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 .
Reopen Prosecution
In view of the supplemental appeal brief filed on 12/22/2025, PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/ORLANDO E AVILES/ Supervisory Patent Examiner, Art Unit 3736
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.
Claims 1-3, 5-6, 12-13, 16, 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Prokash et al (2011/0079535)
As to claims 1-2 , Prokash discloses a sterile pack comprising a first wrap (14 as shown in Figure 1), a second wrap (12, a second wrap is positioned below the first wrap as shown in Figure 2), and a plurality of dental disposable supplies (tray 40 and instruments 42, instruments being clamps, scalpel blade handles, scissors [0001], all the instruments can be considered as dental supplies for oral surgery. Furthermore, the clamps, tray, scalpel blade handles, scissors can all be dispose after one time use), arranged on top of the first wrap (Figure 1, the tray and all the instruments are position on top of the first wrap 14), and the first wrap at least partially encloses the plurality of supplies (as the wrapping of the second sheet, the first sheet partially encloses the side and top of the tray, furthermore, the first wrap 14 also partially enclosed the supplies from the bottom of the tray 40); and a second wrap (12) completely encloses the first wrap (Figures 4A-4E showing the wrapping process) to form an outer packing of the sterile dental pack (Figure 4E).
As to claim 3, Prokash further discloses the dental disposable supplies are arranged so that the dental disposable supplies are substantially parallel (Prokash shows the instruments 42 are arranged parallel in Figure 1).
As to claim 5, Prokash further discloses an adhesive to join the ends of the second wrap together (44, adhesive tape to hold the flap 12 in the closed position, Figure 4E).
As to claim 6, Prokash further discloses the first wrap and second wrap are biodegradable (according to Prokash [0026], the first sheet 12 and the second sheet 14 may be made of the same material. [0025] further discloses that the first sheet 12 may be a woven material such as cloth made from cotton and the cotton is known to be biodegradable material)
As to claims 12-13 , Prokash discloses a method for forming a sterile dental pack, the method comprising, preparing a first wrap (14 as shown in Figure 1) and a second wrap (12, a second wrap is positioned below the first wrap as shown in Figure 2),, arranging a plurality of dental disposable supplies (tray 40 and instruments 42, instruments being clamps, scalpel blade handles, scissors [0001], all the instruments can be considered as dental supplies for oral surgery. Furthermore, the clamps, tray, scalpel blade handles, scissors can all be dispose after one time use) arranged on top of the first wrap (Figure 1, the tray and all the instruments are position on top of the first wrap 14), wrapping the plurality of dental supplies within the first wrap and the second wrap to form a container (second wrap (12) completely encloses the first wrap, Figures 4A-4E showing the wrapping process) to form an outer packing of the sterile dental pack (Figure 4E)).
As to claim 16, Prokash further discloses appending adhesive to join the ends of the second wrap together (44, adhesive tape to hold the flap 12 in the closed position, Figure 4E).
As to claim 18, Prokash further discloses the plurality of dental disposable supplies are sterilized ([0024, 0028 and 0038] all discloses the pack is sterilized.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 8 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Prokash et al (2011/0079535) and Winstead et al (6,206,192).
As to claim 8, Prokash does not disclose the plurality of dental supplies comprises at least one of cotton applicator sticks, gauze sponges, cotton pellets, cotton rolls, air water syringes, surgical suction tips, high volume suction tips, saliva ejectors, parotid salivary control pads, tongue depressors, or one or more wraps. Nevertheless,
Winstead discloses a dental emergency kit with a plurality of dental disposable (32, 34, 36, 38, 40, 42) supply being wrap in a disposable bag (66), the plurality of dental disposable supplies comprises at least one of cotton applicator sticks (40) and cotton pellets (42). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the instrument of Prokash with additional equipment such as cotton applicator sticks and cotton pellets as taught by Windstead to provide additional equipment’s inside the kit to prepare for the dental surgery and the cotton stick and pellets are use to stop the bleeding.
As to method claim 19, Prokash does not disclose the plurality of dental supplies comprises at least one of cotton applicator sticks, gauze sponges, cotton pellets, cotton rolls, air water syringes, surgical suction tips, high volume suction tips, saliva ejectors, parotid salivary control pads, tongue depressors, or one or more wraps. Nevertheless,
Winstead discloses a dental emergency kit with a plurality of dental disposable (32, 34, 36, 38, 40, 42) supply being wrap in a disposable bag (66), the plurality of dental disposable supplies comprises at least one of cotton applicator sticks (40) and cotton pellets (42). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the instrument of Prokash with additional equipment such as cotton applicator sticks and cotton pellets as taught by Windstead to provide additional equipment’s inside the kit to prepare for the dental surgery and the cotton stick and pellets are use to stop the bleeding.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Prokash et al (2011/0079535) in view of Bayer (2002/0197424).
As to claim 15, Prokash does not disclose the first and second wrap are made of CSR material. Nevertheless, Bayer discloses a sterilized wrapping material (30) can be made of medical grade paper CSR ([0020]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wrapping sheets of Prokash with wrapping sheet made of medical grade paper CSR material as taught by Bayer to substitute one known material use one known (medical grade CSR material to achieve the predictable result of protecting the sterilized material. Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP2144.07.
Claims 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Prokash et al (2011/0079535) in view of Reschke et al (2014/0353188).
As to claims 20-22, Prokash does not specifically disclose an adhesive sterile indicator attached on the first wrap or an adhesive sterile indicator attached on the second wrap or an indicator for gas. Nevertheless Reschke discloses a container holding a medical instrument, an indicator 30 adhesively [0034] attached to the outside of the package (10) or the sensor (100 [0045]) maybe disposed on the interior of the housing (12) and attached to the instrument (20) to withstand gas sterilization. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wrapping sterile package of Prokash with gas sterilization indicator as taught by Reschke in order to provide an mean to let the use or health professional to see whether this item is being sterilized or not.
Allowable Subject Matter
Claims 9-11 are allowed.
Claims 23-25 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments, see appeal brief, filed 12/22/2025, with respect to the rejection(s) of claims 9-11 under 35 U.S.C. 102 (a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Prokash et al (2011/0079535)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHUN HOI CHEUNG whose telephone number is (571)270-5702. The examiner can normally be reached Monday to Friday 9AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E Aviles can be reached at (571)270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHUN HOI CHEUNG/Primary Examiner, Art Unit 3736