DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/10/2025 has been entered.
Claim Rejections - 35 USC § 101
3. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
4. Claim 9 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 9 recites “horizontal beams oriented toward a facial side and a second series of horizontal beams oriented toward a lingual inner portion of a single tooth extraction site” (lines 2-4, underlining emphasis added) which is attempting to claim the invention in combination with human anatomy, i.e. “a facial side” and “a lingual inner portion of a single tooth extraction site”.
Claim 9 further recites “the horizontal beams to be circumferentially disposed around a vertical axis extending from an upper portion to a lower portion of the single tooth extraction site; and at least one vertical strut extending from the upper portion to the lower portion…” (lines 8-11), which is attempting to claim the invention in combination with human anatomy, i.e. “upper portion” and “lower portion of the single tooth extraction site”.
See In re Rohrbacher, 128 USPQ 117 (CCPA 1960). Claims that are directed to or include within their scope a human being are not considered patentable subject matter under 35 U.S.C. 101 since the grant of a limited, but exclusive property right in a human being is prohibited by the constitution. See 1077 OG 24 (April 21, 1987).
Applicant is suggested to recite the underlined language as intended use or functional claim language, e.g. "adapted to be oriented toward a lingual inner portion…”, “configured to be oriented toward a facial side…”, etc., in order to avoid positively reciting/claiming the human anatomy.
Claim Rejections - 35 USC § 112(a)
5. 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.
6. Claims 1-19 are rejected under 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 dome-shaped top portion and an annular edge of the solid bottom are integrally joined” (lines 6-7). The original disclosure does not have support for “an annular edge of the solid bottom” which therefore is considered to be new matter. Note that neither the written description nor the drawings define “an annular edge of the solid bottom”
Claim 9 recites “an arc of the curve of each horizontal beam between the two terminal ends is substantially equivalent in length and curvature to an adjacent beam” (lines 6-8), which lacks support from the original disclosure and therefore is considered to be new matter. Note that the drawings show the beams 15 having different horizontal lengths and curvatures forming a vertical conical shape (see Figs. 2B-2D). Neither the written description nor the drawings disclose adjacent horizontal beams having equivalent horizontal lengths and curvatures.
Claims 17 and 19 each recites “an arc of the curve of each horizontal beam between the two terminal ends is substantially equivalent” (lines 15-16), which lacks support from the original disclosure and therefore is considered to be new matter. Note that the drawings show the horizontal beams 15 having different horizontal lengths and curvatures forming a vertical conical shape (see Figs. 2B-2D). Neither the written description nor the drawings disclose adjacent horizontal beams having equivalent horizontal lengths and curvatures.
All dependent claims are rejected herein based on dependency.
Claim Rejections - 35 USC § 112(b)
7. 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.
8. Claims 4-6, 9-19 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 pre-AIA the applicant regards as the invention.
Claim 4 recites “the suture passages” (plural, line 2) which lacks sufficient antecedent basis in the claims. Note that the base claim 1 defines antecedent basis for “a suture passage” (singular, claim 1 line 8).
Claim 5 recites “the opposing underside surface” (lines 2-3) which lacks antecedent basis.
Claim 9 recites “a facial side” (line 2); it is unclear what is considered to be such “a facial side” as claimed, or to which element/structure such facial side belong?
Claim 9 recites “each horizontal beam” (lines 6-7) and “an adjacent beam” (line 8), which are indefinite because it is unclear whether these are the same, different from, or part of the first and second series of horizontal beams.
Claim 10 recites “the upper portion of the socket cage” (lines 1-2) which lacks sufficient antecedent basis.
Claim 10 recites “a lower portion” (line 2) which is indefinite because it is unclear to which element or structure such lower portion belong?
Claim 14 recites “the central axis” (line 2) which lacks antecedent basis.
Claim 15 recites “the arc of a majority of the horizontal beams” (lines 1-2). The limitation “the arc” lacks sufficient antecedent basis (note that the base claim 9 defines “an arc of the curve”. Furthermore, the term “a majority of” is a relative term which renders the claim indefinite. The term “a majority of” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 16 recites “at least one of the first and second series of horizontal beams” (lines 2-3). It is unclear whether it is one of the first and second series, or one of the beams?
Claim 16 recites “the minimum inclusion of one vertical strut” (line 3). The term “the minimum inclusion” is unclear and therefore indefinite. The recitation “one vertical strut” lacks sufficient antecedent basis; it is unclear whether this is the same or different from the previously defined “at least one vertical strut” (in claim 9).
Claims 17 and 19 each recites “first and second series of horizontal beams sized for each of a facial and a lingual inner portion of a single tooth extraction site” (lines 11-12) which is indefinite because it is unclear whether all horizontal beams are sized for both facial and lingual inner portions; Or first and second … sized for facial and lingual inner portion, respectively?
Claims 17 and 19 each recites “each horizontal beam” (lines 15-16), which is indefinite because it is unclear whether these are the same, different from, or part of the first and second series of horizontal beams.
Claims 17 and 19 each recites “”an arc of the curve…is substantially equivalent” (lines 14-15) which is indefinite because the recitation does not indicate to what structure or element the arc of the curve is equivalent.
Claims 9, 17, and 19, each recites “substantially equivalent” (claim 9 line 7; claim 17 line 16; claim 19 line 16). The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
All dependent claims are rejected herein based on dependency.
Claim Rejections - 35 USC § 102
9. The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
10. Claims 1-8 are rejected under 35 U.S.C. 102(e) as being anticipated by Roberts (US 2013/0288198).
Regarding claim 1, Roberts discloses dental socket cap 100 (Figs. 1-4) or 500 (Figs. 5-8) for placement in on an extraction site (Figs. 1 and 5), comprising:
a dome-shaped top portion 210/205 (Fig. 2C) or 503 (Fig. 5) having a first diameter greater than a second diameter of a solid bottom portion 211, 504 (Figs. 2C and 5; [0035] “the face of an abutment refers to the occlusal or incisal plane of the head… the abutment face may be… domed…”);
wherein a combination of the dome-shaped top portion 503 and the solid bottom portion 501 forms a sealing edge 504 about a periphery of an opposing underside 504 of the dome- shaped top portion 503 (Figs. 1-4, Figs. 5-8; [0038] “The apical end 504 … is generally a smooth tapered region which fills the gingival socket. The point where the supra-gingival and sub-gingival intersect is generally the widest circumference of the final abutment); the dome-shaped top portion 503 and an annular edge 504 of the solid bottom portion are integrally joined (Fig. 5 ),
Figs. 3C-3D shows a suture passage 302 laterally traversing the dome-shaped top portion 310 of the dental socket cap capable of attachment of the socket cap to a plurality of points in soft tissue proximate to the socket cap (Figs. 3C-3D; [0049] “tunnel 302 with entry/exit hole 301”).
As to claim 2, Roberts further shows a suture 203 traversing the suture passage 302 (Fig. 3D). As to claims 3-4, the socket cap comprises grooves 301 disposed in the dome shaped top portion, the grooves are proximate to the suture passage 302 and are formed on opposite sides of the dome-shaped portion (see Figs. 3C-3D).
As to claim 5, Fig. 5 shows a height of the solid bottom portion 501 is the same about a periphery thereof and the opposing underside surface 504 is concave.
As to claim 6, wherein the solid bottom portion 501 comprises cylindrical walls (Fig. 5). As to claim 7, wherein the sealing edge 504 is annular. As to claim 8, wherein the dental socket cap is further comprised of a base plate (implant 110 in Fig. 1 or implant 510 in Fig. 5) affixed to the solid bottom portion.
Response to Arguments
11. Applicant's arguments filed 07/10/2025 have been fully considered and are persuasive as having overcome Lazzara et al. and Ralph. However, claims 1-8 are rejected in new ground(s) of rejection under Roberts as detailed above.
Also note that the new grounds of rejection under 35 USC 101, 112(a), and 112(b). Claims 9-19 are not rejected under prior art.
Applicant’s remarks are held to be responded to in the above ground(s) of rejection.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAO D MAI whose telephone number is (571)270-3002. The examiner can normally be reached on Mon-Fri 8:00-4:30. 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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/HAO D MAI/
Examiner, Art Unit 3772