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 Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 13-15, 25 is/are rejected under 35 U.S.C. 102a1 as being anticipated by JP 3191538 U (JP hereinafter).
Re Claim 1, JP discloses an article 22 comprising a first portion 24 and a second portion 23 integral to the first portion, wherein the second portion comprises a coupling (top of 23) [configured to engage a cylindrical tool], wherein the second portion comprises a spherical elbow (where 23A points), and wherein the spherical elbow forms an angle between 45 degrees and 175 degrees between an open end of the coupling engaged to the cylindrical tool and a frangible section BL at a connection point to the first portion, and wherein the spherical elbow of the second portion is joined to a conical segment (see Fig. 4, conical segment is below the bend at where 23A points) of the second portion (Fig. 2-4; pg. 2-5). Furthermore, the claimed phase " additive manufactured " is being treated as a product-by-process limitation and since it has been held that a product-by-process limitation is not construed as being limited to the product formed by the specific process recited, therefore, even though JP is silent as to the process used to form the article, JP' s product meets the claimed structural limitations. This statement applies to dependent claims below as well. The recitation in brackets [ ] is considered functional language. The reference discloses all the structural components of the tool, which read on those of the instant invention. Therefore, the device is capable of performing the same desired functions as the instant invention as claimed. This statement applies to dependent claims below as well.
Re Claim 13, JP discloses a kit comprising: an article 22 comprising a first portion 24 and a second portion 23 integral to the first portion, wherein the second portion comprises a coupling (top of 23) [configured to engage a cylindrical tool], wherein the first portion has a shape of either (i) a dental restoration appliance selected from a group consisting of a crown, a bridge, an inlay, an onlay, a veneer, a facing, and a coping or (ii) an orthodontic appliance selected from a group consisting of an attachment, a bracket, a buccal tube, a hook, and a button (has shape of an attachment or bracket), wherein the second portion comprises a frangible section at a connection point BL to the first portion, wherein the second portion comprises spherical elbow (where 23A points), and wherein the spherical elbow forms an angle between 45 degrees and 180 degrees between an open end of the coupling engaged to the cylindrical tool and the frangible section at the connection point to the first portion, and wherein the spherical elbow of the second portion is joined to a conical segment (see Fig. 4, conical segment is below the bend at where 23A points) of the second portion (Fig. 2-4; pg. 2-5). Furthermore, the claimed phase " additive manufactured " is being treated as a product-by-process limitation and since it has been held that a product-by-process limitation is not construed as being limited to the product formed by the specific process recited, therefore, even though JP is silent as to the process used to form the article, JP' s product meets the claimed structural limitations. This statement applies to dependent claims below as well. The recitation in brackets [ ] is considered functional language. The reference discloses all the structural components of the tool, which read on those of the instant invention. Therefore, the device is capable of performing the same desired functions as the instant invention as claimed. This statement applies to dependent claims below as well.
Re Claim 14, JP discloses [the cylindrical tool comprises a handle] (Fig. 2-4). Note that this claim has limited patentable weight since it is describing a component that is not part of the claimed invention.
Re Claim 15, JP discloses the additive manufactured article is the article according to claim 1 (Fig. 2-4).
Re Claim 25, JP discloses [the cylindrical tool is configured to attach to the coupling via attachment by at least one of a slit and beam connection, a clamp connection, a screw and thread connection, a snap connection, a bolt connection, a friction fit connection, or a pressure sensitive adhesive connection] (Fig. 2-4; page 3). Note that this claim has limited patentable weight since it is describing a component that is not part of the claimed invention.
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP.
Re Claim 2, JP does not disclose the first portion has a maximum dimension of 30 millimeters (mm) and a minimum dimension of 0.25 mm. However, it would be obvious to make the first portion of a desired size in order to be used in desired way and also since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955) and further it would have been obvious to adjust the maximum and minimum dimension since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN J WALTERS whose telephone number is (571)270-5429. The examiner can normally be reached M-F 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan J. Walters/Primary Examiner, Art Unit 3799
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