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 .
DETAILED ACTION
Applicant is advised that the new art unit number is 2692. Please use the new art unit number for all future communications.
This Office action is in response to the Amendment filed on 1/22/2026.
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) 1, 5-8, 19, 21, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Badih et al. (US 2018/0376262) in view of Grey (US 5897417).
Regarding claim 1, Badih discloses an apparatus (Fig. 5a, 10, 11a) comprising:
a fixation element (30, 301) configured to be implanted within a portion of a recipient's body, the fixation element comprising a socket (30); and
a transducer (50) configured to be implanted within the recipient's body and received by the socket, the transducer comprising:
a first end portion (Fig. 10: portion comprising reference sign 50, 60) configured to transmit signals to and/or receive signals from a target portion of the recipient's body;
a second end portion (Fig. 10: portion comprising reference sign 10; Fig. 5a) opposite to the first end portion, the first and second end portions spaced from one another along a center longitudinal axis of the transducer (Fig. 10); and
a surface (20; paragraph [0142]: "outer surface of sliding ring 20 is substantially spherical in shape") at the first end portion or between the first and second end portions, the surface (20) configured to be in mechanical communication (20; inner surface of socket 30) with the socket with the center longitudinal axis of the transducer extending through the socket, the transducer configured to be rotated such that an angular orientation of the center longitudinal axis relative to the socket is controllably adjusted (Fig. 11a, paragraph [0144]: positioning means of ball joint type),
wherein the socket comprises a substantially circularly or spherically curved first surface portion (curved surface of 30) and the surface of the transducer comprises a substantially circularly or spherically curved second surface portion (curved surface of 20) (see Figs. 10/11a), the second surface portion configured to be in mechanical communication with and controllably positioned relative to the first surface portion (see Figs. 10/11a),
Badih is not relied upon to disclose wherein one of the first surface portion and the second surface portion comprises a plurality of protrusions and the other of the first surface portion and the second surface portion comprises a plurality of recesses configured to mate with the plurality of protrusions such that the center longitudinal axis is positionable at a plurality of discrete angular orientations relative to the socket.
In a similar field of endeavor, Grey discloses wherein the socket comprises a substantially circularly or spherically curved first surface portion (curved surface of 130) and the surface of the ball comprises a substantially circularly or spherically curved second surface portion (curved surface of 110) (see Fig. 1), the second surface portion configured to be in mechanical communication with and controllably positioned relative to the first surface portion (Fig. 5A), wherein one of the first surface portion and the second surface portion comprises a plurality of protrusions (138) (detx13, col. 8, lines 43-55) and the other of the first surface portion and the second surface portion comprises a plurality of recesses (112) configured to mate with the plurality of protrusions such that the center longitudinal axis is positionable at a plurality of discrete angular orientations relative to the socket (detx13, col. 8, lines 43-55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first surface portion to have recesses and the second surface portion to have protrusions as taught by Grey,
which would result in: wherein one of the first surface portion and the second surface portion comprises a plurality of protrusions and the other of the first surface portion and the second surface portion comprises a plurality of recesses configured to mate with the plurality of protrusions such that the center longitudinal axis is positionable at a plurality of discrete angular orientations relative to the socket,
the motivation being to: include means for small, precise and reproducible reorientations (Grey - bstx14, col. 1, lines 49-50).
Regarding claim 5, Badih-Grey discloses the apparatus of claim 1, wherein the transducer is a microphone or an actuator (¶ 0036), the apparatus further comprising a rod or wire (56 and 60) configured to extend from the first end portion (from 10) through an orifice of the socket (orifice of 40 or 30) and configured to be in mechanical communication with the target portion of the recipient's body such that mechanical vibrations propagate along the rod or wire between the transducer and the target portion of the recipient's bod (¶ 0036).
Regarding claim 6, Badih-Grey discloses the apparatus of claim 1, and Badih discloses wherein the target portion of the recipient's body comprises an ossicle (see Abstract), a portion of a cochlea, a portion of the otic capsule, or a semicircular canal of the recipient's body.
Regarding claim 7, Badih-Grey discloses the apparatus of claim 1, and Badih discloses wherein the fixation element is configured to be affixed to a portion of the recipient's skull with the socket within a middle ear region or a mastoid bone cavity of the recipient's body (Figs. 6b, 7b, 8b, 9b and ¶ 0133, 0135, 0137, 0139).
Regarding claim 8, Badih-Grey discloses the apparatus of claim 1, wherein the fixation element further comprises a portion (inner surface of 30) in mechanical communication with the socket (see Figs. 10, 11), the portion configured to controllably adjust a position and/or an orientation of the socket relative to a target portion of the recipient's body during implantation of the apparatus (in A1 and A2 directions) (see Figs. 10, 11).
Regarding claim 19, Badih-Grey discloses the apparatus of claim 1, wherein the fixation element comprises
a first portion (301) configured to be affixed to a location of the recipient's body (Fig. 4 and 6a-9b);
a second portion (30) in mechanical communication with the first portion and configured to extend into a region of the recipient's body spaced from the location of the recipient's body (Fig. 4 and 6a-9b); and
the socket is in mechanical communication with the second portion (Figs. 10/11: socket portion of 30 is in mechanical communication with the rest of 30), the socket comprising an opening through the first surface (Figs. 10/11: opening in 30 where 50 protrudes), the socket configured to be in mechanical communication with the second surface portion (surface of 20) of the transducer such that the transducer is configured to be rotatably adjusted relative to the first surface (¶ 0142), the transducer configured to transmit signals to and/or receive signals from a target portion of the recipient's body along a line extending through the opening (along axis of 50) (¶ 0036).
Regarding claim 21, Badih-Grey discloses the apparatus of claim 19, wherein the line is coincident with a center longitudinal axis of an active component of the transducer (see Figs. 10, 11).
Regarding claim 22, Badih-Grey discloses the apparatus of claim 21, wherein the transducer comprises at least one of: actuator, microphone (see Abstract), optical sensor, magnetic induction sensor.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Badih in view of Grey in view of Vujanic (US 6491644).
Regarding claim 4, Badih-Grey discloses the apparatus of claim 1, wherein the transducer is a microphone configured to sense motion of the target portion of the recipient's body (¶ 0036), the microphone comprising an optical sensor or a magnetic induction sensor.
Badih-Grey is not relied upon to disclose the microphone comprising an optical sensor or a magnetic induction sensor.
In a similar field of endeavor, Vujanic discloses the microphone comprising an optical sensor or a magnetic induction sensor (bstx10, paragraph spanning cols. 2-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: the microphone comprising an optical sensor or a magnetic induction sensor, the motivation being to ensure that any attenuation of the vibrations of such vibration transmission parts capable of being excited to vibrations will be reliably excluded and/or the use of optical sensors will allow the use of extremely small-structured sensors (Vujanic - bstx10, paragraph spanning cols. 2-3).
Claim(s) 8-10, 24-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Badih in view of Grey in view of Muller et al. (US 2007/0249890).
Regarding claim 8, Badih-Grey discloses the apparatus of claim 1.
Badih-Grey is not relied upon to disclose wherein the fixation element further comprises a portion in mechanical communication with the socket, the portion configured to controllably adjust a position and/or an orientation of the socket relative to a target portion of the recipient's body during implantation of the apparatus.
In a similar field of endeavor, Muller discloses wherein the fixation element further comprises a portion (28) in mechanical communication with the socket (20, which is the equivalent of where the socket of Badih would be located), the portion configured to controllably adjust a position and/or an orientation of the socket relative to a target portion of the recipient's body during implantation of the apparatus (Fig. 3 and ¶ 0049).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: wherein the fixation element further comprises a portion in mechanical communication with the socket, the portion configured to controllably adjust a position and/or an orientation of the socket relative to a target portion of the recipient's body during implantation of the apparatus, the motivation being to allow axial movement (Muller - ¶ 0049).
Regarding claim 9, Badih-Grey-Muller discloses the apparatus of claim 8, and Muller discloses wherein the portion comprises a slot (28) and a protrusion (34) configured to mate with and controllably slide along the slot (Fig. 3).
The teachings of Muller relied upon above are combinable with Badih-Grey-Muller for the same reasons set forth above in the claim 8 rejection.
Regarding claim 10, Badih-Grey-Muller discloses the apparatus of claim 8, and Muller discloses wherein the portion comprises a first screw thread (28) in mechanical communication with the socket and a second screw thread (34), the first screw thread configured to be screwed along the second screw thread (Fig. 3).
The teachings of Muller relied upon above are combinable with Badih-Grey-Muller for the same reasons set forth above in the claim 8 rejection.
Regarding claim 24, Badih-Grey discloses the apparatus of claim 19.
Badih-Grey is not relied upon to disclose wherein the second portion comprises a slot and the socket comprises a protrusion configured to mate with and to be controllably slid along the slot.
In a similar field of endeavor, Muller discloses wherein the second portion comprises a slot (28) and the socket comprises a protrusion (34) configured to mate with and to be controllably slid along the slot (Fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: wherein the second portion comprises a slot and the socket comprises a protrusion configured to mate with and to be controllably slid along the slot, the motivation being to allow axial movement (Muller - ¶ 0049).
Regarding claim 25, Badih-Grey discloses the apparatus of claim 19.
Badih-Grey is not relied upon to disclose wherein the second portion comprises a protrusion and the socket comprises a slot configured to mate with and to be controllably slid along the protrusion.
In a similar field of endeavor, Muller discloses wherein the second portion comprises a protrusion (34) and the socket comprises a slot (28) configured to mate with and to be controllably slid along the protrusion (Fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: wherein the second portion comprises a protrusion and the socket comprises a slot configured to mate with and to be controllably slid along the protrusion, the motivation being to allow axial movement (Muller - ¶ 0049).
Regarding claim 26, Badih-Grey discloses the apparatus of claim 25.
Badih-Grey is not relied upon to disclose further comprising a clamp configured to press against the second portion to keep the socket in place.
In a similar field of endeavor, Muller discloses further comprising a clamp (30) configured to press against the second portion to keep the socket in place (¶ 0049).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: further comprising a clamp configured to press against the second portion to keep the socket in place, the motivation being to allow axial movement (Muller - ¶ 0049).
Regarding claim 27, Badih-Grey discloses the apparatus of claim 19.
Badih-Grey is not relied upon to disclose wherein the second portion comprises:
a first substantially cylindrical portion in mechanical communication with the socket and having a first screw thread; and
a second substantially cylindrical portion in mechanical communication with the first portion and having a second screw thread configured to mate with the first screw thread such that rotation of the first substantially cylindrical portion relative to the second substantially cylindrical portion linearly adjusts the position of the socket.
In a similar field of endeavor, Muller discloses wherein the second portion comprises:
a first substantially cylindrical portion (28) in mechanical communication with the socket and having a first screw thread (thread of 28); and
a second substantially cylindrical portion (34) in mechanical communication with the first portion and having a second screw thread (thread of 34) configured to mate with the first screw thread such that rotation of the first substantially cylindrical portion relative to the second substantially cylindrical portion linearly adjusts the position of the socket (¶ 0049).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: wherein the second portion comprises:
a first substantially cylindrical portion in mechanical communication with the socket and having a first screw thread; and
a second substantially cylindrical portion in mechanical communication with the first portion and having a second screw thread configured to mate with the first screw thread such that rotation of the first substantially cylindrical portion relative to the second substantially cylindrical portion linearly adjusts the position of the socket,
the motivation being to allow axial movement (Muller - ¶ 0049).
Regarding claim 28, Badih-Grey-Muller discloses the apparatus of claim 27, and Muller discloses wherein the first screw thread is at an outside surface of the first substantially cylindrical portion and the second screw thread is at an inside surface of the second substantially cylindrical portion (see Fig. 3).
The teachings of Muller relied upon above are combinable with Badih-Grey-Muller for the same reasons set forth above in the claim 27 rejection.
Regarding claim 29, Badih-Grey-Muller discloses the apparatus of claim 27, wherein the first screw thread is at an inside surface of the first substantially cylindrical portion and the second screw thread is at an outside surface of the second substantially cylindrical portion (see Fig. 3).
The teachings of Muller relied upon above are combinable with Badih-Grey-Muller for the same reasons set forth above in the claim 27 rejection.
Regarding claim 30, Badih-Grey-Muller discloses the apparatus of claim 27, and Muller discloses wherein the second portion comprises at least one locking screw configured to keep the first and second substantially cylindrical portions in place relative to one another (screw of the kind in Fig. 3 stays in place when not manipulated, and thus is considered to lock).
The teachings of Muller relied upon above are combinable with Badih-Grey-Muller for the same reasons set forth above in the claim 27 rejection.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Badih in view of Grey in view of Muller in view of Kasic et al. (US 6293903).
Regarding claim 11, Badih-Grey-Muller discloses the apparatus of claim 8.
Badih-Grey-Muller is not relied upon to disclose wherein the portion is configured to be plastically bent such that an orifice of the socket is coarsely pointed towards a target portion of the recipient's body.
In a similar field of endeavor, Kasic discloses wherein the portion is configured to be plastically bent such that an orifice of the socket is coarsely pointed towards a target portion of the recipient's body (bstx14, col. 2, lines 44-57: plastic) (detx4, col. 4, lines 50-64: bendable).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: wherein the portion is configured to be plastically bent such that an orifice of the socket is coarsely pointed towards a target portion of the recipient's body, the motivation being provide stability advantages (Kasic - detx4, col. 4, lines 50-64).
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Badih in view of Grey in view of Kasic.
Regarding claim 23, Badih-Grey discloses the apparatus of claim 19.
Badih-Grey is not relied upon to disclose wherein the second portion is configured to be plastically deformed.
In a similar field of endeavor, Kasic discloses wherein the second portion is configured to be plastically deformed (bstx14, col. 2, lines 44-57: plastic) (detx4, col. 4, lines 50-64: bendable).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: wherein the second portion is configured to be plastically deformed, the motivation being provide stability advantages (Kasic - detx4, col. 4, lines 50-64).
Claim(s) 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Badih in view of Grey in view of Clair et al. (WO 2013/023693).
Regarding claim 12, Badih discloses a method comprising:
affixing a mounting assembly (Fig. 4: 30) to a location within a recipient's body (¶ 0085), the mounting assembly comprising a receptacle (Fig. 10: defined by inner surface of 30) configured to receive a transducer assembly (Fig. 10: at least 20 and 50), the receptacle comprising a substantially concave surface and an opening extending from the substantially concave surface through the receptacle (Fig. 10: see curved inner surface of 30 and opening on righthand side of 30), the substantially concave surface being substantially circular or spherical (see Fig. 10);
inserting the transducer assembly into the receptacle with a substantially convex surface (20) of the transducer assembly engaging the substantially concave surface of the receptacle (see Fig. 10), the substantially convex surface being substantially circular or spherical (see Fig. 10);
adjusting an orientation of the substantially convex surface relative to the substantially concave surface (¶ 0142: rotating through angles A1 and A2); and
affixing the transducer assembly and the receptacle to one another (see Fig. 10).
Badih is not relied upon to disclose wherein the one of the substantially concave surface and the substantially convex surface comprises a plurality of protrusions and the other of the substantially concave surface and the substantially convex surface comprises a plurality of recesses configured to mate with the plurality of protrusions such that the transducer assembly is positionable at a plurality of discrete angular orientations relative to the receptacle.
In a similar field of endeavor, Grey discloses wherein the socket comprises a substantially circularly or spherically curved first surface portion (curved surface of 130) and the surface of the ball comprises a substantially circularly or spherically curved second surface portion (curved surface of 110) (see Fig. 1), the second surface portion configured to be in mechanical communication with and controllably positioned relative to the first surface portion (Fig. 5A), wherein one of the first surface portion and the second surface portion comprises a plurality of protrusions (138) (detx13, col. 8, lines 43-55) and the other of the first surface portion and the second surface portion comprises a plurality of recesses (112) configured to mate with the plurality of protrusions such that the center longitudinal axis is positionable at a plurality of discrete angular orientations relative to the socket (detx13, col. 8, lines 43-55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first surface portion to have recesses and the second surface portion to have protrusions as taught by Grey,
which would result in: wherein the one of the substantially concave surface and the substantially convex surface comprises a plurality of protrusions and the other of the substantially concave surface and the substantially convex surface comprises a plurality of recesses configured to mate with the plurality of protrusions such that the transducer assembly is positionable at a plurality of discrete angular orientations relative to the receptacle,
the motivation being to: include means for small, precise and reproducible reorientations (Grey - bstx14, col. 1, lines 49-50).
Badih-Grey is not relied upon to disclose adjusting a position of the receptacle such that the opening substantially faces a target portion of the recipient's body.
In a similar field of endeavor, Clair discloses adjusting a position (via 64) of the receptacle (20) such that the opening (in 20) substantially faces a target portion of the recipient's body (see Fig. 3) (paragraph spanning pages 5-6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: adjusting a position of the receptacle such that the opening substantially faces a target portion of the recipient's body, the motivation being to: provide additional degrees of freedom, whereby more flexible adjustment of the actuator can be achieved and, in particular, the risk of damages to the patient’s tissue during implantation can be reduced (Clair - page 2, lines 12-17).
Regarding claim 13, Badih-Grey-Clair discloses the method of claim 12, and Badih discloses wherein the transducer assembly comprises an elongate element (50 and 60), said inserting the transducer assembly into the receptacle comprises extending the elongate assembly through the opening (¶ 0143), and said adjusting the orientation comprises pointing the elongate element towards the target portion of the recipient's body (¶ 0142-0143 and see arrows in Figs. 10-11a).
Regarding claim 14, Badih-Grey-Clair discloses the method of claim 13, and Badih discloses further comprising affixing a distal end of the elongate element to the target portion of the recipient's body such that mechanical vibrations generated by the transducer assembly propagate along the elongate element between the transducer assembly and the target portion of the recipient's body (¶ 0036).
Regarding claim 15, Badih-Grey-Clair discloses the method of claim 12, wherein affixing the transducer assembly and the receptacle to one another comprises clamping the receptacle to the transducer assembly (¶ 0039).
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Badih in view of Grey in view of Clair in view of Muller.
Regarding claim 16, Badih-Grey-Clair discloses the method of claim 12.
Badih-Grey-Clair is not relied upon to disclose wherein affixing the transducer assembly and the receptacle to one another comprises applying an adhesive to the transducer assembly and the receptacle.
In a similar field of endeavor, Muller discloses wherein affixing the transducer assembly and the receptacle to one another comprises applying an adhesive to the transducer assembly and the receptacle (¶ 0058).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: wherein affixing the transducer assembly and the receptacle to one another comprises applying an adhesive to the transducer assembly and the receptacle, the motivation being to: provide fixed interconnection of the parts (Muller - ¶ 0058).
Regarding claim 17, Badih-Grey-Clair discloses the method of claim 12.
Badih-Grey-Clair is not relied upon to disclose further comprises linearly adjusting a position of the receptacle to controllably modify a distance between the receptacle and the target portion of the recipient's body.
In a similar field of endeavor, Muller discloses further comprises linearly adjusting (via 28 and 34) a position of the receptacle to controllably modify a distance between the receptacle and the target portion of the recipient's body (¶ 0049).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: further comprises linearly adjusting a position of the receptacle to controllably modify a distance between the receptacle and the target portion of the recipient's body, the motivation being to allow axial movement (Muller - ¶ 0049).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Badih in view of Grey in view of Clair in view of Brillhart et al. (US 2002/0035308).
Regarding claim 18, Badih-Grey-Clair discloses the method of claim 12.
Badih-Grey-Clair is not relied upon to disclose wherein said adjusting the position of the receptacle comprises placing a dummy transducer assembly within the receptacle, and the method further comprises replacing the dummy transducer assembly with an operational transducer assembly.
In a similar field of endeavor, Brillhart discloses wherein said adjusting the position of the receptacle comprises placing a dummy transducer assembly within the receptacle, and the method further comprises replacing the dummy transducer assembly with an operational transducer assembly (¶ 0060).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: wherein said adjusting the position of the receptacle comprises placing a dummy transducer assembly within the receptacle, and the method further comprises replacing the dummy transducer assembly with an operational transducer assembly, the motivation being to presize the appropriate sized transducer (Brillhart - ¶ 0060).
Response to Arguments
Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive.
Applicant argues (Remarks: page 2) that:
“With regard to the "same field of endeavor" prong, claim 1 recites an apparatus configured to be implanted within a recipient's body. In contrast, Grey discloses a mechanical linkage system used in disparate, non-implantable contexts (e.g., toys, furniture, hardware, sporting goods, prosthetics) and nowhere does Grey disclose or suggest that the mechanical linkage is implantable within living tissue. Therefore, Grey is not in the same field of endeavor as the claimed invention.”
In response to applicant's argument that Grey is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the inventor’s and Grey’s endeavors are both in a similar field of ball-and-socket joints. Additionally, the living tissue does not interact with the surfaces of the ball-and-socket joint of Badih and thus does not affect the operation of the ball-and-socket joint in any significantly notable way, so protrusions/recesses being added to the ball-and-socket joint surfaces in light of the teachings of Grey would not be affected by the living tissue in any significant way as to make it unimplementable in the living tissue.
Applicant argues (Remarks: page 2-3) that:
“With regard to the "reasonably pertinent" prong, M.P.E.P. § 2141.01(a) explains that "[a] reference outside of the field of endeavor [of the claimed invention] is reasonably pertinent if a person of ordinary skill would have consulted it and applied its teachings when faced with the problem that the inventor was trying to solve" (citing Airbus S.A.S. V. Firepass Corp., 941 F.3d 1374, 1380-82 (Fed. Cir. 2019)) and that "[i]n order to support a determination that a reference is reasonably pertinent, it may be appropriate to include a statement of the examiner's understanding of the problem" and "[i]t may be necessary for the examiner to explain why an inventor seeking to solve the identified problem would have looked to the reference in an attempt to find a solution to the problem (i.e., factual reasons why the prior art is pertinent to the identified problem." See Donner Tech., LLC V. Pro Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020 ("Thus, when addressing whether a reference is analogous art with respect to the claimed invention under a reasonable-pertinence theory, the problems to which both relate must be identified and compared" (emphasis added)).
The Office Action does not provide any rationale for asserting that Grey is reasonably pertinent to the claimed invention recited by claim 1. Thus, Applicant submits that the Office Action has not provided a sufficient rationale for Grey being analogous art to the claimed invention recited by claim 1.”
In response to applicant's argument that Grey is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Grey’s problem to be solved of how to give a ball-and-socket joint small, precise and reproducible reorientations (Grey - bstx14, col. 1, lines 49-50) is in line with the claimed invention’s problem to be solved of how to give a ball-and-socket joint discrete rotational positions (instant application - ¶ 0044, 0048). The motivation statement found at the end of the claim 1 rejection covers this, stating “the motivation being to: include means for small, precise and reproducible reorientations (Grey - bstx14, col. 1, lines 49-50)”.
Thus, the above-mentioned motivation is rationale that Grey is reasonably pertinent to the claimed invention.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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.
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/MARK FISCHER/Primary Examiner, Art Unit 2692