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 .
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/431879, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In specific, the prior application fails to provide support for the implant removal tool having at least one window (claims 1 and 6) as well as two separate and distinct tools (claims 6 and 12) used in concert to overlap one another (claim 13). Support for this claimed subject matter is first presented in the CIP 17/127006 filed on December 18th, 2020. As a result, claims 1-12 are given an effective filing date of December 18th, 2020.
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.
Claims 1-5 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pendelton et al. (US 2018/0206859).
Regarding claim 1, Pendelton et al. disclose an implant removal tool for removal of a prosthetic implant, the tool comprising opposing side walls (see figure below); and an opening (360) formed through the tool, the tool adapted to be inserted along an edge of the prosthetic implant with an extension of the prosthetic implant being received within the opening (figures 18-19), wherein at least one window (360 forms the window) that remains open throughout insertion is formed within the opposing side walls (figures 14, 18-19).
Regarding claim 2, Pendelton et al. disclose each side wall includes inner and outer edges (see figure below, ¶47 otherwise there would be no “blade thickness”).
Regarding claim 3, Pendelton et al. disclose the outer edges of the tool are sharpened (¶50).
Regarding claim 4, Pendelton et al. disclose a U-shaped trough (342) positioned at the distal end of the tool (322, figure 14).
Regarding claim 5, Pendelton et al. disclose the U-shaped trough includes a sharpened leading edge (322/346, figure 14).
Regarding claim 12, Pendelton et al. disclose a system for removing a prosthetic implant, the prosthetic implant positioned within a bone and including first and second sides, and a neck, the system comprising a first tool (figure 8) including opposing side walls (see figure below) defining an interior (see figure below), the first tool adapted to be inserted between the bone and a first side of the prosthetic implant (figures 12-13); a second tool (figure 14) including opposing side walls (see figure below) and an opening (360) formed through the second tool, the second tool adapted to be inserted between the bone and a second side of the prosthetic implant with the neck of the implant extending through the opening (figures 18-19), wherein with both the first and second tools inserted into the bone, portions of the first tool overlap portions of the second tool (the first and second tool are capable of overlapping as this is dependent upon the implant size/dimensions).
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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.
Claims 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Pendelton et al. (US 2018/0206859) in view of Martz et al. (US 2005/0090829).
Regarding claim 6, Pendelton et al. disclose a system for removing a prosthetic implant, the prosthetic implant positioned within a bone and including first and second sides, and a neck, the system comprising a first tool (figure 8) including opposing side walls (see figure above) defining an interior (see figure above), the lateral tool adapted to be inserted between the bone and a first side of the prosthetic implant (figures 12-13); a second tool (figure 14) including opposing side walls (see figure above) and an opening (360) formed through the second tool, the second tool adapted to be inserted between the bone and a second side of the prosthetic implant with the neck of the prosthetic implant extending through the opening (figures 18-19).
However, Pendelton et al. fail to expressly teach or disclose at least one window is formed within the opposing side walls of the first tool.
Martz et al. disclose a first tool (10, figures 1-3) having opposing side walls (30, 32) with at least one window (36’s) formed within the opposing side walls of the first tool (figure 3) as they provide egress for material cut away during surgery (¶259).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have provided the opposing side walls of Pendelton et al. to include respective windows formed therein as taught by Martz et al. as they windows provide the advantage of creating egress for material cut away during surgery.
Regarding claim 7, Pendelton et al. disclose the side walls of the first tool include an angled extent (¶43) and a curved extent (¶43).
Regarding claim 8, Pendelton et al. disclose the curved extent is sharpened (¶45).
Regarding claim 9, Pendelton et al. disclose the second tool (figure 14) includes a U-shaped trough (324) with a sharpened leading edge (322/346) positioned at a distal end (322, figure 14).
Regarding claim 10, Pendelton et al. disclose the first tool is a lateral tool (figures 12-13).
Regarding claim 11, Pendelton et al. disclose the second tool is a medial tool (figures 18-19).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW JAMES LAWSON whose telephone number is (571)270-7375. The examiner can normally be reached Mon - Fri 6:30-3:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at 571-270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW J LAWSON/Primary Examiner, Art Unit 3619
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