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 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.
Claim 7 is 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.
Claim 7 depends on claim 6, “the cavity of the center gear” lacks antecedent basis. Claim 6 introduces “a cavity of the base”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claim 1 of copending application No. 18/454,472. Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 1 of the copending application is considered broader than at least the current independent claims claiming:
PNG
media_image1.png
138
563
media_image1.png
Greyscale
It is noted that the copending claim does not claim a center gear, and, is therefore broader. The functional language of “the neck is expandible and collapsible” is interpreted as being equivalent to “to adjust a length of the neck”. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 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 1-3, 8-9, 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moore et al (WO 2019/057698).
Moore et al teaches a trial femoral assembly comprising:
PNG
media_image2.png
556
485
media_image2.png
Greyscale
a broach 130 configured to couple to a femoral shaft (i.e. of a human);
a neck 100 removably coupled to the broach (as shown) and that includes a center gear (124 with or without 112) configured to rotate about a longitudinal axis of the neck 108 to adjust a length of the neck (see at least the abstract and page 7, lines 4-31); and
a head removably coupled to the neck (see at least the abstract and page 6, lines 10-16) and configured for insertion into a hip joint.
PNG
media_image3.png
620
433
media_image3.png
Greyscale
Claim 2, wherein the center gear is configured to rotate about the longitudinal axis of the neck to adjust the length of the neck such that a distance between the broach and the head is increased or decreased as indicated for claim 1 above.
Claim 3, wherein the neck 100 further includes: a base 102 configured to removably couple to the broach; and a trunnion 106 configured to removably couple to the head, wherein the center gear is located between the base and the trunnion as shown in the figures.
Claim 6, wherein the neck further includes a pin 114 that is fixedly coupled to the trunnion 106 and extends into a cavity of the base (depicted) to maintain a rotational position between the trunnion and the base with respect to the longitudinal axis.
Claim 8, a neck of a trial femoral assembly comprising:
a base 102 configured to removably couple to a broach 130of the trial femoral assembly and that defines a base cavity therein;
a trunnion 106 configured to removably couple to a head (see at least the abstract and page 6, lines 10-16) of the trial femoral assembly and that defines a trunnion cavity therein;
a pin (112 with or without 114) fixedly coupled to the trunnion; and
a center gear 124 that defines a center gear cavity therein (self-evident), wherein the pin is configured to extend into the center gear cavity and into the base cavity (depicted and expends distally), and the center gear is configured to rotate about a longitudinal axis of the neck to translate at least one of the center gear and the trunnion along the longitudinal axis (see at least the abstract and page 7, lines 4-31).
Claim 9, rotation of the center gear about the longitudinal axis increases or decreases a distance between the trunnion and the base; see at least the abstract and page 7, lines 4-31.
Claim 16, relatively, both the center gear and the trunnion are configured to translate along the longitudinal axis based upon rotation of the center gear about the longitudinal axis.
Claim 17, a trial femoral system, comprising:
a trial femoral assembly that includes:
a broach 130 configured to be coupled to a (patient’s) femoral shaft;
a neck 100 removably coupled to the broach and that includes a center gear (124 with or without 112) configured to rotate about a longitudinal axis 108 of the neck to adjust a length of the neck; and
a head removably coupled to the neck (see at least the abstract and page 6, lines 10-16).
Referring to figure 3 and at least page 7, lines 25-31, a driver 180 configured to engage the neck to adjust the length of the neck, wherein the driver includes: a driveshaft (such as the motor shaft or one of the inherent tool shaft(s)) configured to rotate about a longitudinal axis of the driveshaft; and a mating portion (at least teeth of tool) configured to engage the center gear and rotate the center gear about the longitudinal axis of the neck based upon rotation of the driveshaft about the longitudinal axis of the driveshaft.
Allowable Subject Matter
Claims 4-5, 10-15 and 18-20 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.
Claim 7 maybe allowable upon overcoming the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
The following is an examiner’s statement of reasons for allowance: Moore et al (WO 2019/057698) is considered the closes prior art of record, however, fails to teach of combination of independent claim, and any intervening claim, and:
Claim 4, wherein the trunnion defines a cavity therein and a portion of the center gear is located within the cavity of the trunnion.
Claim 7, (currently rejected under 112) the trial femoral assembly of claim 6, wherein the center gear includes internal threading located within the cavity of the center gear that engages threading of the base such that rotation of the center gear about the longitudinal axis translates the center gear along the longitudinal axis to adjust the length of the neck.
Claim 10, the neck of claim 8, wherein the center gear includes: external threading configured to engage threading of the trunnion; internal threading configured to engage threading of the base; and teeth, wherein a driver is configured to engage the teeth to rotate the center gear about the longitudinal axis.
Claim 18, wherein the mating portion includes: a fork that is configured to engage a groove of the center gear to removably couple the driver to the neck; and a gear comprising teeth that are configured to engage teeth of the center gear.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCE EDWARD SNOW whose telephone number is (571)272-4759. The examiner can normally be reached 7:30 am - 5:00 pm Monday through Thursday.
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, Melanie Tyson can be reached at 5712729062. 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.
/BRUCE E SNOW/Primary Examiner, Art Unit 3774
Prosecution Insights