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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 8-10, and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation “the retaining rod (46) in the bore, the retaining rod configured to rotate relative to the body portion and the extension portion with no axial movement of the retaining rod relative to the body portion”. There is not adequate support in the disclosure as originally filed to support the limitation “with no axial movement of the retaining rod relative to the body portion”. Therefore this limitation constitutes new matter. No explicit reference is made to the retaining rod not moving axially relative to the body portion. Furthermore, paragraph 25 of the instant application disclosure, which describes the use of the dental implant retaining driver, contradicts there being no axial movement of the retaining rod relative to the body portion. The description states that the dental implant is placed on the hex connection and then the release knob is rotated to engage the threaded portion with the dental implant. If the dental implant is first placed onto the hex connection and then the threaded portion is engaged, the retaining rod that ends in the threaded portion will move axially through the body as the threaded portion moves into the complimentary threaded portion of the dental implant. Similarly during disengagement the thread is first disengaged and then the hex connection is disengaged. In order for the hex connection to remain engaged while the threaded portion is disengaged, the retaining rod would have to move axially away from the hex connection.
The figures further support the retaining rod being able to move axially within the body. The retaining rod and release knob are integrally formed and are within the bore through the body and extension portion. The retaining rod has various shoulders that limit axial movement but do allow for some axially movement to allow for operation of the threaded connection. These limiting shoulders are shown in the annotated portion of Figure 6 below.
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Claims 3, 8-10, and 12 are rejected due to their dependence on claim 1
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/JENNIFER P CONNELL/ Examiner, Art Unit 3772
/THOMAS C BARRETT/ SPE, Art Unit 3799