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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/07/2026 was filed after the mailing date of the application on 05/01/2023. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant’s arguments, see Remarks filed on 05/07/2026, 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.
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) 2 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 2 recites “wherein the helical sections are textured”, it is unclear if this texture refers to the plurality of adjacent ridges defined in each helical section, as claimed in claim 1, from which claim 2 depends, or to an additional texture feature. A review of the Specification appears to indicate that “The helical sections may be textured. For example, a plurality of adjacent ridges may be defined in each helical section” ([0008]). For the purpose of examination this interpretation was given.
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.
Claim 3 is 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 3 recites “further comprising a plurality of adjacent ridges defined in each helical section”; these limitations fail to further limit independent claim 1. 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.
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) 1-5, 7 and 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herbst (US 5816806 A), in view of 3ERP (see the attached NPL and the 892 PTO form).
Regarding claim 1, Herbst’s embodiment according to Figure 4, discloses a dental instrument (Figure 4) comprising: a tool section (tool 28, see Col 3, lines 54-57); and a handle (10) with a grip section having a length, the grip section comprising a plurality of helical sections (Annotated Figure 4, below), and a plurality of helical depressions (36a-36c), wherein each helical section of the plurality of helical sections is adjacent a respective helical depression of the plurality of helical depressions, and is spaced from another helical section of the plurality of helical sections by the adjacent helical depression (Figure 4), a plurality of adjacent ridges defined in each helical section (Annotated Figure 4). The Examiner notes that the structures indicated in the Annotated Figure are ridges since knuckling is applied to the handle to provide non-slip surfaces, as shown in Figure 10, see also col 2, lines 35-37. Additionally, the broadest reasonable interpretation is given to the term ridge, “being a mark with or form into narrow raised bands”. Therefore, the knuckling is applied to the handle of Figure 4, are marks formed into narrow raised bands.
Each ridge extending from one helical depression to another helical depression (Annotated Figure 4), wherein each ridge is oriented so that one end thereof at a helical depression is closer to the tool section than another end thereof at another helical depression (Annotated Figure 4), wherein the plurality of helical sections and the plurality of helical depressions are arranged around a common longitudinal axis, wherein the plurality of helical sections and the plurality of helical depressions spiral around the common longitudinal axis, wherein the plurality of helical sections are angularly spaced from one another around the common longitudinal axis (as shown in Figure 4 they are arranged and spiral around the common longitudinal vertical axes; therefore they are angularly spaced from one another around the common longitudinal axis), and wherein the plurality of helical depressions are angularly spaced from one another around the common longitudinal axis (Annotated Figure 4).
Herbst discloses a plurality of knurls which in the case of the dental instrument 10 are generally diamond shaped. As discussed subsequently and as will be understood by those of skill in the art, different styles of knurling can be used without departing from the spirit and scope of the present invention (18-23). However, Herbst fails to specifically disclose “wherein each ridge has a ridgeline that follows an arcuate path”.
3ERP discloses a comprehensive explanation of what knurling are and what they are used for, including several types patterns. This process is commonly used in machining to create textured surfaces, which can improve grip, aid in assembly, or enhance the visual appeal of a part. 3ERP discloses that helical knurling (arcuate path) involves creating a spiral or helix pattern along the surface of a workpiece. This pattern is produced by rolling the knurling wheel at an angle, creating continuous ridges that wrap around the cylindrical part. Helical knurling is often used in applications requiring improved surface friction, such as on shafts or components that rotate or need a firm grip (page 12-14). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Herbst’s ridges/knurls to make them spiraling, therefore each ridge having a ridgeline that follows an arcuate path; since surfaces are known to improve surface friction, it can also be applied for aesthetic reasons, giving products a unique visual appeal while offering functional benefits like enhanced durability and handling (page 12-14).
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Regarding claim 2, Herbst and 3ERP, as combined above, discloses the invention substantially as claimed. Herbst discloses wherein the helical sections are textured (col 3, lines 51-55).
Regarding claim 3, Herbst and 3ERP, as combined, above discloses the invention substantially as claimed. Herbst discloses further comprising a plurality of adjacent ridges defined in each helical section (Annotated Figure 4).
Regarding claim 4-5, Herbst and 3ERP fail to disclose “wherein in each helical section the plurality of adjacent ridges cover more than 50% of the helical section”, and “wherein in each helical section the plurality of adjacent ridges cover more than 75% of the helical section”. However, the immediate Specification discloses these parameters as being merely preferable (e.g. [0011] and [0044]) and does not describe it as contributing an unexpected result to the dental instrument. As such, these parameters, are deemed matters of design choice (lacking in any criticality), well within the skills of the ordinary artisan, obtained through routine experimentation in determining optimum results. Furthermore, one of ordinary skill in the art would understand that the percent of area covered by the ridges is a result effective variable, wherein the more the ridges cover, the more surface are there is for gripping by the user, and therefore, the stronger the grip would be. Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the percentage that is covered by the ridges on the helical sections, to make it more than 50% or more than 75% of the helical sections, since such modification would merely involve the optimization of a result effective variable, obtained through routine experimentation in determining optimum results which has been held to be within the skill of the ordinary artisan (see MPEP 2144.05 (II)).
Regarding claim 7, Herbst discloses wherein there are four helical sections (see Annotated Figure 4); but fails to specifically disclose “and four helical depressions”, since it just teaches three. However, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Herbs/3ERP’s instrument in order to make it comprising four helical depressions, instead of three, since such modification merely require a duplication of parts which has no patentable significance unless a new and unexpected result is produced (MPEP 2144).
Regarding claim 11, Herbst and 3ERP, as combined above, discloses the invention substantially as claimed. Herbst discloses wherein each helical depression is concave (since they are grooves 36a-36c, as shown in Figure 4).
Regarding claim 12, Herbst’s embodiment according to Figure 4, fails to disclose “wherein the tool section is at one end of the handle, and further comprising another tool section at another end of the handle”. However, Herbst’s embodiment according to Figure 1 teaches wherein the tool section is at one end of the handle, and further comprising another tool section at another end of the handle (Figure 1 and col 2, line 63 to col 3, line 4). Wherein the grip section and the another grip section are spaced by a spacer section (20). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify the dental instrument to make it comprising a tool section at one end of the handle, and further comprising another tool section at another end of the handle, and wherein the grip section and the another grip section are spaced by a spacer section, since such modification would make the instrument more versatile.
Regarding claim 13, Herbst and 3ERP, as combined above discloses the invention substantially as claimed. Herbst discloses the instrument, as modified above, being a double ended instrument, but does not specifically disclose “further comprising another grip section spaced from the grip section and closer to the another tool section, the another grip section comprising a plurality of helical sections, each helical section being spaced from another helical section by an adjacent helical depression”. However, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify the instrument in order to add said additional structures, since such modification would merely involve a duplication of parts which has not patentable significance unless a new and unexpected result is produced (MPEP 2144. 04).
Regarding claim 14, Herbst and 3ERP, as combined above discloses the invention substantially as claimed. Herbst discloses wherein the grip section and the another grip section are spaced by a spacer section (see section 20 in Figure 1).
Regarding claim 15, Herbst and 3ERP, as combined above discloses the invention substantially as claimed. Herbst discloses wherein the spacer section is less wide than the grip sections (see section 20 in Figure 1).
Regarding claim 16, Herbst and 3ERP, as combined above discloses the invention substantially as claimed. Herbst discloses wherein the tool section is at one end of the handle, and further comprising an enlarged section (46b) at another end of the handle (Figure 2).
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
