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 .
The first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ) apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an effective filing date on or after March 16, 2013 wherein the effective filing date is:
(i) if subparagraph (ii) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(ii) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under 35 U.S.C. 119, 365(a), or 365(b) or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, or 365(c); or
(B) a specific reference under 35 U.S.C. 120 , 121, or 365(c), to any patent or application that contains or contained at any time a claim as defined in paragraph (A), above.
Status of the Claims
Claim(s) 1-20 is/are pending. Claim(s) 6, 13, and 19-20 is/are withdrawn.
Election/Restriction
This application contains claims directed to the following patentably distinct species of opening design.
Species 1-1: having cross-ribs that are each at a single distance from the annular rim (e.g. claims 1-5, 7-12, 14-18; Figures 1-2, 5-6)
Species 1-2: having cross-rib(s) that vary in distance from the annular rim (e.g. claims 1, 6, 8, 10-17, 19; Figures 7-8)
Species 1-3: having multiple pluralities of openings (e.g. claim 20; Figures 14-16)
The species are independent or distinct because each species within its group is of a different design than the other species within its group. Here, the type of openings each have different shapes and sizes from each of the other openings. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, none are generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: The species require a different field of search (e.g. searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Bronson Bonnett on 9/15/2026 a provisional election was made with traverse to prosecute the invention of Species 1-1, claims 1-5, 7-12, and 14-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6, 13, and 19-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The traversal is on the grounds that searching all species indicated would not be overly burdensome. The Examiner notes each of species 1-2 and 1-3 has its own search terms not required by elected species 1-1, e.g. wavy or variable distance of the rib from an edge (species 1-2) or circular/round openings/pores (species 1-3). Therefore, Applicant’s arguments are not found persuasive.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The information disclosure statement filed 11/7/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Specifically, NPL citations 6, 7, and 11 are not legible. This IDS has been placed in the application file, but the information referred to therein has not been considered.
All non-lined through citations were considered.
Claim Objections
Claim 14 is objected to because of the following informalities:
Claim 14 recites “the first and second”, which should be “the first and the second”.
Appropriate correction is required.
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.
Claims 1-5, 7-12, and 14-18 are 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 1 recites “a liner” in the last line. It is unclear if this is the modified liner introduced in line 2 or a different liner. For purposes of examination the Examiner considers this language to be a sub-component of the overall modified liner. The Examiner suggests distinct names for the two elements.
Claim 15 recites “the liner”. It is unclear which liner is being referred back to of the two introduced in claim 1.
Claim 17 recites “a modified liner”. It is unclear if this is the same or different than the liner introduced in claim 16. For purposes of examination the Examiner considers this language to be a sub-component of the overall modified liner. The Examiner suggests distinct names for the two elements.
Claim 17 recites “the liner”. It is unclear which liner is being referred back to of the two introduced in claims 16-17.
Claim 9 recites “the longitudinal rib”. It is unclear which of the plurality of ribs is being referred back to. For purposes of examination the Examiner considers this language to be “each of the plurality of longitudinal ribs”.
Claim 9 recites “each of the cross-ribs”. Thus, as worded claim 9 refers back to additional cross-ribs not introduced and therefore lacks antecedent basis for the additional instances of the cross-ribs. Claim 1 introduces a single cross-rib, while claims 2-3 introduce a second and a plurality of cross-ribs, respectively. For purposes of examination the Examiner considers claim 9 to depend from claim 2.
Claim(s) 2-5, 7-8, 10-12, 14, 16, and 18 are rejected as dependent from a rejected claim.
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) 1-5, 7-11, and 15-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pfaff, et al (Pfaff) (DE 199 04 436 A1; citations directed to the provided translation)(provided by Applicant with the 11/7/2024 IDS).
Regarding Claim 1, Pfaff teaches a prosthetic implant assembly (e.g. abstract, Figures 1-2), comprising:
a modified liner (e.g. Figure 1) configured for use in a hip joint (e.g. abstract), the modified liner comprising:
a sheath (e.g. Figure 1, layer #5; Figure 2) having an annular rim (e.g. annotated Figure 2(1) below), a plurality of longitudinal ribs extending from the annular rim (e.g. annotated Figure 2(1) below), and a first cross-rib spaced apart from the annular rim and intersecting the plurality of longitudinal ribs (e.g. annotated Figure 2(1) below; cross-rib closest to the annular rim), the first cross-rib defining a closed loop (e.g. Figure 2), wherein each longitudinal rib of the plurality of longitudinal ribs is curved such that the plurality of longitudinal ribs collectively define a partially spherical surface (e.g. Figure 1-2), and wherein the annular rim, the plurality of longitudinal ribs and the first cross-rib define a plurality of openings between the annular rim and the first cross rib (e.g. annotated Figure 2(1) below); and
a liner configured to be received in the sheath (e.g. Figure 1, #3).
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Annotated Figure 2(1), Pfaff
Regarding Claim 2, the sheath includes a second cross-rib defining a closed loop and spaced apart from the first cross-rib (e.g. annotated Figure 2(1)), the second cross-rib intersecting the plurality of longitudinal ribs (e.g. annotated Figure 2(1)).
Regarding Claim 3, the plurality of longitudinal ribs, the first cross-rib and the second cross-rib define a webbed structure such that a majority of the plurality of openings are quadrilateral (e.g. Figure 2).
Regarding Claim 4, the sheath further comprises a plurality of cross-ribs in addition to the first cross-rib (e.g. annotated Figure 2(1) above), each cross-rib of the first cross-rib and the plurality of cross-ribs being evenly spaced with respect to an adjacent cross-rib (e.g. Figure 2).
Regarding Claim 5, each end of each longitudinal rib of the plurality of longitudinal ribs is attached to the annular rim of the sheath, and the plurality of cross-ribs extend circumferentially around the sheath (e.g. Figures 1-2).
Regarding Claim 7, each opening of the plurality of openings is a cuboid shape (e.g. Figure 2).
Regarding Claim 8, the annular rim has a band extending therefrom (e.g. annotated Figure 2(1) above).
Regarding Claim 9, in a direction of a length of the longitudinal rib, a dimension of the band is greater than each of the cross-ribs (e.g. annotated Figure 2(1), the longitudinal extension of the band beyond the rim is longer than the thickness of the cross-rib in the longitudinal direction).
Regarding Claim 10, the sheath has a hemispherical shape (e.g. Figure 1).
Regarding Claim 11, the annular rim is located at an equatorial region of the hemispherical shape (e.g. Figures 1-2).
Regarding Claim 15, the liner includes a lip that extends over the annular rim of the sheath (e.g. annotated Figure 2(1) above, “band”).
Regarding Claim 16, Pfaff teaches a prosthetic implant assembly (e.g. abstract, Figures 1-2) comprising:
a sheath (e.g. Figure 1, layer #5; Figure 2) having an annular rim with a first diameter (e.g. annotated Figure 2(1) above), a plurality of longitudinal ribs each extending along a curve from the annular rim (e.g. annotated Figure 2(1) above), and a cross-rib with a second diameter intersecting the plurality of longitudinal ribs (e.g. annotated Figure 2(1) above), wherein the second diameter is smaller than the first diameter (e.g. annotated Figure 2(1) above), wherein an implant-receiving side of each longitudinal rib of the plurality of longitudinal ribs defines a portion of a cavity (e.g. annotated Figure 2(1) above), each longitudinal rib of the plurality of longitudinal ribs having a convex side opposite the implant-receiving side (e.g. annotated Figure 2(1) above), and wherein the plurality of longitudinal ribs and the cross-rib define a plurality of intersection points between the plurality of longitudinal ribs and the cross rib (e.g. annotated Figure 2(1) above); and
a liner configured to be received in the cavity of the sheath (e.g. Figure 1, #3).
Regarding Claim 17, there is an implanted acetabular shell configured to receive a modified liner comprising the sheath and the liner (e.g. Figure 1, #2).
Regarding Claim 18, the sheath includes a plurality of cross-ribs (e.g. annotated Figure 2(1) above).
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.
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.
Claims 12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pfaff, et al (Pfaff) (DE 199 04 436 A1; citations directed to the provided translation)(provided by Applicant with the 11/7/2024 IDS) as discussed supra and further in view of Oh (US 4,795,469 A).
Regarding Claim 12, Pfaff discloses the invention substantially as claimed but fails to teach the sheath is a truncated hemisphere having a first end opening and a second end opening, the first end opening defining an inner diameter of the annular rim, the inner diameter of the annular rim being larger than that of the second end opening.
Oh teaches an acetabular cup (e.g. abstract) having a truncated hemisphere having a first end opening and a second end opening, the first end opening defining an inner diameter of the annular rim, the inner diameter of the annular rim being larger than that of the second end opening (e.g. Figures 3, 5).
Oh and Pfaff are concerned with the same field of endeavor as the claimed invention, namely acetabular cups.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Pfaff such that the sheath is a truncated hemisphere having a first end opening and a second end opening, the first end opening defining an inner diameter of the annular rim, the inner diameter of the annular rim being larger than that of the second end opening as taught by Oh in order to make the shell more stable in the acetabulum where bone grafting is added (e.g. Oh, column 3, lines 46-58).
Regarding Claim 14, the first and second end openings are concentric (e.g. Oh, Figures 3, 5).
Relevant Prior Art
US 2014/0303743 A1 to Choudhury, et al teaches an acetabular shell having a layer with a grid arrangement (e.g. Figures 3-4). Choudhury lacks through holes between the ribs (e.g. Figure 6).
US D276463 teaches an acetabular shell having a longitudinal rib and cross-ribs (e.g. Figure 3).
US 5,702,478 to Tornier teaches an acetabular shell having a rim, longitudinal ribs, and through holes between the ribs (e.g. Figure 1). Tornier lacks cross-ribs.
US 3,918,102 to Eichler teaches an acetabular shell having a rim, longitudinal ribs, a cross-rib, and opening between ribs (e.g. Figure 8).
US 5,480,448 to Mikhail teaches an acetabular shell having a grid arrangement of ribs (e.g. Figures 19-20). Mikhail fails to teach cross-ribs forming closed loops and through holes between ribs.
US 2015/0366568 A1 to Victor, et al teaches an acetabular shell having a rim, longitudinal ribs, a cross-rib, a truncated polar end, and through openings between the ribs (e.g. Figure 2). Victor lacks an additional liner within the shell.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESLIE A LOPEZ whose telephone number is (571)270-7044. The examiner can normally be reached 8:30 AM - 5:30 PM, MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JERRAH EDWARDS can be reached at (408)918-7557. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LESLIE A LOPEZ/Primary Examiner, Art Unit 3774 9/25/2026
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