UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`10/446,069
`
`05/27/2003
`
`PhilipS. Lyren
`
`PSL-003
`
`1407
`
`7590
`64021
`PHILIP S. L YREN, PC
`2515 WILLOWBY DRIVE
`HOUSTON, TX 77008
`
`01/28/2010
`
`EXAMINER
`
`HOFFMAN, MARY C
`
`ART UNIT
`
`PAPER NUMBER
`
`3733
`
`MAIL DATE
`
`DELIVERY MODE
`
`01128/2010
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`ZIMMER EXHIBIT 1004
`
`Page 1 of 187
`
`

`

`Application No.
`
`Applicant(s)
`
`Notice of Abandonment
`
`10/446,069
`Examiner
`
`L YREN, PHILIP S.
`Art Unit
`
`3733
`MARY HOFFMAN
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address--
`
`This application is abandoned in view of:
`
`1. ~ Applicant's failure to timely file a proper reply to the Office letter mailed on 18 Februarv 2009.
`(a) D A reply was received on __ (with a Certificate of Mailing or Transmission dated __ ), which is after the expiration of the
`period for reply (including a total extension of time of __ month(s)) which expired on __ .
`(b) D A proposed reply was received on __ , but it does not constitute a proper reply under 37 CFR 1.113 (a) to the final rejection.
`(A proper reply under 37 CFR 1.113 to a final rejection consists only of: (1) a timely filed amendment which places the
`application in condition for allowance; (2) a timely filed Notice of Appeal (with appeal fee); or (3) a timely filed Request for
`Continued Examination (RCE) in compliance with 37 CFR 1.114).
`(c) D A reply was received on __ but it does not constitute a proper reply, or a bona fide attempt at a proper reply, to the non(cid:173)
`final rejection. See 37 CFR 1.85(a) and 1.111. (See explanation in box 7 below).
`
`(d) ~ No reply has been received.
`
`2. D Applicant's failure to timely pay the required issue fee and publication fee, if applicable, within the statutory period of three months
`from the mailing date of the Notice of Allowance (PTOL-85).
`(a) D The issue fee and publication fee, if applicable, was received on __ (with a Certificate of Mailing or Transmission dated
`__ ),which is after the expiration of the statutory period for payment of the issue fee (and publication fee) set in the Notice of
`Allowance (PTOL-85).
`(b) D The submitted fee of$ __ is insufficient. A balance of$ __ is due.
`The issue fee required by 37 CFR 1.18 is$ __ . The publication fee, if required by 37 CFR 1.18(d), is$ __ .
`(c) D The issue fee and publication fee, if applicable, has not been received.
`
`3.0 Applicant's failure to timely file corrected drawings as required by, and within the three-month period set in, the Notice of
`Allowability (PT0-37).
`(a) D Proposed corrected drawings were received on __ (with a Certificate of Mailing or Transmission dated __ ), which is
`after the expiration of the period for reply.
`(b) D No corrected drawings have been received.
`
`4. D The letter of express abandonment which is signed by the attorney or agent of record, the assignee of the entire interest, or all of
`the applicants.
`
`5. D The letter of express abandonment which is signed by an attorney or agent (acting in a representative capacity under 37 CFR
`1.34(a)) upon the filing of a continuing application.
`
`6. D The decision by the Board of Patent Appeals and Interference rendered on __ and because the period for seeking court review
`of the decision has expired and there are no allowed claims.
`
`7. ~The reason(s) below:
`
`No response has been filed.
`
`/Eduardo C. Robert/
`Supervisory Patent Examiner, Art Unit 3733
`
`/Mary C. Hoffman/
`Examiner, Art Unit 3733
`
`Petitions to revive under 37 CFR 1.137(a) or (b), or requests to withdraw the holding of abandonment under 37 CFR 1.181, should be promptly filed to
`minimize any negative effects on patent term.
`U.S. Patent and Trademark Off1ce
`PTOL-1432 (Rev. 04-01)
`
`Notice of Abandonment
`
`Part of Paper No. 20100120
`
`Page 2 of 187
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Ul\TfED STI\TES DEPA RTME'IT OF COMMERCE
`United States Patent and Trademark Office
`Adill"'· COMMISSIO'JER FOR PATENTS
`PO Box 1450
`Alexandria, Virgmia 22313-1450
`\VVi\V.USpto.gov
`
`APPLICATION NUMBER
`10/446,069
`
`PATENT NUMBER
`
`FILE WRAPPER LOCATION
`37M I
`llllllllllllllllllllllll~~g~~m~~~l~U~IIIIIIIIIIIIIIIIIIIIIIII
`Correspondence Address/Fee Address Change
`
`GROUP ART UNIT
`3733
`
`The following fields have been set to Customer Number 64021 on 07/24/2009
`• Correspondence Address
`• Maintenance Fee Address
`• Power of Attorney Address
`
`The address of record for Customer Number 64021 is:
`
`64021
`PHILIP S. L YREN, PC
`2515 WILLOWBY DRIVE
`HOUSTON, TX 77008
`
`PART 1 -ATTORNEY/APPLICANT COPY
`page 1 of 1
`
`Page 3 of 187
`
`

`

`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`Filing Date:
`
`10446069
`
`27-May-2003
`
`Title of Invention:
`
`Hip implant with porous body
`
`First Named Inventor/Applicant Name:
`
`PhilipS. Lyren
`
`Filer:
`
`Philip Scott Lyren
`
`Attorney Docket Number:
`
`PSL-003
`
`Filed as Small Entity
`
`Utility under 35 USC 111 (a) Filing Fees
`
`Description
`
`Fee Code
`
`Quantity
`
`Amount
`
`Sub-Total in
`USD($)
`
`Basic Filing:
`
`Pages:
`
`Claims:
`
`Miscellaneous-Filing:
`
`Petition:
`
`Patent-Appeals-and-Interference:
`
`Notice of appeal
`
`2401
`
`1
`
`270
`
`270
`
`Post-Allowance-and-Post-Issuance:
`
`Extension-of-Time:
`
`Page 4 of 187
`
`

`

`Description
`
`Fee Code
`
`Quantity
`
`Amount
`
`Sub-Total in
`USD($)
`
`Miscellaneous:
`
`Total in USD ($)
`
`270
`
`Page 5 of 187
`
`

`

`Electronic Acknowledgement Receipt
`
`EFSID:
`
`Application Number:
`
`5356522
`
`10446069
`
`International Application Number:
`
`Confirmation Number:
`
`1407
`
`Title of Invention:
`
`Hip implant with porous body
`
`First Named Inventor/Applicant Name:
`
`PhilipS. Lyren
`
`PhilipS. Lyren
`
`- 2
`
`208 Harcourt Drive
`
`OH
`
`44106
`
`- C
`
`leveland Heights
`us
`
`8322365529
`
`Correspondence Address:
`
`-
`
`Filer:
`
`Philip Scott Lyren
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`PSL-003
`
`Receipt Date:
`
`Filing Date:
`
`TimeStamp:
`
`18-MAY-2009
`
`27-MAY-2003
`
`21:49:02
`
`Application Type:
`
`Utility under 35 USC 111 (a)
`
`Payment information:
`
`Submitted with Payment
`
`Payment Type
`
`yes
`
`Deposit Account
`
`Payment was successfully received in RAM
`
`$270
`
`Page 6 of 187
`
`

`

`RAM confirmation Number
`
`Deposit Account
`
`Authorized User
`
`5638
`
`503766
`
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`Charge any Additional Fees required under 37 C.F.R. Section 1.16 (National application filing, search, and examination fees)
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.17 (Patent application and reexamination processing fees)
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.19 (Document supply fees)
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.20 (Post Issuance fees)
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.21 (Miscellaneous fees and charges)
`
`File Listing:
`
`Document
`Number
`
`Document Description
`
`File Name
`
`File Size( Bytes)/
`Message Digest
`
`Multi
`Part /.zip
`
`Pages
`(ifappl.)
`
`38680
`
`1
`
`Notice of Appeal Filed
`
`Notice_Appeal.pdf
`
`no
`
`1
`
`Warnings:
`
`Information:
`
`798a9cc2ff74de5cfaa7ac0be3dc08c5f8e9c
`931
`
`29404
`
`2
`
`Fee Worksheet (PT0-875)
`
`fee-info. pdf
`
`no
`
`2
`
`d43c07fd95d756b086f72449002d5438840
`987b3
`
`Warnings:
`
`Information:
`
`Total Files Size (in bytes)
`
`68084
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New A~~lications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International A~~lication under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International A~~lication Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 181 0), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/R0/1 OS) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`Page 7 of 187
`
`

`

`PTO/SB/31 (04-09)
`Approved for use through 05/31/2009. OMB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it dlsolavs a valid OMB control number.
`Docket Number (Optional)
`
`NOTICE OF APPEAL FROM THE EXAMINER TO
`THE BOARD OF PATENT APPEALS AND INTERFERENCES
`
`PSL-003
`
`I hereby certify that this correspondence is being facsimile transmitted
`to the USPTO or deposited with the United States Postal Service with
`sufficient postage as first class mail in an envelope addressed to
`"Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-
`1450" [37 CFR 1.8(a))
`
`on ---------------------------------------------
`Signature _____________________________________ __
`
`Typed or printed
`name
`
`In reApplication of
`Philip Scott Lyren
`
`Application Number
`!Filed
`10/446,069
`May 27, 2003
`For Hip Implant with Porous Body
`
`Art Unit
`3733
`
`Examiner
`Mary C. Hoffman
`
`Applicant hereby appeals to the Board of Patent Appeals and Interferences from the last decision of the examiner.
`
`The fee for this Notice of Appeal is (37 CFR 41.20(b )( 1 ))
`
`Applicant claims small entity status. See 37 CFR 1.27. Therefore, the fee shown above is reduced
`by half, and the resulting fee is:
`0 A check in the amount of the fee is enclosed.
`0 Payment by credit card. Form PT0-2038 is attached.
`0 The Director has already been authorized to charge fees in this application to a Deposit Account.
`
`0 The Director is hereby authorized to charge any fees which may be required, or credit any overpayment
`to Deposit Account No . ..::5:.!::0~-3~7~6::,.::6:,.._ ___ _
`0 A petition for an extension of time under 37 CFR 1.136(a) (PTO/SB/22) is enclosed.
`
`WARNING: Information on this form may become public. Credit card information should not
`be included on this form. Provide credit card information and authorization on PT0-2038.
`
`I am the
`0
`0
`
`applicanVinventor.
`
`assignee of record of the entire interest.
`See 37 CFR 3.71. Statement under 37 CFR 3.73(b) is enclosed.
`(Form PTO/SB/96)
`
`/Philip Lyren #40,709/
`Signature
`
`Philip Lyren
`
`Typed or printed name
`
`0
`
`attorney or agent of record.
`Registration number---------------------------
`
`832-236-5529
`
`1
`
`number
`
`0
`
`attorney or agent acting under 37 CFR 1.34.
`Registration number if acting under 37 CFR 1.34.
`
`18 May 2009
`
`Date
`
`NOTE: Signatures of all the inventors or assignees of record of the entire interest or their representative(s) are required.
`Submit multiple forms if more than one signature is required, see below•.
`
`I 0
`
`'Total of 1
`
`forms are submitted.
`
`This collection of information is required by 37 CFR 41.31. The information Is required to obtain or retain a benefit by the public which Is to file (and by the USPTO
`to process) an application. Confidentiality Is governed by 35 U.S.C. 122 and 37 CFR 1.11, 1.14 and 41.6. This collection is estimated to take 12 minutes to
`complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the Individual case. Any
`comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer.
`U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED
`FORMS TO THIS ADDRESS. SEND TO: Commissioner lor Patents, P.O. Box 1450, Alexandria, VA 22313·1450.
`
`If you need assistance in completing the form, ca/11-800-PT0-9199 and select option 2.
`
`Page 8 of 187
`
`

`

`UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`10/446,069
`
`05/27/2003
`
`PhilipS. Lyren
`
`PSL-003
`
`1407
`
`7590
`Philip S. Lyren
`2208 Harcourt Drive
`Cleveland Heights, OH 44106
`
`02118/2009
`
`EXAMINER
`
`HOFFMAN, MARY C
`
`ART UNIT
`
`PAPER NUMBER
`
`3733
`
`MAIL DATE
`
`DELIVERY MODE
`
`02/18/2009
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`Page 9 of 187
`
`

`

`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`10/446,069
`
`Examiner
`
`LYREN, PHILIP S.
`
`Art Unit
`
`3733
`MARY HOFFMAN
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE~ MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1 )IZ! Responsive to communication(s) filed on 08 December 2008.
`2a)[8J This action is FINAL.
`2b)0 This action is non-final.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)[8J Claim(s) 3-5 and 13 is/are pending in the application.
`4a) Of the above claim(s) __ is/are withdrawn from consideration.
`5)0 Claim(s) __ is/are allowed.
`6)[8J Claim(s) 3-5 and 13 is/are rejected.
`7)0 Claim(s) __ is/are objected to.
`8)0 Claim(s) __ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)0 The specification is objected to by the Examiner.
`10)[8J The drawing(s) filed on 09 September 2005 is/are: a)IZ! accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`11 )0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
`
`Priority under 35 U.S.C. § 119
`
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some* c)O None of:
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17 .2(a)).
`*See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) [8J Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) 0 Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date __ .
`
`4) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application
`6) 0 Other: __ .
`
`U.S. Patent and Trademark Off1ce
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20090215
`
`Page 10 of 187
`
`

`

`Application/Control Number: 10/446,069
`Art Unit: 3733
`
`Page 2
`
`DETAILED ACTION
`
`Claim Rejections- 35 USC§ 103
`
`The following is a quotation of 35 U.S.C. 1 03(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be
`negatived by the manner in which the invention was made.
`Claims 3-5 are rejected under 35 U.S.C. 1 03(a) as being unpatentable over
`
`Draenert et al. (U.S. Patent No 5,522,894) in view of Shetty et al. (U.S. Patent No.
`
`5,443,51 0).
`
`Draenert et al. discloses a hip implant (see FIG. 1 0) comprising a neck body
`
`extending from a distal end to a proximal end, formed of a biocompatible metal and
`
`having an interface at the proximal end that is adapted to connect to a femoral ball; and
`
`a bone fixation body extending from a proximal end to a distal end and formed of a
`
`completely porous structure from the proximal to distal ends of the bone fixation body,
`
`the proximal end of the bone fixation body connected to the distal end of the neck body,
`
`wherein the bone fixation body does not include a solid metal substrate.
`
`Draenert et al. disclose the claimed invention except for the bone fixation body
`
`having horizontal cross-sectional triangular shape, elliptical shape, or trapezoidal shape;
`
`and except for wherein the completely porous structure has an average pore diameter
`
`of about 40 micrometers to about 800 micrometer. has a porosity from about 45% to
`
`65%. has interconnections between pores with a diameter larger than 50-60 microns.
`
`Page 11 of 187
`
`

`

`Application/Control Number: 10/446,069
`Art Unit: 3733
`
`Page 3
`
`and is doped with a biologically active substance to induce bone growth entirely through
`
`the completely porous structure.
`
`Shetty et al. disclose a bone fixation body having horizontal cross-sectional
`
`triangular shape, elliptical shape, or trapezoidal shape as being a suitable shape for a
`
`hip implant (FIG. 2).
`
`It would have been obvious to one of ordinary skill in the art at the time the
`
`invention was made to construct the device of Draenert et al. with the bone fixation body
`
`having horizontal cross-sectional triangular shape, elliptical shape, or trapezoidal shape
`
`in view of Shetty et al., since such would have comprised a mere change of shape into
`
`one of the known shapes acceptable for hip implants. Moreover, it would have further
`
`been an obvious matter of design choice to one skilled in the art at the time the
`
`invention was made to construct the bone fixation body of Draenert et al. with a
`
`horizontal cross-section having a triangular shape, elliptical shape, or trapezoidal
`
`shape, since applicant has not disclosed that such solve any stated problem or is
`
`anything more than one of numerous shapes or configurations a person ordinary skill in
`
`the art would find obvious for the purpose of providing a hip implant cross-section. In re
`
`Dailey and Eilers, 149 USPQ 47 (1966).
`
`It would have further been obvious to one having ordinary skill in the art at the
`
`time the invention was made to construct the device of Draenert as modified by Shetty
`
`et al. with an average pore diameter of about 40 micrometers to about 800 micrometer.
`
`a porosity from about 45% to 65%. interconnections between pores with a diameter
`
`larger than 50-60 microns, since it has been held that where the general conditions of a
`
`Page 12 of 187
`
`

`

`Application/Control Number: 10/446,069
`Art Unit: 3733
`
`Page 4
`
`claim are disclosed in the prior art, discovering the optimum or workable ranges
`
`involves only routine skill in the art. In re Aller, 1 05 USPQ 233.
`
`It would have further been obvious to one having ordinary skill in the art at the
`
`time the invention was made to construct the device of Draenert as modified by Shetty
`
`et al. with the porous structure being doped with a biologically active substance to
`
`induce bone growth entirely through the completely porous structure, since it is well
`
`known in the art that the introduction of biologically active substances onto the surfaces
`
`of implants encourages bone growth, which is desirable for achieving a better bond with
`
`bone inside the body. See Applicant's own admission in paragraph [0048] "the bone
`
`fixation body can be adapted to induce bone growth into and entirely through the body.
`
`The body, for example, can be doped with biologically active substances. These
`
`substances may contain pharmaceutical agents to stimulate bone growth all at once or
`
`in a timed-release manner. Such biological active substances are known in the art."
`
`Also see evidentiary reference to Lehman et al. (US 20060134157), paragraph [0003].
`
`Claim 13 is rejected under 35 U.S.C. 1 03(a) as being unpatentable over Draenert
`
`et al. (U.S. Patent No. 5,522,894) in view of Kwong et al. (US Patent No. 5,702,483).
`
`Draenert et al. disclose a hip implant (see FIG. 1 0) comprising a neck body
`
`formed of a non-porous biocompatible metal having a smooth outer surface and having
`
`a neck adapted to connect to a hip component; and a bone fixation body having one
`
`end connected to the neck body and being formed of a completely porous structure
`
`throughout the entire bone fixation body.
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`Page 13 of 187
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`

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`Application/Control Number: 10/446,069
`Art Unit: 3733
`
`Page 5
`
`Draenert et al. disclose the claimed invention except for a non-porous bone-
`
`engaging section between the smooth outer surface and bone fixation body, and the
`
`non-porous bone-engaging section being a band having a rough surface texture; and
`
`except for wherein the completely porous structure has an average pore diameter of
`
`about 40 micrometers to about 800 micrometer. has a porosity from about 45% to 65%.
`
`has interconnections between pores with a diameter larger than 50-60 microns. and is
`
`doped with a biologically active substance to induce bone growth entirely through the
`
`completely porous structure.
`
`Kwong et al. disclose a non-porous bone-engaging section between the smooth
`
`outer surface and bone fixation body. This non-porous bone-engaging section is a band
`
`having a rough surface texture (see ref. #62/64/68) in order to promote attachment of
`
`fibrous tissue to the femoral component between the different components and seal the
`
`prosthetic joint (col. 2, lines 55-61, col. 4, lines 60-61 ).
`
`It would have been obvious to one of ordinary skill in the art at the time the
`
`invention was made to construct the device of Draenert et al. with a non-porous bone-
`
`engaging section between the smooth outer surface and bone fixation body, and the
`
`non-porous bone-engaging section being a band having a rough surface texture, in
`
`order to promote attachment of fibrous tissue to the femoral component between the
`
`different components and to better seal and encapsulate the prosthetic joint.
`
`It would have further been obvious to one having ordinary skill in the art at the
`
`time the invention was made to construct the device of Draenert as modified by Kwong
`
`et al. with an average pore diameter of about 40 micrometers to about 800 micrometer.
`
`Page 14 of 187
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`

`

`Application/Control Number: 10/446,069
`Art Unit: 3733
`
`Page 6
`
`a porosity from about 45% to 65%. interconnections between pores with a diameter
`
`larger than 50-60 microns, since it has been held that where the general conditions of a
`
`claim are disclosed in the prior art, discovering the optimum or workable ranges
`
`involves only routine skill in the art. In re Aller, 1 05 USPQ 233.
`
`It would have further been obvious to one having ordinary skill in the art at the
`
`time the invention was made to construct the device of Draenert as modified by Kwong
`
`et al. with the porous structure being doped with a biologically active substance to
`
`induce bone growth entirely through the completely porous structure, since it is well
`
`known in the art that the introduction of biologically active substances onto the surfaces
`
`of implants encourages bone growth, which is desirable for achieving a better bond with
`
`bone inside the body. See Applicant's own admission in paragraph [0048] "the bone
`
`fixation body can be adapted to induce bone growth into and entirely through the body.
`
`The body, for example, can be doped with biologically active substances. These
`
`substances may contain pharmaceutical agents to stimulate bone growth all at once or
`
`in a timed-release manner. Such biological active substances are known in the art."
`
`Also see evidentiary reference to Lehman et al. (US 20060134157), paragraph [0003].
`
`Response to Arguments
`
`Applicant's arguments filed 12/08/2008 have been fully considered but they are
`
`not persuasive.
`
`Applicant states that the references fail to teach the claim elements added by the
`
`latest amendment filed 12/08/2008. The examiner has introduced case law (In re Aller,
`
`105 USPQ 233) to show that the claim amendments regarding the claimed ranges are
`
`Page 15 of 187
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`

`

`Application/Control Number: 10/446,069
`Art Unit: 3733
`
`Page 7
`
`merely obvious variations of the prior art. In response to the claim amendment
`
`regarding doping with biologically active substance, the examiner asserts that doping
`
`the surface of implants with biologically active substance is well known in the art (See
`
`Applicant's own admission in paragraph [0048] and evidentiary reference to Lehman et
`
`al. (US 20060134157), paragraph [0003]).
`
`Applicant has stated that the pending claims are not a predictable variation of the
`
`art, but has provided not further explanation, argument, or evidence. As such, the
`
`rejections are deemed proper.
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action. In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action. In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the date of this final action.
`
`Page 16 of 187
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`

`

`Application/Control Number: 10/446,069
`Art Unit: 3733
`
`Page 8
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MARY HOFFMAN whose telephone number is
`
`(571 )272-5566. The examiner can normally be reached on Monday-Thursday 10:00-
`
`5:00pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Eduardo C. Robert can be reached on 571-272-4 719. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571-
`
`273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/M. H./
`Examiner, Art Unit 3733
`
`/Anhtuan T. Nguyen/
`Supervisory Patent Examiner, Art Unit 3731
`
`Page 17 of 187
`
`

`

`Notice of References Cited
`
`Application/Control No.
`
`10/446,069
`
`Examiner
`
`MARY HOFFMAN
`
`U.S. PATENT DOCUMENTS
`
`*
`*
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`Name
`
`A
`
`US-2006/0134157
`
`06-2006
`
`Lehman et al.
`
`Applicant(s)/Patent Under
`Reexamination
`LYREN, PHILIP S.
`
`Art Unit
`
`3733
`
`Page 1 of 1
`
`Classification
`
`424/422
`
`US-
`B
`c US-
`D US-
`E US-
`US-
`
`F
`
`G
`
`H
`
`I
`
`J
`
`K
`
`US-
`
`US-
`
`US-
`
`US-
`
`US-
`
`US-
`
`L
`M US-
`
`*
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`Country
`
`Name
`
`Classification
`
`FOREIGN PATENT DOCUMENTS
`
`NON-PATENT DOCUMENTS
`
`Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
`
`*
`
`N
`
`0
`
`p
`
`Q
`
`R
`s
`T
`
`u
`
`v
`
`w
`
`X
`
`*A copy of th1s reference IS not bemg furnished w1th th1s Off1ce act1on. (See MPEP § 707.05(a).)
`Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
`
`U.S. Patent and Trademark Office
`PT0-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20090215
`
`Page 18 of 187
`
`

`

`Index of Claims
`
`Application/Control No.
`
`10446069
`
`Examiner
`
`MARY HOFFMAN
`
`Applicant(s)/Patent Under
`Reexamination
`
`L YREN, PHILIP S.
`
`Art Unit
`
`3733
`
`Rejected
`
`Cancelled
`
`N
`
`Non-Elected
`
`=
`
`Allowed
`
`Restricted
`
`Interference
`
`A
`
`0
`
`Appeal
`
`Objected
`
`D Claims renumbered in the same order as presented by applicant
`
`D CPA
`
`D T.D.
`
`D R.1.47
`
`DATE
`
`CLAIM
`Final
`Original
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`
`07/31/2008 02/15/2009
`-
`-
`-
`-
`./
`./
`
`./
`
`./
`
`-
`-
`-
`-
`-
`-
`-
`./
`
`-
`-
`-
`-
`-
`-
`-
`
`./
`
`./
`
`-
`-
`-
`-
`-
`-
`-
`./
`
`-
`-
`-
`-
`-
`-
`-
`
`U.S. Patent and Trademark Office
`
`Part of Paper No.: 20090215
`
`Page 19 of 187
`
`

`

`Search Notes
`
`Application/Control No.
`
`10446069
`
`Examiner
`
`MARY HOFFMAN
`
`Applicant(s)/Patent Under
`Reexamination
`L YREN, PHILIP S.
`
`Art Unit
`
`3733
`
`SEARCHED
`
`Class
`
`Subclass
`Search notes from 12/01/2005 updated
`updated
`
`Date
`7/31/2008
`2/13/2008
`
`Examiner
`MCH
`MCH
`
`SEARCH NOTES
`
`Search Notes
`
`Class
`
`I
`I
`
`INTERFERENCE SEARCH
`
`Subclass
`
`I
`I
`
`I
`I
`
`Date
`
`I Examiner
`I
`
`Date
`
`I Examiner
`I
`
`U.S. Patent and Trademark Office
`
`Part of Paper No.: 20090215
`
`Page 20 of 187
`
`

`

`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`Filing Date:
`
`10446069
`
`27-May-2003
`
`Title of Invention:
`
`Hip implant with porous body
`
`First Named Inventor/Applicant Name:
`
`PhilipS. Lyren
`
`Filer:
`
`Philip Scott Lyren
`
`Attorney Docket Number:
`
`PSL-003
`
`Filed as Small Entity
`
`Utility under 35 USC 111 (a) Filing Fees
`
`Description
`
`Fee Code
`
`Quantity
`
`Amount
`
`Sub-Total in
`USD($)
`
`Basic Filing:
`
`Pages:
`
`Claims:
`
`Miscellaneous-Filing:
`
`Petition:
`
`Patent-Appeals-and-Interference:
`
`Post-Allowance-and-Post-Issuance:
`
`Extension-of-Time:
`
`Extension- 1 month with $0 paid
`
`2251
`
`1
`
`65
`
`65
`
`Page 21 of 187
`
`

`

`Description
`
`Fee Code
`
`Quantity
`
`Amount
`
`Sub-Total in
`USD($)
`
`Miscellaneous:
`
`Total in USD ($)
`
`65
`
`Page 22 of 187
`
`

`

`Electro