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 Remarks filed 09/22/2025, have been fully considered. The previously presented Claim Objections are withdrawn in light of applicant’s amendments. Applicant’s arguments against the rejections in view of the prior art of record have been fully considered, but are not persuasive as they do not address the new grounds of rejection and/or interpretation below necessitated by Applicant’s amendments.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “horn”, claimed in claim 3, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as "Annotated Sheet" and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the corrected drawing and marked-up copy will result in the abandonment of the application.
Claim Rejections - 35 USC § 112
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.
Claim(s) 9-10 and 12-15 is/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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 recites “a tool for a piezoelectric scaler”; it is unclear if the claim recites a tool for a scaler (a tip) or a scaler. As best understood, the claim intends to recite a scaler comprising a handpiece and further comprising the tip of claim 1.
Claims 10 and 12-15 are rejected by virtue of their dependency on claim 9.
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.
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.
Claims 1, 3, 9, 12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Telles (US 20070166663 A1) in view of Hasegawa (EP0261272). See translation attached to the previous Office Action.
Regarding claim 1, Telles discloses a tool tip (105) for a piezoelectric scaler (Abstract) comprising: a first section extending in a first direction (D1) and a second section extending in a second direction the second direction (D2) being inclined relative to the first direction (D1) (Telles Annotated Figure) wherein the first section has at least partially a flat basic body (piezoelectric body (120), comprised by discs [0018]); wherein the first section and the second section form an integral body (since there is a linkage 115 between the tip 105 and the piezoelectric element 120). Wherein the tool tip is actuated to a vibration motion having a frequency between 18 kHz and 60 kHz (since Telles’ tool tip has all the necessary structures to be capable of being “actuated to a vibration motion having a frequency between 18 kHz and 60 kHz). However, Telles fails to disclose “wherein a length of the tool in a direction parallel to the first direction is smaller than 15 cm”.
Hasegawa discloses a dental scaler (10) having a scaler tip (78) (Abstract) wherein a length of the tool is smaller than 15 cm (since the length of the vibratory body combined with the length of the scaler tip is less than 15 cm; please see claims 5 and 6). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Telle’s tool tip with the teachings of Hasegawa in order to make the length of the tool in a direction parallel to the first direction is smaller than 15 cm, since such modification would allow an appropriate size for the tool that enables the frequency of acoustic vibration to be increased to near the ultrasonic range, while retaining the scaling capability of the scaler (col 5, lines 35-40).
Regarding claim 3, Telles and Hasegawa discloses the invention substantially as claimed. Telles discloses wherein a horn is included in the tool tip (note that the housing of the tool tip has a horn shape, as shown in Figure 4).
Regarding claim 9, Telles and Hasegawa discloses the invention substantially as claimed. Telles discloses a tool for a piezoelectric scaler (Abstract), comprising a handpiece (100) having a vibration source, preferably having a first piezo element and a second piezo element (piezoelectric body (120), comprised by discs [0018]), and a tool tip according to claim 1 (see the rejection of claim 1 above), wherein the tool tip is actuated by the vibration source in an operation status of the tool ([0017]) and comprises a first section extending in a first direction and a second section extending in a second direction, the second direction being inclined relative to the first direction (Telles Annotated Figure), wherein the first section is partially integrated in the vibration source, preferably between the first piezo element and the second piezo element (since there is a linkage 115 between the tip 105 and the piezoelectric element 120), and has at least partially a flat basic body (since the piezoelectric body 120 is comprised by discs).
[AltContent: textbox (Figure 3. Telles Annotated Figure)]
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Regarding claim 12, Telles, and Hasegawa, as combined immediately above, discloses the limitations substantially as claimed. “wherein a length of the tool in a direction parallel to the first direction is smaller than 15 cm”. Hasegawa discloses wherein a length of the tool is smaller than 15 cm (since the length of the vibratory body combined with the length of the scaler tip is less than 15 cm; please see claims 5 and 6).
Regarding claim 15, Telles and Hasegawa discloses the invention substantially as claimed, since the device created by the combination has all the necessary structures to be capable of being “actuated to a vibration motion having a frequency between 18 kHz and 60 kHz”.
Claims 4-7, 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Telles in view of Hasegawa, as applied to claim 1 above, and further in view of Messerly (US 20180078268 A1), as evidenced by Mulvihill (US 20090069830 A1).
Regarding claim 4, Telles and Hasegawa, as combined above, disclose the piezoelectric element being a flat body (i.e. disk 104), but fails to disclose the specific structures and dimensions of the piezoelectric element, as claimed (wherein a cross section of the flat basic body of the first section, in a plane perpendicular to the first direction, has a first extension and a second extension perpendicular to the first extension, wherein a ratio between the first extension to the second extension is smaller than 0.2).
Messerly further discloses wherein the body comprises a first section extending in a first direction (D1) and a second section extending (Messerly’s Annotated Figure, bellow). Wherein a cross section of the flat basic body (9050) of the first section, in a plane perpendicular to the first direction (D1), has a first extension (E1) and a second extension (E2) perpendicular to the first extension (E1) (Messerly’s Annotated Figure #1). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Telles’ partially flat basic body (piezoelectric element) to make it having a plate shape with the first extension and second extensions, as taught by Messerly, since such modification would take advantage of the well know design for piezoelectric elements known as “the sandwich transducer” (transducers with flat rectangular plates), in which the exact dimensions of the piezoelectric component are performance dependent; being this a simple matter of design choice, as evidenced by Mulvihill ([0143]).
However, Telles and Messerly, as combined above, fail to disclose “wherein a ratio between the first extension (E1) to the second extension (E2) is smaller than 0.2”. On the other hand, the instant disclosure describes these dimension as being merely preferable and does not describe it as contributing any unexpected result to the a tool tip. Additionally, a cross-section of the of the flat basic body, as claimed, would be an arbitrary imaginary figure, which width/thickness could be determined arbitrarily. As such, these parameters are deemed matters of design choice (lacking in any criticality), well within the skill of the ordinary artisan, obtained through routine experimentation to determine optimum results.
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[AltContent: textbox (Figure 1. Messerly’s Annotated Figure #1.)]
Regarding claim 5, Telles, Messerly and Hasegawa discloses the invention substantially as claimed. Masserly discloses wherein the second extension (E2) and the second direction (D2) of the second section (12) are located in the same plane (The Examiner notes that said plane is an arbitrary imaginary figure and that in Masserly disclosure the sections and the directions could be in the same plane, e.g. a plane that is in the cross-section parallel to the face of the piezoelectric element shown in the Annotated Figure).
Regarding claim 6, Telles and Hasegawa, as combined in claim 1 above, fails to disclose “wherein the tool tip is made from titanium or stainless steel”.
On the other hand, Messerly further discloses that the tool is made from titanium ([0079]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Telles’ tool tip to make it made of Titanium, since such modification would make the tool of a material suitable for transmission of ultrasonic energy ([0079]).
Regarding claim 7, Telles, Messerly and Hasegawa discloses the invention substantially as claimed. Masserly discloses wherein the first extension (E1) is essentially constant along the first direction (D1), (Messerly’s Annotated Figure #2, bellow).
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[AltContent: textbox (Figure 2. Messerly’s Annotated Figure #2.)]
Regarding claim 10, Telles and Hasegawa, as combined above, fails to disclose “wherein the vibration source comprises a first plate forming the first piezo element and a second plate forming the second piezo element for forming a longitudinal resonator, which actuates the tool tip in the operation status, the first section being at least partially sandwiched between the first plate and the second plate”.
Messerly discloses an ultrasonic surgical instrument provided with piezoelectric elements configured to ultrasonically oscillate, being a flat body (9050) integrally connected to a tip 9008; wherein the body comprises a first section extending in a first direction (D1) and a second section extending (Messerly’s Annotated Figure #1). Wherein a cross section of the flat basic body (9050) of the first section, in a plane perpendicular to the first direction (D1), has a first extension (E1) and a second extension (E2) perpendicular to the first extension (E1) (Messerly’s Annotated Figure #1). Messerly discloses preferably having a first piezo element and a second piezo element (9064a-b), the flat body being between the first piezo element and a second piezo element (Figure 7, 9064a-b). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Telles’ vibration source (piezoelectric elements) to make it having a plate shape with the first piezo element and a second piezo element, as taught by Messerly, since such modification would take advantage of the well know design for piezoelectric elements known as “the sandwich transducer” (transducers with flat rectangular plates), in which the exact dimensions of the piezoelectric component are performance dependent; being this a simple matter of design choice, as evidenced by Mulvihill ([0143]).
Therefore, Telles, Hasegawa and Messerly, as combined immediately above, discloses the limitations substantially as claimed. Wherein the vibration source comprises a first plate (9064a) forming the first piezo element and a second plate (Masserly: 9064b) forming the second piezo element for forming a longitudinal resonator, which actuates the tool tip (tip 105 of Telles’ device, see the combined teachings above) in the operation status, the first section being at least partially sandwiched between the first plate (Masserly: 9064a) and the second plate (Masserly: 9064b) (see Masserly Figures 6-7).
Regarding claim 13, Telles, Hasegawa and Messerly discloses the invention substantially as claimed. Masserly discloses wherein the first section has a first subsection, being located inside the longitudinal resonator in the operation status, and a second subsection, being located outside of the longitudinal resonator, wherein a first second extension (E11) of the first subsection is larger than a second extension (E12) of the first subsection (112) (Masserly’s Annotated Figure 5 #1, bellow).
[AltContent: textbox (Figure 4. Masserly’s Annotated Figure 5 #1.)]
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Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Telles in view of Hasegawa, as applied to claim 1 above, and further in view of Hoang (US 20170333169 A1).
Regarding claim 8, Telles, Messerly and Hasegawa discloses an angle between the first direction (D1) and the second direction (D2) (see Telles Annotated Figure), but fails to disclose “wherein an angle between the first direction (D1) and the second direction (D2) has a value between 100° and 160°.
Hoang discloses a scaling tip for treating peri-implantitis having working angles to allow the user access to difficult to reach areas around the teeth and gums (Abstract). Hoang discloses the device having a first direction (axis 20) and the second direction (axis 25) (Figure 1-4) wherein an angle between the first direction and the second direction has a value between 100° and 160° ([0035]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Telles/Messerly/Hasegawa’s tool tip with the teachings of Hoang, since such modification would create a scaler tip having working angles to access difficult to reach areas in the mouth ([0005]).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Telles in view of Hasegawa, further in view of Chevalier (US 20150150647 A1).
Regarding claim 14, Telles, Messerly and Hasegawa discloses that the system comprises a control unit configured for controlling the vibrational source (Telles: [0024]), but fails to disclose in particular for a closed loop control.
Chevalier discloses a dental scaler comprising a piezoelectric transducer ([0081]) comprises a control unit configured for controlling the vibrational source, in particular for a closed loop control ([0257]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Telles/Messerly/Hasegawa’ tool tip controller in order to make closed loop controller, as taught by Chevalier, since such modification would create a feedback mechanism that reduces the stress on the tool tip (and [0272] and claim 1).
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 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 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
/EDWARD MORAN/Primary Examiner, Art Unit 3772