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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application NoCH00645/20, filed on 05/29/2020.
For the purpose of examination, the priority date for claims 1-2, 4-9, 14, 16-17 is 05/29/2020.
Claim Objections
Claim 14 is objected to because of the following informalities:
The last two lines repeat the same limitations from the preceding lines. The last two lines should be omitted.
Appropriate correction is required.
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, 6-7, 14, and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mordeniz (US 20120208146 A1) in view of Buchanan (EP 0684019 B1; refer to provided translation).
Regarding claim 1, Mordeniz discloses an endodontic instrument (Fig. 1) notably for reaming a root canal of a tooth of a patient (refer to Paragraphs [0007], [0033]), the instrument (Fig. 1) extending along a longitudinal axis (refer to annotated Fig. 5 below) and comprising a working length (P3) having a working section (Fig. 4) (refer to Paragraph [0034]), the working length (P3) being terminated by a distal portion (P1+P2) having a cutting function (refer to Paragraph [0036]; the reamer comprises a cut blade and is thus capable of cutting);
the distal portion (P1+P2) comprising a tip (refer to annotated Fig. 5 below) and an angular cutting segment (P1+P2) between the tip (refer to annotated Fig. 5 below) and the working length (P3);
wherein the angular cutting segment (P1+P2) comprises a distal zone (P1) adjacent to the tip (refer to annotated Fig. 5 below) and a proximal zone (P2) between the distal zone (P1) and the working length (P3) (refer to annotated Fig. 5 below);
the angular cutting segment (P1+P2) further comprising cutting edges (S1, S2) that extend over the entire length of the proximal zone (P2) and the distal zone (P1) (refer to Paragraphs [0036], [0047]; the intersection of the flute 1 with the flute 2 forms the cutting lip S1, the intersection of the flute 2 with the flute 3 forms the cutting lip S2, the intersection of the flute 3 with the flute 1 forms the cutting lip S3 with each cutting lip extending helically along the three cut portions of the blade until the flutes become tangential to each other such that S3 disappears);
whereinthe distal zone (P1) comprises a distal section (Fig. 2) having a substantially regular triangular cross-sectional geometry in a plane transverse to the longitudinal axis (refer to Paragraph [0034], Fig. 2) the substantially regular triangular cross-sectional geometry remaining constant along the longitudinal axis within the distal zone and forming three cutting edges (refer to Paragraph [0043]; the change in the number of helical lips occurs on the second cut portion P2 of the blade)
whereinthe proximal zone (P2) comprises a proximal section (Figs. 3A-3C) having a cross-sectional geometry in a plane transverse to the longitudinal axis that changes gradually, along the longitudinal axis, from the substantially regular triangular cross-sectional geometry of the distal section to the S-shaped cross-sectional geometry of the working section (refer to Paragraph [0047], Figs. 3A-3E)
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Mordeniz does not explicitly teach the distal portion (P1+P2) having a rounded guide head with a guiding function, a distal section (Fig. 2) having a substantially regular hexagonal cross-sectional geometry in a plane transverse to the longitudinal axis and forming six cutting edges and the triangular cross-sectional geometry of the working section.
Mordeniz can be modified to meet these limitations by Buchanan, which discloses an endodontic instrument (50) in the same field of endeavor (refer to Paragraph [0041]), as follows:
Modifying the tip of the endodontic instrument (Fig. 1) of Mordeniz with a rounded guide head (64) with a guiding function (refer to Paragraph [0050]; the file tapers to a blunt tip to prevent apical ledging, thus guiding the entire instrument through the canal), as demonstrated by Buchanan.
A person of ordinary skill in the art prior to the effective filing date of the claimed invention would have been motivated to make the above modification because:
The rounded guide head (64) prevents apical ledging, encouraging transportation of the tool in the apical canal path (refer to Paragraph [0050]).
Modifying the cross-sectional geometry of the distal section to be hexagonal and the proximal section to be triangular in the same fashion as Buchanan, which teaches forming a distal hexagonal cross-section (67) in a distal zone of the file (refer to Fig. 4D-B), adjacent to the rounded guide head (64), which transitions into a triangular cross section (62), corresponding to the working section (refer to Fig. 4D-A) (refer to Paragraph [0046], annotated Fig. 4 below).
A person of ordinary skill in the art prior to the effective filing date of the claimed invention would have been motivated to make the above modification because:
This transitional shape allows the file to provide more a guiding function, and less of a cutting function near the tip, with more of a cutting function along the shank (refer to Paragraph [0046]).
Mordeniz and Buchanan in combination teach the hexagonal cross-sectional geometry forming six cutting edges as follows:
Mordeniz further teaches that the reamer represented in the figures is only one example and many variants can be envisaged as a function of the technical characteristics (mechanical strength, torsional force, etc.) that are desired, in which the cutting lips or edges in the vicinity of the tip (distal section, P1) is greater than the number of cutting lips or edges in the heel (working section, P3) (refer to Paragraph [0057]). Thus, Mordeniz teaches the number of cutting edges in the distal and working sections as a results effective variable. As Buchanan teaches the hexagonal cross-section (67) it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the cutting edges of the hexagonal distal section to have six cutting edges as it involves only adjusting the quantity of a component disclosed to require adjustment, and it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the cutting edges of the distal section of Mordeniz with six cutting edges as a matter of routine optimization
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Regarding claims 6-7, Mordeniz and Buchanan disclose the endodontic instrument as claimed in claim 1; Mordeniz further discloses wherein the ratio of the length of the proximal zone to the length of the distal zone is between 0.2 and 4.5 or between 0.6 and 1.8 (refer to Paragraphs [0042], [0048]; the length of the distal zone (P1) is in the range of 2- 6mm and the length of the proximal zone (P2) is in the range of 3-7mm; this gives a range of the ratio of the length of the proximal zone to the length of the distal zone as between 0.5-3.5).
Further, it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, applicant appears to have placed no criticality on the claimed range (see pp. [0012] indicating the angle “may” be within the claimed range).
Regarding claim 14, Mordeniz and Buchanan disclose the endodontic instrument as claimed in claim 1; Mordeniz further discloses wherein at least a portion of the distal zone (P1) and the proximal zone (P2) is tapered (refer to Paragraphs [0042], [0048]; the first portion P1 has a small diameter on the order of 0.1 to 0.4 mm (for example 0.2 mm) at the tip of the reamer and its large diameter is of the order of 0.15 to 0.8 mm (for example 0.5 mm) in the vicinity of the second portion; the small diameter of the second portion P2 is of the order of 0.15 to 0.8 mm (for example 0.5 mm) in the vicinity of the first portion P1 and its large diameter is of the order of 0.2 to 1.2 mm (for example 0.8 mm) in the vicinity of the third portion P3); and
wherein the tapered portions of the distal zone and the proximal zone define, respectively, a distal angle and a proximal angle, the distal and proximal angles being measured with respect to the longitudinal axis of the instrument (refer to annotated Fig. 5 below),
at least one portion of the distal zone and the proximal zone is tapered, respectively forming a distal angle and a proximal angle with the longitudinal axis of the instrument (refer to annotated Fig. 5 below).
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Regarding claims 16-17, Mordeniz and Buchanan disclose the endodontic instrument as claimed in claim 1; Mordeniz further discloses wherein in the proximal zone (P2), a circumscribed circle diameter of the angular cutting segment increases progressively over at least a proximal length between the distal zone (P1) toward the working length (P3) (refer to Paragraph [0048], annotated Fig. 5 from claim 1 above; the small diameter of the second portion P2 is of the order of 0.15 to 0.8 mm (for example 0.5 mm) in the vicinity of the first portion P1 and its large diameter is of the order of 0.2 to 1.2 mm (for example 0.8 mm) in the vicinity of the third portion P3) and wherein in the distal zone (P1), the circumscribed circle diameter increases progressively over at least a part of a distal length between the tip and the proximal zone (P2) (refer to Paragraph [0042], annotated Fig. 5 from claim 1 above; the first portion P1 has a small diameter on the order of 0.1 to 0.4 mm (for example 0.2 mm) at the tip of the reamer and its large diameter is of the order of 0.15 to 0.8 mm (for example 0.5 mm) in the vicinity of the second portion).
Claim(s) 2, and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mordeniz (US 20120208146 A1) in view of Buchanan (EP 0684019 B1; refer to provided translation) as applied to claim 1 above, and further in view of Sato et al. (JP H09117460 A; refer to the provided translation), herein referred to as Sato.
Regarding claim 2, Mordeniz and Buchanan disclose the endodontic instrument as claimed in claim 1; Mordeniz further discloses the length of the distal zone (P1) as in the range of 2-6mm (refer to Paragraph [0042]).
Neither Mordeniz or Buchanan teach wherein the ratio of the length of the distal zone to the length of the rounded guide head is greater than 1 or is greater than 2.
Sato discloses a dental instrument for cutting a root canal wall in the same field of endeavor where the distal end is formed as a rounded guide head (2b) (refer to Paragraph [0036]) of a length of 1mm-2mm (refer to Paragraph [0030]), demonstrating that this length is a known dimension in the art for engaging the root of a patient (refer to Paragraphs [0024], [0026]). The length of the rounded guide head yields a ratio of the ratio of the length of the distal zone to the length of the rounded guide head as greater than 1 or greater than 2
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have assigned a value in the range of 1-2 mm to the rounded guide head as taught by Mordeniz and Buchanan, as Sato teaches this length is a known dimension in the art for engaging the root of a patient (refer to Paragraphs [0024], [0026]).
Regarding claims 4-5, Mordeniz and Buchanan disclose the endodontic instrument as claimed in claim 1; Mordeniz and Buchanan are silent to wherein the diameter of the rounded guide head is greater than the diameter of the circumscribed circle of the distal zone over at least a part of the length of the distal zone, at the junction of the rounded guide head and the distal zone.
Sato discloses a dental instrument for cutting a root canal wall in the same field of endeavor where the distal end is formed as a rounded guide head (2b) (refer to Paragraph [0036]). Sato further discloses that the junction of the guide head (2b) and the distal zone (2a) forms an obtuse angle (refer to Paragraph [0034]), such that the diameter of the guide head is greater than the diameter of the circumscribed circle at the junction (refer to annotated Fig. 3 below). This obtuse angle formed at this junction allows the edge of the guide head (2b) to remove foreign matter or cutting waste without biting into the root canal wall (refer to Paragraph [0035]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the junction of the guide head and the distal zone of Mordeniz and Buchanan with the obtuse angle configuration as taught by Sato in order to remove foreign matter or cutting waste without biting into the root canal wall (refer to Paragraph [0035]).
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Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mordeniz (US 20120208146 A1) in view of Buchanan (EP 0684019 B1; refer to provided translation) as applied to claim 1 above, and further in view of Desrosiers (US 20050272004 A1).
Regarding claims 8-9, Mordeniz and Buchanan disclose the endodontic instrument as claimed in claim 1; Mordeniz and Buchanan do not disclose wherein the diameter of a circumscribed circle of the distal zone and the proximal zone is constant over the entire length of the distal zone and the proximal zone respectively.
Desrosiers discloses an endodontic instrument (10) in the same field of endeavor (refer to Paragraph [0026]) where the entire working length (16), which includes a distal zone adjacent to the tip (14), and a proximal zone distal from the tip (14), has a zero taper (refer to Paragraph [0028]). A zero taper segment provides an alternative, cylindrical surface of revolution for when a non-tapered shape in the root canal is desired (refer to Paragraph [0031]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the angular cutting segment (distal and proximal zones) of Mordeniz and Buchanan with a zero-taper as taught by Desrosiers, in order to provide an alternative, cylindrical surface of revolution for when a non-tapered shape in the root canal is desired (refer to Paragraph [0031]).
Response to Arguments
The outstanding objections of claims 1-2, 3-5, and 8-11 are withdrawn in view of the newly submitted claim amendment.
Applicant’s arguments with respect to claim(s) 1 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. The new grounds of rejection relies on a combination of Mordeniz (US 20120208146 A1) and Buchanan (EP 0684019 B1).
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 Adriena J Webb Lyttle whose telephone number is (571)270-7639. The examiner can normally be reached Mon - Fri 10:00-7:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edelmira Bosques can be reached at (571) 270-5614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADRIENA J WEBB LYTTLE/Examiner, Art Unit 3772
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772
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