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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/16/2026 has been entered.
Response to Arguments
Applicant’s arguments, see Remarks filed 01/16/2026, with respect to claims 1-5 and 7-16 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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 and 7-16 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 recites “wherein more than 75% of the length of the grip section has an invariable diameter for surfaces covered by the helical sections”. There is no disclosed embodiment of the claimed invention, either in the Specifications or the Drawings where a device includes the aforementioned an invariable diameter. The drawings alone do not appear to make clear that the claimed subject matter is present.
Claims 2-5 and 7-16 are rejected by virtue of their dependency on claim 1.
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) 10 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 10 recites “wherein each ridge has a ridgeline that follows an arcuate path”; there is a lack of antecedent basis for these limitations in the claim. Note that claim 10 depends on claim 1, not on claims 8 or 9. Note that the term “each ridge” appears to indicate that a ridge has been previously claimed. It is unclear what the ridge is referring to.
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) 1-2 and 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wink (US 20200376646 A1) in view of Latiolals (US 20100062393 A1), further in view of Shen (GB 2143453 A).
Regarding claim 1, Wink discloses a dental instrument (Figure 2, [0023]) comprising: a tool section (38); and a handle (22) with a grip section (26) having a length, the grip section comprising a textured surface for improving grip ([0026]); but fails to disclose “the grip section comprising a plurality of helical sections, and a plurality of helical depressions, 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, 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, and wherein the plurality of helical depressions are angularly spaced from one another around the common longitudinal axis”. Also it fails to specifically disclose “and wherein more than 75% of the length of the grip section has an invariable diameter for surfaces covered by the helical sections”.
Latiolals discloses a dental instrument (Figure 1, [0039]) comprising: a tool section (12); and a handle (10) with a grip section (16) having a length, the grip section comprising a textured surface for improving grip ([0039]); wherein more than 75% of the length of the grip section has an invariable diameter for surfaces covered by the textured surface (since the handle (10) has an invariable diameter, as shown in Figure 1, of about 0.6 centimeters [0039]). Therefore it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Wink’s handle to make it of invariable diameter, since it is well known in the art that the dimensions of dental apparatus can vary depending on the preferences of the dentist, features of the tooth or patient, location of the tooth within the mouth, or other characteristics ([0039]).
Shen discloses a hand instrument (Figure 1, page 6, lines 70-94) comprising: a tool section (4); and a handle (formed by sections 44 and 41) with a grip section (surface of the handle section formed by sections 44 and 41), the grip section comprising a plurality of helical sections (41), and a plurality of helical depressions (44), 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 (as shown in Figure 1), wherein the plurality of helical sections and the plurality of helical depressions are arranged around a common longitudinal axis (e.g. vertical axis), wherein the plurality of helical sections and the plurality of helical depressions spiral around the common longitudinal axis (e.g. vertical axis), wherein the plurality of helical sections 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 (as shown in Figure 1).
Wink, Latiolals and Shen are considered to be analogous to the claimed invention because they are in the same field of hand instruments. Moreover, the three references, Wink, Latiolals and Shen teach compact hand instruments with similar structural components (i.e. a tool section and a handle with a grip section). Shen is also reasonably pertinent to the problem the applicant is attempting to solve, i.e. pertaining to the grip of a tool facilitating manual manipulation of the apparatus. However, in the case of Wink’s and Latiolals’ teachings, the grip section comprises just a textured surface for improving grip (see respectively [0026] and [0039]). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wink/Latiolals’s griping section, in order to add a plurality of helical sections, and a plurality of helical depressions, with the rest of the structures as disclosed by Shen, since such modification would further improve the griping of the instrument.
Regarding claim 2, Wink, Latiolals and Shem, as combined above, discloses the limitations substantially as claimed. Wink discloses wherein the helical sections are textured (since it discloses that its griping member could be texture [0026]).
Regarding claim 11, Wink, Latiolals and Shem as combined above, discloses the invention substantially as claimed. Shen discloses wherein each helical depression is concave (see helical grooves 44 in Figure 1 and page 6, lines 70-94).
Regarding claim 12, Wink, Latiolals and Shem as combined above, discloses the invention substantially as claimed. Wink discloses wherein the tool section (38) is at one end of the handle, and further comprising another tool section at another end of the handle (Figure 2).
Regarding claim 13, Wing further discloses a second grip section (26 and 30).
Wink discloses the device having the tool section (38) at one end of the handle, and further comprising another tool section at another end of the handle, with the handle being symmetrical at both ends. Therefore; it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Wink/Latiolals/Shem’s dental instrument in order to duplicate structures of the grip section, as taught by Shen, on the other grip section, since such modification would merely involve a duplication of parts, which has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04).
Regarding claim 14, Wink, Latiolals and Shem as combined above, discloses the invention substantially as claimed. Wink discloses wherein the grip section and the another grip section being spaced by a spacer section (see spacer 22 in Figure 2).
Regarding claim 15, Wink, Latiolals and Shem as combined above, discloses the invention substantially as claimed. Wink discloses wherein the spacer section is less wide than the grip sections (see spacer 22 in Figure 2).
Regarding claim 16, Wink, Latiolals and Shem as combined above, discloses the invention substantially as claimed. Wink discloses wherein the tool section (38) is at one end of the handle (as shown in Figure 2), and further comprising an enlarged section at another end of the handle (since the second tool 38 could be removed; therefore, the second side of the handle would have an enlarged section at end 32; see Figure 2 and [0028]).
Claim(s) 3-5 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wink in view of Latiolals in view Shen, further in view of Herbst (US 5816806 A).
Regarding claim 3, Wink, Latiolals and Shem, as combined above, fail to disclose “further comprising a plurality of adjacent ridges defined in each helical section”.
Herbst teaches a dental instrument (Abstract, Figure 2) comprising: a tool section (28a); and a handle (40) with a grip section (grip section comprised by members 42a-d and 44a-c), the grip section comprising a plurality of helical sections (helical sections where members 42a-d are comprised), each helical section being spaced from another helical section by an adjacent helical depression (helical depressions 44a-c) (Figure 2, col 1, lines 1-15); further comprising a plurality of adjacent ridges defined in each helical section (knurls on ridges 42a-d; see Figure 2, col 1, lines 1-15). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Wink/Latiolals/Shem’s dental instrument in order to add the ridges defined in each helical section, as taught by Herbst, since such modification would improve the anti-slip characteristics of the handle (Abstract).
Regarding claims 4 and 5, Wink, Latiolals Shem and Herbst, as combined above, 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)).
Regrading claim 7, Wink, Latiolals Shem, as combined above, fail to teach “wherein there are four helical sections and four helical depressions”.
However, Herbst further teaches four helical sections (42a-d) and three helical depressions (Figure 2; see helical depressions 44a-c). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the number of helical depressions to make it four, since mere duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04).
Regarding claim 8, Wink, Latiolals and Shem, as combined above, fail to disclose “further comprising a plurality of adjacent ridges defined in each helical section, each ridge extending from one helical depression to another helical depression”.
Herbst teaches further comprising a plurality of adjacent ridges (knurls on ridges 42a-d) defined in each helical section, each ridge extending from one helical depression to another helical depression (Figure 2). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Wink/Latiolals/Shem’s dental instrument in order to add the ridges defined in each helical section, as taught by Herbst, since such modification would improve the anti-slip characteristics of the handle (Abstract).
Regarding claim 9, Wink, Latiolals, Shem and Herbst, as combined above, discloses the limitations substantially as claimed. Herbst teaches 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 (since for instance, the ridges/knurls comprised in helical section 42a, comprise one end that is closer to the tool section 28a than another end thereof which is closer to another helical depression, i.e. helical depression 44a; see Figure 2).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wink, in view of Latiolals, in view of Shem, in view of Herbst, further in view of Davis (US 20060257820 A1).
Regrading claim 10, Wink, Latiolals and Shen fail to specifically disclose “wherein each ridge has a ridgeline that follows an arcuate path”.
Herbst teaches a plurality of adjacent ridges defined in each helical section (knurls on ridges 42a-d; see Figure 2, col 1, lines 1-15). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Wink/Shem’s dental instrument in order to add the ridges defined in each helical section, as taught by Herbst, since such modification would improve the anti-slip characteristics of the handle (Abstract).
Davis discloses a dental instrument (Abstract, Figure 1) comprising: a tool section (14); and a handle (12) with a grip section (20), the grip section comprising a plurality of ridges (see ridges on the grip section 20, Figure 1). Note also that some of these ridges are in the conical sections 30; therefore, they have a ridgeline that follows an arcuate path, following the convex path of section 30. Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Wink//Latiolals/Shem/Herbst’s ridges to make it follows an arcuate path, as taught by Davis, since such modification would improve ergonomics, a generally circular or rounded gripping surface on such a handle is preferred for its ergonomic benefits ([0002]).
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
/ERIC J ROSEN/Supervisory Patent Examiner, Art Unit 3772