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, see Applicant’s Remarks (filed 01/08/2026), with respect to claims 1-4, 6-8, 10-20, and 22-24 have been fully considered. Applicant’s arguments against the rejections in view of the prior art of record are not persuasive.
Regarding Applicant’s assessment that EAO Channel (NPL relied upon) does not teach the method for oral surgery consisting essentially of the claimed steps, the Examiners disagrees and applies the broadest reasonable interpretation (BRI) to these limitations (i.e. consisting essentially of). Since an Examiner must construe claim terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim.
As set forth in MPEP 2111.03(III): For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355
The terms “consisting essentially of” does not exclude well known steps that one of ordinary skills in the art could considered obvious and pertinent to take during the surgical procedure (e.g. preparing the bone to receive the graft material) and that would not materially affect the basic and novel characteristics of the claim. The step of “opening the gums” is not defined by the specification in a manner that would support a negative limitation which would exclude said well-known steps (e.g. the Specification describes: “A flap was elevated around the areas of the adjacent tooth where the periodontal defect had created bone loss. The socket and adjacent root surfaces were debrided and cleared of debris. According to still further exemplary aspects of the disclosure, the exposed affected portions of the tooth were root planed with hand and/or ultrasonic and/or piezoelectric instrumentation in preparation for graft placement” [0024]). Additionally, the exposure of cancellous bone and removal of cortical bone still results in the required step of “opening the gum of a patient at one or more second locations along the alveolar ridge” applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of the claimed invention. There is no evidence that exposing cancellous bone or removing cortical bone to arrive at the step of “opening the gum” would affect the basic and novel characteristic of the claimed invention. Therefore, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” MPEP section 2111.03 III
Regarding Applicant’s argument that the use by the prior art of a block of dentin teaches away from the claimed limitations, the Examiner notes that the claim is silent regarding the graft being “only particulate/ground” or not using a block graft. The prior art clearly discloses the use of particulate/ground dentin (minutes 1:08 to 1:18) covering the graft material with a membrane (see minutes 1:19 to 1:30).
Additionally, claim 1 is rejected by a method that starts in minute 0:48 in the prior art. There is not additional step of an invasive bone removal after said minute 0:48 in the prior art. The Examiner notes that the Applicant alleges that the bone shown in minute 0:53 to minute 0:54 must have been prepared to received the bone graft material, by removing native crestal and facial bone, and that the Applicant asserts that even though said preparation is not shown, the image implies that it must have been performed (see end pf page 9 to page 10). The Examiner considers that the reference is silent regarding any preparation that would aid the success of the bone grafting procedure; and in case that the image is evidence enough that said preparation took place, this additional procedure even though it could be consider more invasive does not invalidate the art and the rejection. Since there is no evidence that exposing spongy cancellous bone by removing native crestal and facial bone to arrive at the step of “opening the gum” would affect the basic and novel characteristic of the claimed invention, since there is not a negative limitation in the original claims or statement in the Specification that clearly asserts that said additional step affects the basic and novel characteristic of the claimed invention. Therefore, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” MPEP section 2111.03 III
The Affidavit or Declaration under 37 CFR 1.132 filed on 01/08/2026 is insufficient to overcome the rejection of claims 1-4,6-8,10-20 and 22-24 based upon the prior art, as set forth in the last Office action because: the reasons explained above with respect to applicants arguments.
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) 1-4, 6-7, 9-10, 13-19, and 21-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EAO Channel (Please see the link for the YouTube video provided in the PTO 892 form and NPL attached to this Office Action).
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Regarding claim 1, EAO discloses a method for oral surgery (The video shows a method of alveolar augmentation using autologous Dentin Graft from the Wisdom Tooth), consisting essentially of: identifying a first location along the alveolar ridge corresponding to the position of one or more current or missing first teeth or dental implant of a patient for alveolar bone height augmentation (Minute 0:24 and Annotated Figure of minute 0:24, above); opening the gum of a patient at one or more second locations along the alveolar ridge corresponding to the position of one or more current or missing second teeth or dental implants (Minute 0:49 – 0:50 and Annotated Figure of minute 0:24), wherein the one or more second locations are adjacent to the first location (EAO Annotated Figure of minute 0:24), wherein at least one of said one or more second locations include a socket and/or alveolar defect (the second location is the location of one missing second teeth; i.e. a socket, and also presents bone resorption, as shown in EAO Annotated Figure of minute 0:24); packing a graft material comprising dentin into the socket and/or alveolar defect (the Dentin Graft from the Wisdom Tooth in addition to the particulated dentin graft is added in minutes 1:08 to 1:18, see Annotated Figure of minute minutes 1:08 to 1:18 above, clearly augments the alveolar bone height at both locations); and covering the graft material with a membrane (membrane in the form of a white material, shown in minutes 1:19 to 1:30 and Annotated Figure of minute minutes 1:19 to 1:30; wherein the alveolar bone height is increased across the alveolar ridge at the first location. The Examiner notes that the procedures heals the gum resorption at the first location, where the root is not exposed after the alveolar bone is augmented (please see minute 1:33).
Regarding claim 2, EAO discloses “wherein the graft material comprises autologous dentin”; since EAO discloses the extraction of a wisdom tooth (minute 0:31), the separation of the tooth in halves (minute 0:36), the particulation of the tooth (minute 0:40) and the step of applying the particulated dentin graft material (minute: 1:09).
Regarding claim 3, EAO discloses “further comprising the step of grinding one or more autologous teeth” (minute 0:40).
Regarding claim 4, EAO discloses wherein the first location is an alveolus directly adjacent to an alveolus at the second location (EAO Annotated Figure minute 0:24).
Regarding claim 6, EAO discloses wherein the step of opening the gum includes forming a periodontal flap (please see minutes 0:48 to 0:53).
Regarding claim 7, EAO discloses further comprising the step of preparing the second location prior to the packing step; since EAO discloses the step of placing an autologous half of a wisdom tooth to augment the ridge prior the packing step (minute 0:56).
Regarding claim 10, EAO discloses wherein the first location corresponds to a questionable tooth (since as shown in EAO Annotated Figure of minute 0:24 the first location is a questionable tooth due to root exposure and vertical bone loss adjacent and or surrounding the root of the tooth located at the first location).
Regarding claim 13, EAO discloses a method for augmenting alveolar bone height lateral to a treatment site (since the video shows a method of alveolar augmentation in the vertical and horizontal directions using “Autologous Dentin Graft from the Wisdom Tooth”), consisting essentially of: identifying a first location along the alveolar ridge corresponding to the position of one or more current or missing first teeth or dental implant of a patient for dimensional augmentation (Minute 0:24 and EAO Annotated Figure of minute 0:24), packing a graft material comprising ground dentin at a second location along the alveolar ridge corresponding to the position of one or more current or missing second teeth or dental implant laterally adjacent to the first location (Minute 0:49 – 0:50); and covering the graft material with a membrane (membrane in the form of a white material, shown in minutes 1:19 to 1:30); wherein alveolar bone height is augmented across the alveolar ridge at the first location. The Examiner notes that the procedures heals the gum resorption at the first location, where the root is not exposed after the alveolar bone is augmented (please see minute 1:33).
Regarding claim 14, EAO discloses wherein dentin graft material comprises autologous dentin (since EAO discloses the extraction of a wisdom tooth (minute 0:31), the separation of the tooth in halves (minute 0:36), the particulation of the tooth (minute 0:40) and the step of applying the particulated dentin graft material (minute: 1:09)).
Regarding claim 15, EAO discloses further comprising the step of grinding one or more autologous teeth (minute 0:40).
Regarding claim 16, EAO discloses wherein the first location is an alveolus directly adjacent to an alveolus at the second location (EAO Annotated Figure minute 0:24).
Regarding claim 17, EAO discloses wherein the second location is at a defect or extraction socket (the second location is the location of one missing second teeth; i.e. a socket, and also presents bone resorption, as shown in EAO Annotated Figure of minute 0:24).
Regarding claim 18, EAO discloses further comprising the step of forming a periodontal flap (please see minutes 0:48 to 0:53).
Regarding claim 19, EAO discloses further comprising the step of preparing the second location prior to the packing step; since EAO discloses the step of placing an autologous half of a wisdom tooth to augment the ridge prior the packing step (minute 0:56). The Examiner notes that said autologous half of a wisdom tooth occupies a space that overlaps with the second location.
Regarding claim 22, EAO discloses “wherein the first location corresponds to a questionable tooth”; since as shown in (EAO Annotated Figure of minute 0:53) the first location is a questionable tooth due to vertical bone loss adjacent and or surrounding the root of the tooth located at the first location.
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.
In an alternative interpretation claims 7-8 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over EAO in view of Soon-Xae Hong (Please see the link for the YouTube video provided in the PTO 892 form and NPL attached to the current Office Action).
The rejections of claims 7-8 and 19-20, below, are based on an alternative interpretation.
Regarding claims 7-8 and 19-20, EAO fails to disclose “further comprising the step of preparing the second location prior to the packing step” and “wherein the step of preparing the second location comprises root planing”. However, Soon-Xae discloses a method for alveolar ridge augmentation “comprising the step of preparing the second location prior to the packing step” and “wherein the step of preparing the second location comprises root planing”; as shown in minutes 4:18-5:09. The Examiner notes that the determination of the first location or the second location is arbitrary and that Soon-Xae discloses the step of root planing at two locations. 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 the method of EAO to introduce the step root planing the second location of EAO, shown in (EAO: minute 53); since such modification would remove tartar from a questionable tooth to avoid gum disease after the surgical treatment is completed.
Claims 11 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over EAO in view of Elian (US 20200086000 A1).
Regarding claims 11 and 23, EAO fails to disclose “wherein the membrane in the covering step is amnion-chorion membrane”. On the other hand, Elian discloses a dental bone graft that may be used to reverse bone loss or destruction caused by, for example, periodontal disease or trauma. Some grafts are performed to rebuild bone structure to support dental implants; membranes may be used to stabilize the graft as it heals ([0132]). Elian discloses “wherein the membrane in the covering step is amnion-chorion membrane” ([0151]). 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 the method of EAO to include the use of an amnion-chorion membrane, as taught by Elian; since such modification would provide a membrane that is rich in collagen; therefore, avoiding the resorption of soft tissue (gum) while allowing bone integration between the graft and the membrane.
Claims 12 and 24 rejected under 35 U.S.C. 103 as being unpatentable over EAO in view of KometaBio Channel (Please see the link for the YouTube video provided in the PTO 892 form and NPL attached to the current Office Action).
Regarding claims 12 and 24, EAO fails to disclose “wherein the graft comprises L-PRF block”. However, KometaBio discloses a method of repairing an extraction socket using dentin and graft material comprising L-PRF block (minutes 2:23-3:27). It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to modify the method of EAO to include the use of a graft comprises L-PRF block, as taught by KometaBio; since such modification would create a graft that accelerates the natural healing process by providing a bioactive “band-aid” to enhance the recovery process.
Conclusion
THIS ACTION IS MADE FINAL. 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 mailing 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