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 without traverse of Invention I and Species A in the reply filed on 2/17/26 is acknowledged.
Claims 5-9 and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/17/26.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the tip extending in a helical fashion along the axis (claim 12) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “conversion element” in claims 2-3.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 2-4 and 12 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 2, the term “at least partly surrounding at least partly the conversion element” is indefinite as it is unclear whether or not a typographical error has occurred in the claim, or if another statement is intended to be included after the second instance of “at least partly”. As best understood by the Examiner the claim is interpreted as a typographical error, and the second instance should be deleted. Clarification is required. Claims 3-4 are rejected based on their dependency on claim 2.
Regarding claim 12, the term “wherein the tip extends in a helical fashion along the axis” is indefinite as it is unclear what specifically the term intends to describe. Specifically, the feature is not shown in the instant drawing and additionally not described with sufficient detail in the original specification to provide guidance and/or specificity to said structure. For example, it is unclear if the term intends to mean that the tip has a helical shape (like a corkscrew) and/or if there is helical threading or grooves thereon, or some other interpretation which meets the term “helical fashion”. Clarification is required.
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 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Van Den Houdt (US 6910887 B2).
Regarding claim 1, Van Den Houdt discloses an endodontic tool (Fig. 1) for activating a disinfectant liquid sprayed in a cavity of a tooth (capable of being used as such if so desired), comprising: a body (1), elongated along an axis (see Fig. 1) and including a handgrip (e.g. outer surface of 1), for allowing an operator to hold the tool (capable of being used as such); a tip (20), connected to the body and configured to be immersed in the liquid (configured to be immersed in liquid in tooth if so desired); an actuator (7) associated with the body and configured to transmit a vibration to the tip (see abstract); a heater (26), associated with the body and configured to heat the disinfectant liquid in the tooth (via 24/25, configured to be used as such as the tip is heated and heat is transferred to surrounding fluid), characterized in that the heater is designed to heat the tip and wherein the tip is designed to heat the disinfectant liquid (configured to be used as such as resistance of current on wire creates heat, which is transferred to tip). Van Den Houdt further discloses wherein the tip is capable of rotating relative to the body about the axis (tip is capable of being rotated in body via portion that extends inside body (33) prior to portions 35/36 being engaged; per claim 10); and wherein the tip is configured to rotate with an oscillating rotary motion, alternating a direction of rotation (as described above, portion(33) of tip that extends into body is manually rotatable, prior to portions 35/36 being engaged, allowing oscillating manual rotary motion to be imparted onto the tip, at least to some degree; per claim 11).
Claim Rejections - 35 USC § 103
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) 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Van Den Houdt in view of Martin (US 6270343 B1).
Regarding claims 2-4, Van Den Houdt discloses wherein the tip comprises a conversion element (24/25) configured to convert energy into heat; and an outer surface at least partly surrounding the conversion element (see Fig. 3a); wherein the heater is configured to transmit energy to the conversion element and wherein the conversion element is configured to convert the energy received from the heater into heat (see abstract and col 4, line 61- col 5, line 9); and wherein the conversion element is a metal filament (24/25), and wherein the heater is associated with the metal filament for transmitting heat by conduction (e.g. surface of tip heats surrounding substances via conduction). Van Den Houdt, however does not a plastic coating at least partly surrounding the conversion element or wherein the metal filament and tip extend along the axis of the tool as required.
Martin, however, teaches a similar endodontic tool comprising a plastic coating (22) on a heated tip. 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 Van Den Houdt to include Martin’s plastic coating, as such modification would prevent material from sticking to the tip while allowing heat transmission to occur (see col 5, lines 10-18). The Examiner notes that should the device of Van Den Houdt be modified with the teachings of Martin, the tip would be coated with the plastic coating (as taught by Martin) with the plastic coating at least partly surrounding the conversion element as the tip surrounds the conversion element therein.
Additionally, Van Den Houdt/Martin, as combined above, does not explicitly teach that the metal filament is elongate along the axis of the body as required. However, the Examiner notes that such modification would merely involve a change in shape of the tip (contra angled vs straight), which has been held to be within the skill of the ordinary artisan. Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the tip (and filament) of the device of Van Den Houdt/Martin, as combined above, such that the filament (and tip) extend elongated along the axis of the handle of the tool, as such modification would merely involve a change of shape of known component of the device, which has been held to be within the skill of the ordinary artisan (see MPEP 2144.04(IV)(B)).
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Van Den Houdt in view of McSpadden (US 4353698), as best understood by the Examiner.
Regarding claim 12, as best understood by the Examiner, Van Den Houdt does not teach wherein the tip extends in a helical fashion along the axis as required.
McSpadden, however, teaches a similar heated endodontic tool having a tip (14) which extends in a helical fashion along an axis (see Fig. 2). 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 Van Den Houdt to include McSpadden’s helical shaped tip, as such modification would allow for improved condensation and/or agitation of a material in the tooth while allowing for ease of removal of the device therefrom (see McSpadden, abstract).
Additionally, Van Den Houdt/McSpadden, as combined above, does not explicitly teach that the helical tip extends along the axis of the body as required. However, the Examiner notes that such modification would merely involve a change in shape of the tip (contra angled vs straight), which has been held to be within the skill of the ordinary artisan. Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the tip of the device of Van Den Houdt/McSpadden, as combined above, such that the helical tip extends along the axis of the handle of the tool, as such modification would merely involve a change of shape of known component of the device, which has been held to be within the skill of the ordinary artisan (see MPEP 2144.04(IV)(B)).
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached at 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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/EDWARD MORAN/Primary Examiner, Art Unit 3772