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 request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn. Applicant’s arguments against the prior art of record, see Remarks filed on 04/10/2026, have been considered, but are moot because the new ground of rejections necessitated by the arguments.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 6 and 10 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites “a certain translucency, or wherein preferably a slightly milky or more milky formation only of an outermost layer”; the scope of the claim is indefinite. The terms “certain translucency” and “slightly milky or more milky” are a relative term which renders the claim indefinite. Said terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation “the matrix material is formed from a polymer material”, and the claim also recites “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” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 10, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claim(s) 1-2, 4-7, 10, 15, 18, 20 and 22-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Le Guay (US20090325130A1).
Regarding claim 1, Le Guay discloses a dental post (Figure 2) comprising a composite material of fibers, a matrix material ([0015]), and X-ray marker particles ([0022]-[0027]), wherein the X-ray marker particles are embedded in the matrix material ([0023]) and the X-ray marker particles have visible and/or UV light reflecting material (e.g. tungsten), and wherein the X-ray marker particles are distributed in the composite material ([0022]]-[0027]), and wherein the X-ray marker particles are provided both to reflect light and for visualization in X-ray examinations (e.g. tungsten), 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 for example tungsten has all the necessary properties to be configured 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), 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 ([0023], [0030] 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 A 1, post 10 comprises 100% of particles in volume, whereas at its periphery it comprises 85% of fibers and 15% of particles in volume [0041]).
Regarding claim 2, Le Guay 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 (i.e. tungsten [0027]).
Regarding claim 4, Le Guay discloses a dental post comprising a composite material of fibers, a matrix material, and X-ray marker particles ([0015]), wherein the X-ray marker particles are embedded in the matrix material ([0022]-[0027]) and the X-ray marker particles have visible and/or UV light reflecting material (e.g. tungsten), and wherein the X-ray marker particles are distributed in the composite material ([0022]), and wherein the X-ray marker particles are provided both to reflect light and for visualization in X-ray examinations (since it could be tungsten). Wherein the X-ray marker particles are arranged exclusively in a central region of the dental post (since the post comprises 100% in volume of particles at the level of its longitudinal axis, the proportion of particles decreasing progressively as we move away from the longitudinal axis to drop to zero about 0.7 mm from the axis [0043]). Therefore, the central region of the post is up to 0.7 mm from the axis, being the area where X-ray marker particles are arranged exclusively.
Regarding claim 5, Le Guay 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 ratio, lacking any criticality, as described in page 9 of the Specification, and Le Guay’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 2), the dental post has a tubular/cylindrical shape.
Regarding claim 6, Le Guay 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 could be any biocompatible organic polymer, such as epoxy, methacrylate, and polyester resins [0031], which are known to be translucent or milky).
Regarding claim 7, Le Guay discloses wherein the fibers are made of a material not doped with X-ray markers (since the fibers can be made of vitreous mineral fibers and/or by other manufactured organic fibers such as fibers with a polyamide, polyester, acrylic, polypropylene or aramide base [0030]).
Regarding claim 10, Le Guay 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 ([0031]).
Regarding claim 15, Le Guay 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 it could be tungsten, which has an atomic number of 74).
Regarding claim 18, Le Guay discloses wherein the X- ray marker particles are particles with a shiny surface (since it could be tungsten [0027]).
Regarding claim 20, Le Guay discloses a dental post (Figure 2) comprising a composite material of fibers, a matrix material ([0015]), and X-ray marker particles ([0022]-[0027]), wherein the X-ray marker particles are embedded in the matrix material ([0023]) and the X-ray marker particles have visible and/or UV light reflecting material (e.g. tungsten), and wherein the X-ray marker particles are distributed in the composite material forming a central region of the dental post ([0041]), and wherein the X-ray marker particles are provided both to reflect light and for visualization in X-ray examinations (since it is tungsten) 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 could be any biocompatible organic polymer, such as epoxy, methacrylate, and polyester resins [0031], 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 for example tungsten has all the necessary properties to be configured to allow visible and/or UV light from a curing light device to be diffusely guided through the dental post, note that the fibers transmit light [0030], such that adhesive around the dental post is polymerized by the visible and/or UV light), and wherein the matrix material is a translucent epoxy resin (since the matrix material could be any biocompatible organic polymer, such as epoxy, methacrylate, and polyester resins [0031], which are known to be translucent or milky).
Regarding claim 22, Le Guay discloses wherein the X-ray marker particles are homogenously doped in the longitudinal direction within the central region of the dental post (since at the level of its central longitudinal axis A 1, post 10 comprises 100% of particles in volume, whereas at its periphery it comprises 85% of fibers and 15% of particles in volume [0041]).
Regarding claim 23, Le Guay 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 Le Guay’s device is homogeneously doped with the X-ray marker particles, see the rejection of claim22 above, and the X-ray marker particles are tungsten; therefore, it has all the necessary properties and structures to be 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, note that the fibers transmit light [0030], 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).
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.
Alternatively, claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Le Guay.
Regarding claim 5, Le Guay 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 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.
Claim(s) 8-9 and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Le Guay in view of Schmidt (DE 102008042021 B3), please see Schmidt’s translation attached to the Office Action filed on 01/19/2024.
Regarding claim 8, Le Guay fails to specifically disclose “wherein the fibers are glass fibers, carbon fibers, ceramic fibers, silica fibers and/or basalt fibers”.
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).
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). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Le Guay’s fibers to make them glass fibers or ceramic fibers, since such modification would have been a case of simple substitution of one known element for another to obtain predictable results (see MPEP 2143).
Regarding claim 9, Le Guay fails to specifically disclose “wherein the fibers run in the longitudinal direction of the dental post and/or extend over the entire length of the dental post”.
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). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to further modify Le Guay’s fibers to make them running in the longitudinal direction of the dental post; since such modification would make the fibers reinforcing components of the dental post.
Regarding claim 12, Le Guay fails to disclose “wherein the X- ray marker particles have a size of not more than 500 µm”.
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). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to further modify Le Guay’s device to make the X- ray marker particles of not more than 500 µm, since such modification would provide the device with appropriately size particles that would enhance its x-ray visibility.
Regarding claim 13, Le Guay fails to disclose “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”.
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). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to further modify Le Guay’s device to make it comprising at least 2% by weight of the matrix material, since such modification would provide the device with appropriately concentration of particles that would enhance its x-ray visibility.
Regarding claim 14, Le Guay fails to disclose “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”.
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). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to further modify Le Guay’s device to make it comprising X-ray marker particles with a concentration of at most 200 % by weight of the matrix material, since such modification would provide the device with appropriately concentration of particles that would enhance its x-ray visibility, without making it too stiff.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Le Guay, in view of Hagenbuch (DE 10060922 A1).
Regarding claim 11, Le Guay 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 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 16 is rejected under 35 U.S.C. 103 as being unpatentable over Le Guay, in view of Reves (US 20180353654 A1).
Regarding claim 16, Le Guay fails to disclose “wherein the X- ray marker particles are approximately spherical particles”.
Reves discloses an implant configured to fit at or near a bone defect to promote bone growth (Abstract), it could be a dental implant ([0087]), X- ray marker particles, which are approximately spherical particles ([0253]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Le Guay’s device to make the X-ray marker particles approximately spherical, since such modification would make the particles of an identifiable shape when analyzed during scanning.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Le Guay, in view of Kuhn (US 20040029996 A1).
Regarding claim 17, Le Guay discloses the X- ray marker particles are predominantly arranged approximately longitudinally in the dental post ([0043]), but fails to disclose “wherein the X- ray marker particles are elongated particles”.
Kuhn discloses a bone cement mixture comprised of a polymer component containing X- ray marker particles (Abstract); wherein the X- ray marker particles are elongated particles (e.g. ellipsoid [0017]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Le Guay’s device to make the X-ray marker particles elongated, since such modification would make the particles of an identifiable shape when analyzed during scanning.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUIS MIGUEL RUIZ MARTIN whose telephone number is (571)270-0839. The examiner can normally be reached M-F 8 Am - 5 PM (EST).
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/LUIS RUIZ MARTIN/
Examiner, Art Unit 3772
/ERIC J ROSEN/ Supervisory Patent Examiner, Art Unit 3772
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