Detailed Action
This office action is for US application number 18/442,230 evaluates the claims as filed on July 1, 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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 1, 2026 has been entered.
Response to Arguments
Applicant's arguments filed July 1, 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, Teeny, 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.
With regards to Applicant’s argument that the Tulkis and Kim do not disclose the curved track-shaped development (Remarks p.10-11), Examiner notes that Teeny has been provided in the below rejections in regards to the curved track-shaped development and corresponding functions.
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.
Claim(s) 1, 7-11, and 13-21 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.
Claim(s) 1 is/are unclear with regards to “a curved track-shaped development at the distal end” in line 4 and the scope of “development” as such does not appear to be defined in the original specification nor does such appear to be consistent with the ordinary meaning of the term, e.g. “the act, process, or result of developing, the development of new ideas, an interesting development in the case; 2: the state of being developed, a project in development; 3: a tract of land that has been made available or usable : a developed tract of land especially : one with houses built on it” (https://www.merriam-webster.com/dictionary/development). Examiner is interpreting this broadly and suggests amending to clarify.
Claim(s) 7-11, and 13-21 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 § 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) 1, 7-9, 11, and 14-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tulkis (US 2006/0200165) in view of Teeny et al. (US 2006/01955105, hereinafter “Teeny”).
As to claims 1, 7-9, 11, 14-18, 20, and 21, 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, 32, 54) having a proximal handle (16, 22, 80, Fig. 2, ¶41) and a distal end (Fig. 2, 20), the elongated body including a sliding groove (62, Figs. 1, 6A-6D, and 8); 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) comprising a connection (38, Fig. 3, ¶35) and a hook-shaped portion (34), 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); and a pushing rod (36, 52) having: a first end (right end as shown in Fig. 3, Fig. 3) capable of sliding in the sliding groove (Figs. 1 and 8, ¶s 37 and 38) and a second end (left end as shown in Fig. 3, Fig. 3) connected to the connection of the cutting element (Fig. 8) and capable of abutting onto a curved track-shaped development (due to the shown shape, Figs. 1 and 8), the second end being capable of traveling a path defined by a curved track-shaped development (if one is provided, due to the shown shape and operational movement, Figs. 3 and 8) capable of moving the cutting element between the first position and the second position (Figs. 1 and 8). 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 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).
Tulkis is silent to the elongated body including a curved track-shaped development at the distal end and the connection being a pivot.
Teeny teaches a similar device (Figs. 1-9) capable of removing a prosthesis component (10, abstract), the device comprising: an elongated body (50, 64, Figs. 6 and 9) having a curved track-shaped development (64) at a distal end (Figs. 6 and 9); a coupling portion (28, 36) at the distal end (Figs. 6 and 9) capable of coupling with the prosthesis component (Fig. 6); and a cutting element (66, 76, Figs. 6 and 9) comprising a pivot (76) and a hook-shaped portion (70, 68, Figs. 6 and 9), the hook-shaped portion comprising a rail (68, Figs. 6 and 9), the cutting element being capable of moving about the pivot between a first position (Fig. 6) in which the hook-shaped portion is retracted (Fig. 6) capable of allowing 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 (Figs. 6-9) capable of cutting off a bone portion at a rear surface of the prosthesis component (Figs. 6-9); and a pushing rod (72) having a first end (left end as shown in Fig. 6, Figs. 6 and 7) and a second end (right end as shown in Fig. 6, Figs. 6 and 7) connected to the pivot of the cutting element (Figs. 6-9) and capable of abutting onto the curved track-shaped development (Fig. 7), the second end being capable of traveling a path defined by the curved track-shaped development (Figs. 6 and 7) capable of moving the cutting element between the first position and the second position (Figs. 6 and 7).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify the hook-shaped portion and the interface of the elongate body and the coupling portion as disclosed by Tulkis to include a rail on the hook-shaped portion and modify the interface with that including a curved track-shaped development as taught by Teeny in order to provide a track for sliding the cutting element with the same curvature as the outer surface of the prosthesis (Teeny ¶18) to improve guidance of the cutting element and thereby limit the proximity of the cut along the outer surface of the prosthesis. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify the connection of the push rod to the cutting element as disclosed by Tulkis to include a pivot as taught by Teeny in order to provide a hinge between the push rod and the cutting element (Teeny ¶19).
As to claim 19, the combination of Tulkis and Teeny 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).
The combination of Tulkis and Teeny 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 the combination of Tulkis and Teeny 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 the combination of Tulkis and Teeny and would function appropriately with the claimed values as the combination of Tulkis and Teeny 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).
Claim(s) 10 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tulkis and Teeny in view of Kim (US 2015/0196402).
As to claim 10, the combination of Tulkis and Teeny discloses the invention of claim 9.
The combination of Tulkis and Teeny is silent to at least one spring element associated with the actuator element, the spring element being configured to be compressed toward the distal end and to bring the device into the second position. As to claim 13, the combination of Tulkis and Teeny is silent to the at least one spring element comprises a helical spring arranged longitudinally between the proximal handle and the pivot of the cutting element.
Kim teaches a similar 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, 112/312) comprising a pivot (112/312, Figs. 6 and 7, ¶61) and a hook-shaped portion (300), 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); and a pushing rod (388) having a first end (right end as shown in Fig. 6, Fig. 6) and a second end (left end as shown in Fig. 6, Fig. 6) connected to the pivot of the cutting element (Figs. 6 and 7, ¶67), the second end being capable of traveling a path defined by a curved track-shaped development (if one is provided, due to the shown shape and operational movement, Figs. 6 and 7) capable of moving the cutting element between the first position and the second position (Figs. 6 and 7); further comprising 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); further comprising 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) and positioned against a stop (388) of the elongate body (Figs. 6 and 7, ¶69). As to claim 13, Kim teaches 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).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify the elongate body and device as disclosed by the combination of Tulkis and Teeny by adding a stop and a spring as taught by Kim in order to predictably bias the cutting element to the retracted/first position (Kim ¶69) to remove the loosened prosthetic from the bone (Kim ¶69) as well as aid in inserting and positioning the device relative to the prosthetic.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY R SIPP whose telephone number is (313)446-6553. The examiner can normally be reached on Mon - Thurs 6-4.
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/AMY R SIPP/Primary Examiner, Art Unit 3775
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