DETAILED ACTION
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 6-7 and 12-18 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.
In claim 6, the recitation “a shape of the plurality of arm” renders the claim vague and indefinite because it is unclear whether Applicant is referring to the shape of one of the plurality of arms or to a shape defined by a boundary encompassing the plurality of arms.
In claim 12, the recitation “a humeral implant configured for fixation to a humerus, wherein the humeral implant has a proximal surface with a first distance as measured in a radial direction from a centerline axis of the humeral implant; and a guide configured to place the humeral implant at a respective proximal surface of the humerus wherein the guide has a proximal surface with a second distance as measured in a radial direction from a centerline axis of the guide that differs from the first distance by a length in the radial direction configured to indicate a minimum safety boundary for the humeral implant relative to a cortex of a humerus” renders the claim vague and indefinite because it is unclear what the proximal surface is. It is suggested that Applicant use alternate language, for e.g., wherein each of a plurality of arms of the guide has an outer radial end portion that extends radially outward from an outermost surface of a corresponding arm of the guide and wherein a length of the outer radial end portion in the radial direction indicates the minimum safety boundary for the humeral implant relative to a cortex of a humerus.”
In claim 15, the recitation “except for the length in the radial direction” renders the claim vague and indefinite because it is unclear what dimension the length is referring to.
In claim 16, the recitation at lines 6-11, “wherein the plurality of arms have one or more fins ….radially beyond the outer radial end of the plurality of arms of the humeral implant.” renders the claim vague and indefinite because it is unclear how many fins are associated with each arm. Further, it is unclear how many radial end portions are associated with each fin. It is suggested that Applicant use alternate language, for e.g. “wherein each of the plurality of arms has a fin corresponding in size and position to a fin of the humeral implant, wherein each of the plurality of arms of the guide has an outer radial end portion that extends radially outward from an outer surface of a fin of the guide and wherein the length of the outer radial end portion in the radial direction indicates the minimum safety boundary.”
In claim 17, the recitation “…wherein the different size corresponds with the different standard size of the humeral implants except for the outer radial end portion on each of the plurality of arms of the plurality of guides” renders the claim vague and indefinite because it is unclear what structure is being used for size comparison. It is suggested that Applicant use alternate language, for e.g. “..wherein each different size guide corresponds to each different standard size humeral implant excluding the outer radial end portion on each of the plurality of arms of the guide.”
Appropriate correction is required.
Response to Arguments
Applicant's arguments have been carefully considered by the Examiner. Applicant’s arguments with respect to the rejections under 35 USC 103(a) over Knox et al. (US 11129724) in view of Walch (US 10888378) and the rejections under 35 USC 103(a) over Anthony et al. (US 9320619) in view of Walch (US 10888378) are found to be persuasive. Accordingly, the Examiner is withdrawing the rejections.
Allowable Subject Matter
Claims 1-5, 8-11 and 19-20 are allowed.
Claims 6-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 6-7 and 12-18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anu Ramana whose telephone number is (571)272-4718. The examiner can normally be reached 8:00 am-5:00 pm.
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March 4, 2026
/Anu Ramana/Primary Examiner, Art Unit 3775