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 .
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 lower portion of the femoral head prothesis must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 12, 14, 16, 32, 34 and 36.
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 § 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 6 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 6 recites “a liner is placed over the femoral head prothesis and into the medial shell and lateral shell” however, according to claim 1 “an upper portion of the femoral head prothesis fitting against an inner side of the medial shell and an inner side of the lateral shell.” It is unclear if the femoral head prothesis is in direct contact with the shells when “fitting against” each other or if there is a liner between the two components and the components are aligned in their composition together. The application is examined as though “fitting against” is in alignment, not direct contact between the components.
Claim Objections
Claim 1 objected to because of the following informalities: "the later shell" in line 7 should read "the lateral shell". Appropriate correction is required.
Claim 4 objected to because of the following informalities: "the later shell" in line 2 should read "the lateral shell". Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2022/0151792 A1) in view of Sherman (US 4,936,855 A).
Regarding claim 1, Lee teaches device adapted to secure a femoral head prosthesis (700, apparatus, figs. 7A-7B), the device comprising:
a medial shell (770, first section fig. 7B) and a lateral shell (772, second section, fig. 7B), each of the medial shell and the lateral shell shaped to fit around a portion of the femoral head prosthesis (fig. 8);
an upper portion of the femoral head prosthesis fitting against an inner side of the medial shell and an inner side of the lateral shell (¶ [0099]).
Lee fails to teach a constraining rim on lower portions of the shell configured to secure a lower portion of the femoral head prothesis. However, Sherman teaches a prosthetic joint implant that includes the medial shell having a medial shell constraining rim on a lower portion of the medial shell (62, flange, fig. 5), the lateral shell having a lateral shell constraining rim on a lower portion of the later shell (62, flange, fig. 5), the medial shell constraining rim and lateral shell constraining rim configured to secure the medial shell and the lateral shell to a lower portion of the femoral head prosthesis (fig. 5). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filling date of the claimed invention to have modified the medial and lateral shells of Lee to include a constraining rim as taught by Sherman in order to in order to prevent the locking ring from being tilted (col 3 lines 35-47, Sherman).
Regarding claim 2, Lee further teaches wherein the medial shell includes one or more medial shell openings that are configured to allow insertion of fasteners through the medial shell to attach the medial shell to a bone surface (724, 788, openings, fig. 7A).
Regarding claim 3, Lee further teaches wherein the lateral shell includes one or more lateral shell openings that are configured to allow insertion of the fasteners through the lateral shell to attach the lateral shell to the medial shell (724, 788, openings, fig. 7A).
Regarding claim 4, Lee further teaches wherein at least one of the medial shell openings and at least one of the later shell openings are configured to be in alignment such that a fastener passes through each of the lateral shell and the medial shell and into the bone surface (fig. 7B). The phrase “at least one of the medial shell openings and at least one of the later shell openings are configured to be in alignment such that a fastener passes through each of the lateral shell and the medial shell and into the bone surface” is a functional recitation (see MPEP 2114.II). The prior art is not required to explicitly disclose the recited function, but merely have the capability of performing [or being manipulated to] the recited function in order to meet the claim requirements. In this case, the opening 778 in the apex of the apparatus is considered to be capable of being in alignment such that a fastener passes through each of the lateral shell and the medial shell and into the bone surface .
Regarding claim 5, Lee further teaches a shell fastener that secures the lateral shell to the medial shell (760, fastener, fig. 7B).
Regarding claim 6, Lee further teaches a liner is placed over the femoral head prosthesis and into the medial shell and lateral shell (140, liner, fig. 1C, ¶ [0066]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERESA M DUDDEN whose telephone number is (571)272-0435. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, THOMAS BARRETT can be reached at (571) 272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.M.D./Examiner, Art Unit 3774
/THOMAS C BARRETT/SPE, Art Unit 3799
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