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 .
Election/Restrictions
Applicant’s election of claims 1-8 in the reply filed on 11/25/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 recites the block guide further comprising an adaptor to be coupled with the dental handpiece; however, the dental handpiece is claimed in a functional/intended use limitation and not positively recited as part of the block guide. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. The claim interpreted as the adaptor being part of the dental handpiece.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/218/2023 has been considered by the examiner.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fares et al. (2018/0263726).
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Regarding claim 1, Fares discloses a dental preparation block guide 170 comprising: a chamber that is customized to receive at least one tooth of a patient for a shape- optimized restoration of the at least one tooth; and a channel (as shown above) formed in a surface of the block guide at a location selected relative to the shape-optimized restoration to be performed, the channel comprising an aperture (as shown above) extending through the surface to the chamber such that a dental handpiece (e.g. cutting tool (e.g. 211) can be inserted into and guided within the channel while a tool of the dental handpiece can interact with the at least one tooth in the chamber through the aperture capable to form a shape-optimized preparation in the at least one tooth to receive the shape-optimized restoration.
With regard the statement of intended use and other functional statements (e.g. “to receive...tooth,” “such that…restoration”), they do not impose any structural limitations on the claims distinguishable over the prior art which is capable of being used as claimed if one so desires to do so. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claims 2 & 3, The block guide is capable of functioning with an adaptor configured to be removably coupled to the dental handpiece to guide the dental handpiece within the channel, wherein the tool of the dental handpiece comprises a rotary cutting instrument.
Regarding claims 4 & 5 the customized chamber is capable to receive the at least one tooth of the patient from a dental impression of the at least one tooth of the patient and the dental impression is one of a physical impression or a digital impression.
Regarding claims 6, 7, 8 The prior art discloses the product as claimed. To properly meet a product-by- process claim it is only necessary to show the final product, the process is given no patentable weight unless it can be shown with evidence that the process necessarily results in a structure different than the prior art. As all the claimed structure is shown, no patentable weight is given to the process used to form the structure. See MPEP 2113 and 2173.05(p).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Patel Yogesh whose telephone number is (571) 270-3646. The examiner can normally be reached between 9 AM – 5:30 PM on Monday, Thursday and Friday.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, SPE Bosques Edelmira, at (571) 270-5614.
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/YOGESH P PATEL/Primary Examiner, Art Unit 3772
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