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 .
Response to Arguments
Applicant’s arguments and amendments, see Applicant’s Remarks (filed 08/13/2025), have been fully considered. The amended claims have been acknowledged and newly added claims 22 and 23 have been entered by the Examiner. Applicant’s arguments against the rejections in view of the prior art of record have been fully considered, but are not persuasive, as they do not address the new interpretation necessitated by Applicant’s amendments.
The Examiner notes that X-ray marker particles provided both to reflect light and for visualization in X-ray examinations can be attributed to Schmidt (DE 102008042021 B3) by virtue of Schmidt’s disclosure of X-ray contrast agents are introduced as fillers (e.g. claim 9); said contrast agents could be platinum or tungsten (page 6, paragraph 1) which are known elements that reflect light.
Claim Rejections - 35 USC § 103
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 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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or
nonobviousness.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 5-10, 12-18 and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (DE 102008042021 B3) in view of Le Guay (US 20090325130 A1), please see Schmidt’s translation attached to the Office Action filed on 01/19/2024.
Regarding claim 1, Schmidt discloses a dental post (1) comprising a composite material of fibers, a matrix material (fibers 3 and plastic matrix, please see Abstract in page 2), and X-ray marker particles (reflection-/absorption particles 6, see abstract, see also page 6, paragraph 1, the particles 6 can be platinum or tungsten and their alloys), wherein the X-ray marker particles are embedded in the matrix material (page 6, paragraph 1, Fig. 3) and the X-ray marker particles have visible and/or UV light reflecting material (page 6, paragraph 1, particles can be platinum or tungsten and their alloys), and wherein the X-ray marker particles are distributed in the composite material (page 10, claim 1), and wherein the X-ray marker particles are provided both to reflect light and for visualization in X-ray examinations (since X-ray marker particles, reflection-/absorption particles 6, could be platinum or tungsten and their alloys; page 6, paragraph 1, which are material well known in the art to be excellent X-ray markers and reflects both visible and UV light).
And wherein the X-ray marker particles allow visible and/or UV light from a curing light device to be diffusely guided through the dental post such that adhesive around the dental post is polymerized by the visible and/or UV light (since the X-ray marker particles disclosed by Schmidt, i.e. platinum or tungsten and their alloy have all the necessary structures and/or chemical properties to allow visible and/or UV light from a curing light device to be diffusely guided through the dental post such that adhesive around the dental post is polymerized by the visible and/or UV light). The Examiner notes that these last limitations constitute functional language (i.e. an adhesive around the dental post is not positively recited) and that Schmidt’s device could be configured to performed the claimed language.
However, Schmidt fails to disclose “and wherein the X-ray marker particles have a higher concentration in a central region of the dental post than in an edge region of the dental post” and “the X-ray marker particles are homogenously doped in the longitudinal direction of the dental post”.
Le Guay discloses a dental implant/post (Figure 2) comprising an X-ray marker particles (see materials with Xray opacity in [0027]), wherein the X-ray marker particles are embedded in a material ([0022]-[0027]); wherein the X-ray marker particles have a higher concentration in a central region of the dental post than in an edge region of the dental post ([0023 and [0041]]) and the X-ray marker particles are homogenously doped in the longitudinal direction of the dental post (since at the level of its central longitudinal axis A1, post 10 comprises 100% of particles in volume, whereas at its periphery it comprises 15% of particles in volume [0041]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Schmidt’s dental post to make it comprising the X-ray marker particles homogenously doped in the longitudinal direction of the dental post, since such modification would allow the post to have homogenous visual properties when analyzed in an x ray.
Regarding claim 2, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses wherein the X-ray marker particles are made of gold, platinum, iridium, rhenium, tungsten or tantalum, or a mixture or alloy of two or more of gold, platinum, iridium, rhenium, tungsten or tantalum (page 6, paragraph 1).
Regarding claim 5, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses wherein the central region extends from a center line of the dental post into a region up to approximately 0.8 times the radius of the dental post (since this limitation is just a ration, lacking any criticality, as described in page 9 of the Specification and as shown in the annotated Figure below, Schmidt’s device could have the same ratio), whereas the remaining region forms the edge region, so that the central region is approximately cylindrical and the edge region is approximately tubular (shown in Figure 1), the dental post has a tubular/cylindrical shape.
[AltContent: textbox (Figure 1. Schmidt’s Annotated Figure 1.)]
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Alternatively, Schmidt fails to specifically disclose “wherein the central region extends from a center line of the dental post into a region up to approximately 0.8 times the radius of the dental post.
On the other hand, the instant disclosure describes these parameters as being merely preferable (page 9) and does not describe it as contributing an unexpected result to the handpiece. As such, these parameters, are deemed matters of design choice (lacking in any criticality), well within the skills of the ordinary artisan, obtained through routine experimentation in determining optimum results in order to provide a proper bending and torsional stiffness. Therefore, it would have been an obvious matter of design choice to modify the central region to extend from a center line of the dental post (1) into a region up to approximately 0.8 times, the radius of the dental post, since applicant has not disclosed that said ratio solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with a different ratio between the diameter of the central region and the actual radius of the device.
Regarding claim 6, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses wherein the matrix material of the edge region is translucent or milky, wherein the matrix material in this region has a certain translucency, or wherein preferably a slightly milky or more milky formation only of an outermost layer, or only of the surface of the matrix material of the edge region is provided, so that the color of the X-ray marker particles arranged in the central region of the dental post does not show through to the outside or only to a lesser extent; since the matrix material is preferably a biocompatible organic Polymer, which is preferably selected from the group of Epoxy, acrylic, polyurethane and polyester resins and their copolymers and blends (page 6, paragraph 5), which are known to be translucent or milky.
Regarding claim 7, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses wherein the fibers (4) are made of a material not doped with X-ray markers (since the fibers are made of glass fibers or ceramic fibers; page 6, paragraph 4).
Regarding claim 8, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses wherein the fibers are glass fibers, carbon fibers, ceramic fibers, silica fibers and/or basalt fibers (page 6, paragraph 4).
Regarding claim 9, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses wherein the fibers run in the longitudinal direction of the dental post and/or extend over the entire length of the dental post (since the fibers are embedded parallel to a longitudinal axis in the plastic matrix; page 1, paragraph 1).
Regarding claim 10, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses wherein the matrix material is formed from a polymer material, in particular epoxy resin and/or a chemically reactive polymerizing plastic or thermoset, such as polyester resin, vinyl ester resin, methacrylate resin, phenacrylate resin, spatially cross-linking polyurethane and/or formaldehyde resin (page 6, paragraph 5).
Regarding claim 12, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses wherein the X-ray marker particles have a size of not more than 500 µm; since the X-ray marker particles (reflection / absorption particles) have a diameter of 10-100 nm, 0.01-0.1 µm (page 1, paragraph 1).
Regarding claim 13, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses wherein the X-ray marker particles are provided with a concentration of at least 2% by weight of the matrix material in which they are embedded (since the X-ray marker particles, reflection/absorption particles, are in one concentration from 1 to 90% by weight in the endodontic post; page 6, paragraph 2).
Regarding claim 14, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses wherein the X-ray marker particles are provided with a concentration of at most 200 % by weight of the matrix material in which they are embedded. The Examiner notes that in Schmidt’s device the concentration of the X-ray marker particles (reflection/absorption particles) is no more 200% to the weight of the matrix material in which it is embedded (since it is 1 to 90% by weight in the endodontic post; page 6, paragraph 2).
Regarding claim 15, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses wherein the X-ray marker is formed from a material with an atomic number of at least 70, and/or from a material with a density of at least 15 g/cm3 since the X-ray marker (reflection/absorption particles) could be platinum, as explained in the above rejection of claim 1. The Examiner notes that the atomic number of platinum is 78.
Regarding claims 16 and 17, the Examiner notes that in Schmidt’s disclosure the X-ray marker particles (reflection/absorption particles) could be spherical or elongated, e.g. cylindrical (since a cross-sectional view of the dental post, Figure 1, shows the cross-sectional face of the particles to be a circle and Schmidt discloses the size of the particles in term of diameter, page 1, which is a dimension only measured in geometries comprising circular shapes). Therefore, it would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to modify Schmidt/Le Guay’s device to include X-ray marker particles approximately spherical particles and/or elongated particles which are predominantly arranged approximately longitudinally in the dental post, since such modification would be a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed particles was significant (please see MPEP 2144).
Regarding claim 18, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses wherein the X-ray marker particles are particles with a shiny surface (since the X-ray marker, reflection/absorption particles, could be platinum, as explained in the above rejection of claim 1).
Regarding claim 22, Schmidt and Le Guay Lu discloses the invention substantially as claimed. Wherein the X-ray marker particles are homogenously doped in the longitudinal direction within the central region of the dental post (see the rejections of claim 1 above and Le Guay’s paragraph [0041]).
Regarding claim 23, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses wherein the visible and/or UV light reflecting material of the X-ray marker particles and the homogeneous doping of the X-ray marker particles within the central region are configured such that, when the dental post is illuminated by the curing light device at one end, the visible and/or UV light is transmitted through the post to the central region and reflected and scattered by the X-ray marker particles to create even and diffuse illumination along the longitudinal axis sufficient to polymerize the adhesive around the dental post. Since the X-ray marker particles disclosed by Schmidt, i.e. platinum or tungsten and their alloy have all the necessary structures and/or chemical properties to allow visible and/or UV light from a curing light device to be diffusely guided through the dental post such that adhesive around the dental post is polymerized by the visible and/or UV light). The Examiner notes that these last limitations constitute functional language (i.e. an adhesive around the dental post is not positively recited) and that Schmidt’s device could be configured to performed the claimed language.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Schmidt in view of Lu (US 20200100875 A1).
Regarding claim 4, Schmidt discloses a dental post (1) comprising a composite material of fibers, a matrix material (fibers 3 and plastic matrix, please see Abstract in page 2), and X-ray marker particles (reflection-/absorption particles 6, see abstract, see also page 6, paragraph 1, the particles 6 can be platinum or tungsten and their alloys), wherein the X-ray marker particles are embedded in the matrix material (page 6, paragraph 1, Fig. 3) and the X-ray marker particles have visible and/or UV light reflecting material (page 6, paragraph 1, particles can be platinum or tungsten and their alloys), and wherein the X-ray marker particles are distributed in the composite material (page 10, claim 1), and wherein the X-ray marker particles are provided both to reflect light and for visualization in X-ray examinations (since X-ray marker particles, reflection-/absorption particles 6, could be platinum or tungsten and their alloys, page 6, paragraph 1, which are material well known in the art to be excellent X-ray markers and reflects both visible and UV light). However, Schmidt fails to disclose wherein the X-ray marker particles are arranged exclusively in a central region of the dental post.
Lu discloses a dental post (22) comprising a composite material of fibers, a matrix material ([0041]), and X-ray marker particles (221), wherein the X-ray marker particles are embedded in the matrix material (Figure 6A) and wherein the X-ray marker particles are arranged exclusively in a central region of the dental post (Figure 6A, [0046]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Schmidt’s dental post to make it comprising the X-ray marker particles arranged exclusively in a central region, as taught by Lu, since such modification make the visualization of the post easier on an x-ray image.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Schmidt in view of Le Guay, in view of Hagenbuch (DE 10060922 A1).
Regarding claim 11, Schmidt and Le Guay discloses the invention substantially as claimed. Schmidt discloses that X-ray marker particles have a size of 10-100 nm, but fails to disclose “wherein the X-ray marker particles have a size of at least 0.5 µm”.
On the other hand, Hagenbuch discloses a dental post (3) for insertion in a root canal (Figure 1, page 10, paragraph 2), comprising X-ray opaque fillers (page 4 paragraph 7 – page 5, paragraph 1). Hagenbuch discloses that the size of these fillers is 0.5 µm to 5 µm (page 5, paragraph 1). Therefore, it would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to modify Schmidt/Le Guay’s device to make the X-ray marker particles have a size of at least 0.5 µm, as disclosed by Hagenbuch (since such modification would result in an enlargement of the particles which would facilitate the visualization of the dental post in X-ray scans).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Schmidt in view of Reynaud (US 5989032 A).
Regarding claim 20, Schmidt discloses a dental post (1) comprising a composite material of fibers, a matrix material (fibers 3 and plastic matrix, please see Abstract in page 2), and X-ray marker particles (reflection-/absorption particles 6, see abstract, see also page 6, paragraph 1, the particles 6 can be platinum or tungsten and their alloys), wherein the X-ray marker particles are embedded in the matrix material (page 6, paragraph 1, Fig. 3) and the X-ray marker particles have visible and/or UV light reflecting material (platinum or tungsten and their alloys), and wherein the X-ray marker particles are distributed in the composite material forming a central region (4) of the dental post (page 10, claim 1; Fig. 3), and wherein the X-ray marker particles are provided both to reflect light and for visualization in X-ray examinations and the matrix material of an edge region is translucent or milky so that the color of the X-ray marker particles arranged in the central region of the dental post does not show through to the outside (since the matrix material is preferably a biocompatible organic polymer, which is preferably selected from the group of epoxy, acrylic, polyurethane and polyester resins and their copolymers and blends, page 6, paragraph 5; which are known to be translucent or milky).
And wherein the X-ray marker particles allow visible and/or UV light from a curing light device to be diffusely guided through the dental post such that adhesive around the dental post is polymerized by the visible and/or UV light (since the X-ray marker particles disclosed by Schmidt, i.e. platinum or tungsten and their alloy have all the necessary structures and/or chemical properties to allow visible and/or UV light from a curing light device to be diffusely guided through the dental post such that adhesive around the dental post is polymerized by the visible and/or UV light). The Examiner notes that these last limitations constitute functional language (i.e. an adhesive around the dental post is not positively recited) and that Schmidt’s device could be configured to performed the claimed language. However, Schmidt fails to specifically disclose “and wherein the matrix material is a translucent epoxy resin”.
Reynaud discloses a dental post comprising a matrix material that is a translucent epoxy resin (col 3, lines 13-17). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Schmidt’s dental post to make it comprising a matrix material that is a translucent epoxy resin, as taught by Reynaud, since such modification facilitate the photopolymerization of the material by directly applying light to its outer surface (col 4, lines 4-5).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUIS RUIZ whose telephone number is (571)270-0839. The examiner can normally be reached on M-F 8 Am - 5 PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached on (571) 270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Luis Ruiz Martin/
Patent Examiner
Art Unit 3772
/ERIC J ROSEN/Supervisory Patent Examiner, Art Unit 3772
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