DETAILED ACTION
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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) 1-3, 5, 8-9, 11-16, 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Macke U.S 2020/0345499.
Claim 1: Macke discloses an augment 100 for a bone implant as best seen in figures 1a,b, the augment 100 having a body 120 that comprises: a first interface (see fig. 1b- annotated below) for fastening the augment to a plateau of the bone implant (hip bone 1, see paragraph 28); a second interface (see fig. 1b-annotated below) for fastening the augment to a bone; and a third interface (see fig. 1b-annotated below) to a fastening element for anchoring the bone implant in a medullary cavity of the bone, the third interface extending between the first interface and the second interface, and the body having an undercut (the cut out area 134 or the cut out area 496, fig. 4a) at the third interface.
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Claims 2-3: Macke discloses wherein the bone implant is for a tibia or a
Femur (see paragraph 17)., wherein the undercut comprises a conical or concave course (see claim 34 of Macke) of the body from the second interface to the first interface.
Claims 5, 8, 11: Macke discloses wherein: the second interface (around the area 124, fig. 1b) extends in a plane, the undercut (around area 134, fig. 1b or around area 496, fig. 4a) comprises a wall of the body that is arranged at least in sections at an angle to the plane; wherein the body tapers (see fig. 1b) outside the third interface from the first interface to the second interface.
Claims 9, 12-13: Macke discloses wherein: the second interface (the area around 124, fig. 1b) extends in a plane, and the body extends outside the third interface from the first interface to the second interface at an angle to the plane;wherein: the body comprises a circumferential area extending between the first interface and the second interface (see annotated fig. 1b above), and the circumferential area comprises the third interface to the fastening element (see paragraph 28); wherein the circumferential area has a rough surface at least in sections.
Claims 14-16: Macke discloses wherein an area outside the third interface has a smooth surface; wherein: the third interface comprises a portion of a circumference of the body extending between the first interface and the second interface, and the undercut extends along the portion of the circumference of the body. , wherein the undercut extends over all of the portion of the circumference (see fig. 1 b annotated above).
Claims 19-20: Macke discloses wherein: the at least two augments comprise a first augment 100a and a second augment 100b, the first augment and the second augment are arrangeable against each other, and the first interface of the first augment is connectable to the second interface of the second augment to connect the first augment to the second augment. , wherein the third interface of the second augment is formed without an undercut (see paragraphs 26).
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) 6-7, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Macke.
Claim(s) 6-7, 10: Macke disclose the invention substantially as claimed but is silent regarding wherein the angle is between 89° and 45° to the plane; wherein the angle is between 89° and 79° to the plane; wherein the angle is 90° to the plane.
It would have been obvious to one having ordinary skill in the art before the claimed invention to modify the device of Macke by making the angle is between 89° and 45° to the plane; wherein the angle is between 89° and 79° to the plane; wherein the angle is 90° to the plane, since it has been held that where the only difference between the prior arts and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device" Gardner V. Tec Syst., Inc., 725 F. 2d 1338, 220 USPQ 777 (Fed. Cir. 1984). In the instant case it appears there has been no critically placed on the specific angle of the body wall, as evidence in applicant's specification at paragraph 6, wherein the ranges and values are given with no preference to one over another nor any evidence of unexpected results.
Allowable Subject Matter
Claims 4, 17-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/VI X NGUYEN/Primary Examiner, Art Unit 3771
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