DETAILED ACTION
Election/Restriction
The Applicant’s remarks filed 1/7/2026 in response to the Requirement for Restriction mailed 10/7/2025 are acknowledged. The Applicant amended the claims to mirror the embodiment as set forth in Group III. In light of the amendments to the claims, a new restriction requirement has been set forth below:
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 21-30 and 37, drawn to a system for determining structural characteristics of an object, classified in A61B 9/00.
II. Claims 31-33, drawn to a method for determining structural characteristics of an object, classified in G01N 29/12.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed can be used to practice another and materially different process such as where the switch is manual.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification;
the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Christopher Quan on 2/4/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 21-30 and 37. Affirmation of this election must be made by applicant in replying to this Office action. Claims 31-33 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “for measuring the effects of energy application” and should instead recite “for measuring
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 21-30 and 37 are rejected under 35 U.S.C. 112(a) or 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 sets forth a “measuring or sensing device” and Claims 23, 27 and 28 set forth a “sensor”. The specification of the instant application makes it clear that there is only a single sensor for measuring effects of energy application/amount of force between sleeve and object, however, the introduction of the sensor in claims 23, 27 and 29 appears to claim multiple or additional sensors, while the specification only has support for a single sensor. Therefore, at the time the invention was filed, the applicant did not have possession of both a measuring or sensing device as set forth in Claim 1 alongside the sensor as set forth in Claims 23, 27 and 28.
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.
Claims 21-30 and 37 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.
Regarding Claim 21, the limitation “said sleeve adapted for resting against said object with at least an object contacting portion of its open end” and later “applied pressure… through the object contacting portion of said open end of said sleeve” renders the claim indefinite. Earlier in the claim the housing is recited as having an “open end”, however, when the sleeve is recited, it appears the sleeve, or some other element (i.e., “its”) is being claimed to have an open end. It is unclear if these are the same open ends, different open ends, or if only the housing is intended to have an open end. It is unclear if “said open end of the sleeve” is referring to the open end of the housing. Additionally, the limitation of “its open end” further results in ambiguity because it is unclear what claim limitation “its” refers to. For purposes of examination the indefinite limitation has been deemed to claim that only the housing is intended to be claimed with an open end.
Regarding Claim 25, the limitation “the resting portion of the open end of the sleeve” lacks proper antecedent basis, because “the resting portion” hasn’t been previously claimed. For purposes of examination the indefinite limitation has been deemed to claim “a resting portion”.
Regarding Claims 23, 27 and 28, in light of the 35 U.S.C. 112, second paragraph rejection, it is unclear if the sensor as recited in Claims 23, 27 and 28 is the same measuring or sensing device as set forth in Claim 21. For purposes of examination the indefinite limitation has been deemed to claim the same sensor.
The term “smaller drive coil” in claim 37 is a relative term which renders the claim indefinite. The term “smaller drive coil” 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. What is the drive coil “smaller” than? For purposes of examination the indefinite limitation has been deemed to claim any drive coil that fits within the device.
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 (i.e., changing from AIA to pre-AIA ) 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 factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 21-25, 28-30 and 37 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US 6120466 A to Earthman in view of US 3921044 A to McShirley.
Regarding Claim 21, Earthman discloses a system for determining structural characteristics of an object, comprising inter alia:
a device having a housing (handpiece 104) with an open end (space in which tapping rod 120 resides, FIG. 1) and a longitudinal axis (axis along center of device, FIG. 1);
an energy application tool (tapping rod 120) mounted inside the housing (col. 3, lines 43-45 “…tapping rod 120 inside the handpiece 104…) for applying an amount of energy to the object (col. 4, lines 24-25 “… the tapping rod 120… strike[s] the specimen 112 in a consistent location and at a consistent angle…”), said energy application tool comprising an active configuration and a resting configuration (col. 3, lines 43-45 “…the tapping rod 120 inside the handpiece 104 is activated with the push of a finger switch 124 located on the handpiece 104.”);
a drive mechanism (propulsion coil 156) supported inside the housing (propulsion coil 156 is located in handpiece 104, FIG. 1) adapted for moving the energy application tool (col. 5, lines 52-55 “…a movable tapping rod 120 is driven by a propulsion coil 156 through an orifice in the sleeve 108 to impact the specimen 112 sixteen times in four seconds.”), said drive mechanism comprising a measuring or sensing device (accelerometer 160) coupled to said energy application tool for measuring the effects of energy application on the object (col. 5, lines 57-61 “The acceleration of the tapping rod 120 is measured by the accelerometer 160. An accelerometer 160 produced signals corresponding to the shock wave resulting from each impact.”);
a sleeve (sleeve 108) protruding from the open end of the housing for a distance (col. 3, lines 46-48 “… the polymer sleeve 108 of the handpiece 104 extends out…”), said sleeve adapted for resting against said object with at least an object contacting portion of its open end (tip 116); and
a manual switch mechanism (finger switch 124).
Earthman discloses the claimed invention except for expressly discloses a switch mechanism triggered by applied pressure to the object through the object contacting portion of said open end of said sleeve. However, McShirley teaches a handheld dental mallet (hand piece 11) including a object contacting portion (condenser point 17) for application to the a body part such as a tooth (col. 1, lines 11-28). The mallet is activated by application of pressure to the condenser point (col. 5, lines 3-22). One having an ordinary skill in the art at the time the invention was filed would have found it obvious to modify the manual switch mechanism of Earthman to be the pressure applicated switch of McShirley, as McShirley teaches in the Abstract this would have allowed for both hand and mechanical condensing and further states in col. 1, lines 11-28 that this operation would have eliminated that need for distractions caused by instrument changes.
Regarding Claim 22, Earthman in view of McShirley teach the system of claim 21 further comprising a computer (Earthman: computer 164) coupled to said device adapted for determining structural characteristics of said object from an energy return graph representing the effects of energy application on said object (Earthman: col. 6, line 53 to col. 7, line 25).
Regarding Claim 23, Earthman in view of McShirley teach the system of claim 21 further comprising a sensor (Earthman: accelerometer 160) positioned inside said housing (Earthman: accelerometer 160 is located in handpiece 104, FIG. 1) adapted for monitoring an amount of a force between said sleeve and object when said sleeve rests on the object (Earthman: col. 5, lines 57-61 “The acceleration of the tapping rod 120 is measured by the accelerometer 160. An accelerometer 160 produced signals corresponding to the shock wave resulting from each impact.”).
Regarding Claim 24, Earthman in view of McShirley teach the system of claim 21 wherein said object comprises anatomical or non-anatomical object (Earthman: specimen 112).
Regarding Claim 25, Earthman in view of McShirley teach the system of claim 21 further comprising a tab extending from the sleeve in a direction perpendicular to the resting portion of the open end of the sleeve (Earthman: circled tabs shown in annotated FIG. 1, below).
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Regarding Claim 28, Earthman in view of McShirley teach the system of claim 23, further comprising visual (Earthman: computer monitor 332) mechanisms coupled to said sensor.
Regarding Claim 29, Earthman in view of McShirley teach the system of claim 21 wherein said object comprises a natural tooth, a prosthetic dental implant structure, a dental structure, an orthopedic structure or an orthopedic implant (Earthman: col. 4, line 54).
Regarding Claim 30, Earthman in view of McShirley teach the system of claim 21 wherein said structural characteristics of the object comprises densities; bone densities or a level of osseointegration; defects, inherent or otherwise; cracks, fractures, microfractures, microcracks; loss of cement seal; cement failure; bond failure; microleakage; lesion; decay; cement failure; bond failure; vibration damping; acoustic damping; delamination; or combinations thereof of said object or a foundation to which said object is attached (Earthman: col. 8, lines 42-58).
Regarding Claim 37, Earthman in view of McShirley teach where said drive mechanism comprises a smaller drive coil (propulsion coil 156) to lessen the acceleration of the energy application tool.
Claim 26 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Earthman in view of McShirley, and further in view of US 4482324 A to Wohlgemuth.
Earthman in view of McShirley teach the claimed invention except for expressly disclosing wherein said energy application tool having a front portion that is substantially perpendicular to the longitudinal axis of the housing and oscillates from a substantially parallel position to the housing to a position at an acute angle with the housing about a pivot point. However, Wohlgemuth teaches a percussion instrument for use in dental practice (Abstract), Wohlgemuth teaches a front portion (test head 3) that is perpendicular to a longitudinal axis that runs through housing 17 and oscillates from a parallel position to the housing (note the very distal tip of test head is parallel to housing 17) to an acute angle with the housing (via pivot 18). One having an ordinary skill in the art at the time the invention was filed would have found it obvious to modify the energy application tool of Earthman to instead make a 90-degree turn and exit out the side of the housing, as occurs in Wohlgemuth, because Wohlgemuth teaches that this would have allowed a velocity to be a more constant value than traditional energy application devices that are linear (col. 1, lines 52-66).
Claim 27 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Earthman in view of McShirley, and further in view of US 4764114 A to Jeffcoat et al. (hereinafter, Jeffcoat).
Earthman in view of McShirley teach where the sensor is an accelerometer (see citations above) but does not expressly disclose wherein said sensor comprises at least one piezoelectric element. However, Jeffcoat teaches a dental probe device to provide reciprocating movement with the mouth of a patient (Abstract). Jeffcoat teaches that probe motion perturbations are sensing not just any accelerometer, but with a piezoelectric accelerometer (col. 2, lines 21-36 and col. 3 line 57 to col. 4, line 15). One having an ordinary skill in the art at the time the invention was filed would have found it obvious to modify the accelerometer of Earthman to be the piezoelectric accelerometer of Jeffcoat, as this would have been the simple substitution of one type of accelerometer for another type of accelerometer for the same purpose of measuring motion perturbations, therefore, such modification would have been obvious to try.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN PATRICK DOUGHERTY whose telephone number is (571)270-5044. The examiner can normally be reached 8am-5pm (Pacific Time).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jacqueline Cheng can be reached at (571)272-5596. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN P DOUGHERTY/Primary Examiner, Art Unit 3791