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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the sealing system provided on the prophylactic handpiece of claim 9 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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: “chucking device” in claims 1 and 7-11.
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 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 5, 7-10, 15 and 19 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 claims 5 and 15, the term “the spring action” lacks antecedent basis in the claims, and it is unclear what action or force the term refers to. Clarification is required.
Regarding claims 7 and 19, it is unclear how the sealing system is part of and arranged on the claimed treatment device. As best understood and supported by the original disclosure the sealing systems is located on the tool. However, the tool is not positively recited as part of the treatment device. Additionally it is unclear how the sealing system would be implemented onto the treatment device and/or what it would comprise, as such embodiment is only briefly described and is not illustrated or explained in detail. Clarification is required.
Regarding claim 10, the terms “the bore” and “the hollow shaft” lack antecedent basis in the claims. The terms are recited in claim 2, but claim 10 ultimately depends from claim 1. It is unclear if the dependency should be changed, if the terms intend to refer to different structure or if they intend to recite back. Clarification is required.
All other claims not specifically addressed above are rejected based on their dependency on a previously rejected claim.
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.
Claim(s) 1-6, and 12-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fuchs (US 2004/0251640 A1).
Regarding the above claims Fuchs discloses a dental prophylactic treatment device (see Fig. 3; considered a prophylactic treatment device as it is configured to receive and operate a prophylactic treatment tool (not positively required), if so desired) comprising: a prophylactic contra-angle handpiece (see above, Fig. 3) having a handle part extending along a longitudinal axis (e.g. area that extends from head 30, where “HSPL” and “HLR” are printed in Fig. 3), a head part (30) adjoining the handle part, a tool holder (20) rotatably disposed in the head part and extending along an axis of rotation (see citations below), wherein the longitudinal axis of the handle part and the rotational axis of the head part are disposed at an angle to one another (e.g. approximately 90 degrees, see Fig. 3), the tool holder (20) configured to detachably hold a dental tool having a prophylactic treatment section (configured to hold a prophylactic tool if so desired, if appropriately sized and shaped shank; tool not positively recited, required or part of claimed device), wherein the tool holder comprises a chucking device (20/2) configured to fix a tool shaft of the dental tool non-positively or frictionally and/or force locking manner in order to hold the tool shaft axially with respect to the axis of rotation of the tool holder and to bring about a rotary entrainment of the tool shaft, so that the dental tool can be rotated about the axis of rotation together with the tool holder (see citations below), and wherein the prophylactic contra-angle handpiece has no manually operated pushing device on the outside of the prophylactic contra-angle handpiece for operating the chucking device for releasing the dental tool from the tool holder (no pushing device for operating the chucking device is disclosed in the embodiment disclosed at [0019]; drill ejector is optional; tool is pushed into and out of chuck; see abstract, [0011], [0014], [0016], [0019], [0027]-[0031] per claims 1, 12 and 18). Fuchs further discloses wherein the non-positive or friction-locking chucking device and/or force locking chucking device (20) comprises a hollow shaft (2) having a bore (3) which extends along the axis of rotation of the tool holder and in which at least a portion of the tool shaft can be detachably received, and at least one clamping lug (4a) protruding into the bore in order to clamp the tool shaft in the hollow shaft (see citations above per claims 2 and 12); wherein the at least one clamping lug is connected non-detachably to the hollow shaft (see [0027]-[0030]; lug is milled; per claims 3 and 13); wherein the at least one clamping lug connects to the hollow shaft at exactly two contact points (see Fig. 2 and citations above; per claims 4 and 14); wherein the dental tool is held in the tool holder exclusively by the spring action and holding force generated and exerted by the at least one clamping lug (see citations above; per claims 5 and 15); wherein the at least one clamping lug is arranged between two slots (6) which are machined in the hollow shaft to form the at least one clamping lug (see citations above; per claims 6 and 16); and wherein the at least one clamping lug (4a) is a first clamping lug and the hollow shaft comprises a second clamping lug (second instance of 4a, see [0029]), wherein a bar (7) is arranged between the first and second clamping lug (per claim 17).
Claim(s) 1-3, 5, 7-8, 10-13, 15 and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Madry et al (US 9017073 B2).
Regarding the above claims Madry discloses a dental prophylactic treatment device (see Figs. 1-4c and abstract) comprising: a prophylactic contra-angle handpiece (see above, Fig. 1) having a handle part (14/16) extending along a longitudinal axis (e.g. axis of shaft 26), a head part (18) adjoining the handle part, a tool holder (38) rotatably disposed in the head part and extending along an axis of rotation, wherein the longitudinal axis of the handle part and the rotational axis of the head part are disposed at an angle to one another (see Fig. 1), the tool holder (38) configured to detachably hold a dental tool having a prophylactic treatment section (configured to hold a prophylactic tool if so desired, see Fig. 1; tool not positively recited, required nor part of device), wherein the tool holder comprises a chucking device (68) configured to fix a tool shaft of the dental tool non-positively or frictionally and/or force locking manner in order to hold the tool shaft axially with respect to the axis of rotation of the tool holder and to bring about a rotary entrainment of the tool shaft, so that the dental tool can be rotated about the axis of rotation together with the tool holder (see citations below), and wherein the prophylactic contra-angle handpiece has no manually operated pushing device on the outside of the prophylactic contra-angle handpiece for operating the chucking device for releasing the dental tool from the tool holder (no pushing device for operating the chucking device is disclosed; see abstract, col 3, line 39 through col 8, line 24; per claims 1, 12 and 18). Madry et al further discloses wherein the non-positive or friction-locking chucking device and/or force locking chucking device (38) comprises a hollow shaft (68 forms hollow shaft) having a bore (70) which extends along the axis of rotation of the tool holder and in which at least a portion of the tool shaft can be detachably received, and at least one clamping lug (72) protruding into the bore in order to clamp the tool shaft in the hollow shaft (see citations above per claims 2 and 12); wherein the at least one clamping lug is connected non-detachably to the hollow shaft (lug shown to be integral with shaft/chucking device; per claims 3 and 13); wherein the dental tool is held in the tool holder exclusively by the spring action and holding force generated and exerted by the at least one clamping lug (see citations above; per claims 5 and 15); the device further comprising a sealing system (formed by extension/flange of prophy cup where it extends upwards towards head, as shown in Fig. 1) for sealing the head part of the prophylactic contra-angle handpiece which prevents penetration of impurities and/or a treatment agent into the head part (at least to some degree compared to a prophy cup without such flange; per claims 7 and 19); wherein the sealing system is disposed on the dental tool (flange of prophy cup) such that said system interacts with the head part of the prophylactic contra-angle handpiece in order to prevent penetration of impurities and/or a treatment agent into the head part (extends upwards towards head to close gap, see Fig. 1; per claim 8); wherein the chucking device is designed as a sliding chucking device into which at least a portion of the tool shaft can be inserted into or removed from the bore of the hollow shaft by a sliding movement along the axis of rotation of the tool holder (appropriately sized and shaped tool can be slid (either with or without rotation) into the holder along the axis thereof), wherein the sealing system is designed in such a way that the insertion of the dental tool into the sliding chucking device causes or increases a sealing effect of the sealing system (as flange is located on cup, sealing is caused by insertion of cup shank into chucking device such that flange is arranged to close gap between prophy cup and head; see Fig. 1 per claim 10); and further comprising a dental tool (e.g. prophy cup and shank, not numbered) having a tool shaft (portion of cup in chucking device) and a prophylactic treatment section (prophy cup section), wherein the tool shaft is designed over the entire length as a cylindrical pin (see Fig. 1) having no recess for engagement of the tool holder (see Fig. 1; no recesses for engagement of the tool holder are described or illustrated; per claim 11).
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) 7, 9-10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Fuchs et al in view of Schatz et al (US 2005/0026110 A1).
Regarding the above claims, Fuchs et al discloses all the features of the claimed invention as explained above, including wherein the chucking device is designed as a sliding chucking device into which at least a portion of the tool shaft can be inserted into or removed from the bore of the hollow shaft by a sliding movement along the axis of rotation of the tool holder (per claim 10), but does not teach wherein the device further comprising a sealing system for sealing the head part which prevents penetration of impurities and/or treatment agent into the head part, wherein the sealing system is provided on the handpiece, or wherein the sealing system is designed such that the insertion of the tool into the sliding chucking device causes or increase a sealing effect of the sealing system as required
Schatz et al, however, teaches a similar dental tool comprising a body (2), a head (2b), and a chucking device (9), the device comprising a sealing system (20) for sealing the head part which prevents penetration of impurities and/or treatment agent into the head part (at least to some degree), wherein the sealing system is provided on the handpiece (see Figs.), or wherein the sealing system is designed such that the insertion of the tool into the sliding chucking device causes or increase a sealing effect of the sealing system (e.g. when tool is inserted into chuck, bore of chuck is closed, increasing the sealing effect of the sealing system at least to some degree (vs open bore with sealing system). 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 Fuchs et al to include the sealing system of Schatz, as combined above and as best understood by the Examiner, as such modification would help to prevent contamination and/or damage to the internal components of the device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached PTO892 form.
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.
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/EDWARD MORAN/Primary Examiner, Art Unit 3772