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 .
Continued Examination Under 37 CFR 1.114
In view of the appeal brief filed on 4/3/2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772
Drawings
The drawings are objected to because:
Fig. 1 presents two separate figures to present multiple views and need to be split up appropriately.
Fig. 5 need better quality drawing as it is hard to tell features in the figure.
Fig. 5 present a lead line with no reference labels.
Fig. 8 presents lead lines with no reference labels.
Fig. 11 presents lead lines with no reference labels.
Fig. 11 need better quality drawing as it is hard to tell features in the figure.
Fig. 14 presents lead lines with no reference labels.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “time of the function” in line 18 wherein it should be revised to “time of a function” as antecedent basis has not been established.
Appropriate correction is required.
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.
Claims 1-5 and 7-9 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 1 recites “wherein the working parameters are selected from output voltage, current to the tip, timing of the function, and acoustical and optical indication for giving user feedback” in lines 17-18. It is unclear what each particular parameters are the user can select. For example, is both acoustical and optical indications considered one working parameter or two separate parameters. As currently listed, it is unclear. For examination purposes, the different parameters are 1. Output voltage, 2. Current to the tip, 3. Timing of the function, 4. Acoustical indication, and 5. Optical indication.
Claim 1 recites “timing of the function” in line 18 wherein it is unclear what applicant is specifically claiming. It is unclear what the particular function is or is applicant considering any function such as duration of use can be considered to read upon the limitation. For examination purposes, it will be interpreted as a time of any function would read upon the limitation.
Claims 2-5 and 7-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph for being dependent off of claim 1.
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) 1-3, 5, 7 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kert (US 20050282102 A1) in view of Harlan (US 20190046812 A1).
Re. Claim 1, Kert discloses a modular cord-less pen style dental instrument (Fig. 2; Abstract; Par. 1) comprising:
An elongated body (2/5) for gripping and holding the instrument (Par. 23 calls it a handle part and as such it is used for gripping and holding the instrument), which has a connector portion (3/4; Par. 26) at the distal end thereof (Fig. 2); and
A wand portion (10) having a proximal end (Fig. 2 where it would connect to the connector 3) adapted to be releasably connected to the connector portion at the distal end of the elongated body (Fig. 2; Par. 42);
Wherein the connector portion provides thermal insulation via a heat flow barrier between the wand portion and the elongate body to reduce the accumulation of the heat in the elongated body (Kert discloses an O-ring of sorts in Fig. 4-5 and disclosed in Par. 26. The O-rings as such can create air gaps to form a barrier against the flow of heat and therefore can be considered as “heat flow barriers” for which results in regulating/reducing heat accumulation in the elongated body.);
Wherein the elongated body comprises a rechargeable battery (21; Par. 24) and a main control unit communicatively connected through the connector portion with the wand portion (Par. 46 discloses a control unit not shown).
However, Kert is silent to the wand portion comprises a module control unit powered by the rechargeable battery in the elongated body and communicatively connected with the main control unit of the elongated body and wherein the module control unit serves to communicate the working parameters of the wand portion to the main control unit, wherein the working parameters are selected from output voltage, current to the tip, timing of the function, and acoustical and optical indications for giving user feedback.
Kert does disclose however a module control unit located in the connector portion powered by the rechargeable battery in the elongated body and communicatively connected with the main control unit of the elongated body (Par. 50 implicitly teaches that the integrated circuitry is located in the heads which is considered the module control unit; Par. 12 discloses providing power to the wand portions; Par. 46-49 discloses changing the intensity of the light and the time of the function can be adjusted). It is able to determine the particular wand portion used and would carry out the appropriate function (Par. 50).
Harlan discloses a dental modular cordless pen style dental instrument (Fig. 1) in the analogous art of dentistry handpieces and further discloses a wand portion (Fig. 3) connected the elongated body (14) at a connector portion (Fig. 4; Par. 32). The wand portion discloses a module control unit (23; Par. 32) which serves to communicate the working parameters of the wand portion to a main control unit (47; Par. 25) found in the elongated body (Fig. 1; Par. 25). The working parameters can be found to be timing of the function, power, and intensity (Par. 32-33). By having varying interchangeable wand portion with pre-programmed protocols, it reduces the time to program the device with the required program for the particular wand portion (Par. 32-33 where it is disclosed that the pre-programed protocols would include timing of the function as it would change the duration of the function such as the LEDs emission or by changing the intensity where it can as such control voltage and current values). It should be noted that the O-rings would be placed between the wand portion and the elongate body (see its placement in Fig. 11A and 11B).
It would have been obvious to someone skilled in the art before the effective filing date to have the wand portion of Kert to comprise a module control unit communicatively connected with the main control unit of the elongated body, wherein the module control unit serves to communicate the working parameters of the wand portion to the main control unit, wherein the working parameters are selected from output voltage, current to the tip, timing of the function, and acoustical and optical indications for giving user feedback as taught by Harlan to reduce the time to program the device with the required program for the particular wand portion. Thus, the combination would teach the wand portion comprises a module control unit powered by the rechargeable battery in the elongated body and communicatively connected with the main control unit of the elongated body and wherein the module control unit serves to communicate the working parameters of the wand portion to the main control unit, wherein the working parameters are selected from output voltage, current to the tip, timing of the function, and acoustical and optical indications for giving user feedback.
Re. Claim 2, Kert and Harlan discloses the modular pen-style dental instrument according to claim 1, wherein Kert further discloses the wand portion provides functionality of radiating curing light radiation (Par. 1). Harlan also discloses the wand portion provides functionality of radiating curing light radiation (Par. 6 and 27).
Re. Claim 3, Kert and Harlan discloses the modular pen-style dental instrument according to claim 1, wherein Kert further discloses the heat flow barrier is one solid elements comprising a heat-insulation material (Kert discloses an O-ring of sorts in Fig. 4-5 and disclosed in Par. 26. The O-rings as such can create air gaps to form a barrier against the flow of heat and therefore can be considered as “heat flow barriers” for which results in regulating/reducing heat accumulation in the elongated body.).
Re. Claim 5, Kert and Harlan discloses the modular pen-style dental instrument according to claim 1, wherein Kert further discloses the main control unit is communicatively connected through the connector portion with the wand portion via a single line (Fig. 5 shows that the circuitry would connect to the wand portion in one line).
Re. Claim 7, Kert and Harlan discloses the modular pen-style dental instrument according to claim 1, wherein Kert further discloses the proximal end of the wand portion is releasably connected to the connector portion at the distal end of the elongated body by a friction fit connection (Par. 26).
Re. Claim 8, Kert and Harlan discloses the modular pen-style dental instrument according to claim 7, wherein Kert further discloses the wand portion is releasably connected to the elongated body by a quick-coupler connection (Par. 28).
Re. Claim 9, Kert and Harlan discloses the modular pen-style dental instrument according to claim 8, wherein Harlan further discloses the quick coupler connection allows 360o rotation of the wand around the longitudinal axis of the instrument (Par. 41).
It would have been obvious to someone skilled in the art before the effective filing date to have the connection of Kert and Harlan to allow 360o rotation of the wand around the longitudinal axis of the instrument as taught by Harlan to help direct the light where desired.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kert (US 20050282102 A1) in view of Harlan (US 20190046812 A1) and Sudo (DE 19801535 A1, see machine translated).
(second interpretation) Re. Claim 4, Kert and Harlan discloses the modular pen-style dental instrument according to claim 3, wherein Kert further discloses the one or more solid elements comprise a rubber O-ring and parts of the elongated body and the wand portion which are in contact with each other (Par. 26 discloses it to be O-rings). However, they are silent to the O-ring is made of resin.
Sudo discloses a dental hand tool in the analogous art of dental hand tool and further discloses the O-ring being made of resin such as Fluororubber (Par. 21).
It would have been obvious to someone skilled in the art before the effective filing date to have the O-ring of Kert and Harlan to be made of resin as taught by Sudo as it is a design choice as to the material used as the function of the O-ring is to still provide a seal between the two connections.
Response to Arguments
Argument #1: Applicant argues that there is no motivation to combine references as reference Kert (US 20050282102 A1) requires a heat dissipating to the entire external body of the dental tool contrary to the claimed invention.
Applicant argues that one would not combine the particular references as Kert describes a device that dissipates heat through the entire body of the dental tool. Applicant points to the matter that Kert discloses using a metal cooling block 25 to provide the cooling which is found to not be the heat flow barrier claimed. Further, applicant points out the particular location of the cooling block 25 which is found to not read upon the claimed limitation: “wherein the connection portion provides thermal insulation via a heat flow barrier between the wand portion and the elongate body to reduce the accumulation of the heat in the elongated body”.
Applicant then argues to the point of the O-rings of Kert and argues that the O-rings are found to not be a heat flow barrier as it is described to be an “elastic O-ring assemblies” in Par. 26 of Kert. Further, applicant argues further that the O-rings of Kert is found to not be between the wand portion and the elongate body to reduce the accumulation of the heat in the elongated body so the connection portion can provide thermal insulation via heat flow barrier.
Applicant argues that the mapped wand is found to not be taught by Kert as Kert does not describe a wand nor the boundaries of a wand. Applicant agues that what would constitute a wand in Kert would be elements 3, 6 and 8-11. Further, applicant points to claim limitation reciting “wand portion comprises a module control unit powered by the rechargeable battery in the elongated body and communicatively connected with the main control unit of the elongated body” where they argue is not suggested by Kert.
Response #1:
It should be noted that the claims do not limit the heat solely to being reduced in the area nor does it restrict from other elements to control the heat within the system. Furthermore, it should be noted that claim 3-4 of applicant’s invention discloses that the heatflow barrier of applicant’s invention is an air-gap and/or one or more solid elements comprising a heat-insulation material where the one or more solid elements comprises a rubber O-ring and parts of the elongated body and the wand portion which are in contact with each other, which are made of resin. As such applicant’s argument is found to be not be persuasive.
It is found that applicant’s argument is found to not be persuasive as what is relied upon to teach the particular heat flow barriers are the O-rings of Kert. Despite the intended purpose of Kert differing from applicant’s invention, it does not mean that it is not fully capable of functioning as such. As pointed out above, claims 3-4 of applicant solely requires the heat flow barrier to be an air-gap and/or one or more solid elements comprising heat-insulation material (i.e. rubber O-ring and parts of the elongated body and the wand portion which are in contact with each other, which are made of resin). Applicant as such presents intrinsic evidence that the presence of an O-ring as currently claimed, can structurally perform the required function of creating a heat flow barrier.
With regards to the argument regarding the interpretation of the wand, it is also found to not be persuasive. It should be noted that wand is being interpreted under broadest reasonable interpretation and the dictionary definition of a “wand’ is found to be a long, thin stick or rod. As such, the mapping of the wand can differ between applicants. In this case, it is found to be mapped as solely elements 8-11 and does not include element 3 or 6.
Going back to the argument regarding the O-rings, it is found that it is present between the wand (8-11) and the elongate body (2/5) as shown in Fig. 5 (denoted to be black dots; see also Par. 26 which discloses the usage of O-rings) and pointed out below as an annotated figure.
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With regards to the limitation regarding the argument that the wand portion does not disclose the wand portion comprises a module control unit powered by the rechargeable battery in the elongated body and communicatively connected with the main control unit of the elongated body. It is found to be persuasive as currently mapped. However, it is found that particular teaching of the wand portion comprising module control unit can be found to be taught by Harlan. One would combine the two references as Kert does generally teach the wand portion being identified by a module control unit powered by the rechargeable battery in the elongated body and communicatively connected with the main control unit of the elongated body (Par. 12, and 46-50). Harlan provides the teaching of the wand comprising the elements as claimed in the want portion and also the particular function as currently claimed as well as the connection relationship between the wand portion and elongate body (see Annotated Figure below which shows the O-ring which would be found between the connection portion and wand portion).
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Argument #2: Harlan does not recognize that the main control unit needs to be shielded from the head flow by a heat flow barrier to avoid malfunction when the circuitry is heated by the wand portion.
Applicant argues that Harlan discloses a pre-programmed autonomous system and does not require communication of the working parameters from the wand to the main control unit. Further, applicant argues that Harlan does not disclose the main control unit doesn’t recognize the heat flow barrier and comprises a different means to solve the overheating issues. Applicant argues that Harlan also does not disclose or teach a heat flow barrier.
Response #2:
Applicant’s argument is found to not be persuasive with regards to Harlan not disclosing or teaching a heat flow barrier. It is found that Harlan is not relied upon to teach the heat flow barrier but rather Kert is. However, it should be noted that Harlan does disclose having an O-ring between the wand portion and connection portion where it where the O-ring as such can act as a heat flow barrier similarly argued to the O-ring of Kert above. Like Kert, there is no teaching in Harlan or a limitation in the claims that limits the system to having more than one means to deal with overheating issues. It should be pointed out again that applicant claims the suage of an O-ring to create such heat flow barrier as well in claim 4.
With regards to Harlan not teaching the limitation regarding the module control unit. It is found that it is not persuasive. Par. 32 of Harlan discloses that the control module unit 23 can control operational parameters of the device and is in communication with the main control unit 47. Operational parameters can include the intensity (which can provide voltage and current values), duration of each emission from the LEDs (duration of time), or provide a optical indication forgiving user feedback (where the light can slowly ramp up to full brightness and provides warnings to the user; Par. 32). Though different from applicant’s invention, as currently claimed, Harlan’s module control unit can read upon the limitation. It is found that the module control unit is solely required to communicate the working parameters to the main control unit which Harlan’s system does. When the wand is attached to the particular elongate body, it would determine the particular wand being used and perform the working parameters such as controlling the duration of use of the device (Par. 32).
Argument #3: Sudo does not cure the deficiency of the cited Kert and Harlan references in regards to the heat flow barrier limitation and the module control unit limitation.
Response #2:
Applicant’s argument is found to be not persuasive as Sudo is not relied upon to teach the particular limitation as the combination of Kert and Harlan teaches the limitation. Sudo is used to solely teach the material of said O-rings used.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLY T TO whose telephone number is (571)272-0719. The examiner can normally be reached Monday - Thursday 6:30 - 4:30.
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/HOLLY T. TO/Examiner, Art Unit 3772
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