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 .
Claim Objections
Claim 13 is objected to because of the following informalities: “the coronal end surface” is believed to be in error for -the coronal end-. Appropriate correction is required.
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 3-4 and 10 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.
With respect to claim 3, the claimed limitation “the thread is altered by gradually removing a radially outer part of the thread” is unclear. First it is noted that the applicant has claimed an apparatus, therefore, the limitation is unclear in view of if the applicant is trying to claim a product by process limitation, a method of how the thread is formed, or trying to structurally limit what has been claimed. It is noted that for examination purposes, the limitation is being interpreted as structurally limiting the claimed thread in the tapered portion. Second it is noted that in the independent claim, the applicant has claimed the tapered portion “wherein which the base surface tapered radially inwards in the apical direction from the maximum radius of the thread”. It is noted that the applicant has claimed the base surface as being the maximum radius of the thread. Therefore, it is unclear if the claimed radially outer part of the thread in claim 3 is the claimed base surface or a different surface. It is noted that for examination purposes, the claimed radial outer part is being interpreted as the claimed base. Therefore, it is unclear if claim 3 is further limiting the independent claim. It is noted that in the independent claim the applicant claims that base surface tapered radially inwards “so as to form a tapered thread having a gradual reduction in thread depth”. Therefore, the base surface or the radially outer part of the thread is altered by gradually removing a portion of it which is what is claimed in claim 3 as interpreted. The applicant should amend the claim to clarify what is being claimed.
With respect to claim 4, the limitations including “the thread crest remains constant while a shape of a thread root changes” is unclear in view of the claimed base and crest of the thread in the independent claim. It is noted that the applicant has claimed that the base of the thread (i.e. the outer edge) tapers radially inwards. Therefore the thread has been defined as having a crest and a base which are connected with the claimed flanks. The claimed “root” of the thread in unclear as to what surface it is. It is unclear if the root is another surface in addition to the claimed base and flanks or if the root is the claimed base. It is noted that for examination purposes, the claimed root is being interpreted as the claimed base, which the applicant has claimed as tapering in the independent claim. Therefore, it is unclear how the limitation of the shape of the root changing is different than the base tapering. The applicant should amend the claim to clarify the relationship between the base and root of the thread and how the tapered and changing of the shape are related as they both seem to be the same portion and having the same change in shape, i.e. tapering.
With respect to claim 10, the applicant has claimed “a transition…is curved” and then further claims “a fully curved transition”. It is unclear if the claimed transition that is curved and the claimed fully curved transition is the same transition or different. It is noted that for examination purposes, the limitation is being interpreted as the same transition, however, the applicant should amend the claim to clarify what is being claimed. Further the limitation of the transition being between the base surface and the apical and coronal flank and then further a transition “between adjacent apical and coronal flanks” is unclear. The applicant seems to be claiming the transition in different locations. Such as between a flank and the base and then between the flanks, such as the curved transition is the base. It is noted that for examination purposes, the limitation is being interpreted as a curved transition between the base and a respective flank, however, the applicant should amend the claim to clarify what is being claimed.
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 13 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. The applicant has claimed that implant extending from an apical end to a coronal end in the independent claim (see line 2 of claim 1) and the blind bore being open at the coronal end surface (see line 3 of claim 1). It is noted that the applicant has not claimed a coronal end surface specifically and that the coronal end surface is being interpreted as the claimed coronal end. 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.
Allowable Subject Matter
Claims 1-2, 5, 7-9, 11-12 and 15-16 allowed.
Claims 3-4 and 10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 14 is objected to as depending from a rejected claim.
It is noted that claim 17 is allowable and will be rejoined upon allowance as it requires the specifics of the allowed independent claim.
It is noted that a phone call to Megan Doughty was made to try and correct the issues by examiner’s amendment, however, the phone call did not result in an examiner’s amendment.
Response to Arguments
Applicant's arguments filed December 19, 2025 have been fully considered but they are not persuasive.
The applicant argues that the claim amendments to claims 3-4 and 10 overcome the 112 issues presented in the previous office action. However, as discussed above in detail, the amendments have not overcome all the issues and the claims are still indefinite.
The applicant further argues that claim 13 is further limiting as it claims the blind bore is “open towards the coronal end surface” vs “open towards the coronal end”. However, it is noted that the applicant has not claimed a “coronal end surface” and the limitation is being interpreted as the claimed “coronal end”, therefore, the claim is not further limiting and the rejection is maintained.
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 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.
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/HEIDI M EIDE/Primary Examiner, Art Unit 3772 1/9/2026