DETAILED ACTION
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 .
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claims 1, 4-5
“Locking means”
Claim 6,
“deformable peripheral means”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-10 are rejected under 35 U.S.C. 101 because Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 1 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). The term “tighten the main body on the patient's bone or on an intermediate element attached to said bone” is directed to claiming human organisms; placeholders “configured to attach” or “adapted to attach” are suggested.
Claims 2-10 are rejected for the same reasons because they depend on claim 1.
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 1-10 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.
The term “mainly” in claim 1 is a relative term which renders the claim indefinite. The term “mainly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims 2-19 are rejected for the same reasons because they depend on claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-2, 4-7, 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Gargac et al (Pub. No.: US 2019/0298537) in view of Cardon et al (Pub. No.: US 2018/0161169).
Regarding claims 1, 10, Gargac et al disclose a prosthesis joint implant comprising:
a main body (glenosphere 116, fig 4) made mainly of ceramic and comprising a joint outer surface (articular surface 244) made of ceramic, of concave or convex shape [see fig 4, 0059];
at least one tightening screw (locking screw 256) configured to tighten the main body on the patient's bone or on an intermediate element attached to said bone [see fig 4, 0060];
at least one added ring (threaded member 264, fig 4) in the main body (glenosphere 116, fig 4) and forming with it a chamber (internal cavity 292, fig 4) trapping the head of the tightening screw and comprising a bearing surface forming a stop (compression washer 260, fig 4) for said head of the tightening screw (256) [see fig 4, 0060];
the added ring being configured to be in contact with the tightening screw during said tightening [see fig 4] by disclosing threaded member 264 comprises internal and external surfaces which engage screw 256 [see fig 4, 0060];
the added ring comprising a central hole crossed by the tightening screw (by disclosing screw 256 mates with internal threads 284 of threaded member 264 which comprises a hole [see fig 4, 0060];
the added ring (264) being configured to homogeneously distribute in the main body the mechanical stresses caused by tightening the tightening screw [see fig 4, 0063, 0066],
the added ring comprising a first member forming the outer surface of the added ring and comprising means for clipping [see 0055] to the main body and a second member acting as a spacer between the first member and the tightening screw [see 0058];
said second member being assembled in the first member, forming said bearing surface and defining the central hole [see fig 3, 0060-0063];
the first member and the second member being two members separate from each other and comprising locking means configured to prevent them from separating from each other after assembly [see 0059].
Gargac et al don’t disclose main body made mainly of ceramic.
Nonetheless, Cardon et al disclose main body made mainly of ceramic
Therefore, it is obvious to one skilled in the art at the time the invention was filed and would have been motivated to combine Gargac et al and Cardon et al by using ceramic; Ceramics offer numerous advantages, including high durability, heat resistance, corrosion resistance, and excellent insulation properties, making them ideal for various applications.
Regarding claim 2, Gargac et al disclose wherein the first member comprises a tapped portion and the second member comprises a corresponding threaded portion [see fig 4, 0060-0063]
the threaded portion and the tapped portion being configured so that the second member can be screwed to the first member, preferably, the second member being screwed to the first member in the direction opposite to that when tightening the tightening screw [see fig 4, 0060-0063].
Regarding claim 4, Gargac et al disclose wherein the locking means comprise a circular channel and a collar configured to engage in said channel the channel being formed on the first member or on the second member and the collar being respectively formed on the second member or the first member [see fig 4]
Regarding claim 5, Gargac et al disclose wherein the locking means comprise at least one clip and at least one hole configured to be crossed by the clip, the clip being formed on the first member or on the second member and the hole being respectively formed on the second member or the first member [see 0055, fig 4].
Regarding claim 6, Gargac et al disclose wherein the first member comprises elastically deformable peripheral means [see fig 4]
Regarding claim 7, Gargac et al disclose wherein the main body is a glenosphere, the tightening screw being configured to tighten the glenosphere onto a metaglene (basseplate) attached to the patient's glenoid [see 0084]
Regarding claim 9, Gargac et al disclose wherein the main body is a ceramic tibial plateau, a knee condyle, an anatomic glenoid [see 0065], a hip acetabulum or a ceramic cup.
Claim(s) 3, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Gargac et al (Pub. No.: US 2019/0298537) in view of Cardon et al (Pub. No.: US 2018/0161169) as applied to claim 1 above and further in view of Iannotti et al (Pub. No.: US 2013/0150975).
Regarding claim 3, Gargac et al don’t disclose wherein the tapped portion and the threaded portion have a left-hand pitch or a right-hand pitch, preferably of between 0.5 mm and 2 mm, the threaded portion preferably being a metric thread, a buttress thread or a square thread.
Nonetheless, Iannotti et al disclose between 0.5 mm and 2 mm [see 0225].
Therefore, it is obvious to one skilled in the art at the time the invention was filed and would have been motivated to combine Gargac et al and Cardon et al by using 0.5 mm and 2 mm; to promote compactness.
Regarding claim 8, Gargac et al and Cardon et al don’t disclose wherein the diameter of the glenosphere is between 30 and 46 mm.
Nonetheless, Iannotti et al disclose wherein the diameter of the glenosphere is between 30 and 46 mm [see 0225].
Therefore, it is obvious to one skilled in the art at the time the invention was filed and would have been motivated to combine Gargac et al and Cardon et al by between 30 and 46 mm; to provide desired size of implants.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL F BRUTUS whose telephone number is (571)270-3847. The examiner can normally be reached Mon-Sat, 11:00 AM to 7:00 PM.
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, Pascal Bui-Pho can be reached at 571-272-2714. 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.
/JOEL F BRUTUS/ Primary Examiner, Art Unit 3798