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 Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims1, 5, 9, and 14-18 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 1 claims “a cutting force-doubling screw hole processing portion inserted into the alveolar bone”. It is noted that the applicant should amend the claim to functionally claimed the portion being inserted into the bone such as - a cutting force-doubling screw hole processing portion configured to be inserted into the alveolar bone- in order to overcome the rejection. Claim 1 further claims “a depth adjusting screw hole processing portion substantially inserted into the alveolar bone”. It is noted that the claim should be amended to functionally claimed the portion being inserted into the bone such as - a depth adjusting screw hole processing portion configured to be substantially inserted into the alveolar bone- in order to overcome the rejection.
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.
Claim1, 5, 9, and 14-18 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.
The limitations directed towards a doubling force including a “cutting-force doubling drill set”, “that double a cutting force”, “a cutting force -doubling screw hole processing portion”, and “a cutting force-doubling shaft” are unclear. It is unclear from the claim what force is being doubled. There is not a reference to a force that is being doubled, therefore, the limitations related to doubling a force are unclear. It is further noted that an apparatus is being claimed and not a method of use. It is noted that for examination purposes, the claimed limitations with respect to a doubling force are being interpreted as drill that can deliver a force that is double of any other known drill. It is noted that this limitation is functional, such that any drill is capable of functioning as claimed and therefore any drill would read on the force doubling limitation. The applicant should amend the claim to clarify what is being claimed.
With respect to claim 1, the applicant claims the second stopper drill and that a size of “a potion of the second stopper drill for processing the screw hole” is formed to be greater than a side of a portion of the first stopper drill. The applicant then further claims that each of the stopper drills has “a cutting force-doubling screw hole processing portion” for processing the screw hole. It is unclear if the claimed portion of the second stopper drill for processing the screw hole is the claimed cutting force doubling screw hole processing portion since they are both claimed for processing the screw hole or if they are different portions. It is noted that for examination purposes, they are being interpreted as the same portion, however, the applicant should amend the claim to clarify what is being claimed.
With respect to claim 9, the claimed “virtual central axis” is unclear. It is unclear if the applicant is trying to claim something “virtual” such that it does not physical exist or just trying to reference the central axis. It is noted that for examination purposes, the limitation is being interpreted as just trying to reference the central axis, however, the applicant should amend the claim to clarify.
Further with respect to claim 9, it is unclear what that applicant is trying to claim with respect to the degree of inclination of the blade being closer to the central axis. It is noted the degree of inclination is usually an angle between a longitudinal axis and the edge of the blade. However, it is unclear how it can be closer to the axis as claimed. It is noted that for examination purposes, the limitations are being interpreted as the edge of the blade, i.e. the degree of inclination is closer to the central axis when it has a smaller diameter than the larger diameter, however, the applicant should amend the claims to clarify.
With respect to calim 14, the applicant has calimed that there are cutting groove portion along a length fo the “depth adjusting shaft”. However, it is noted that in the independent claim, the applcinat has claimed the shaping blade portions being located on the depth adjusting screw hole processing portion. It is unclear how the cutting grooves can be formed on the shaping blade portions are claimed when the blades are on the processing portion but the grooves are on the shaft. It is noted that for examination purposes, the grooves are being interpreted as being along the processing portion, however, the applicant should amend the claims to clarify.
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.
Claim(s) 1, 5, 9, and 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heo (KR 20200123636) in view of Kim (2020/0276000).
Heo teaches, as best understood, drills for an implant surgery comprising a cutting force doubling drill set provided to perform a dedicated drill work that doubles a cutting force to an alveolar bone when processing a screw hole (par. 8 of translation, such that the drill is capable of doubling a force relative to another drill, pars. 16, 28, 36, such that there are multiple drills provided in different diameters, therefore, there is a set of drills, see fig. 1, such that the drill is drill 100 in fig. 1) and a screw hole depth step adjusting drill set (see fig. 2, such that the drill is drill 100 in fig. 2, par. 45, such that there are drill of different diameters, so there is a set), the screw hole depth step adjusting drill set provided to perform a dedicated drill work to process the screw hole to be formed in the alveolar bone by adjusting a depth of the screw hole during implant surgery. It is noted that the drill of figure 2 is capable of being used as claimed in a method, such that it can be used to adjust a depth of a hole in the bone as claimed. Since the drill is capable of being used as functionally claimed, it is noted that the claimed limitations are met by the prior art. Heo further teaches wherein the cutting force doubling drill set (the drill of figure 1), comprises a first stopper drill that doubles a cutting force to the alveolar bone when processing the screw hole and a second stopper drill in which a size of a portion of the second stopper drill for processing the screw hole is formed to be greater than a size of a portion of the first stopper drill (par. 36, such that each drill of the set has a different diameter), wherein each of the first and second stopper drills comprises a cutting force-doubling screw hole processing portion 130 configured to be inserted into the alveolar bone for processing the screw hole while doubling a cutting force to the alveolar bone, and a cutting force-doubling shaft connected to the cutting force doubling screw hole processing portion, wherein the cutting force doubling screw hole processing portion of each of the first and second stopper drills comprises a stopper drill body portion (the body portion being the core portion from which the blades 133 protrude from), and a plurality of twist blade portions 133 radially arranged in a twisted shape to protrude outwardly in a radial direction of the stopper drill body portion configured to processing the alveolar body, wherein the cutting force doubling screw hole processing portion of each of the first and second stopper drills further comprises a stopper drill entrance portion formed in an end portion of the sopper drill body portion to enter the alveolar bone, wherein a stopper identification patter portion 140 for identification of a corresponding drill is formed in one side of the cutting force doubling shaft (see fig. 1, par. 36), wherein a round processing portion for reducing a contact with neighboring teeth is further formed on the cutting force doubling shaft adjacent to the stopper identification patter portion (see annotated figure below, it is noted that the structure of the round processing portion taught by Heo is capable of functioning as claimed and therefore, the claimed limitations are met), wherein the screw hole depth step adjusting drill set comprises a first shaping drill provided for processing the screw hole by adjusting a depth of the screw hole step by step (see fig. 2). It is noted that the drill illustrated in fig. 2 is capable of adjusting a depth of a screw hole and therefore, the claimed limitations are met by the prior art. It is noted that the applicant is only claiming the apparatus and not the method of use, therefore, it the apparatus of the prior art is capable of functioning as claimed, then the claimed limitations are met. Heo further teaches a second shaping drill in which a size of a portion of the second shaping drill for processing the screw hole formed to be greater than a size of a portion of the first shaping drill (see pars. 36, 45-46, such that multiple drills having different diameters are taught), wherein both the first and second shaping drills comprise a depth adjusting screw hole processing portion 130 configured to be substantially inserted into the alveolar bone and processing the screw hole by adjusting a depth of the screw hole step by step (see above detailed explanation regarding the functional limitations of the drill), and a depth adjusting shaft connected to the depth adjusting screw hole processing portion, wherein the depth adjusting screw hole processing portion comprises a shaping drill body portion and a plurality of shaping blade portions radially protruding outwardly in a radial direction of the shaping drill body portion for processing the alveolar bone (see fig. 2, such that the body portion is the core from which the blades 133 extend from). Heo teaches the invention as substantially claimed and discussed above, however, does not specifically teach the drill sets are in a kit, including a kit main body in which a plurality of drill holding grooves are formed, the cutting force doubling drill set attachably/detachably arranged in at least any one of the plurality of drill holding grooves of the kit main body and the screw hole depth set adjusting drill set attachably/detachably arranged in at least another of the plurality of drill holding grooves of the kit main body.
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Kim teaches a multifunctional drill kit for an implant surgery comprising a kit main body 100 in which a plurality of drill holding grooves are formed (see fig. 2, pars. 49-50, such that the insertion hole is the claimed groove), a cutting force doubling drill set 206a-e attachably/detachably arranged in at least any one of the plurality of drill holding grooves of the kit main body and a screw hole depth set adjusting drill set 208a-e attachably/detachably arranged in at least another of the plurality of drill holding grooves of the kit main body (pars. 49-50). It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the plurality of different drills with different diameters as taught by Heo with the teachings of Kim to include the different drills in a kit in order to provide all the drills to the user in an easy-to-use kit and allow for easy storage of all the drills.
Heo/Kim teaches the invention as substantially claimed and discussed above, with respect to claim 5, Heo further teaches wherein each of the plurality of twist blade portions 133 are formed in a non-linear shape (see fig. 1), and at least one cutting blade 131 is formed in each of the plurality of twist blade portions (par. 35).
Heo/Kim teaches the invention as substantially claimed and discussed above, with respect to claim 9, Heo further teaches wherein a degree of inclination of a first twist blade portion of the first drill is arranged closer to virtual center axial line than a degree of inclination of a second twist blade portion of the second drill (see rejection above, such that the first twist drill has a smaller diameter, therefore, the degree of inclination of the blade portion, i.e. the outer edge of the blade portion, is closer to a central axis than the second drill with a greater diameter).
Heo/Kim teaches the invention as substantially claimed and discussed above, with respect to claim 14, Heo further teaches, as best understood, wherein a plurality of cutting groove portions are formed in each of the plurality of shaping blade portion in a length direction of the depth adjusting shaft (see annotated figure below).
Heo/Kim teaches the invention as substantially claimed and discussed above, with respect to claim 15, Heo further teaches wherein sizes of the plurality of cutting-edge groove portions are different from each other, and wherein each of the plurality of shaping blade portions section by the plurality of cutting-edge groove portions has a stepped shape (see annaoted figure below, such that the size between the portion is a reduced diameter to create the stepped shape).
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Heo/Kim teaches the invention as substantially claimed and discussed above, with respect to claim 16, Heo further teaches wherein the depth adjusting screw hole processing portion further comprises a shaping rill entrance portion formed in an end portion of the shaping drill body portion to enter the alveolar bone (see annaoted figure below).
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Heo/Kim teaches the invention as substantially claimed and discussed above, with respect to claim 17, wherein a shaping identification pattern portion 140 for identification of a corresponding drill is formed in one side of the depth adjusting shaft (par. 45).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heo (KR 20200123636) in view of Kim (2020/0276000) as applied to claim 1 above, and further in view of Scalise et al. (2014/0220508).
Heo/Kim teaches the invention as substantially claimed and discussed above, however, does not specifically teach the kit comprising a kit cover coupled to the kit main body to be capable of opening and closing the kit main body.
Scalise teaches a multifunction drill kit for an implant surgery comprising a kit main body in which a plurality of drill holding grooves are formed and a drill set attachable/detachably arranged in at least any one of the plurality of drill holding grooves of the kit main body (see fig. 3a-3e) and further with respect to claim 18 a kit cover 300 coupled to the kit main body to be capable of opening and closing the kit main body (see figs. 3a-3e). It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the kit of Heo/Kim to include a cover as taught by Scalise in order prevent the parts from falling out and getting lost.
Response to Arguments
Applicant's arguments filed November 21, 2025 have been fully considered but they are not persuasive. The applicant argues that 112(b) rejections were overcome by the amendments including adding claims 2-4, 6-8 and 10-13 to the independent claim. However, it is noted that not all of the 112 rejections were address and therefore, they are not all overcome. It is noted that the applicant did not address the 112 rejections regarding the limitations directed towards doubling the force and the 112 rejections of claim 9
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
It is noted that the amendments including adding several dependent claims to the independent claim added new combinations of the limitations that were never considered in combination with each other.
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 12/15/2025
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