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 .
Response to Amendment
This action is entered in response to Applicant's amendment and reply of 10/29/25. The claims 1-30 are pending. The claims 1 has been amended. Claims 18-30 are withdrawn.
Response to Arguments
Applicant’s arguments, filed 10/29/25 with respect to the rejections of claims 1-9 and 11-17 under 35 U.S.C. 102(a)(1) as being anticipated by Deruntz (US2010/0114323) have been fully considered and the amendments do not overcome the previous rejection. Applicant recites “independent claim 1 has been amended to recite that the previously added limitations “wherein the longitudinal axis of the passageway of the support structure is an intramedullary axis of the first bone when the support structure is received in the cavity of the first bone” is with the first end surface flush with the surface of the first bone. Examiner makes notice, this is not what is required by the claim, since the claim still recites the conditional statement “wherein the exterior of the support structure is configured to be received in the cavity of the first bone such that the first end surface is flush with or beneath a surface of the first bone”. Where the claim is interpreted as the variant require the support structure “configured to be received in the cavity of the first bone such that the first end surface is beneath a surface of the first bone”. Applicant’s arguments with respect to the variant of the of the support structure being flush with a surface of the first bone have not been considered; since the claim has been interpreted with the variant of the support structure being beneath a surface of the first bone. Therefore, the rejection has been maintained.
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.
Claims 1-9 and 11-17 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deruntz (US2010/0114323).
Regarding claim 1, Deruntz discloses a prosthetic system for providing motion between a first bone and a second bone of a joint ([0070]), the system comprising:
a support structure (24) having a first end surface (surface of first end 50), a second end surface (surface of second end 52), an exterior surface (58) extending from the first end surface to the second end surface (see Fig. 3), and an inner surface (inner surface 54) defining a passageway (channel 56) extending from the first end surface to the second end surface (see Fig. 5), wherein the exterior surface of the support structure is configured to be received in a cavity of the first bone such that the first end surface is beneath a surface of the first bone ([0014], see Fig. 15, where 30 is intended to interface with surface of a bone and the first end surface is capable of being beneath the surface of the first bone by how its positioning, [0063]), wherein the first end surface is within an axial plane defined by the first end surface and an outermost edge of the first end surface (see annotated Fig. 8), and wherein a longitudinal axis (annotated Fig. 8) of the passageway of the support structure is offset with respect to a geometric center point of the axial plane (the sleeve 24 is asymmetric, [0071]; see annotated Fig. 8),
wherein the longitudinal axis of the passageway of the support structure is an intramedullary axis of the first bone when the support structure is received in the cavity of the first bone when the support structure is received in the cavity of the first bone when the support structure is received in the cavity of the first bone (the longitudinal axis as shown in annotated Fig. 8 is capable of being the same as intramedullary axis of the bone depending on how it is implanted and the shape of the bone, where the support structure is capable of being implanted in the cavity of the first bone such that the first end surface is at least partially beneath the surface of the first bone and having the intramedullary axis and longitudinal passageway axis aligned).
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Regarding claim 2, Deruntz discloses the prosthetic system of claim 1 wherein: the first bone is the tibia, and the joint is the knee ([0070]).
Regarding claim 3, Deruntz discloses the prosthetic system of claim 2 further comprising:
a tibial implant (30/32/36) having a body (30/32) and a stem (36, see Fig. 15) extending away from the body (see Fig. 15), wherein the stem is positioned within the passageway of the support structure ([0065], see Fig. 15).
Regarding claim 4, Deruntz discloses the prosthetic system of claim 3 wherein: the body of the tibial implant is a tibial tray (30, [0065]).
Regarding claim 5, Deruntz discloses the prosthetic system of claim 1 wherein: the first bone is the femur (the prosthetic can be used on the femoral or tibial side, [0070]), and the joint is the knee.
Regarding claim 6, Deruntz discloses the prosthetic system of claim 1 wherein: the longitudinal axis of the passageway of the support structure is angled at an oblique angle with respect to a normal line to the axial plane (where the longitudinal axis is interpreted as slightly angled through the passageway, see annotated Fig. 8).
Regarding claim 7, Deruntz discloses the prosthetic system of claim 1 wherein:
the intramedullary axis represents a center of an intramedullary canal in the first bone (the intramedullary axis is capable of being at the center of an intramedullary canal), and
the longitudinal axis of the passageway of the support structure includes a first intersection point (see annotated Fig. 8-2) and a second intersection point (see annotated Fig. 8-2), the first intersection point being defined by a first intersection of an inertial axis (inertial axis is interpreted as an axis down the center of the weight of the bone) of the first bone with a first reference axial plane (where this plane is interpreted as a plane through the inertial axis as shown in annotated Fig. 8-2) located at a first distance (distance from first end 50 to the first axial plane, see annotated Fig. 8-2) from an end surface (surface of first end 50) of the first bone before resection, and the second intersection point being defined by a second intersection (see annotated Fig. 8-2) of the inertial axis of the first bone with a second reference axial plane (where this plane is interpreted as another plane through the inertial axis as shown in annotated Fig. 8-2) located at a second distance from the end surface of the first bone before resection (distance from first end 50 to the second axial plane, see annotated Fig. 8-2), the first distance and the second distance being different (see annotated Fig. 8-2).
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Regarding claim 8, Deruntz discloses the prosthetic system of claim 1 further comprising: a prosthetic implant (30/32/36) having a body (30/32) and a stem (36) extending away from the body (see Fig. 15), wherein the stem is positioned within the passageway of the support structure ([0065], see Fig. 15).
Regarding claim 9, Deruntz discloses the prosthetic system of claim 1 wherein: the exterior surface of the support structure is stepped ([0066]).
Regarding claim 11, Deruntz discloses the prosthetic system of claim 1 wherein: the exterior surface of the support structure is roughened (where the steps are interpreted as making a roughened surface, [0066]).
Regarding claim 12, Deruntz discloses the prosthetic system of claim 1 wherein: the exterior surface of the support structure comprises a porous ingrowth material ([0081]).
Regarding claim 13, Deruntz discloses the prosthetic system of claim 1 wherein: the support structure has a wall between the exterior surface and the inner surface, and the wall includes one or more notches extending away from the first end surface (notches are interpreted as the steps, [0066], see Fig. 8).
Regarding claim 14, Deruntz discloses the prosthetic system of claim 1 wherein: the support structure has a wall between the exterior surface and the inner surface, and the wall includes one or more notches extending away from the second end surface (notches are interpreted as the steps, [0066], see Fig. 8).
Regarding claim 15, Deruntz discloses the prosthetic system of claim 1 wherein: the support structure has a wall between the exterior surface and the inner surface, and an anterior section of the wall has reduced thickness compared to another section of the wall adjacent to the anterior section of the wall (the dimension of the sections of the terrace decrease from the first end 50 to the second end 52, [0070], see Fig. 8).
Regarding claim 16, Deruntz discloses the prosthetic system of claim 1 wherein: the outermost edge of the first end surface is a perimeter of the first end surface (see Figs. 5, 6 that show the perimeter of first end 50).
Regarding claim 17, Deruntz discloses the prosthetic system of claim 1 wherein: the first end surface includes one or more slots extending from the passageway (slots of the steps on the exterior wall, [0066]), and each slot is dimensioned to receive a stabilization arm of a stem of a prosthetic implant (capable of receiving a stabilization arm, where the steps are intended to mate with a bone and is capable of receiving a stabilization arm, [0013]).
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 of this title, 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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Deruntz (US2010/0114323) in view of Trieu (US2014/0031934).
Regarding claim 10, Deruntz discloses the prosthetic system of claim 1; yet, is silent regarding wherein: the exterior surface of the support structure is smooth. Trieu teaches a sacro-illac implant that engages a cavity in the bone (see Abstract), wherein the implant 212 has an outer surface that engages with bone and may be substantially smooth, textured, undulating, and rough ([0086]). It would have been obvious to one having ordinary skill in the art at the effective filing date of the application to have modified the exterior surface of the support structure to be smooth, as Trieu teaches that a smooth outer surface is an obvious alternative to a rough outer surface.
Therefore, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have the exterior surface of the support structure be smooth, since applicant has not disclosed that having the smooth surface provides an advantage, solves any stated problem, or is used for any particular purpose and it appears that the device would perform equally well with other designs as stated in the instant specification Paragraph [0022] and further stated in Trieu ([0086]).
Furthermore, absent a teaching as to criticality of the smooth surface, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975).
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 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 MIKAIL A MANNAN whose telephone number is (571)270-1879. The examiner can normally be reached M-F 10-6.
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/M.A.M/Examiner, Art Unit 3774
/THOMAS C BARRETT/SPE, Art Unit 3799