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 .
Priority
This application claims priority from provisional application 63/285,827, filed 12/03/2021.
Status of Claims
Claims 1-52 are pending.
Claims 1, 6-12, and 14-17 have been withdrawn from consideration.
Election/Restrictions
Applicant’s election without traverse of Invention I (Apparatus) and Species 2 (Figures 2-4) in the reply filed on 07/31/2026 is acknowledged.
Information Disclosure Statement
The Information Disclosure Statement filed on 05/29/2024 and 10/27/2025 has been considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the second stem and second expanding mechanism of claim 16 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim(s) 1, 6, 8, 10, 14, 15 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jurick et al (Jurick) US 2020/0246051 A1.
1. Jurick discloses a prosthetic implant (Figures 22-25) comprising:
a body 2202 comprising a first side and a second side opposite the first side (top and bottom sides Figure 22), wherein the first side comprises a bone contact surface (top surface is fully capable of being put in contact with bone), and wherein the second side is configured to be coupled to an articulation surface (the stem allows it to be coupled to an opening in any articulation surface);
a cylindrical stem 2208 extending away from the first side of the body (Figure 22); and
an expanding mechanism 2212 positioned within the cylindrical stem (Figure 25), wherein movement of the expanding mechanism from a first position to a second position causes a maximum diameter of the cylindrical stem to change from a first maximum diameter to a second maximum diameter, and wherein the second maximum diameter is greater than the first maximum diameter [0053].
6. Jurick discloses a longitudinal axis of the cylindrical stem is parallel to the first side of the body (Figure 25).
8. Jurick discloses the cylindrical stem has a first end and a second end opposite the first end (left and right sides of 2208 Figure 25).
10. Jurick discloses the maximum diameter of the cylindrical stem occurs at either the first end or the second end (due to the tapered nature of the expanding mechanism the largest diameter is at the first end or the right side of Figure 25).
14. Jurick discloses the cylindrical stem is configured to be positioned within a channel formed in a tibia of a patient (It is noted that the claims are directed to the apparatus and not a method of using the invention, therefore this limitation is considered an intended use recitation and given limited weight, as seen in Figures 4-5 it is fully capable of being positioned within a channel in the tibia).
15. Jurick discloses the cylindrical stem is configured to be positioned within a channel formed in a talus of a patient (It is noted that the claims are directed to the apparatus and not a method of using the invention, therefore this limitation is considered an intended use recitation and given limited weight, since the forces would be similar in the ankle as in the knee the implant of Jurick is strong enough to be used within an ankle and the stem is capable of being positioned within an appropriately sized channel within any bone such as the talus).
17. Jurick discloses the expanding mechanism comprises a set screw 2212 Figure 23.
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) 7 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jurick in view of Salyer USPN 9,211,190 B2.
Jurick discloses the invention substantially as claimed being described above. However, Jurick does not disclose the longitudinal support or second stem/expanding mechanisms.
Salyer teaches the use of a bone implant comprising stems which are offset from the body by longitudinal supports 32 and the combination of two stems positioned next to each other in the same field of endeavor for the purpose of extending the anchor deeper into the bone and to providing additional anchoring forces.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the stem of Jurick to be offset from the body by a longitudinal support and to duplicate the stem and expansion mechanism so that there are two side by side as taught by Salyer in order to extend the anchor deeper into the bone and to providing additional anchoring forces.
Claim(s) 9 and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jurick in view of Reach JR US 2011/0071579 A1
Jurick discloses the invention substantially as claimed being described above. However, Jurick does not disclose the maximum diameter of the cylindrical stem occurs between the first end and the second end or the slits on the stem parallel to the longitudinal axis.
Reach teaches the use of a bone implant comprising a plurality of configurations of expandable stems including ones which allow for the maximum diameter of the cylindrical stem occurs between the first end and the second end (Figures 13 and 14)
which is enabled by providing slits on the stem parallel to the longitudinal axis (Figures 13 and 14) in the same field of endeavor for the purpose of providing anchoring forces that resist pulling out in both directions along the longitudinal axis.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the stem of Jurick to have the longitudinal slits and be expandable such that the maximum diameter is between its first and second ends as taught by Reach in order to provide anchoring forces that resist pulling out in both directions along the longitudinal axis.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER D PRONE whose telephone number is (571)272-6085. The examiner can normally be reached Monday-Friday 10 am - 6 pm (HST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melanie R Tyson can be reached at (571)272-9062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER D. PRONE
Primary Examiner
Art Unit 3774
/Christopher D. Prone/Primary Examiner, Art Unit 3774
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