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 .
Election/Restrictions
Applicant's election with traverse of the invention of Invention I and Species A in the reply filed 7/2/2026, is acknowledged.
Applicant's traversal is on the grounds that search and examination of the entire application can be made without serious burden to the Examiner. Applicant's traversal has been carefully considered, but fails to establish error in the propriety of the present requirement for restriction and election. Though Applicant asserts that examination of all pending claims would not pose an undue burden on the Examiner, such is not an accurate assertion in light of the disparate nature of the presently claimed subject matter as noted in the Requirement for Restriction of 6/11/2026.
Consideration of the plurality of inventions that Applicant has claimed would significantly compromise and preclude a quality examination on the merits. Furthermore, execution of a search encompassing the entirety of Applicant's inventions and species would not only constitute an undue burden on the Examiner, but consideration of the findings of such a search in accordance with the requirements of the law under 35 U.S.C. §§101,102, 103 and 112 would be unduly onerous.
Moreover, it is further noted that a comprehensive search for the presently claimed subject matter is not solely limited to a search of the classes and subclasses in which they are classified. Therefore, it is obvious that a comprehensive search of the copious amounts of patent and non-patent literature for each of the patentably distinct inventions and their permutations presently claimed would necessarily place an undue burden on the Examiner.
Therefore, for the reasons above and those made of record in the Requirement for Restriction of 6/11/2026, the restriction requirement is deemed proper and is made FINAL.
Claims 18-20 are withdrawn from further consideration pursuant to 37 C.F.R. 1.142(b), as being to non-elected inventions, there being no allowable generic or linking claim.
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.
Claim(s) 1-5, 7-13, and 15-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brunnarius et al. (Pub. No.: US 2010/0274359 A1; hereinafter “Brunnarius”).
Brunnarius discloses the following regarding claim 1: an implant, comprising: a stemless base (2, 3) having a length (Figs. 1-5) extending from a first end (upper end) to a second end (lower end), the stemless base including: a central portion (4) defining a hole (opening through element 4) for securing another component of the implant to the stemless base (Figs. 4-5; paras. 0027, 0035), a plurality of spaced apart arms (6) extending radially outwardly from the second end of the stemless base and toward the first end of the stemless base (Figs. 1-5); and a peripheral member (21) encircling the first end of the stemless base and extending outwardly of the plurality of spaced apart arms such that a diameter of the peripheral member corresponds to a width of the first end of the stemless base (Figs. 1-5), the peripheral member disposed in a concentric relationship with the hole defined by the central portion of the stemless base (Figs. 1-5), the peripheral member having a distal portion (lower portion) configured to engage bone (Fig. 4; para. 0027), wherein the width of the first end of the stemless base is greater than a width of the second end of the base (Figs. 1-5).
Brunnarius discloses the following regarding claim 2: the implant of claim 1, wherein a first portion (44) of the hole defined by the central portion is tapered (Fig. 4; para. 0027).
Brunnarius discloses the following regarding claim 3: the implant of claim 1, wherein the width of the first end of the stemless base is a maximum width of the stemless base (Figs. 1-5).
Brunnarius discloses the following regarding claim 4: the implant of claim 1, wherein each arm of the plurality of spaced apart arm includes a first lateral surface (sidewall of element 6), and a second lateral surface (opposite sidewall of element 6) that is separated from the first lateral surface by a thickness (Figs. 2, 5).
Brunnarius discloses the following regarding claim 5: the implant of claim 1, wherein an outer surface (62) of each arm of the plurality of arms curves along a length of the arm (Figs. 1-5; para. 0028).
Brunnarius discloses the following regarding claim 7: the implant of claim 1, where the plurality of arms includes three arms equally spaced from one another (e.g., Fig. 6; para. 0052).
Brunnarius discloses the following regarding claim 8: the implant of claim 7, wherein each arm of the plurality of spaced apart arms includes at least one porous surface (para. 0049).
Brunnarius discloses the following regarding claim 9: the implant of claim 8, wherein the stemless base is a monolith (Figs. 1-5).
Brunnarius discloses the following regarding claim 10: the implant of claim 9, further comprising an anatomical joint interface (22A) configured to be coupled to the stemless base (Figs. 1-5; paras. 0037-0038).
Brunnarius discloses the following regarding claim 11: the implant of claim 10, further comprising a reverse joint interface (22A’) configured to be coupled to the stemless base (Figs. 1-5; paras. 0037-0038).
Brunnarius discloses the following regarding claim 12: the implant of claim 9, wherein the central portion has a circular cross- sectional shape (Fig. 2).
Brunnarius discloses the following regarding claim 13: an implant, comprising: an artificial joint surface (22A and/or 22A’); and a stemless base (2, 3) configured to be implanted within a humerus (Figs. 1-5, where the dimensions of the device would allow it to be fully capable of being implanted within a humerus), the stemless base extending lengthwise from a first end (upper end) to a second end (lower end) and including: a central portion (4) defining a hole (opening through element 4) for securing the artificial joint surface to the stemless base (Figs. 4-5; paras. 0027, 0035), a plurality of spaced apart arms (6) coupled together at the second end of the stemless base and extending toward the first end of the stemless base (Figs. 1-5), each arm of the plurality of spaced apart arm including a first lateral surface (first sidewall of element 6), a second lateral surface (opposite, second sidewall of element 6), and an outer edge (62) defining an arcuate sloping surface (Figs. 1-5; para. 0028), and a peripheral member (21) encircling the first end of the stemless base such that the peripheral member extends outwardly from the outer edges of the plurality of spaced apart arms and has a diameter that corresponds to a width of the first end of the stemless base (Figs. 1-5), the peripheral member disposed in a concentric relationship with the hole defined by the central portion of the stemless base (Figs. 1-5), the peripheral member having a proximal portion (upper portion) including a planar surface extending radially outwardly from the hole defined by the central portion (Figs. 1, 4), wherein the width of the first end of the stemless base is greater than a width of the second end of the base (Figs. 1-5), and wherein at least a portion of each arm of the plurality of arms includes a porous material (para. 0049). Please note that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Brunnarius discloses the following regarding claim 15: the implant of claim 13, wherein the artificial joint surface includes an anatomical joint surface (22A).
Brunnarius discloses the following regarding claim 16: the implant of claim 13, wherein the artificial joint surface includes a reverse joint surface (22A’).
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) 6, 14, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brunnarius in view of Glien et al. (Pub. No.: US 2004/0225367 A1; hereinafter “Glien”).
Regarding claims 6 and 14, Brunnarius discloses the limitations of the claimed invention, as described above. However, it does not explicitly recite a radial dimension of each arm of the plurality of arms is greater adjacent to the first end of the stemless base than a radial dimension of each arm of the plurality of arms adjacent to the second end of the stemless base. Glien teaches that it is well known in the art that spaced apart arms (12) have a radial dimension of each arm being greater adjacent to the first, upper end of the stemless base than a radial dimension of each arm of the plurality of arms adjacent to the second, lower end of the stemless base (Figs. 2-3, 9, 14, 18, 21; paras. 0037-0039), for the purpose of providing the implant with a press fit to better secure the device into the implantation site. It would have been an obvious matter of design choice to one having ordinary skill in the art to modify the arms of Brunnarius to comprise the shape taught by Glien, in order to provide the implant with a press fit to better secure the device into the implantation site. Such a modification would be made with a reasonable expectation of success.
Regarding claim 17, Brunnarius discloses the limitations of the claimed invention, as described above. However, it does not explicitly recite that a distal portion of the peripheral member includes a porous surface. Glien teaches that it is well known in the art that a distal portion of the peripheral member includes a porous surface (paras. 0022-0024), for the purpose of encouraging bone tissue ingrowth. It would have obvious to one having ordinary skill in the art to modify the lower, distal portion of the peripheral member of Brunnarius to comprise a porous surface, as taught by Glien, in order to encourage bone ingrowth. Such a modification would be made with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ann Hu whose telephone number is (571) 272-6652. The examiner can normally be reached on Monday-Friday (9:00 am-5:30 pm EST).
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Jerrah Edwards, at (408) 918-7557. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/ANN HU/Primary Examiner, Art Unit 3774
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