DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. The numbering of claims is not in accordance with 37 CFR 1.126. Claim 10 appears to be grouped with claim 9, missing the numbering “10”.
Misnumbered claims 9-10 has been renumbered as followed:
Misnumbered
Renumbered - Corrected
9. The suction member of claim 1 wherein at least one of the lobes is disposed entirely within an infinite cylindrical volume circumscribed by an infinite cylindrical surface that comprises the tubular portion outer surface, the infinite cylindrical surface comprising the outer lobe surface of said at least one of the lobes. The suction member of claim 9 wherein each of the lobes is disposed entirely within said infinite cylindrical volume circumscribed by said infinite cylindrical surface, the infinite cylindrical surface comprising the outer lobe surface of each of the lobes.
9. The suction member of claim 1 wherein at least one of the lobes is disposed entirely within an infinite cylindrical volume circumscribed by an infinite cylindrical surface that comprises the tubular portion outer surface, the infinite cylindrical surface comprising the outer lobe surface of said at least one of the lobes.
10. The suction member of claim 9 wherein each of the lobes is disposed entirely within said infinite cylindrical volume circumscribed by said infinite cylindrical surface, the infinite cylindrical surface comprising the outer lobe surface of each of the lobes.
Double Patenting
3. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
4. Claims 1-6 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of co-pending Application No. 18/215,851 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because: the difference between the application claims and the patent claims lies in the fact that the patent claims include more element(s) and are thus much specific. Thus the invention of the patent claims is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Refer to the table below for comparison mapping of the instant application (claims 1-6, 8) and the reference application (claims 1-7) bolding shows additional limitations, itacizing shows repetitive limitations within the claim.
Instant Application
Reference Application 18/215,851
1. A suction member for connection to a dental vacuum source, the suction member comprising:
a distal end;
a proximal end spaced from the distal end in a proximal direction, the distal end being spaced from the proximal end in a distal direction;
a front side;
a rear side opposite the front side, the rear side being spaced from the front side in a rearward direction orthogonal to the longitudinal directions, and the front side being spaced from the rear side in a forward direction opposite to the rearward direction;
a frontal midplane dividing the suction member into a front portion forward of the frontal midplane and a rear portion rearward of the frontal midplane;
a right side;
a left side opposite the right side, the left side being spaced from the right side in a leftward direction orthogonal to the rearward and forward directions and to the longitudinal directions, the right side being spaced from the left side in a rightward direction opposite to the leftward direction;
a median plane dividing the suction member into a right portion rightward of the median plane and a left portion leftward of the median plane;
a suction tip at the distal end, the suction tip having a suction inlet passageway extending longitudinally therethrough;
an elongate tubular portion connected to the suction tip and extending away from the suction tip in the proximal direction, the tubular portion having a suction flow passageway extending longitudinally therethrough, the suction flow passageway being in fluid communication with the suction inlet passageway; and
a connection end portion at the proximal end, the connection end portion being connected to the tubular portion and extending away from the tubular portion in the proximal direction, the connection end portion being adapted and configured to connect to the dental vacuum source so as to form a sealed suction flow path from the suction flow passageway into the dental vacuum source;
the tubular portion including a tubular portion axis extending longitudinally in the proximal and distal directions at the intersection of the frontal midplane and the median plane, the tubular portion axis defining radial directions perpendicular to the tubular portion axis, a tubular portion inner surface, a tubular portion outer surface circumscribing the tubular portion inner surface, and a wall thickness extending from the tubular portion inner surface to the tubular portion outer surface, the tubular portion inner surface circumscribing the suction flow passageway, the tubular portion inner surface extending continuously around a perimeter of the suction flow passageway over a length of the tubular portion inner surface extending from the suction tip to the connection end portion;
the suction tip comprising a plurality of lobes protruding distally from the tubular portion, the lobes being spaced apart circumferentially about the tubular portion axis to form a peripheral vent opening between each neighboring pair of the lobes, each peripheral vent opening extending proximally from a respective open distal end to a respective one of a plurality of proximally recessed surfaces and circumferentially from one of the lobes to a neighboring one of the lobes;
each of the lobes comprising a proximal lobe end, a distally facing distal lobe surface, a radially inwardly facing inner lobe surface, a radially outwardly facing outer lobe surface, and lateral lobe surfaces including a clockwise-facing lateral lobe surface and a counterclockwise-facing lateral lobe surface, each of the inner, outer, and lateral lobe surfaces extending distally from the proximal lobe end to the distal lobe surface, each lateral lobe surface extending radially outwardly from the inner lobe surface to the outer lobe surface, and each of the inner and outer lobe surfaces extending clockwise from the counterclockwise-facing lateral lobe surface to the clockwise-facing lateral lobe surface;
the lobes comprising a single rear lobe and a plurality of frontal lobes;
the rear portion of the suction member comprising the entire rear lobe, the right portion of the suction member comprising a portion of the rear lobe, and the left portion of the suction member comprising a portion the rear lobe;
the suction inlet passageway extending proximally through the suction tip from a distal suction opening at the distal end of the suction member to the suction flow passageway, the suction inlet passageway being circumscribed by the inner lobe surfaces and the peripheral vent openings, such that the peripheral vent openings are in fluid communication with the suction inlet passageway;
the connection end portion being adapted and configured to connect to the dental vacuum source to form a sealed suction flow path from the suction flow passageway into the dental vacuum source.
1. A suction member for connection to a dental vacuum source, the suction member comprising:
a distal end;
a proximal end spaced from the distal end in a proximal longitudinal direction, the distal end being spaced from the proximal end in a distal longitudinal direction;
a front side;
a rear side opposite the front side, the rear side being spaced from the front side in a rearward direction orthogonal to the longitudinal directions, and the front side being spaced from the rear side in a forward direction opposite to the rearward direction;
a frontal midplane dividing the suction member into a front portion forward of the frontal midplane and a rear portion rearward of the frontal midplane;
a right side;
a left side opposite the right side, the left side being spaced from the right side in a leftward direction orthogonal to the rearward and forward directions and to the longitudinal directions, the right side being spaced from the left side in a rightward direction opposite to the leftward direction;
a median plane dividing the suction member into a right portion rightward of the median plane and a left portion leftward of the median plane;
a suction tip at the distal end, the suction tip having a suction inlet passageway extending longitudinally therethrough;
an elongate tubular portion connected to the suction tip and extending away from the suction tip in the proximal direction, the tubular portion having a suction flow passageway extending longitudinally therethrough, the suction flow passageway being in fluid communication with the suction inlet passageway; and
a connection end portion at the proximal end, the connection end portion being connected to the tubular portion and extending away from the tubular portion in the proximal direction, the connection end portion being adapted and configured to connect to the dental vacuum source so as to form a sealed suction flow path from the suction flow passageway into the dental vacuum source;
the tubular portion including a tubular portion axis extending longitudinally in the proximal and distal directions at the intersection of the frontal midplane and the median plane, the tubular portion axis defining radial directions perpendicular to the tubular portion axis, a tubular portion inner surface, a tubular portion outer surface circumscribing the tubular portion inner surface, and a wall thickness extending from the tubular portion inner surface to the tubular portion outer surface, the tubular portion inner surface circumscribing the suction flow passageway, the tubular portion inner surface extending continuously around a perimeter of the suction flow passageway over a length of the tubular portion inner surface extending from the suction tip to the connection end portion;
the suction tip comprising a plurality of lobes protruding distally from the tubular portion, the lobes being spaced apart circumferentially about the tubular portion axis to form a peripheral vent opening between each neighboring pair of the lobes, each peripheral vent opening extending proximally from a respective open distal end to a respective one of a plurality of proximally recessed surfaces and circumferentially from one of the lobes to a neighboring one of the lobes;
each of the lobes comprising a proximal lobe end, a distally facing distal lobe surface, a radially inwardly facing inner lobe surface, a radially outwardly facing outer lobe surface, and lateral lobe surfaces including a clockwise-facing lateral lobe surface and a counterclockwise-facing lateral lobe surface, each of the inner, outer, and lateral lobe surfaces extending distally from the proximal lobe end to the distal lobe surface, each lateral lobe surface extending radially outwardly from the inner lobe surface to the outer lobe surface, and each of the inner and outer lobe surfaces extending clockwise from the counterclockwise-facing lateral lobe surface to the clockwise-facing lateral lobe surface;
each of the distal lobe surfaces comprises a distal lobe end, the distal lobe ends of the distal lobe surfaces sharing a common distal tangent plane, the distal tangent plane being inclined distally towards the rear side;
the lobes comprising a single rear lobe and a plurality of frontal lobes;
the rear portion of the suction member comprising the entire rear lobe, the right portion of the suction member comprising a portion of the rear lobe, and the left portion of the suction member comprising a portion the rear lobe; and
the suction inlet passageway extending proximally through the suction tip from a distal suction opening at the distal end of the suction member to the suction flow passageway, the suction inlet passageway being circumscribed by the inner lobe surfaces and the peripheral vent openings, such that the peripheral vent openings are in fluid communication with the suction inlet passageway.
2. The suction member of claim 1 wherein the rear lobe is symmetric with respect to the median plane.
2. The suction member of claim 1 wherein the rear lobe is symmetric with respect to the median plane.
3. The suction member of claim 2 wherein an entire form of the suction member is symmetric with respect to the median plane.
3. The suction member of claim 2 wherein an entire form of the suction member is symmetric with respect to the median plane.
4. The suction member of claim 1 wherein the rear lobe spans an angle about the tubular portion axis greater than one-hundred twenty degrees.
4. The suction member of claim 1 wherein the rear lobe spans an angle about the tubular portion axis greater than one-hundred twenty degrees.
5. The suction member of claim 1 wherein each of the frontal lobes is entirely comprised in the front portion of the suction member.
5. The suction member of claim 1 wherein each of the frontal lobes is entirely comprised in the front portion of the suction member.
6. The suction member of claim 5 wherein the peripheral vent openings comprise a righthand lateral vent opening and a lefthand lateral vent opening, the lateral vent openings being intersected by the frontal midplane.
6. The suction member of claim 5 wherein the peripheral vent openings comprise a righthand lateral vent opening and a lefthand lateral vent opening, the lateral vent openings being intersected by the frontal midplane.
8. The suction member of claim 5 wherein each of frontal lobes spans a respective angle about the tubular portion axis less than fifty degrees.
7. The suction member of claim 5 wherein each of frontal lobes spans a respective angle about the tubular portion axis less than fifty degrees.
As shown in the table above, the application claims 1-6 and 8 corresponds to the reference application ‘851 claims 1-7, respectively.
The reference application claims include more elements, i.e. the bolded limitations “longitudinal”, and “each of the distal lobe surfaces comprises a distal lobe end, the distal lobe ends of the distal lobe surfaces sharing a common distal tangent plane, the distal tangent plane being inclined distally towards the rear side”. Therefore, the reference application claims are in effect a “species” (narrower) of the “generic” (broader) invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the reference application claims, they are not patentably distinct from the reference application claims.
Note that the instant application claim 1, at the end, repeats elements (italicized) which have been previously recited in both the instant application and the reference application claim 1.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 1-10 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.
Claims 1 and 9-10 variously recite “the lobes” or “each of the lobes”, which lack sufficient antecedent basis in the claims. Note that claim 1 defines “the suction tip comprising a plurality of lobes” (claim 1 page 2 last paragraph). It is unclear whether the subsequent recitation of “the lobes” are the same as, different from, all of, or a portion of said plurality of lobes.
Claims 5 and 7-8 variously recite “the frontal lobes”, which lack sufficient antecedent basis in the claims. Note that claim 1 defines “the lobes comprising a single rear lobe and a plurality of frontal lobes” (claim 1 page 3 line 9, emphasis added). It is unclear whether the subsequent recitation of “the front lobes” are the same as, different from, all of, or only a portion of said plurality of frontal lobes.
Claim 1 recites “a portion the rear lobe” (page 3 line 12), which is indefinite. It should be “a portion of the rear lobe”.
Claim 1 recites “a connection end portion at the proximal end, the connection end portion being connected to the tubular portion and extending away from the tubular portion in the proximal direction, the connection end portion being adapted and configured to connect to the dental vacuum source so as to form a sealed suction flow path from the suction flow passageway into the dental vacuum source” (page 2, second paragraph, italicized added).
Claim 1 then recites the italicized elements again in the last paragraph, which is repetitive and redundant
All dependent claims are rejected herein based on dependency.
Claim Rejections - 35 USC § 102
7. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
8. Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takeshi (JP 2019058497).
Regarding claim 1, Takeshi discloses: a suction member 100 (Figs. 1-5) for connection to a dental vacuum source 3, the suction member comprising:
a distal end (toward A);
a proximal end (toward handpiece/vacuum 2/3/4) spaced from the distal end A in a proximal direction, the distal end being spaced from the proximal end in a distal direction (see Fig. 5).
a front/upper side U; a rear/lower side F opposite the front side (see Fig. 2); the rear side being spaced from the front side in a rearward direction orthogonal to the longitudinal directions, and the front side being spaced from the rear side in a forward direction opposite to the rearward direction;
a frontal midplane dividing the suction member into a front portion forward of the frontal midplane and a rear portion rearward of the frontal midplane;
a right side;
a left side opposite the right side, the left side being spaced from the right side in a leftward direction orthogonal to the rearward and forward directions and to the longitudinal directions, the right side being spaced from the left side in a rightward direction opposite to the leftward direction;
a median plane dividing the suction member into a right portion rightward of the median plane and a left portion leftward of the median plane;
a suction tip A at the distal end, the suction tip A having a suction inlet passageway C/M extending longitudinally therethrough;
an elongate tubular portion 1 connected to the suction tip A and extending away from the suction tip in the proximal direction, the tubular portion having a suction flow passageway extending longitudinally therethrough, the suction flow passageway being in fluid communication with the suction inlet passageway; and
a connection end portion at the proximal end, the connection end portion being connected to the tubular portion and extending away from the tubular portion in the proximal direction, the connection end portion being adapted and configured to connect to the dental vacuum source so as to form a sealed suction flow path from the suction flow passageway into the dental vacuum source 3 (see Takeshi Figs. 1 and 5);
the tubular portion 1 including a tubular portion axis extending longitudinally in the proximal and distal directions at the intersection of the frontal midplane and the median plane, the tubular portion axis defining radial directions perpendicular to the tubular portion axis, a tubular portion inner surface, a tubular portion outer surface circumscribing the tubular portion inner surface, and a wall thickness extending from the tubular portion inner surface to the tubular portion outer surface, the tubular portion inner surface circumscribing the suction flow passageway C/M, the tubular portion inner surface extending continuously around a perimeter of the suction flow passageway C/M over a length of the tubular portion inner surface extending from the suction tip to the connection end portion (see Fig. 4);
the suction tip comprising a plurality of lobes 11, 12, protruding distally from the tubular portion, the lobes 11, 12, being spaced apart circumferentially about the tubular portion axis to form a peripheral vent opening 11b between each neighboring pair of the lobes 11a, 12a, each peripheral vent opening extending proximally from a respective open distal end to a respective one of a plurality of proximally recessed surfaces and circumferentially from one of the lobes to a neighboring one of the lobes (see Fig. 2).
each of the lobes comprising a proximal lobe end, a distally facing distal lobe surface 11a, 12a, a radially inwardly facing inner lobe surface (interior surface), a radially outwardly facing outer lobe surface (exterior surface), and lateral lobe surfaces (side surfaces of lobes) including a clockwise-facing lateral lobe surface and a counterclockwise-facing lateral lobe surface, each of the inner, outer, and lateral lobe surfaces extending distally from the proximal lobe end to the distal lobe surface, each lateral lobe surface extending radially outwardly from the inner lobe surface to the outer lobe surface, and each of the inner and outer lobe surfaces extending clockwise from the counterclockwise-facing lateral lobe surface to the clockwise-facing lateral lobe surface;
the lobes comprising a single rear lobe 12 and a plurality of frontal lobes 11 (see Fig. 2); the rear portion F of the suction member comprising the entire rear lobe 12, the right portion of the suction member comprising a portion of the rear lobe 12, and the left portion of the suction member comprising a portion the rear lobe 12;
the suction inlet passageway extending proximally through the suction tip from a distal suction opening at the distal end of the suction member to the suction flow passageway, the suction inlet passageway being circumscribed by the inner lobe surfaces and the peripheral vent openings 11b, such that the peripheral vent openings are in fluid communication with the suction inlet passageway C/M.
As to claim 2, referring to Takeshi’s Fig. 2, a vertical median line would indicate the median plant; and the rear lobe 12 is symmetric with respect to the median plane.
As to claim 3, an entire form of the suction member is symmetric with respect to the median plan (Fig. 2; median plane is vertical middle plane)
As to claim 4, the rear lobe 12 spans an angle about the tubular portion axis greater than one-hundred twenty degrees.
As to claim 5, each of the frontal lobes 11 is entirely comprised in the front portion U of the suction member (see Fig. 2).
As to claim 6, there is a righthand lateral vent opening 11b and a lefthand lateral vent opening 11b, the lateral vent openings being intersected by the frontal midplane (see Figs. 2 and 4).
As to claim 7, there are peripheral vent openings 11b which further comprise a front-right vent opening and a front-left vent opening (Figs. 2 and 4); the frontal lobes 11 comprising a righthand lateral frontal lobe extending circumferentially from the righthand lateral vent opening to the front-right vent opening, a foremost frontal lobe 11 extending circumferentially from the front-right vent opening to the front-left vent opening, and a lefthand lateral frontal lobe 11 extending from the front-left vent opening to the lefthand lateral vent opening. Each pair of the peripheral openings 11b that is separated by at least two of the frontal lobes 11 along a circumferential path that excludes the rear lobe 12 having a crossflow pathway that extends through the pair of the peripheral openings and across the suction inlet passageway along a straight line that extends infinitely in opposite directions without impinging the suction member. See annotated drawing of Fig. 2 herein below: the dash lines show the crossflow pathway at pairs of peripheral openings 11b as claimed, and similar to Applicant’s Figs. 4-5.
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As to claim 8, each of frontal lobes 11 is narrow, spanning a respective angle about the tubular portion axis less than fifty degrees.
As to claim 9, at least one of the lobes 11, 12, is disposed entirely within an infinite cylindrical volume circumscribed by an infinite cylindrical surface that comprises the tubular portion outer surface, the infinite cylindrical surface comprising the outer lobe surface of said at least one of the lobes (see Figs. 2 and 4).
As to claim 10, each of the lobes 11, 12, is disposed entirely within said infinite cylindrical volume circumscribed by said infinite cylindrical surface, the infinite cylindrical surface comprising the outer lobe surface of each of the lobes (see Figs. 2 and 4).
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner HAO D. MAI whose telephone number is (571)270-3002. The examiner can normally be reached on Mon-Fri 8:00-4:30. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached on (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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/Hao D Mai/
Examiner, Art Unit 3772