`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
`
`APPLICATION NO.
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`
`
`
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` F ING DATE
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`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
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`13/407,448
`
`02/28/2012
`
`Peter M. Bonutti
`
`180.0044—18000
`
`4919
`
`22882
`
`7590
`
`08/07/2014
`
`MARTIN&FERRARO,LLP
`1557 LAKE O'PINES STREET, NE
`HARTVILLE, OH 44632
`
`PHILOGENE, PEDRO
`ART UNIT
`PAPER NUMBER
`
`3733
`
`MAIL DATE
`
`08/07/2014
`
`DELIVERY MODE
`
`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)
`
`
`
`
`
`Applicant(s)
`Application No.
` 13/407,448 BONUTTI, PETER M.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`PEDRO PHILOGIENE [SENS 3733
`-- The MAILING DA TE 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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () 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).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 2/28/12.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
`
`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 1-51 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1 -51 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'I’\WIIW.usnto. ovI’ atentS/init events/
`
`
`
`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I 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).
`
`Priority under 35 U.S.C. § 119
`
`12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:l Some” c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| 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) E Notice of References Cited (PTO-892)
`.
`.
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date 5/29/12 5/29/12 5/29/12 5/29/12 5/29/12 5/29/12
`
`5/29/12 4/9/14.
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`3) D Interview Summary (PTO-413)
`Paper No(s)/Mai| Date.
`4 I:I Other'
`
`Part of Paper No./Mai| Date 20140804
`
`
`
`Application/Control Number: 13/407,448
`
`Page 2
`
`Art Unit: 3733
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of the appropriate paragraphs of pre-AIA 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 —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
`
`Claims 19-51 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated
`
`by Delp et al. (5,682,886).
`
`With respect to claims 19, 37 Delp et al disclose a method for using a patient
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`specific alignment device for arthroplasty of a portion of a joint, the method comprising
`
`providing an alignment device, as best seen in FlGS.23-26, 29,30, the alignment device
`
`being configured to at least a portion of the joint based on preoperative imaging of the
`
`patient; as set forth in column 8, lines 5-31; cutting only a portion of the joint or cutting
`
`only a medial or lateral condyle of the tibia and the femur of the joint; as set forth in
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`column 18, lines 52-67, column 19, lines 1-41; and positioning a tray (560) and a
`
`bearing (640) with respect to a portion of the joint, wherein the bearing is configured to
`
`be fixed relative to the tray; as best seen in FlGS.23-26.
`
`With respect to claims 20-36, 28-51, Delp et al disclose all the limitations, as set
`
`forth in 8, lines 5-31, column 18, lines 52-67, column 19, lines 1-41; and as best seen in
`
`FlGS.1-38.
`
`Claim Rejections - 35 USC § 103
`
`
`
`Application/Control Number: 13/407,448
`
`Page 3
`
`Art Unit: 3733
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(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 1-18 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Delp et al (5,682,886) in view of Pappas (5,683,468).
`
`With respect to claims 1-9, it is noted that Delp et al disclose all the limitations, as
`
`set forth above, except for wherein the bearing is configured to move in at least one
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`direction with respect to the tray, as claimed by applicant. However, in similar art,
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`Pappas provide the evidences of the use of a tibial tray wherein the bearing is
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`configured to move in at least one direction with respect to the tray in order to provide
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`motion of the knee approximating normal.
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`Therefore, given the teaching of Pappas, it would have been obvious to one
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`having ordinary skill in the art at the time the invention was made to modify the device of
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`Delp et al, as taught by Pappas, by replacing the fixed bearing of Delp et al with the
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`mobile bearing of Pappas in order to provide motion of the knee approximating normal.
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure.
`
`5,395,376
`
`3-1995
`
`Caspari et al.
`
`6,205,411
`
`3-2001
`
`DiGioia III, et al
`
`
`
`Application/Control Number: 13/407,448
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`Page 4
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`Art Unit: 3733
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to PEDRO PHILOGENE whose telephone number is
`
`(571 )272—471 6. The examiner can normally be reached on Monday to Friday 8:00 AM
`
`to 4:30 PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Eduardo Robert can be reached on (571) 272 - 4719. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`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
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/PEDRO PHILOGENE/
`
`Primary Examiner, Art Unit 3733
`August 4, 2014
`
`
`
`Application/Control Number: 13/407,448
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`Page 5
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`Art Unit: 3733
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`
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