DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
/SUNIL K SINGH/Claim Rejections - 35 USC § 112
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 11 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 11 includes limitations of the inspection groove that is already presented in the amended claim 2, from which claim 11 depends on. 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
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 2-4 and 6-12 are rejected under pre-AIA 35 U.S.C. 102b as being anticipated by Daftary (US 5,759,034).
Daftary discloses: An implant analog (16) configured and capable of being positioned in a hole in a gingival part of a physical model of a set of teeth (Fig. 31), the implant analog comprising: a central volume (45)extending along a longitudinal direction of the implant analog from a crown end towards a distal end (Fig. 5), a stop surface (32)arranged at the distal end, the stop surface having a reduced cross- sectional area such that it is capable of providing room left for rounded corners of a wall of the hole , a height inspection groove for visual or contact-based inspection (44) capable of ensuring implant analog is arranged in a correct position in the gingival part of the physical model of the set of teeth (can be seen visually by the user and can be used to lock in place); wherein the analog having a cross-sectional shape that is capable of inserted only in the correct anatomical position and orientation in the gingival part (column 3, lines 60-64) (40 prevents rotational movement and holds the analog in position); wherein the implant analog is a non-rotation implant analog (column 3, lines 60-64 – implant is press-fitted and not threaded thus no rotational movement). As best understood by the examiner, the implant analog has a shape with reduced cross-sectional rotation symmetry (Fig. 5) and the implant analog is designed to have no rotation symmetry and therefore less than 25 fold symmetry (column 3, line 60-64 (the analog is designed without any threads and grooves 40 that prevents any rotational movement of the analog). Daftary further discloses wherein the stop surface (32) is arranged centrally around the longitudinal direction of the implant analog (Fig. 5); wherein the stop surface (32) is plane and horizontal relative to the rest of the physical model and/or relative to an insertion direction of the implant analog in the gingival part (Fig. 5); wherein the stop surface is slanting, sloping or inclined (Figs. 5,6) (column 7, lines 27-45 – Daftary discloses in the Fig 6 and explained in the passage that the entire shaft is tapered thus providing an incline, slant or slope); wherein the height inspection groove (40) extends around the entire circumference of the implant analog (Figs. 1-5), forming a band-shaped height inspection groove which can be seen from all directions in a cross-sectional plane intersecting the height inspection groove (Figs 1-5); and wherein the implant analog further comprise a cover (14) attached to the implant analog (Figs. 1 and 2).
Response to Arguments
Applicant's arguments filed 09/09/2025 have been fully considered but they are not persuasive. Applicant argues that Daftary’s grooves are not meant for height inspection groove but rather intended for a different purpose. The examiner points out that the claims are directed to the apparatus and Daftary’s grooves meets the structural limitations of the claims. It is well established that a recitation with respect to the manner in which an apparatus is intended to be employed i.e. a functional limitation, does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claim. The examiner believes that the grooves can certainly be capable of being used has height inspection grooves as the practitioner can see the grooves as they insert the implant analog into the patient’s mouth, gaging the depth of insertion from the grooves of Daftary’s implant analog.
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 SUNIL K SINGH whose telephone number is (571)272-3460. The examiner can normally be reached M-F 9:00AM - 5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward Lefkowitz can be reached at 571-272-2180. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722