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 .
Election/Restrictions
Newly submitted claims 16, 19, and 20-24 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 16, and 19-24 are directed to the embodiment of the invention as seen in Figure 3, in which the water source differs from that of the originally claimed embodiment that is seen in Figure 2. The limitation of the “water source component comprises a water container that has exposure to atmospheric pressure, including an IV (intravenous) bag type of reservoir” as is newly claimed in Claim 16 is disclosed as corresponding to the embodiment of Figure 3 in [0020] and [0139]. The limitation of “the water source component . . . operates independently from chair-side compressed air or water” as is newly claimed in Claim 19 is disclosed as corresponding to the embodiment of Figure 3 in [0123]. The limitation “a self-contained water supply” as is newly claimed in Claim 24 is disclosed as corresponding to the embodiment of Figure 3 in [0072]. Claims 20-23 claim elements of an overlay nozzle that is found in the embodiment of Figures 5A and 5B and not in that of the previously examined embodiment of Figure 2.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 16 and 19-24 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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, 6, 10, 15, and 17-18 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 claims 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. In Claim 1, the limitation “entirely handheld” is not supported by the specification, and in Claims 2 and 10, the limitation “dispensed onto or around a distant end of the discharge conduit” is not supported by the specification.
All claims not specifically addressed above are rejected based on their dependency on Claim 1.
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.
Claim 15 is 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 term “approximately” in claim 15 is a relative term which renders the claim indefinite. The terms “approximately 2-20 cc and approximately ½ -2 grams” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 1, 2, 4, 10, 15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over by Gallant (US 4,522,597) in view of Nithardt (WO 2008/151457).
Regarding Claim 1, Gallant discloses an air-abrasive water suppression system (abstract) comprising a handheld air-abrasion component (handpiece described in Column 2, line 65 as seen in Figure 1) comprising a mixing chamber containing abrasive material (Figure 3A, casing 31), a gas delivery conduit for providing pressurized air to the mixing chamber (air line 26 delivers pressurized air in to the chamber as described in Column 3 lines 55-60), and a discharge conduit for providing the abrasive material mixed with the pressurized air from the mixing chamber to a target (Figure 2, via tubes 6 and 8). Gallant further discloses a water source (see Figure 1, water source at supply connection 13) comprising a tube (7) for providing water from the water source to the target. Gallant discloses a discharge conduit (8), but does not disclose that the water source component comprises reservoir of water, where the water source component has its own water supply and is not dependent on receiving water from an outside source.
In the same art of pressurized dental abrading tools, Nithardt discloses a water source with a fluid reservoir (16). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the device of Gallant with a water fluid reservoir as taught by Nithardt in order to prevent water feed failures during use.
Gallant further discloses that the water source tube is flexible (water source tube 13 is disclosed as flexible) and is connected to the outlet end of the water source (in the device of Gallant as modified by Nithardt, the water source tube would be connected to the outlet end of the water source), and Gallant further discloses a flexible extension tube (tube 7 is seen in Figure 1 as flexible) in fluid communication with the discharge conduit of the mixing chamber (as seen in Figure 2), which would direct a stream of pressurized air mixed with abrasive material from a handheld air-abrasion device (handpiece described in Column 2, line 65) through a discharge conduit (tube 6 and described in Column 3, lines 3-6).
Regarding Claim 2, Gallant in view of Nithardt discloses the device of Claim 1, and Gallant further discloses that a distal end of the flexible tube is disposed so that water is dispensed onto or around a distal end of the discharge conduit (as seen in Figure 2).
Regarding Claim 4, Gallant in view of Nithardt discloses the invention of claim 1 substantially as claimed as described above, and Nithardt teaches a water source (Figure 2, 16) that is in the form of a rigid tube (as seen in Figure 2) having a length, a diameter, and two opposite ends that are an inlet end and an outlet end (as seen in Figure 2), and a rubber plunger (16a) is disposed inside the cylinder and is moveable bi-directionally between the two opposite ends of the cylinder, where the inlet end is adapted to receive pressurized air from an external source (at 36) and the flexible tube is in fluid communication (via tube 19) with the outlet end (end opposite 36) of the water source to discharge water contained within the water source. It would have been obvious to one having ordinary skill the art to modify the device of Gallant in view of Nithardt with a water source reservoir system and plunger as taught by Nithardt in order to provide a self-contained handheld device with a water supply independent of a separate water supply and to prevent feed failures via the use of the plunger.
Regarding Claim 10, Gallant in view of Nithardt discloses the device of Claim 1, and Gallant further discloses an overlay water nozzle (Figure 1, 4) for maintaining a distal end of the tube for providing water from the water source in close proximity to a distal end of the discharge conduit providing the abrasive material from the mixing chamber.
Regarding Claim 15, Gallant in view of Nithardt discloses the device of Claim 1, but does not specifically disclose that there is approximately 2 - 20 cc of water in the water source component; and there are approximately ½ - 2 grams of abrasive in the mixing chamber. However, the examiner notes that as the water source component has a volume and the abrasive mixture would have a weight, and the applicant does not provide any criticality for the specific volume or weight of abrasive, the particular claimed volume and weight merely result effective variables dependent on the size of the desired water source capacity and the desired weight/amount of roughness in the abrasive mixture. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the device of Gallant in view of Nithardt with a volume of 2-20 cc of water for the water source and a weight of 1/2 - 2 grams of abrasive in order to produce the desired capacity for water storage and desired roughness, as such modification would merely involve the optimization of a result effective variable, which has been held to be within the skill of the ordinary artisan, obtained through routine experimentation in determining optimum results (see MPEP 2144. 05 (II)(A)).
Regarding Claim 18, Gallant in view of Nithardt discloses the air-abrasive water suppression system of claim 1, with the water source component mounted to the air abrasion device (tip component) and with its own water supply (as described above), and both the tip component and the water source component are capable of formation through plastic molding and can be disposable. Please note: as this is a product by process claim, the claimed invention is capable of being formed by the claimed process (i.e.plastic molding) and therefore no additional structure is added to the claimed invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Gallant in view of Nithardt in further view of POLICICCHIO (US 2016/0058526 A1).
Regarding Claim 3, Gallant in view of Nithardt discloses the air-abrasive water suppression system of claim 1 substantially as claimed, but does not specifically disclose that a discharge conduit is movable to selectively allow and block abrasive material from leaving the mixing chamber. In the same art of pressurized dental appliances, POLICICCHIO teaches that the discharge conduit (Figure 2, 28) further contains valves (46A, 46B) that can be moveable to selectively allow and block the abrasive material from leaving the mixing chamber (14) and traveling in the tube (as described in [0039]). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the device of Gallant in view of Nithardt with valves as taught by POLICICCHIO in order to provide better control over the pathway of the abrasive material and avoid blockages within the handpiece.
Claims 6 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Gallant in view of in view of Nithardt in further view of Aumuller et al. (US 2002/0123020 A1, hereinafter “Aumuller”).
Regarding Claims 6 and 17, Gallant as modified by Nithardt discloses the invention of Claims 4 and 1 respectively substantially as described above, but does not disclose a splitter component having one inlet and two outlets disposed in the system such that pressurized air supplied to the inlet of the splitter component may be directed to the two outlets of the splitter component, and that the delivery conduit of the air abrasion device is adapted to receive pressurized air from the outlet of the splitter component, and the inlet end of the water source is adapted to receive pressurized air from the outlet of the splitter component.
In the similar art of a dental abrading tools, Aumuller teaches a handpiece (1) that receives pressurized air (via main pressurized line 310) and then has a splitter (as seen in Figure 15, line 310 splits) that provides air to the delivery conduit an air abrasion device (via 312) and the water source and to a water source (liquid receptacle 302 via conduit 308). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the device of Gallant as modified by Nithardt with a splitter for the pressurized air within the handpiece in order to provide an efficient way to provide pressurized air to both the delivery conduit of the abrasion device and the water source while limiting the openings to the external surgical field.
Response to Arguments
Applicant’s amendments submitted on January 1, 2026 are sufficient to overcome the previous claim objections and previous 35 U.S.C. 112(b) rejections.
Applicant’s arguments with respect to claims 1-4, 6, and 10 have been considered but are moot because the new ground of rejection does not rely on the references as applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The combination of Gallant as modified by Nithardt discloses the invention of the amended claims 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
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