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 .
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.
Election/Restrictions
Examiner acknowledges applicant’s intent to elect Figures 36-38 for examination. Therefore, the species has been modified as follows:
Figs. 26-28, including a stemless portion 314, a liner 330, an insert 320, and a fastener portion 324.
Figs. 36-38, including a stemless portion 410 and a liner 422, the stemless portion including a plurality of slots/openings 418 to accept various devices for cutting bone, such as a saw blade, burr, or other suitable cutting instrument.
Figs. 39-40, including a stemless portion 438 and a liner 446 having a plurality of holes 452 shaped to allow for passage of sutures.
Figs. 54-57, including a stemless portion 614, a liner 628 having a plurality of slots 654 to allow passage for a device to apply compression to the liner, an insert 630, and a fastener portion 634.
Applicant’s election of Species 2, Figs. 36-38, in the reply filed on 7/6/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 178-180 and 182-185 require an insert portion adapted to accept a fastener which is encompassed by non-elected species 1 and 4. Further, claim 195 requires the distal portion of the distal end of the stemless portion is flat, wherein elected Figs. 36-38 encompasses a convex distal end. Finally, claim 203 requires the plurality of fins has slots or holes for sutures which is encompassed by non-elected species 4. Therefore, claims 178-180, 182-185, 195, and 203 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification fails to provide antecedent basis for the proximal end of the stemless portion including a pair of circumferentially oriented slots, each slot having a proximally facing recessed portion circumferentially adjacent to a portion having a proximal overhang, the distal end of the liner portion includes a pair of protruding features that is accommodated by the pair of circumferentially oriented slots, and the liner portion is attached to the proximal end of the stemless portion via a push and turn connection between the pair of protruding features on the distal end of the liner portion and the pair of circumferentially oriented slots on the proximal end of the stemless portion.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 192-194, and 197-202 are rejected under 35 U.S.C. 103 as being unpatentable over Deransart et al. (US 2021/0307918) in view of Beguin et al. (US 2006/0200249).
Regarding claim 1, Deransart discloses a humeral component of a prosthetic assembly for use in repairing or reconstructing a joint between a humerus and a scapula by cooperating with a ball portion of a glenoid component that is adapted for attachment to the scapula (Fig. 6B), said humeral component comprising a stemless portion (104) having a proximal end (292) and a distal end (296; Fig. 6C), said distal end of said stemless portion being adapted for insertion into the humerus (Figs. 6B-6C), the distal end of the stemless portion including a plurality of fins (306) on the distal end of the stemless portion oriented longitudinally from a proximal portion of the distal end to a distal portion of the distal end (Fig. 6C), and a liner portion (180) that is adapted to receive the ball portion of the glenoid component (see Fig. 6B), said liner portion being attached to the proximal end of the stemless portion (see Fig. 6B).
Deransart fails to disclose each of the plurality of fins is provided with at least one serrated tooth along its surface. Beguin also discloses a humeral component of a prosthetic assembly comprising a plurality of fins (5; see Figs. 10-11). Beguin teaches each of the plurality of fins is provided with at least one serrated tooth (15) along its surface (see Figs. 11 and 19). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided each of Deransart’s fins with at least one serrated tooth along its surface as taught by Beguin. Doing so would provide a means to cooperate with spongy bone of the humerus, thereby enhancing anchoring (see [0034]).
Regarding claim 192, Deransart as modified discloses wherein the plurality of fins (306) are of equal length (Fig. 6C).
Regarding claim 193, discloses wherein the plurality of fins (306) are arranged equidistant from one another (Fig. 6C).
Regarding claim 194, discloses wherein the proximal portion of the distal end of the stemless portion (104) is curved (the proximal portion of 296 is cylindrical which is curved circumferentially; see Fig. 6C).
Regarding claim 197, discloses wherein the proximal portion of the distal end of the stemless portion (104) is cylindrical (the proximal portion of 296 is cylindrical; see Fig. 6C).
Regarding claim 198, discloses wherein the proximal end (292) of the stemless portion (104) includes a pair of circumferentially oriented slots (264), each slot having a proximally facing recessed portion circumferentially adjacent to a portion having a proximal overhang (see Figs. 6E-6F).
Regarding claim 199, discloses wherein the distal end of the liner portion (180) includes a pair of protruding features (189, 191) that is accommodated by the pair of circumferentially oriented slots (264; see description of similar embodiment in [0105]).
Regarding claim 200, discloses wherein the liner portion (180) is attached to the proximal end of the stemless portion (104) via a push and turn connection between the pair of protruding features (189, 191) on the distal end of the liner portion (180) and the pair of circumferentially oriented slots (264) on the proximal end of the stemless portion (in order to achieve alignment between the slots and protruding features).
Regarding claim 201, discloses wherein the stemless portion (104) includes a plurality of holes (277) for sutures (277 are holes capable of receiving sutures, see Fig. 6C).
Regarding claim 202, discloses wherein the stemless portion (104) has a plurality of slots (277) to allow for cutting of bone along the fins (see [0129]).
Claim 196 is rejected under 35 U.S.C. 103 as being unpatentable over Deransart et al. in view of Beguin et al. as applied to claim 1 above, and further in view of Lyle (US 5,061,286).
Deransart in view of Beguin fails to disclose the distal surface of the stemless portion includes an osteogenic coating. Lyle also discloses a bone prosthesis (Figs. 1-5). Lyle teaches including an osteogenic coating on the prosthesis (see col. 2, lines 23-29). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have included an osteogenic coating as taught by Lyle on the distal surface of Deransart’s stemless portion. Doing so would accelerate new bone growth, thereby enhancing anchoring (see col. 2, lines 29-43).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELANIE TYSON whose telephone number is (571)272-9062. The examiner can normally be reached M-F 8:00 AM - 4:00 PM (ET).
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/MELANIE R TYSON/Supervisory Patent Examiner, Art Unit 3774
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