As to claim 19, Tulkis discloses the invention of claim 18 as well as that the coupling portion may be various shapes for positively engaging with or locking prosthetic cups of different shapes and sizes while maintaining alignment of the rotational axis of the elongate member and the polar axis of the prosthetic cup (¶40).
Tulkis is silent to the angle being about 20 degrees.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the angle of Tulkis to be about 20 degrees since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In the instant case, the angle of about 20 degrees would not operate differently than the shown structure of Tulkis and would function appropriately with the claimed values as Tulkis discloses that the adapter coupling portion, and thereby the angle between axes of its portions, may be various shapes for positively engaging with or locking prosthetic cups of different shapes and sizes while maintaining alignment of the rotational axis of the elongate member and the polar axis of the prosthetic cup (Tulkis ¶40). Further, Applicant places no criticality on the angle claimed, indicating the angle varies from adapter to adapter in an exemplifying and non-elected embodiment of Fig. 4 is equal to 20 degrees (page 10 lines 20-23).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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/AMY R SIPP/Primary Examiner, Art Unit 3775
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