DETAILED ACTION
Election/Restrictions
Applicant’s election of Group 1, claims 1-12 in the reply filed on 3/20/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/20/2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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) 1-3, 5, 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Podolksky et al U.S Pat 8,579,985.
Claim 1: Podolksky et al disclose a trial femoral assembly for hip arthroplasty as best seen in figure 65, comprising: a head 5300; a neck 5200 connected to the head; and a stem 5110 or broach connected to the neck, wherein the neck is expandible and collapsible; regarding the intended use and other functional languages as in the underline phrase, a recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior arts in order to patentably distinguish the claimed invention from the prior arts. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, Podolksky, figure 65 looks and functional similar to claim 1.
Claims 2-3: Podolksky et al disclose wherein the stem 5110 or broach can move laterally in relation to the longitudinal axis of the neck, see fig. 67; further comprising a notched rod (at the opening around the area 1502) located within a housing and within a circular lower neck portion 1504 having a tilted spiral cam (it is noted that the bore 1512 that has spiral thread) that interacts with the notched rod to provide movement involving extension or retraction of the neck.
Claims 5, 8: Podolksky et al disclose further comprising a bevel gear (beveled edges as best seen in figures 8a-c) located on an outer surface of the head that engages a screw 806 located inside the head to move the neck to provide extension or retraction (see col. 26, lines 46-64); wherein the coupling sleeve 912 is attached to the neck (see fig. 9a).
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Philippon et al U.S 2016/0143743
Claim 1: Philippon et al disclose a trial femoral assembly for hip arthroplasty as best seen in figures 1a,b, comprising: a head 105; a neck 102 connected to the head; and a stem 212 or broach connected to the neck, wherein the neck is expandible at fig. 1a and collapsible at fig. 1b; regarding the intended use and other functional languages as in the underline phrase, a recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior arts in order to patentably distinguish the claimed invention from the prior arts. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, Philippon, figures 1a,b look and functional similar to claim 1.
Claim 2: Philippon et al disclose the stem can move laterally to a longitudinal axis of the neck (see paragraph 38).
Allowable Subject Matter
Claims 4,6-7,9-12 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VI X NGUYEN whose telephone number is (571)272-4699. The examiner can normally be reached Monday-Friday (6:30-4:30).
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, Darwin Erezo can be reached at 571-272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VI X NGUYEN/Primary Examiner, Art Unit 3771
Prosecution Insights