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 .
Response to Amendment
This action is in response to Applicant’s amendment filed 4/22/26.
Response to Arguments
Applicant's arguments filed 4/22/26 have been fully considered but they are not persuasive and additionally do not address the new grounds of rejection and/or interpretation below necessitated by Applicant’s amendments.
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: “induction module”, “control module”, “sensing unit” and “control unit” in claim 2.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the term “so as to adjust working parameters of the root canal file, and the working parameters comprise rotation speed or torque” is not supported in the original disclosure and as such is deemed new matter and must be removed. Specifically, the original disclosure describes parameters including rotation speed or torque, but does not discloses the “parameters” adjusted by the instant invention to specifically correspond to rotation speed or torque, among others. In other words, the original disclosure does not clearly establish that the “parameters” referred to when describing the instant invention are those that are described in regards to the prior art described in the specification. Deletion is required.
Regarding claim 2, the terms “sensing unit” and “control unit” lack support in the original disclosure and as such are deemed new matter and must be removed. Specifically, while the disclosure describes an “induction module” and “control module”, the sensing units and control unit are not described. As such the terms are deemed new matter and must be removed. Deletion is required.
Claims 3-4 are rejected based on their dependency on claims 1-2.
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 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 terms “induction module” and “control module” are interpreted under 35 USC 112, F as explained above. However, the corresponding structure thereof is indefinite as the disclosure does not provide a definition, explanation or any other structure of what the specific parts of the near field communication device comprise and what structure said “modules” correspond to. Additionally, as noted above, the newly added “sensing unit” and “control unit” are also indefinite for the same reasons as noted above. Specifically, although the terms are interpreted under 35 USC 112, F, there corresponding structure is unclear as the terms are completely unsupported in the original disclosure. Still further, it is unclear whether the “induction module” and “sensing unit” refer to the same or different specific structures, and/or what specifically they would or would not encompass. As best understood by the Examiner they are interpreted to refer to the same structure. Likewise, it is unclear whether the “control module” and “control unit” refer to the same or different specific structures, and/or what specifically they would or would not encompass. As best understood by the Examiner they are interpreted to refer to the same structure. Clarification or removal is required.
Claims 3-4 are rejected based on their dependency on a previously rejected claim.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita et al (US 2013/0224678 A1) in view of Rouiller et al (US 2008/0221564 A1).
Regarding the above claims, Yamashita et al discloses an endo motor (see Fig. 1), wherein the endo motor comprises a root canal handle (1), a root canal file (an instance of 5; two files disclosed), a motor (6), and a first near field communication device (e.g. IC tag reading sensor and determination unit (14); see [0056]-[0058]); the motor and the root canal file are both connected to the root canal handle (see Fig. 1 and 4a-b); the motor is configured to drive the root canal file to rotate (see [0056]-[0058]); the first near field communication device is electrically connected to the motor (see [0056]-[0058]; and the first near field communication device is configured to control the motor according to external information (configured to control the direction of rotation of the motor according to external information read from IC tags of files, or any other IC tag; information on tag is external to controller of handpiece and as such is interpreted as external information; configured to be used as such).
Yamashita et al further discloses wherein the first near field communication device comprises an induction module (e.g. IC tag reading sensor, see [0056]-[0058]) and a control module (determination unit 14), wherein the induction module is electrically connected to the control module; and the induction module is a sensing unit of a NFC sensor (e.g. sensing unit of IC tag reading sensor, (as best understood by the Examiner) configured to sense the external information (e.g. read) and generate an induction signal, wherein the control module is a control unit of the NFC sensor (e.g. determination unit or portion there of which acts as control unit for NFC sensor, see above; as best understood by the Examiner) configured to receive the induction signal and control the motor according to the induction signal (configured to be used as such; see [0056]-[0058]; per claim 2, as best understood by the Examiner); wherein the external information comprises a plurality of external electronic induction tags (e.g. tags of files, or any other tags, see above); and the induction module is configured to sense any one of the external electronic induction tags and generate the induction signal, and the control module is configured to control the motor according to the induction signal (as explained above, see [0056]-[0058]; per claim 3; NOTE: “external information” and/or plurality of external electronic induction tags are only functionally recited (see claim 1), and are not positively recited, required nor part of the claimed endo motor; nevertheless, Yamashita discloses such tags); and wherein the induction module is connected with the root canal handle (see [0056]-[0058] and Figs. 4a-b; sensor is not shown but connected to the handle as it is a part of handpiece; per claim 4).
Yamashita discloses wherein the NFC device is used to control the motor according to information provided from the RFID chips (including rotation direction, see above), but does not explicitly teach wherein the information from the chips is used to adjust working parameters of the device, including rotation speed or torque as required.
Rouiller et al, however, teaches a similar dental tool which uses information from RFID tags to adjust working parameters of a motor, wherein said parameters may include torque or rotation speed (see [0031]). 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 Yamashita to include Rouiller’s teaching of using the RFID tag to store and control parameters including rotation speed and torque, as such modification would allow for adjustment and/or optimization of the use of the tool based on a particular tool size, shape and/or material, a particular patient, or the remaining working life or accumulated wear of the tool (see Rouiller, citations above).
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 EDWARD MORAN whose telephone number is (571)270-5349. The examiner can normally be reached Monday-Friday 7 AM-4 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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