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
Applicant's election with traverse of Species B (corresponding to Figs. 3-5) in the reply filed on 11/12/25 is acknowledged. The traversal is on the ground(s) that there is no search burden between the species and the mode of operation is the same between the species. This is not found partially persuasive as the arguments to the similarity between species A and B (second gear vs worm gear) are persuasive. Accordingly, claims 1-9, directed to Species A and B will be examined. The arguments to Species C are not persuasive as the mode of operation in the magnetic connection is distinct from the other species and would require a separate field of search (for example searching multiple classes/subclasses and electronic resources, or employing different search queries). Accordingly, species C (corresponding to claim 10) remains non-elected
The requirement is still deemed proper and is therefore made FINAL.
Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/12/25.
Specification
The abstract of the disclosure is objected to because the reference to Fig. 1 should be removed. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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: “drive member” in claim 1; “drive mechanism” in claim 3; .
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 1-9 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 1 and 8, the term “the fixed connection” is indefinite for multiple reasons. First, the Examiner notes that claim 1 describes the tool being “removably attached” to the first part, and as such it is unclear how a “fixed” connection can also be removable. Secondly, in claim 1, the term “the fixed connection” lacks antecedent basis in the claims and it is unclear whether or not the term intends to refer back to the previously recited removable connection, or another feature. As best understood by the Examiner, the term is interpreted to refer back and state that the removable connection involves physical contact of the components, which is stable once connected (at a fixed location). 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 § 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, and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ayan (US 2009/0081602 A1) in view of Tong et al (US 11058517).
Regarding the above claims, Ayan discloses a distraction assembly (see Figs. 1-4), comprising: a palatal distractor (Fig. 1), which comprises an activation rod (5) and a body (4) segmented into a first part (left 4) and a second part (right 4, Fig. 1-1a), the rotation of the activation rod causing a relative displacement of the first part and the second part along a distraction axis X (e.g. width, see [0004], [0061]-[0062]), an activation tool (22), which comprises a drive member (14) configured to drive the activation rod in rotation (see [0060]-[0061]), the activation tool being removably attached to the first part (via 16/20, see citations above). Ayan further discloses wherein the activation tool comprises a hook (20) being removable hooked onto the distractor (Figs. 2 and 3a; per claim 6); and wherein the activation tool comprises a stop (16) bearing on the body, preferably at least on the first part (see Fig. 2; per claim 7). Ayan, however, does not teach wherein the first part comprising a first magnetic assembly composed of at least one first permanent magnet, the activation tool comprising a second magnetic assembly composed of at least one second magnet, the fixed connection between the first part and the activation tool comprising a magnetic coupling between the first magnetic assembly and the second magnetic assembly (per claim 1) or the first permanent magnet is integrated into an envelope of plastic material (per claim 5) as required.
Tong et al, however, teaches an orthodontic assembly comprising an orthodontic device (100) and a positioning/manipulating tool (105, Fig. 1c), wherein the tool and device can be removably connected together by both a physical securement (e.g. grasping of the device via the tool) and a magnetic coupling, wherein a first part of the device (102) comprising a first magnetic assembly composed of at least one first permanent magnet, the tool comprising a second magnetic assembly composed of at east one second magnet, the fixed connection between the first part and the tool comprising a magnetic coupling between the first and second magnetic assemblies (see col 7, lines 1-3, and col 6, lines 22-67). Tong further discloses that the device is formed of plastic or a plastic insert (see col 5, lines 35-39 and col 6, line 61), and as such the magnet would be formed or placed therein, surrounded by an envelope of the plastic material. Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the connection between the device and tool of Ayan, to additionally include first and second magnetic assemblies and plastic envelope holding the magnet, as taught by Tong, as such modification would improve the security of the connection between the components, aid in centering or initial mating thereof, and reduce the risk of slippage when in use, and provide a secure attachment means for the magnet, while reducing the risk of loss thereof, respectively.
Regarding claim 8, Ayan/Tong, as combined above, does not teach wherein the first magnetic assembly comprises a plurality of first permanent magnets and the second magnetic assembly comprises a plurality of second permanent magnets, and wherein the fixed connection between the palatal distractor and the activation tool comprises a magnetic coupling between the first permanent magnets of the first magnetic assembly and the second permanent magnets of the second magnetic assembly as required. However, the Examiner notes that such modification would merely involve a duplication of known parts of the device which has been held to be within the skill of the ordinary artisan. Additionally, the Examiner notes that the specific number of magnet pairs is described as merely preferable in the instant disclosure (see [0011]). 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 Ayan/Tong, as combined above, to include a plurality of first and second magnets, as such modification would merely involve a duplication of known parts of the device, which has been held to be within the skill of the ordinary artisan (see MPEP 2144.04(VI)(B)).
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ayan in view of Tong, as combined above, further in view of Hashimoto (KR 20100094426 A).
Regarding claim 2, Ayan/Tong, as combined above, does not teach wherein the second magnetic assembly in the tool is formed of a permanent magnet as required.
Hashimoto, however, teaches a magnetic orthodontic tool with a permanent magnet (60) forming a second magnetic assembly in a tool, used to engage a first magnetic assembly in an orthodontic device. 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 Ayan/Tong, as combined above, to include Hashimoto’s teaching of providing the second magnetic assembly as a permanent magnet, as such modification would improve the strength and reliability of the magnetic connection.
Claim(s) 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Ayan in view of Tong, as combined above, further in view of Chon (KR 102064710).
Regarding claims 3-4, Ayan/Tong, as combined above, discloses all the features of the claimed invention, including wherein the assembly comprises a drive mechanism (Ayan, 5.1/15) arranged on the tool and distractor, interposed between an output means (9) and the activation rod (5), wherein activation of the output means drives a rotation of the activation rod via the drive mechanism (14, see Ayan, citations above), and wherein the drive mechanism comprises a first gear (5.1) and a second gear (15), the first gear being attached to the activation rod, the second gear being arranged on the tool and being driven in rotation by the output means, the first gear being engaged with the second gear (see Ayan, Figs and citations above). Ayan/Tong, as combined above, while teaching a manually actuatable output means (9 Ayan), does not teach that the drive mechanism is attached to an output shaft of a drive electric motor, such that rotation of the shaft drives second gear and first gear to rotate the activation rod as required.
Chon, however, teaches a similar dental tool (see Figs. 3-4) comprising a similar drive member (e.g. rack 140), wherein the operation of the drive member is performed by a drive electric motor (110) having an output shaft (120) to operate the rack. 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 Ayan/Tong, as combined above, to include Chon’s drive electric motor, as such modification would merely involve the automation a previously manual activity, which has been held to be within the skill of the ordinary artisan (see MPEP 2144.04(III)) and would improve ease of installation as the user would not need to provide additional force or leverage to the device in order to operate, merely pressing a switch in order to function, also improving accuracy of placement and locating. The Examiner notes that should the device of Ayan/Tong, as combined above, be modified with the teachings of Chon, as combined above, the drive mechanism would be interposed between the output shaft of the motor and the activation rod, a rotation of the shaft driving rotation of the rod via the drive mechanism, and wherein the second gear being driven in rotation by the motor as required.
Allowable Subject Matter
Claim 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art, either alone or in proper combination, does not teach the specific arrangement of at least two first and second permanent magnets of the first and second magnetic assemblies being arranged obliquely to each other, in combination with the other required limitations of the claims.
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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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