DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Species 2, figure 7, claims 9-14 in the reply filed on 4/25/2026 is acknowledged. Further, the newly added claim 15 is read on the elected species 2.
Claims 1-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 4/25/2026.
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 –
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.
Claim(s) 9-14 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wolfson et al U.S 2017/0333213.
Claim 9: Wolfson et al disclose a knee joint implant as best seen in figures 1-2 comprising: a femur element 20; a tibia element 22 comprising a base plate 222, a shaft 214 extending from the base plate, and a knee joint implant augmentation 250 having a first contact surface at 36, which rests at least partially flat against the base plate; a first rim of the first contact surface; a second contact surface at 36 arranged opposite the first contact surface and configured to be able to rest at least partially flat on the tibia in an implanted state of the knee joint implant; a second rim of the second contact surface; a lateral surface at 70, which connects the first rim to the second rim; and a lateral-surface portion of the lateral surface 70 which is arranged in a patellar position in the implanted state of the knee joint implant. Note that the distal surface of the mounting bracket may define a first plane. The first longitudinal axis may extend at an oblique angle relative to the first plane. In some embodiments, the head plate may have a distal surface that defines a second plane that extends at an oblique angle relative to the first plane and may be orthogonal to the first longitudinal axis; Referring now to FIG. 3, the distal surface 224 of the cutting block 212 defines an imaginary plane 270, and a longitudinal axis 272 extends along the offset guide assembly 214 through the stem trial 220. In the illustrative embodiment, the axis 272 corresponds to the longitudinal axis of the elongated stem 80 of the femoral prosthetic assembly. An oblique angle 274 is defined between the axis 272 and the imaginary plane 270, which corresponds to the angle between the elongated stem 80 and the femoral component 20 in the femoral prosthetic assembly (see paragraphs 11, 62). Alternatively, it would have been obvious that the above description of Wolfson et al device show that the lateral-surface portion is angled at a closed angle greater than 0° with respect to a longitudinal axis of the shaft. Thus, claim 9 is unpatentable over Wolfson et al.
Claims 10, 13: Wolfson et al disclose the invention substantially as claimed but is silent regarding wherein a closed angle between the second contact surface and the lateral-surface portion is smaller than 90°. wherein a closed angle between the lateral-surface portion and the first contact surface is greater than 90°, such that the lateral-surface portion spans a nose that extends over a base area of the first contact surface. It would have been obvious to one having ordinary skill in the art before the claimed invention to modify the device of Wolfson et al by making a closed angle between the second contact surface and the lateral-surface portion is smaller than 90°. wherein a closed angle between the lateral-surface portion and the first contact surface is greater than 90°, such that the lateral-surface portion spans a nose that extends over a base area of the first contact surface, since it has been held that where the only difference between the prior arts and the claims was a recitation of relative dimension of the claimed device having the claimed relative dimensions would not perform differently than the prior arts 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). In the instant case it appears there has been no critically placed on the specific angle between the second contact surface and the lateral-surface portion is smaller than 90°. wherein a closed angle between the lateral-surface portion and the first contact surface is greater than 90°, as evidence in applicant’s disclosure at paragraph 56, wherein the ranges and values are given with no preference to one over another nor any evidence of unexpected results.
Claims 11,12,14: Wolfson et al disclose wherein the first contact surface at least partially corresponds to a shape of the base plate 222; wherein the second contact surface 36 is configured to correspond to an outer contour of the tibia 22 at least partially; wherein the tibia element comprises a reinforcing wing at 254 extending between the base plate and the shaft as best seen in fig. 5.
Allowable Subject Matter
Claim 15 is 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
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/VI X NGUYEN/Primary Examiner, Art Unit 3771
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