DETAILED ACTION
The following is a non-final office action is response to communications received on 04/28/2025. Claims 1-3, 5-13 & 15-17 are currently pending and addressed below.
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 .
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 1-3, 5-13 & 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,127,945. The elements of the instant application are to be found in the Patent and therefore are anticipated. Although the conflicting claims are not identical, they are not patentably distinct from each other because the Patent and the instant application all recite the same basic structure with a permutation of similar elements throughout.
Regarding Claim 1, patent claims 1 & 4 recite the same limitations.
Regarding Claims 2-10, patent claim 2-10 recite the same limitations.
Regarding Claim 11, patent claims 11 & 14 recite the same limitations.
Regarding Claim 12, patent claims 1, 3 & 12 recite the same limitations.
Regarding Claim 13, patent claims 11 & 13 recite the same limitations.
Regarding Claim 15, patent claims 11 & 15 recite the same limitations.
Regarding Claim 16, patent claims 11 & 16 recite the same limitations.
Regarding Claim 17, patent claims 11 & 17 recite the same limitations.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 11 & 15-17 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Poon et al. (US 2022/0395376).
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Regarding Claim 11, Poon teaches a glenoid implant system (Figs 10-12B) for a reverse shoulder implant system, comprising:
an angled baseplate (1000) comprising a bone facing surface (1001) to face an implant site prepared in a glenoid region of a patient, and an implant facing surface (1005) to face and engage a glenoid implant, wherein the implant facing surface being at an angle of approximately 1 degree to 40 degrees (as shown in annotated Fig 13), inclusive, with respect to a centerline of the bone facing surface (shown); and
a glenoid implant (116) having a center post (110); wherein the implant facing surface (1005) defining a slot (shown) to receive the center post of the glenoid implant, the slot starting at an outer periphery (shown) of the implant facing surface and ending at a center region (shown) of the implant facing surface, the slot to guide the glenoid implant toward the center region of the implant facing surface.
Regarding Claim 15, Poon teaches wherein the angled baseplate is fully capable of being rotated about the centerline axis so that the implant facing surface is facing anteriorly of the midline of the glenoid.
Regarding Claim 16, Poon teaches wherein the angled baseplate is fully capable of being rotated about the centerline axis so that the implant facing surface is facing posteriorly of the midline of the glenoid.
Regarding Claim 17, Poon teaches wherein the angled baseplate is fully capable of being rotated about the centerline axis so that the implant facing surface is facing generally facing distally and laterally and along the midline of the glenoid.
Allowable Subject Matter
Claims 1-3 & 5-10 would be allowable if a timely filed terminal disclaimer(s) in compliance with 37 CFR 1.321(c) or 1.321(d) is filed to overcome the nonstatutory double patenting rejection(s) set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record, which is the most pertinent art found, fails to teach and/or fairly suggest the instant invention.
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Regarding Claim 1, Cardon et al. (US 2014/0025173 discloses the invention substantially as claimed. Cardon teaches a glenoid implant system for a reverse shoulder implant system, comprising:
a glenoid implant (10);
an angled baseplate (20) comprising a bone facing surface (22) to face an implant site prepared in a glenoid region of a patient, and an implant facing surface (21) to face and engage the glenoid implant (10), wherein the implant facing surface (21) being at an angle with respect to a centerline of the bone facing surface ([0034] and Fig 7); and
an anchor (40 & 50) to be installed in the implant site, the anchor including a bone-engaging portion (70) and a head portion (40): wherein the bone facing surface (22) defining a slot (30) to receive the head portion of the anchor to affix the angled baseplate to the anchor (Fig 6), the slot starting at an outer periphery (21) of the bone facing surface and ending at a center region of the bone facing surface (Fig 1), the slot (30) to guide the angled baseplate on the implant site.
However, the prior art either individually or in combination, does not teach or render obvious wherein the glenoid implant comprises a center post and wherein the implant facing surface receives said center post.
Claims 12 & 13 are rejected, but would be allowable if: (1) rewritten in independent form including all of the limitations of the base claim and any intervening claims.; and (2) a timely filed terminal disclaimer(s) in compliance with 37 CFR 1.321(c) or 1.321(d) is filed to overcome the nonstatutory double patenting rejection(s) set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN AINSLEY DUKERT whose telephone number is (571)270-3258. The examiner can normally be reached Mon-Fri 6am-4pm.
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 (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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/BRIAN A DUKERT/Primary Examiner, Art Unit 3774
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