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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/07/2026 has been entered.
Response to Arguments
Applicant’s arguments, see Remarks filed on 06/08/2026, have been fully considered. 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 and clarifications.
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, comprising a handpiece having a vibration source, preferably having a first piezo element and a second piezo element, and a tool tip according to claim 1”; 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.
Note for the Applicant: The scope of the claim is unclear because it appears to recite a handpiece capable of being a dental scaler, comprising the tip according to claim 1; but the language is ambiguous.
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.
Claim(s) 1, 4-7 and 9-10 and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Messerly (US 20180055532 A1).
Regarding claim 1, Messerly’s embodiment according to Figure 14 discloses a tool tip (Figure 14 and [0136]) for a tool being intended for a dental treatment, in particular a piezoelectric scaler (Messerly’s tool tip has all the necessary structures to be intended for a dental treatment, in particular a piezoelectric scaler), comprising: a first section (8074) extending in a first direction, the first section of the tool tip being partially a flat basic body (see made separately from flat metal stock [0136]) configured to realize a flat transducer, being formed by integrating the first section into a vibration source (PZT piezoelectric element on each flat face 8005 similar to the D31 configuration shown by way of example in FIG. 3. [0137]) and a second section (8080) extending in a second direction, being configured to form a scaler (Messerly’s tool tip has all the necessary structures to be configured to form a scaler), the second direction being inclined relative to the first direction (A shown in Figure 14), wherein the first section has at least partially a flat basic body (see Figure 15 and [0136]). However, Messerly’s embodiment according to Figure 14 fails to disclose “wherein the first section and the second section form an integral body”.
Messerly’s embodiment according to Figures 35-36 discloses a tool tip intended for treating tissue [0162]; wherein the first section (8202) and the second section (8204) form an integral body (since they are connected through an integral machined pin 8206 [0162]). Note that these components are assembled under extremely cold temperatures, so that when they return to room temperature they are bind with each other and able to accommodate the shear force requirements ([0164]). The Examiner notes that these components form an integral body that cannot be separated. Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Messerly’s embodiment according to Figure 14 to make the first section and the second section form an integral body, as taught by Messerly’s embodiment of Figure 35, since such modification would be a case of applying a known technique to a known device (making two components in a device integral, inseparable, by using a pin connection) ready for improvement to yield predictable results (an integral body able to accommodate the shear force requirements of the vibration).
Regarding claim 4, Messerly discloses wherein a cross section of the flat basic body 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 (Annotated Figure 14 and 15, below). Messerly fails to disclose “wherein a ratio between the first extension (E1) to the second extension (E2) is smaller than 0.2”.
However, the Examiner notes that the only difference between the prior art and the claim is a recitation of relative dimensions of the claimed device (i.e. ratio between the first extension (E1) to the second extension (E2)) and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. 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). The claimed ratio is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed ratio is [AltContent: textbox (Figure 1. Annotated Figures 14 and 15.)]
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significant (see MPEP 2144).
Regarding claim 5, Messerly discloses wherein the second extension and the second direction of the second section 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 sections element shown in Figure 14.
Regarding claim 6, Messerly discloses wherein the tool tip is made from titanium or stainless steel ([0136]).
Regarding claim 7, Messerly discloses wherein the first extension is essentially constant along the first direction (Annotated Figure 14 and 15).
Regarding claim 9, Messerly discloses a tool for a piezoelectric scaler, comprising a handpiece (since it could be used in handpiece as the one shown in Figure 1) having a vibration source (PZT piezoelectric element [0137]), preferably having a first piezo element and a second piezo element (PZT piezoelectric element on each flat face 8005 similar to the D31 configuration shown by way of example in FIG. 3; [0137]), 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 ([0137]) and comprises a first section extending in a first direction (D1) and a second section extending in a second direction (D2), the second direction being inclined relative to the first direction (see the Annotated Figure below in the rejection of claim 5), wherein the first section is partially integrated in the vibration source, preferably between the first piezo element and the second piezo element, and has at least partially a flat basic body (e.g. Figures 3 and 19 and [0137]).
Regarding claim 10, Messerly discloses 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 (PZT piezoelectric element on each flat face 8005 similar to the D31 configuration shown by way of example in FIG. 3; [0137]), which actuates the tool tip in the operation status, the first section being at least partially sandwiched be- tween the first plate and the second plate (e.g. Figures 3 and 19 and [0137]).
Regarding claim 13, Messerly 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 (Annotated Figure 15 and 19, below). Note that the longitudinal resonator are PZT piezoelectric element on each flat face 8005 similar to the D31 configuration shown by way of example in FIG. 3; [0137]; note that the same Configuration is applied in Figure 19 [0142].
[AltContent: textbox (Figure 2. Annotated Figures 15 and 19.)]
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Regarding claim 14, Messerly discloses wherein the tool comprises a control unit, the control unit being configured for controlling the vibrational source (since it comprises a signal generator 12 [0093] and [0098]).
Regarding claim 15, Messerly discloses wherein the tool tip is actuated to a vibration motion having a frequency between 18 kHz and 60 kHz ([0098]).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Messerly in view of Feine (US 20120275098 A1).
Regarding claim 3, Messerly fails to disclose “wherein a horn is included in the tool tip”.
Feine discloses a tool tip (108) for a tool being intended for a dental treatment, in particular for a piezoelectric scaler ([0008]), wherein a horn (106) is included in the tool tip (108) ([0060]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Messerly’s tool tip further include a horn, as taught by Feine, since such modification would provide a protecting casing for the piezoelectric element.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Messerly in view of Hoang (US 20170333169 A1).
Regarding claim 8, Messerly discloses an angle between the first direction and the second direction (as shown in the Annotated Figure above), but fails to specifically disclose “wherein an angle between the first direction and the second direction 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 Messerly’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(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Messerly in view of Hasegawa (EP0261272).
Messerly 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 Messerly’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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUIS MIGUEL RUIZ MARTIN whose telephone number is (571)270-0839. The examiner can normally be reached M-F 8 Am - 5 PM (EST).
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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/
Examiner, Art Unit 3772
/EDWARD MORAN/Primary Examiner, Art Unit 3772
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