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 .
Response to Amendment
This action is in response to Applicant’s amendment filed 8/4/25.
Response to Arguments
Applicant's arguments filed 8/4/25 have been fully considered but they are not persuasive and additionally do not address the new grounds of rejection and/or interpretation below necessitated by Applicant’s amendments.
Briefly, although the claims have been amended to include the new limitation of the slide actuator being “moved along a length of the handle body” (new interpretation addressed below), Applicant argues that Shang does not teach a separate “slide actuator” as claimed. However, the Examiner notes that such arguments are not commensurate with the scope of the claims, as no “separate” actuator is required thereby. Further, no structure directed to the slide actuator is listed in the claims. As explained below, the portion of the device interpreted as the slide actuator, meets all structural and functional limitations of the term in the claim, and there are no explicit reasons provided as to why the identified structure cannot be considered a “slide actuator”. The Examiner notes that it is improper to read limitations from the specification into the claims. Accordingly, the Examiner suggests adding distinguishing structural and functional language into the claim which describes the slide actuator in more detail in order to overcome the rejection and advance prosecution. Therefore, Applicant’s arguments have been fully considered but are not persuasive and additionally 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 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 1-7 and 9-15 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 claims 1 and 9, the term states that the “plunger actuates the spring biased prongs” but then later recites that the “slide actuator actuates said prongs”. It is unclear whether the plunger, actuator or both actuate the prongs, however the claim terms appear to contradict each other as to what structure activates the prongs. As best understood by the Examiner both structures actuates the prongs and will be interpreted as such. Clarification is required.
Further regarding claim 9, the term “heavy-duty” is indefinite as it is unclear what plastics would or would not be considered “heavy-duty”. The specification does not provide any examples or special definitions describing the term, and as such it is impossible to determine the meets and bound of the claim scope. Clarification is required.
Regarding claims 4 and 12, the term “said spring biased prongs are actuated selectively by said top actuator and said slide actuator” is indefinite for the same reasons as explained above. There is, it is unclear which structure actuates the prongs, or if both are capable of actuation. However, the term “selectively” further complicates the claim as it is unclear whether the term means that actuation with one structure does not include the other. As best understood by the Examiner, as explained above, the structures move together to actuate the prongs, and as such it is unclear how they could be selectively actuated. Clarification is required.
Regarding claims 5 and 13, the term “said fully retracted position” lacks antecedent basis in the claims, and it is unclear what said position refers to. For example, it is unclear if said position refers to the rest position of the prongs (e.g. the retracted position), or the furthest retraction possible when grasping a tooth. Clarification is required.
All other claims not specifically addressed above are rejected based on their dependency on a previously rejected claim.
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 and 10 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. In the instant case the claims fail to further limit claims 1 and 9, respectively, as they have been amended to recite that the prongs are spring biased prongs. 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 § 102/103
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.
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.
Claim(s) 1-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Shang (US 5826928).
Regarding the above claims, Shang discloses a tooth extraction device (see Figs. 1-4, capable of grasping and extracting an appropriately sized loose tooth), comprising a handle body (A, below; including 16,19,20,15,17,21), including a curvilinear shape (e.g. linear and round profile, see Figs. 1-4), and comprising an interior (e.g. where 12/13 is received), an exterior (e.g. outer surfaces), a curved top edge (opening at 16 where 12 extends from) with a top actuator (B, comprising part of 12 indicated below and 11, connected thereto), and an open bottom end (open end at 21); a plurality of spring biased of prongs (13; biased by spring 14); a slide actuator (C, comprising part of 12 indicated below); and a plunger (D, comprising part of 12 indicated below) connecting the slide actuator and the spring biased prongs (see Fig. below), wherein the plunger actuates the spring biased prongs when the slide actuator is moved along a length of the handle body (e.g. depression of top actuator causes movement of slide actuator along a length of the handle body (downwards) and causes the plunger to actuate the spring biased prongs); wherein the slide actuator (and top actuator) actuates the prongs through the bottom end from a retracted position to an extended position (e.g. Fig. 3 vs Fig. 4); wherein the prongs in said extended position are configured to be positioned over a tooth (configured to be used with an appropriately sized tooth); and wherein the prongs in the retracted position are configured to be secured around the tooth (e.g. configured to be used with an appropriately sized tooth; per claim 1). Shang further discloses wherein the prongs are spring biased prongs (via spring 14; per claim 2); wherein said spring biased prongs in said extended position surround a majority of the tooth (configured to be used with an appropriately sized tooth; per claim 3); wherein the spring biased prongs are actuated selectively by the top and slide actuators (see Figs. 3-4; per claim 4); wherein said spring biased prongs in said fully retracted position are configured to capture the tooth and retain the tooth in a cavity of the handle body (as shown in Fig. 3, prongs with holding area are retained inside cavity of handle body; as such an appropriately sized tooth is configured to be captured and retained therein; per claim 5); wherein the exterior is a smooth exterior (at least part of exterior is smooth to some degree, see Fig. 1; per claim 6); and wherein said smooth exterior having a pair of opposing arms (16) extending therefrom for providing finger rests to the device (see Fig. 1; per claim 7).
The Examiner maintains that the device of Shang is configured to be used with an appropriately sized, and sufficiently loose tooth to achieve the recited functional or operative language, and therefore meets the requirements of the claims. For example, in a situation where a tooth is sufficiently loose and can fit into the openings created by the prongs within the cavity of the open bottom as shown in Fig. 3, the device is configured and capable of meeting all functional requirements of the claim as listed (whether with an infant tooth, or even a tooth from a non-human animal species). However, in the alternative, should Applicant traverse the Examiner’s position as explained above, the Examiner notes that a mere change in size of the device would allow the device to function with any desired tooth size. Therefore, in the alternative, it would have been obvious to modify the size of the device of Shang, as desired to grasp and retain a tooth therein, as such modification would merely involve the change in size of known components of the prior art device, which has been held to be within the skill of the ordinary artisan (see MPEP 2144.04 (IV)(A)).
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Claim(s) 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Shang in view of Christian (US 5258005).
Regarding the above claims, Shang discloses a tooth extraction device (see Figs. 1-4, capable of grasping and extracting an appropriately sized loose tooth), comprising a handle body (A, above; including 16,19,20,15,17,21), including a curvilinear shape (e.g. linear and round profile, see Figs. 1-4), and comprising an interior (e.g. where 12/13 is received), an exterior (e.g. outer surfaces), a curved top edge (opening at 16 where 12 extends from) with a top actuator (B, comprising part of 12 indicated above and 11, connected thereto), and an open bottom end (open end at 21); a plurality of spring biased of prongs (13; biased by spring 14); a slide actuator (C, comprising part of 12 indicated above) movable along a length of the handle body (e.g. depression of top actuator causes movement of slide actuator along a length of the handle body (downwards) and causes the plunger to actuate the spring biased prongs); and a plunger (D, comprising part of 12 indicated above) connecting the slide actuator and the spring biased prongs (see Fig. below), wherein the slide actuator actuates said prongs through the bottom end from a retracted position to an extended position (see Fig. 3 vs. Fig. 4; e.g. depression of top actuator causes actuation of slide actuator which causes actuation of the spring biased prongs); wherein the prongs in said extended position are configured to be positioned over a tooth (configured to be used with an appropriately sized tooth); and wherein the prongs in the retracted position are configured to be secured around the tooth (e.g. configured to be used with an appropriately sized tooth); and wherein the plunger actuates the prongs when the slide actuator is moved downward and upward relative to the handle body (actuation of top and slide actuator causes actuation of plunger and actuation of prongs, including when the slide actuator and top actuator are moved up and down relative to handle body; per claim 9).
Shang further discloses wherein the prongs are spring biased prongs (via spring 14; per claim 10); wherein said spring biased prongs in said extended position surround a majority of the tooth (configured to be used with an appropriately sized tooth; per claim 11); wherein the spring biased prongs are actuated selectively by the top and slide actuators (see Figs. 3-4; per claim 12); wherein said spring biased prongs in said fully retracted position are configured to capture the tooth and retain the tooth in a cavity of the handle body (as shown in Fig. 3, prongs with holding area are retained inside cavity of handle body; as such an appropriately sized tooth is configured to be captured and retained therein; per claim 13); wherein the exterior is a smooth exterior (at least part of exterior is smooth to some degree, see Fig. 1; per claim 14); and wherein said smooth exterior having a pair of opposing arms (16) extending therefrom for providing finger rests to the device (see Fig. 1; per claim 15).
The Examiner maintains that the device of Shang is configured to be used with an appropriately sized, and sufficiently loose tooth to achieve the recited functional or operative language, and therefore meets the requirements of the claims. For example, in a situation where a tooth is sufficiently loose and can fit into the openings created by the prongs within the cavity of the open bottom as shown in Fig. 3, the device is configured and capable of meeting all functional requirements of the claim as listed (whether with an infant tooth, or even a tooth from a non-human animal species). However, in the alternative, should Applicant traverse the Examiner’s position as explained above, the Examiner notes that a mere change in size of the device would allow the device to function with any desired tooth size. Therefore, in the alternative, it would have been obvious to modify the size of the device of Shang, as desired to grasp and retain a tooth therein, as such modification would merely involve the change in size of known components of the prior art device, which has been held to be within the skill of the ordinary artisan (see MPEP 2144.04 (IV)(A)).
Shang, however, does not teach wherein the handle body is a heavy duty plastic body, as best understood by the Examiner, as required.
Christian, however, teaches a similar grasping device (see Fig. 1), having a handle body (12) which is formed of plastic (see col 2, lines 5-14). The Examiner notes that Christian discloses that the handle can be formed of plastic or metal, and therefore the Examiner interprets the disclosure of plastic to be “heavy duty” in order to be commensurate with the use of metal as an optional choice (as best understood by the Examiner). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the device of Shang to include Christian’s heavy duty plastic body construction, at least in part, as such modification would make use of an old and well known material, providing optimized strength, weight and cost in the construction of the device.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD MORAN whose telephone number is (571)270-5349. The examiner can normally be reached Monday-Friday 7 AM-4 PM EST.
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/EDWARD MORAN/Primary Examiner, Art Unit 3772