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 .
Claim Objections
Claim 1 is objected to because of the following informalities: “potion” should be - - portion - - to correct a minor typographical error. 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 2-11 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.
In claim 2, the recitation “confirming position of the talus trialing component” renders the claim vague and indefinite because it is incomplete. It is unclear how the position of the talus trialing component is confirmed.
Appropriate correction is required.
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) 1 is rejected under 35 U.S.C. 103 as being unpatentable over Carroll et al. (US 9566075) in view of Dogue et al. (US 11399949).
Carroll et al. disclose a method for performing a total-ankle arthroplasty, the method including the steps of:
attaching a size-specific (sized to fit the talus 124) talus cutting block (200, Fig. 28) to a custom manufactured or patient-specific talus guide body (122, Figs. 21 and 30);
attaching the patient-specific talus guide body to a superior (or upper portion of the talus, Figs. 21 and 28) portion of a talus (Fig. 31);
resecting a superior portion of the talus;
attaching a size-specific tibia cutting block to a patient-specific tibia guide body (150, Fig. 23);
attaching the patient-specific tibia guide body to an inferior (lower tibia) portion of a tibia (120, Fig. 23); and
resecting an inferior portion of the tibia.
Carroll et al. disclose a method of making accurate and precise bone resections of the tibia and the talus in ankle replacement surgery. Carroll et al. disclose all elements of the claimed invention except for prosthetic ankle components that are attached to the resected talus and the resected tibia.
It is well known to provide a total ankle replacement prosthesis placed into prepared tibial-talar space during total ankle arthroplasty, as evidenced by Dogue et al. (Figs. 1A and 1b, col. 1, lines 32-67 and col. 2, lines 1-26).
It would have been obvious to one of ordinary skill in the art to have provided an ankle prosthesis, as taught by Dogue et al., after performing total ankle arthroplasty according to the method of Carroll et al., to replace a defective ankle joint.
Allowable Subject Matter
Claims 2-11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 12-19 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.
The closest prior art cited in the attached PTO-892 and in the parent applications cite some features of Applicant’s claimed invention, either singly or in combination, for e.g. Carroll et al. (US 9566075) and Dogue et al. (US 11399949). However, no references or a reasonable combination thereof, could be found which disclose all the elements of Applicant’s claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anu Ramana whose telephone number is (571)272-4718. The examiner can normally be reached 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached at (571)272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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March 2, 2026
/Anu Ramana/Primary Examiner, Art Unit 3775
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