DETAILED ACTION
1. In view of the appeal brief filed on 01/15/2026, 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.
Notice of Pre-AIA or AIA Status
2. 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
3. Applicant’s arguments, see pages 18-24 of the appeal brief, filed 01/15/2026, with respect to the rejection(s) of claim(s) 37-42 under Allain (US Pub No.: 2020/0129669) in view of Bourdillon (US Pub No.: 2020/0197559). have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Piotrowicz (US Pub No.: 2021/0268543) With respect to the arguments stating that allowable subject matter was already designated for the pending application, Examiner notes that the incoming written opinion, which was completed July 21st, 2021 as per page 1 of said opinion, does not explicitly state that the invention as presented in the claim set dated 09/20/2022 is allowable. While novelty was indicated in the incoming written opinion, a specific statement that the USPTO itself indicated allowable subject matter is not present as what is present is still considered to be the written opinion of the ISA. While the appeal brief dated 01/15/2025 has stated that the ISA was acting as the USPTO, examiner notes that the incoming written opinion is not based off of what was submitted to the USPTO. As the incoming written opinion is in response to documentation provided to the International Searching Authority, the response by the examiner is on behalf of the International Searching Authority and not the USPTO itself. As such, no examiner representing the USPTO has denoted allowable subject matter on this case. Examiner does recognize that box 5 of the P.N.101.CONV document (dated 09/20/2022 but completed by examiner Andrew Smith on March 22nd 2021) that the International searching authority is denoted as ISA/US. However, while the search has occurred within the US, the search is not performed on behalf of the USPTO. As per MPEP 1845.01 Section V, it is stated that “On the international level, all written opinions are nonbinding and a patent does not issue; what does issue is an international preliminary report on patentability (IPRP), which is nonbinding on the elected States.” As such, as Box V of the incoming written opinion (which is labeled “Reasoned statement under Rule 43 bis. 1(a)(i) with regard to novelty, inventive step and industrial applicability; citations and explanations supporting such statement”)
With respect to a previous examiner’s search, while a previous examiner did perform a restriction on this case on 12/19/2024, a previous search from the USPTO itself is not present in the related files of this case. While a PCT search strategy dated 09/20/2022 is present, there is no indication who performed this search or that this was performed by a USPTO examiner.
Claim Rejections - 35 USC § 103
4. 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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 37-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Piotrowicz (US Pub No.: 2021/0268543) in view of Bourdillon (US Pub No.: 2020/0197559).
Piotrowicz (US Pub No.: 2021/0268543) discloses a dental article (dental article in [0029]), comprising a polymeric foam sponge (polymeric surface on a sponge in [0028]). The device is made up completely of a polymer in [0007]-[0009]) that is autoclavable at 250°F (sterilization via autoclave in [0434]. As polymers are is disclosed in [0130] that are known to be autoclavable. As an autoclaving usually occurs at 250°F (131°C) and as the melt temperatures of the polymers can be up to 220°C as per [0127], an autoclaving as disclosed in [0434] is possible at 250°F ) and has a porosity not less than a porosity of polyurethane (as polyurethane is present in [0130], a porosity of a polyurethane is present) to non-adhesively contact and compress loose graft material contained therein (Contact with grafts, and stent grafts in [0055]).
However, Piotrowicz does not teach wherein the dental article, further comprising a guided tissue regeneration membrane configured to be disposed between the graft material and the polymeric foam sponge during compression of the graft material by said applying contact pressure nonadhesively to said polymeric foam sponge.
However, Bourdillon (US Pub No.: 2020/0197559) does teach wherein the dental article, further comprising a guided tissue regeneration membrane configured to be disposed between the graft material and the polymeric foam sponge during compression of the graft material by said applying contact pressure nonadhesively to said polymeric foam sponge (membrane detailed in [0084] that maintains a negative tissue at a tissue site, where the tissue site is an area where tissue growth occurs as per [0029]. The membrane of Bourdillon, as it is not disclosed with an adhesive, will not apply an adhesive pressure to a site where the foam and graft of Piotrowicz is placed). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the membrane of Bourdillon into Piotrowicz for the purpose of providing a cover for the tissue site that will provide “a bacterial barrier and protection from physical trauma” as disclosed in [0084] of Bourdillon.
Regarding claim 38, Piotrowicz in view of Bourdillon teach the dental article of claim 37, wherein said tissue regeneration membrane is configured to remain over said graft material within said socket graft recess during an osseointegration period (as the membrane of Bourdillon is placed over a tissue site to maintain a negative pressure, as per [0084] of Bourdillon, and as the graft of Piotrowicz promotes osseointegration in [0006] with a dental usage in [0129] of Piotrowicz implying a socket placement, the membrane of Bourdillon remains over the graft material of Bourdillon when an osseointegration is occurring).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the membrane of Bourdillon into Piotrowicz for the purpose of providing a cover for the tissue site that will provide “a bacterial barrier and protection from physical trauma” as disclosed in [0084] of Bourdillon.
Claim(s) 39-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Piotrowicz (US Pub No.: 2021/0268543) in view of Hung (US Pub No.: 2021/0113311) and Sapian (US Pub No.: 2003/0224328).
Regarding claim 39, Piotrowicz discloses a dental bone socket grafting method (dental article in [0029], where dental implants in [0029] imply a dental socket), comprising: after said preparing said bone socket recess (it stands to reason that the implantation of a dental implant in [0029] requires a preparing of a socket for the implant), and compressing the loose graft material within the bone socket recess by inserting a nonadhesive polymeric foam sponge (polymeric surface on a sponge in [0028]. The device is made up completely of a polymer in [0007]-[0009]) into contact with the loose graft material therein and applying pressure to the sponge (Contact with grafts and stent grafts in [0055]), wherein the nonadhesive polymeric foam sponge exhibits autoclavability at 250°F (sterilization via autoclave in [0434]. As polymers are is disclosed in [0130] that are known to be autoclavable. As an autoclaving usually occurs at 250°F (131°C) and as the melt temperatures of the polymers can be up to 220°C as per [0127], an autoclaving as disclosed in [0434] is possible at 250°F) and has a porosity which is not less than a porosity of polyurethane (as polyurethane is present in [0130], a porosity of a polyurethane is present).
However, Piotrowicz does not teach filling the bone socket recess with loose graft material.
Instead, Hung (US Pub No.: 2021/0113311) teaches filling the bone socket recess with loose graft material (in [0045]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the separate graft material to be inserted into a socket, as present in paragraph [0045] of Hung into Piotrowicz for the purpose of providing a means to “alleviate the recession of the gingiva and the alveolar bone” in a tooth bone socket, as disclosed in [0046]. This will keep the bone cavity open after a bone socket is created.
From here, Piotrowicz does not teach a preparing a bone socket recess defined within a patient’s jawbone. Instead, Sapian (US Pub No.: 2003/0224328) does teach preparing a bone socket recess defined within a patient’s jawbone (in [0028] and [0030], a drilling through a bone structure along a portion of the patient’s jaw is present). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the preparing of a bone socket of Sapian into Piotrowicz for the purpose of providing a means to prepare a space for the dental implant of Piotrowicz (dental implant disclosed in [0125] of Allan) to allow for an implantation of the device of Piotrowicz into a patient body.
Regarding claim 40, Piotrowicz in view of Hung and Sapian teach the dental bone socket grafting method of claim 39, wherein Sapian teaches the preparing a bone socket recess comprises shape cutting or drilling into a tooth, or through gum tissue, or into some bone tissue, or combinations thereof (disclosed in [0028] and [0030] of Sapian). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the preparing of a bone socket of Sapian into Piotrowicz for the purpose of providing a means to prepare a space for the dental implant of Piotrowicz (dental implant disclosed in [0125] of Allan) to allow for an implantation of the device of Piotrowicz into a patient body.
Regarding claim 41, Piotrowicz in view of Hung and Sapian teach the dental bone socket grafting method of claim 39, wherein the preparing a bone socket recess comprises removing one or more of a decayed tooth, decayed tissue, excess tissue, microbial organic material, or inorganic debris, or combinations thereof (removal of a patient’s gum tissue before drilling of a bone presented in [0028], where the gum tissue is an excess tissue about the future implant site). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the preparing of a bone socket of Sapian into Piotrowicz for the purpose of providing a means to prepare a space for the dental implant of Piotrowicz (dental implant disclosed in [0125] of Allan) to allow for an implantation of the device of Piotrowicz into a patient body.
Claim(s) 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Piotrowicz (US Pub No.: 2021/0268543) in view of Hung (US Pub No.: 2021/0113311) and Sapian (US Pub No.: 2003/0224328) in further view of Bergheim (US Pub No.: 2015/0010882).
Regarding claim 42, Piotrowicz in view of Hung and Sapian teach the dental bone socket grafting method of claim 39. However, said combination does not teach a suctioning fluid from the bone socket recess through said sponge.
Bergheim (US Pub No.: 2015/0010882) teaches a suctioning fluid from the bone socket recess through said sponge (use of a sponge to retain a fluid from a tooth or tooth chamber in [0304]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the fluid absorption from the sponge of Bergheim into the sponge presented in Piotrowicz for the purpose of providing a means to prevent a fluid leakage and/or allow fluid to flow from a tooth and/or chamber to inhibit an over-pressurization or under-pressurization, as per [0304].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Witham (US Pub No.: 2022/0339319) considered for a bone graft, disclosed in the abstract, with a use for dental implants in [0002] and porosity details in [0061]. Suh (US Pub No.: 2020/0197565) discloses a dental implant (in [0002]) with a polyurethane foam material in [0010].
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/AREN PATEL/Examiner, Art Unit 3774
/MELANIE R TYSON/Supervisory Patent Examiner, Art Unit 3774