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 § 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 17-18 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 17 recites “The vacuum tip intended to be used with the vacuum hose of claim 1”, but then goes on to define structure already recited in claim 1, making it unclear if this is the same vacuum tip as in claim 1, or a different one. It is unclear what is meant to be included in the vacuum tip and if it is intended to replace such a tip of the already recited claim 1. It is again suggested to simply claim a vacuum tip and define the structure thereof, without a reference to claim 1. Or to claim a vacuum tip that is intended to be used with the hose of claim 1 and define the entire structure of the vacuum tip.
Claim 18 is rejected in a similar manner, but with respect to a vacuum hose.
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.
Claims 1, 3, 5, 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Davis (5,931,670) in view of Kutner (4,204,328).
Davis shows an oral cavity suction device including a vacuum hose (28; slightly different embodiments in Fig. 4-8) connected to a suction source (suction source 14) and a vacuum tip (110) provided with a tube body having a base end connectable to a distal end of the vacuum hose (where 110 and 28 meet, particularly in Fig. 4 for instance) and a distal end that is a suction opening (near 132 in Fig. 4), the oral cavity suction device comprising a light source device (216) being a light emitting diode or a halogen lamp (illuminator 16 may be a “halogen, neon or other known type of light source”) and is supplied with power (in order to power the light source); a hose-side light-outputting end face that is included in the vacuum hose (near 146 on the side of 144 in Fig. 4 for instance) and arranged to face a distal end side of the vacuum hose (as seen in Fig. 4) to output light from the light source device (light travels from 144 through 146 to 125); and a light guiding element (125) that is included in the vacuum tip (Fig. 4), has a tip-side light-receiving end face arranged to face a base end side of the vacuum tip (near 125 in Fig. 4 approaching 146), and can guide light input from the tip-side light-receiving end face and project the light (from end 251 for instance, or through 119 out the end tip), wherein the hose-side light-outputting end face and the tip-side light-receiving end face are positioned to allow light to be transmitted from the hose-side light-outputting end face to the tip-side light-receiving end face in a state in which the vacuum tip is completely connected to the vacuum hose (as in Fig. 4 for instance).
With respect to claim 3, the oral cavity suction device with lighting according to claim 1, further comprising: a hose-side optical fiber (fiber 144) that has a base end connected to a light emitting face of the light source device (via 144) and is fixed to the vacuum hose (Fig. 4), wherein a distal end face of the hose-side optical fiber is the hose-side light-outputting end face (end thereof).
With respect to claim 5, further comprising a tip-side optical fiber (125) extending on an outer surface or an inner surface of a tube body of the vacuum tip (Fig. 4) or in a tube wall of the vacuum tip in a longitudinal direction, wherein the tip-side optical fiber is the light guiding element (Fig. 4), and a base end face of the tip-side optical fiber is the tip-side light-receiving end face (as detailed above).
Davis discloses the device as previously described above, but fails to show the light source is fixed to an outer surface or an inner surface of the vacuum hose in the vicinity of the distal end of the vacuum hose. Kutner similarly teaches an oral cavity suction device wherein the light source is fixed in the vicinity of the distal end of the vacuum hose (Fig. 12 in particular). With respect to claim 19, further comprising: a control unit (at switch 57 and incorporated wiring to control the light) that is attached to the outer surface (Fig. 12) in the vicinity of the light source device (63), and includes a switch that turns on and off a power supply of the light source device (57 and next to 65 in Fig. 12); a housing accommodating the control unit (at 65 in Fig. 12); and an operation unit of the switch provided on an outer surface of the housing (at 57 and near 65 in Fig. 12). With respect to claim 20, wherein a power supply of the light source device is a battery or a rechargeable battery (battery 64). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Davis’ device by incorporating the battery, control unit, and light source on the device in order to reduce the need for additional wires and reduce the bulk of the device as taught by Kutner.
Apparatus claims 17-18 regarding a vacuum tip and vacuum hose for use in the above oral cavity suction device are rejected similarly to the above since they claim the same structure detailed above (see also 112 rejection above).
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
Applicant argues that completion of connecting a vacuum hose and a vacuum tip does not make it possible to position the light-outputting end face of the optical fiber and the light-receiving end face of the optical fiber to allow light to be transmitted. The language in the claim is “the hose-side light-outputting end face and the tip-side light-receiving end face are positioned to allow light to be transmitted from the hose-side light-outputting end face to the tip-side light-receiving end face in a state in which the vacuum tip (1) is completely connected to the vacuum hose (2).” The reference shows the “state in which the vacuum tip (1) is completely connected to the vacuum hose (2)” in Fig. 4. In this completely connected state of Fig. 4, one can also see “the hose-side light-outputting end face and the tip-side light-receiving end face are positioned to allow light to be transmitted from the hose-side light-outputting end face to the tip-side light-receiving end face” at 146 in Fig. 4. Therefore, it is unclear how it is not possible to have the light ends connected when the tip is completely connected to the vacuum hose since it is shown in Fig. 4.
Applicant argues that the prior art lacks “a light source device fixed to the vacuum hose in the vicinity of the distal end of the vacuum hose…”. Kutner’s light source/power is fixed to the hose via the connection portion of the tip as seen in cited Fig. 12. The light source is also shown in the vicinity of the hose in Fig. 12. Vicinity is a broad term meaning “a surrounding area or district, quality or state of being near” from Merriam-Webster. If a more narrow limitation is desired in regards to the fixing and location of the light source, it is suggested to include more narrow language in order to overcome the present prior art.
Applicant appears to be arguing intended use of sterilization and cleaning, however this does not do anything to diminish the motivation for combination, as the structure is present in the prior art and the motivation provided therefrom supports the combination, even if it may be a different motivation from that of Applicant’s.
Applicant again appears to argue concurrent connection of the tip/hose and light faces, however this language is not in the claims, and even if it were, the structure of Davis allows for concurrent connection (i.e. when both connections are made at the same time).
Applicant argues hindsight bias, but motivation has been provided from the references to support the combination.
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 MATTHEW NELSON whose telephone number is (571)270-5898. The examiner can normally be reached on Monday-Friday 7:30am-5:00pm EDT.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eric Rosen, at (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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/MATTHEW M NELSON/Primary Examiner, Art Unit 3772