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 .
Claim Objections
Claim 1 and 3-15 objected to because of the following informalities:
Claim 1, line 1 change “instrument having a grip” to “instrument comprising a grip”.
Claim 8, change “the first lever is provided, in its end region remote from the pivot axis, with a grip element” to “the first lever provided with a grip element in an end region remote from the pivot axis of the first lever”
Claims 3-13 change “Claim” to “claim”.
Claim 14, lines 11-13 change “and wherein the cover comprises” to “the cover comprising”
Claim 15 change “Cover for a headpiece according to Claim 14” to “Cover according to claim 14”
Appropriate correction is required.
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “holding means” and “release element” in claim 1 and 14 and “fixing device” of claim 11.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof. The specification discloses the “holding means” as a collet and the “release element” is a wedge element having a wedge-shaped head region and a planar bottom region on page 7. The specification discloses the fixing device is an over-nut device consisting of a ring element which turn has a thread and is designed to interact with an internal thread on page 14.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 and 3-15 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 claim 1 and 14, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of examination, the limitation is interpreted as a medical or dental hand-held instrument.
Claims 3-13 are rejected based on claim dependency on claim 1.
Claim 15 is rejected based on claim dependency on claim 1
Regarding claim 1, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of examination, the limitation is interpreted as any treatment tool.
Claim 5 recites :the second lever has a bend which, to interact with the release element, presses on the latter, wherein a force acting on the release element is limited by the bend”, it is unclear what the bend is pressing on with the “the latter” recitation. For the purpose of examination, and in view of the specification, the limitation is interpreted as the second lever having a bend which presses exclusively on the release element.
Regarding claim 6, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of examination, the limitation is interpreted as a return spring or a leg spring.
Claim 7 recites “for mounting the lever in the cover”, it is unclear if this is the lever mechanism, first lever or second lever. For the purpose of examination, the limitation is interpreted as the first lever.
Claims 7 and 8 recite the limitation "the pivot axis". There is insufficient antecedent basis for this limitation in the claim. The limitation is interpreted as the pivot axis of the first lever.
Claim 10 recites “wherein preferably, for this purpose, the cover has a thread and the headpiece has a corresponding mating thread”, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). for the purpose of examination, the limitation is interpreted as the cover has a thread and the headpiece has a corresponding mating thread for reversibly coupling the cover to the head.
Claim 12 “the lever mechanism is mounted movably along the axis of rotation, and in that the lever mechanism is preloaded by means of spring force into a position spaced apart from the release element, wherein the lever mechanism is able to be depressed counter to the spring force in order, in the depressed state, to contact the release element in a rest position of the two levers”, it is unclear if the preloading of the lever mechanism results in a spaced apart position is in the rest position or in a depressed state of the lever mechanism, or if the rest position is unrelated to depressed/pressed state of the lever mechanism such as a final set position. For the purpose of examination, and in view of the specification, the spring force enable a space between the lever mechanism and the release element in a depressed position and the lever mechanism is in contact with the release element in an activated or pressed position.
Claim 14 recites “Cover for a headpiece of a medical, in particular dental hand-held instrument having a grip sleeve and a headpiece” it is unclear if the headpiece which is associated to the cover is the same headpiece that is a component of the dental hand-held instrument”. For the purpose of examination, the limitation is interpreted as the same as the headpiece associated with the cover is the same as the headpiece which is a part of the dental hand-held instrument.
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.
(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.
Claims 1, 3, 5-9, and 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Heil (US 5,040,980).
Regarding claim 1, Heil discloses a medical, in particular dental hand-held instrument
(10) having a grip sleeve (handle 11) and a headpiece (head 12) which is arranged at a front end of the grip sleeve (see figure 1) and has a tool receiving opening (open ended axial hole 21), wherein a holding means for rotatably securing a treatment tool (functionally and structurally equivalent to the chuck 20, which is disclosed as holding the burr 22 and rotating the burr via the rotor 14, see col 4, line 28-36), for example a dental drill (dental burr 22), is arranged in the interior of the headpiece (see figure 2), wherein the holding means (20) is arranged along an axis of rotation (see figure 2) for the treatment tool (22), and wherein a release element (functional and structurally equivalent to the wedge providing element 30 or 30’’) is arranged in the interior of the headpiece (see figures 2 and 8-9) along the axis of rotation (see figure 2 and 3), said release element being designed to interact with the holding means (see figure 2 and 3, see col 5, lines 20-23), wherein the release element (30) releases the securing of the treatment tool (22) upon interaction with the holding means (see col 6, lines 60-70), characterized in that the headpiece (12) furthermore has a cover (37 or 37’’), wherein the cover (37/ 37’’) comprises a lever mechanism which has a first lever (control lever 36 or 36’’) and a second lever (an equivalent to the second lever is the spring arms 40a’’/40a of the leaf spring 63/40, this is in view of the definition of a lever “projecting piece by which a mechanism is operated or adjusted”, 40a’’/40a projects inward from the leaf spring and is adjusted/moved by the control lever) which cooperate in order to release the securing of the treatment tool (22, see col 6, lines 60-70),
characterized in that the first lever (366 or 36’’), upon actuation, acts on a free end of the second lever (the free end 50a or 40a’’, see figures 2/4 and 8/9).
Claim 3, Heil discloses a pivot axis of the first lever (transverse to the pivot shaft 38 or 38’’) and a pivot axis of the second lever (transverse to the connection between 40a and 40b) are arranged parallel to one another and are perpendicular to a plane which extends along the axis of rotation ( see annotated figure 7).
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Annotated figure 7
Regarding claim 5, Heil further discloses that the second lever (40) has a bend which, to interact with the release element, presses on the latter, wherein a force acting on the release element is limited by the bend (the bend is interpreted as the surface underneath the arms 40a which is bent into a C shape as seen in figure 3 and only touches the surface of the wedge element 30 in figures 4 and 7).
Regarding claim 6, Heil discloses the second lever (40a’’ of 63) is provided, in the region of its pivot axis (along the connection between 40a’’ and 40b’’ as seen in figures 8-10), with a return spring (arm 64 of the lower annular leaf spring 65), which is designed, in the thread absence of actuation of the first lever (36a”), to transfer the first and second levers into a rest position (see figure 8), wherein, in the rest position (see figure 8), the second lever (40a” of 63) is spaced apart from the release element (30”, see figure 8).
Regarding claim 7, Heil further discloses the first lever (36) is provided, in its end region near the pivot axis, with lateral protrusions (pivot shaft 38/38”) which serve for mounting the lever (36) in the cover (37) and each engage laterally over the end region of the second lever (see figure 2-3).
Regarding claim 8, Heil further discloses the first lever (36) is provided, in its end region remote from the pivot axis (along pivot 38), with a grip element (handle portion 36a).
Regarding claim 9, Heil further discloses the first lever (36”) is provided, on its underside facing the second lever (40a” of 63), with a recess (arcuate containing surfaces 62) which receives at least a part of the second lever (disclosed a continuous engagement with the spring arms 40a”, see col 8, lines 62-66 ) in a rest position of the two levers (see figure 8).
Regarding claim 11, Heil further discloses the cover (37) has a fixing device wherein the lever mechanism is able to be locked selectively in a desired orientation with respect to the axis of rotation by means of the fixing device (col 7, lines 3-11 disclose the disk shaped cover 37 is mounted to rotate within an upward cavity of the head 12, this feature enables the repositioning of the cover to rotate to a desired position and thus the lever is adjustable along the arrow 46, the associated structure for this feature being a retaining ring 43, received within grooves 44 and 46; this is considered an equivalent structure to the claimed fixing device ).
Regarding claim 12, Heil discloses the lever mechanism (36/36” and 40a/40a”) is mounted movably along the axis of rotation (col 7, lines 9-16 disclose the lever 36 being rotatably mounted), and in that the lever mechanism (36/36” and 40a/40a”) is preloaded by means of spring force into a position spaced apart from the release element (see figure 8, where the spring force of 64positions the lever mechanism parts 37” and 40a” away from the release element 30”), wherein the lever mechanism (36/36” and 40a/40a”) is able to be depressed counter to the spring force in order, in the depressed state, to contact the release element (30”) in a rest position of the two levers (see figure 9).
Regarding claim 13, Heil further discloses the holding means is a collet (chuck 20, see figure 3), and/or the release element is a wedge element (30) having a wedge-shaped head region (31) and a planar bottom region (30a).
Regarding claim 14, Heil discloses a cover (37/ 37”) for a headpiece (12) of a medical, in particular dental hand-held instrument (10) having a grip sleeve (11) and a headpiece (12) which is arranged at a front end of the grip sleeve (see figure 1) and has a tool receiving opening (21), wherein a holding means for rotatably securing a treatment tool (functionally and structurally equivalent to the chuck 20, which is disclosed as holding the burr 22 and rotating the burr via the rotor 14, see col 4, line 28-36), for example a dental drill (dental burr 22), is arranged in the interior of the headpiece (see figure 2), wherein the holding means (20) is arranged along an axis of rotation for the treatment tool (see figure 2), and wherein a release element (functional and structurally equivalent to the wedge providing element 30 or 30’’) is arranged in the interior of the headpiece (12) along the axis of rotation (see figure 2) said release element (30/30”) being designed to interact with the holding means (20, see figure 2 and 3, see col 5, lines 20-23), wherein the release element (30/30”) releases the securing of the treatment tool (22) upon interaction with the holding means (see col 6, lines 60-70), characterized in that the cover (37/37”) comprises a lever mechanism which has a first lever (control lever 36 or 36’’) and a second lever (an equivalent to the second lever is the spring arms 40a’’/40a of the leaf spring 63/40, this is in view of the definition of a lever “projecting piece by which a mechanism is operated or adjusted”, 40a’’/40a projects inward from the leaf spring and is adjusted/moved by the control lever) which cooperate in order to release the securing of the treatment tool (22, see col 6, lines 60-70),
characterized in that the first lever (366 or 36’’), upon actuation, acts on a free end of the second lever (the free end 50a or 40a’’, see figures 2/4 and 8/9).
Regarding claim 15, Heil further discloses the first lever in the form of a two-armed lever (handle portion 36a and cam portion 36b which pivots around 38) and the second lever is in the form of a one-armed lever (see annotated figure 2).
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Annotated figure 2
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Heil.
Regarding claim 4, Heil further discloses in the direction of the axis of rotation, the two pivot axes are preferably offset from one another (see annotated figure 7), but fails to explicitly disclose the pivot axis of the first lever being on a side opposite to the pivot axis of the second lever.
However, placing the pivot axis of the first lever on a side opposite to the pivot axis of the second lever is considered an obvious matter of design choice lacking in criticality, well within the skill of an ordinary artisan, for the purpose of providing a specific contact with the patient. Furthermore, absent a teaching as to criticality that having the position of the pivot axis of the levers being on opposing sides of the axis rotation being an advantage, solves any stated problem, or is used for any particular purpose, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to any particular arrangement. In re Kuhle, 536 F.2d 553,555,188 USPQ 7,9 (CCPA 1975)
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Heil as applied to claim 1 above, and further in view of Nakanishi (US 5,037,299).
Regarding claim 10, Heil further discloses that the cover (30/30”) is able to be coupled reversibly to the headpiece (12/12”) of the hand- held instrument (10/10”, see col 9, lines 52-56), but fails to disclose the coupling is by the cover has a thread and the headpiece has a corresponding mating thread.
Nakanishi teaches a cover (head cap 19) which is removably coupled to the headpiece (head housing 12) by the cover having a thread and the head piece having a mating thread (col 3, lines 8-12 discloses on the upper end of the head housing 12 is threadedly mounted a head cap 19).
As both Heil and Nakanishi disclose means of attaching the cover to the headpiece in a reversible manner (see col 9, lines 52-56 of Heil and col 3, lines 8-12 of Nakanishi), it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the coupling means of Heil with the coupling by the cover having a thread and the headpiece has a corresponding mating thread as taught by Nakanishi to achieve the predictable results of removably coupling a headpiece to the cover.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Byer (US 5,310,341) discloses a cap with a lever mechanism (17) and Pernot (US 5,090,906) discloses a cap (11) with a lever mechanism having a first and second lever (at least one lever 13, see col 2, lines 40-43).
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/S.N.B./Examiner, Art Unit 3772
/HEIDI M EIDE/Primary Examiner, Art Unit 3772
6/29/2026
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