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 “form factor” and “spectrum of form factors” of Claims 13 and 14 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 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 13 and14 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 13 and 14, as the “form factor” and “spectrum of form factors” are neither shown in the Figures nor defined in the specification in a way to provide additional meaning, it is unclear what constitutes a “form factor” or “spectrum of form factors.” The specification (see [0042], describes that the “form factor . . . or a spectrum of form factors” has “an expected range of value based on the donor tooth” and that the “preparation tool is adjustable to accommodate the form factor or the spectrum of form factors desired in an autotransplantation process”, but does not provide a definition, parameters, or structure associated with the “form factors or spectrum of form factors.” For the purpose of examination, these limitations will be interpreted broadly to mean any custom sizing or shaping that is desired.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 11-14, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Shiun et. al. (TWI805830, see English translation) in view of Chen (US 12,440,315 B2).
Regarding Claims 11 and 17, Shiun discloses a socket preparation tool configured to facilitate autotransplantation of a donor tooth to a recipient site ([0039]), the tool comprising a tooth replica of the donor tooth (20a), a coronal portion (crown portion 21) for facilitating alignment of the tooth replica adjacent teeth during a simulated autotransplantation ([0041]), a radicular portion (22) comprising a contoured surface (Figure 2, where surface is contoured) adapted for filing/cutting bone (as described in [0042]) during a simulated autotransplantation, and a cylindrical attachment (321) configured to be coupled to the tooth replica, the attachment comprising a receiver (binder 33a). Shiun discloses the invention substantially as claimed, but fails to disclose the contoured surface having a plurality of ridges. In the same art of implant preparation, Chen teaches a socket preparation tool (Figure 1, 1) that has a contoured surface (surface of drill section 12) with a plurality of ridges (formed by steps 121 as seen in Figure 1). The ridges of Chen are capable of use for preparation of the recipient site to receive an implant. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the surface of the socket preparation tool of Shiun with the ridges as taught by Chen in order to provide a more secure surface for implantation of the implant when installed.
Regarding Claims 12 and 18, Shiun in view of Chen discloses the tool of claim 11 and Chen further discloses an attachment (Figure 1,10) that comprises a slot (101) with a receiver (11) that is configured to be directly or indirectly coupled to a driver (as disclosed in Column 5, lines 48-50, the slot connects to a rotary tool/driver) via the slot for driving the socket forming tool in at least one direction in order to adjust the fit of the socket preparation tool in the recipient site. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the socket preparation tool of Shiun with the slot/receiver configuration attached to a rotary tool/driver in order to provide a secure attachment mechanism to prevent release of the receiver from the rotary tool/driver during use.
Regarding Claim 13, Shiun in view of Chen discloses the tool of claim 12 as described above and Shiun further discloses that the socket preparation tool is customized to accommodate a form factor of the tooth replica or a spectrum of form factors of the tooth replica within an expected range of value based on the donor tooth ([0049], step 49 describes that the tooth replica is specifically shaped and formed).
Regarding Claim 14, Shiun in view of Chen discloses the tool of claim 13 as described above and Shiun further discloses that the radicular portion of the socket preparation tool is adjusted to accommodate the form factor or the spectrum of form factors ([0049], step 49 describes that the tooth replica is specifically shaped and formed).
Response to Arguments
Applicant’s arguments regarding the drawing objection and 35 U.S.C 112(b) rejection for Claims 13 and 14 regarding the for the figures failing to show the “form factor” and “spectrum of form factors” and lack of clarity are not persuasive and the drawing objection and 35 U.S.C 112(b) rejections are maintained. In the response, the applicant indicates the form factors as shown in the embodiment of Figures 6A-6D, however the elected embodiment is that of Figures 3A-3E.
The claims as amended have overcome the 35 U.S.C 112(b) rejection of Claims 11 and 12.
The amended specification is sufficient to overcome the objection to the specification and has been entered.
Applicant’s arguments with respect to claims 11-14, 17, and 18 have been considered but are moot because the new ground of rejection relies on the combination of references in view of Chen as described above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE L NELSON whose telephone number is (571)270-5368. The examiner can normally be reached M - F 7:30-4:30 PT.
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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/CHRISTINE L NELSON/ Examiner, Art Unit 3772
/EDWARD MORAN/ Primary Examiner, Art Unit 3772