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 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.
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 5 and 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.
Claim 5 recites the limitation "the means for connection to the drive means" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation has been interpreted to read “a means for connection to the drive mean”.
Claim 9 recites the limitation "the central yoke" in line 2 and “the forks” in line 3. There is insufficient antecedent basis for these limitations in the claim.
For the purpose of examination, the limitation has been interpreted to read “a central yoke” and “at least two forks”.
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.
Claims 1-3, 5 and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berthusen et al. (US 7,503,921).
Regarding claim 1, Berthusen et al. disclose a rotary instrument capable of use for dental implantology or endodontics, comprising at least a proximal part (see figure below) configured to be connected to a rotational drive means (column 3, lines 24-25), a distal part (52) whose shape is determined by the use of the instrument, characterized in that the instrument comprises flexible means (38, 56) allowing flexibility of said instrument (column 3, line 56 – column 4, line 5, figures 5-6).
Regarding claim 2, Berthusen et al. disclose that the flexible means have two states, a flexible state (when the recesses and projections are disengaged to position the head at the correct angle, aka biases away from reamer 14, column 3, line 56 - column 4, line 5) and a rigid state (“fixed angle orientation” when the recesses and projections are engaged, column 3, line 56 - column 4, line 5).
Regarding claim 3, Berthusen et al. disclose the flexible means are located on the proximal part of the instrument (figure 3).
Regarding claim 5, Berthusen et al. disclose the flexible means (38, 56) are located between the proximal part and the means for connection to the drive means (26, figures 2-3).
Regarding claim 10, Berthusen et al. disclose the flexible means comprise a spiral spring (38, figure 3/56, figure 3).
Regarding claim 11, Berthusen et al. disclose the flexible means comprise a wire-shaped spring (38, figure 3/56, figure 3).
Regarding claim 12, Berthusen et al. disclose the proximal part comprises a plurality of flexible means (56, 38).
Regarding claim 13, Berthusen et al. disclose said instrument being a drill, a reamer, a tap, an implant holder, a screwdriver, a file, an adapter or an extension piece that can be connected to one or more other instruments (Abstract, Figure 1).
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Claims 1, 4 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cohen (US 2014/0274425).
Regarding claim 1, Cohen discloses a rotary instrument capable of use for dental implantology or endodontics, comprising at least a proximal part (82) configured to be connected to a rotational drive means (if one so chooses), a distal part (84) whose shape is determined by the use of the instrument, characterized in that the instrument comprises flexible means (10, figure 3) allowing flexibility of said instrument (¶37-38).
Regarding claim 4, Cohen discloses that the flexible means are located between the proximal part and the distal part of the instrument (figures 3-4).
Regarding claim 6, Cohen discloses that the flexible means comprise an articulation (10, figures 3-4).
Regarding claim 7, Cohen discloses that the articulation comprises a universal joint (10, figures 3-4, ¶35) formed of at least two forks (82, 84) and a central yoke (15) of substantially spherical shape (¶41).
Regarding claim 8, Chen discloses that the universal joint comprises a pin (20, figures 3-4) and a pair of half-pins (30, 40, figures 3-4), and in that the central yoke (15) is traversed by two perpendicular passages (91, 92") dimensioned so as to receive the pin and the pair of half-pins (figures 3-4).
Claims 1 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao et al. (US 2012/0135811).
Regarding claim 1, Zhao et al. discloses a rotary instrument capable of use for dental implantology or endodontics, comprising at least a proximal part (“left” 30, figure 1) configured to be connected to a rotational drive means (if one so chooses), a distal part (“right” 30, figure 1) whose shape is determined by the use of the instrument, characterized in that the instrument comprises flexible means (10, figure 1) allowing flexibility of said instrument (¶9, ¶14).
Regarding claim 9, Zhao et al. disclose that the central yoke (10) comprises two perpendicular grooves (15’s, ¶9), and in that the forks (315’s) comprise guides (315/317) dimensioned so as to slide in said grooves (¶14).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW JAMES LAWSON whose telephone number is (571)270-7375. The examiner can normally be reached Mon - Fri 6:30-3:00.
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/MATTHEW J LAWSON/Primary Examiner, Art Unit 3619