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.
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: “magnetic element” in claims 1, 2, and 10.
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 § 102
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 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, 2, 6, 10, 12, 13, 17, 18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goodman et al. (US 2012/0077150 A1).
Regarding claim 1, Goodman discloses a dental assembly (title and abstract), comprising:
a screw (Fig. 1 element 40) comprising:
a main body (Fig. 4a element 43) having a first end including a head (Fig. 4a element 42) defining a drive socket (fig 1a showing drive socket in head), the main body also having a second end including a tip (fig. 4a element 41b), and a shank extending from the head to the tip, wherein at least a portion of the shank is threaded (Fig. 4a element 44);
and a magnetic element, carried with the main body, making up less than the entirety of the screw, and configured to at least partially retain the screw to a tip of a hand driver by magnetic attraction; (Fig. 4a element 40 is a stainless steel screw with a gold coating and thus the stainless steel being the magnetic element and the gold coating being non-magnetic. Applicant discloses the magnetic element configured to at least partially retain the screw toa tip of a hand driver by magnetic attraction as comprising any of “a magnetic metal or magnetic metal alloy” including “electromagnetic, ferrimagnetic, or ferromagnetic materials” including “nickel, iron, cobalt and alloys thereof” and also “stainless steel” in paragraph [0046] or “a rare earth magnet, a composite magnet, a magnetic metal, or any other magnetic material” in paragraph [0050] or “ neodymium” in paragraph [0053]. Goodman discloses magnetic metal of the function claimed as being a stainless steel in paragraph [0041 lines 1-2. Because both applicant’s disclosure and Goodman disclose the magnetic element as stainless steel for performing the same function, the structures are considered to be identical structures under the 112f analysis. Should applicant disagree the structures are identical, examiner maintains the stainless steel of Goodman would be functionally equivalent structure)
an implant fixture configured to be installed into a jawbone of a patient (fig. 6 element 60), the implant fixture having a threaded outer region configured to engage the jawbone (fig. 6 element 60 having external threads), the implant fixture having a threaded cavity configured to engage the screw (Fig. 7 showing the threading 69), the entrance to the threaded cavity having a tapered perimeter (Fig 7 showing tapering near 32); and
an implant structure (fig. 7 elements 20/50/35 forming an implant structure) , the implant structure having a tapered outer portion (Fig. 7 tapering of element 35 matching at element 32), the implant structure having an unthreaded cavity, (Fig. 7 inside of 20 and 35 being unthreaded) the implant structure having a shoulder within the unthreaded cavity configured to contact an underside of the head of the screw (Fig. 7 element 50 having a shoulder with 20 to contact underside of the head of screw 40);
wherein the screw is configured to pass through the unthreaded cavity of the implant structure until the underside of the head contacts the shoulder, wherein the screw is configured to thread into the implant fixture thereby seating the implant structure such that the tapered perimeter of the implant fixture cavity aligns with the tapered outer portion of the implant structure (Fig. 7 all).
Regarding claims 2 and 10, Goodman discloses a screw for securing a dental structure to an implant fixture within the jawbone of a dental patient (Fig. 1 element 40) comprising:
a main body (Fig. 4a element 43) having a first end including a head (Fig. 4a element 42) defining a drive socket (fig 1a showing drive socket in head),
the head having a bottom end configured to seat against a shoulder within a cavity of the dental structure (Fig. 4a/c element 42b),
the main body also having a second end including a tip (fig. 4a element 41b), and a shank extending from the head to the tip, wherein at least a portion of the shank is threaded and configured to pass through an unthreaded cavity of the dental structure (Fig. 4a element 44);
and a magnetic element, carried with the main body, making up less than the entirety of the screw, and configured to at least partially retain the screw to a tip of a hand driver by magnetic attraction; (Fig. 4a element 40 is a stainless steel screw with a gold coating and thus the stainless steel being the magnetic element and the gold coating being non-magnetic. Applicant discloses the magnetic element configured to at least partially retain the screw toa tip of a hand driver by magnetic attraction as comprising any of “a magnetic metal or magnetic metal alloy” including “electromagnetic, ferrimagnetic, or ferromagnetic materials” including “nickel, iron, cobalt and alloys thereof” and also “stainless steel” in paragraph [0046] or “a rare earth magnet, a composite magnet, a magnetic metal, or any other magnetic material” in paragraph [0050] or “ neodymium” in paragraph [0053]. Goodman discloses magnetic metal of the function claimed as being a stainless steel in paragraph [0041 lines 1-2. Because both applicant’s disclosure and Goodman disclose the magnetic element as stainless steel for performing the same function, the structures are considered to be identical structures under the 112f analysis. Should applicant disagree the structures are identical, examiner maintains the stainless steel of Goodman would be functionally equivalent structure)
Regarding claim 6, Goodman further discloses wherein the magnetic element is encapsulated by a main body material that is biocompatible and non-ferromagnetic (Fig. 4a element 40 is a stainless steel screw with a gold coating and thus the stainless steel being the magnetic element and the gold coating being non-magnetic).
Regarding claim 12, Goodman further wherein the magnetic element is a layer below a surface of the screw (Fig. 4a element 40 is a stainless steel screw with a gold coating and thus the stainless steel being the magnetic element and the gold coating being non-magnetic with the outer surface of the steel under the gold being an outer layer of the magnetic element).
Regarding claim 13, Goodman further discloses wherein the magnetic element forms a portion of the drive socket (Fig. 4a element 41a is part of the steel of the screw).
Regarding claim 17, Goodman further wherein the magnetic element has a magnetic material composition (paragraph [0041] lines 1-2 stainless steel is composition of iron and chromium).
Regarding claim 18, Goodman further discloses wherein the drive socket forms a hexagonal channel (fig. 7 showing the socket cross section having 3 sides and thus 6 total for hexagonal).
Regarding claim 20, Goodman further discloses wherein the main body has a material composition including titanium or gold (Paragraph [0041] lines 1-2 disclosing the main body includes gold).
Claims 1, 2, 4, 7, 8, 10, 11, 13, 15, 16, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (CN 204364152 U-translation cited for text).
Regarding claim 1, Zhang discloses a dental assembly (title and abstract), comprising:
a screw (Fig. 2 element 4/401) comprising:
a main body (Fig. 2 element 4) having a first end including a head (Fig. 2 element 401) defining a drive socket (fig 3 showing drive socket in head), the main body also having a second end including a tip (fig. 2 element 4 having a tip end), and a shank extending from the head to the tip, wherein at least a portion of the shank is threaded (Fig. 4a element 4 having a lower threaded end);
and a magnetic element, carried with the main body, making up less than the entirety of the screw, and configured to at least partially retain the screw to a tip of a hand driver by magnetic attraction; (Fig. 2 element 401. Applicant discloses the magnetic element configured to at least partially retain the screw toa tip of a hand driver by magnetic attraction as comprising any of “a magnetic metal or magnetic metal alloy” including “electromagnetic, ferrimagnetic, or ferromagnetic materials” including “nickel, iron, cobalt and alloys thereof” and also “stainless steel” in paragraph [0046] or “a rare earth magnet, a composite magnet, a magnetic metal, or any other magnetic material” in paragraph [0050] or “ neodymium” in paragraph [0053]. Zhang discloses the head is of a material that is magnetized for function claimed in abstract line 4 disclosing the head is magnetized. Because both applicant’s disclosure and Zhang disclose the magnetic element as magnetized for performing the same function, the structures are considered to be identical structures under the 112f analysis. Should applicant disagree the structures are identical, examiner maintains the magnetized head of Zhang would be functionally equivalent structure)
an implant fixture configured to be installed into a jawbone of a patient (fig. 4 all), the implant fixture having a threaded outer region configured to engage the jawbone (fig. 4 element 1 having external threads), the implant fixture having a threaded cavity configured to engage the screw (Fig. 3 showing the threading of 4 and 1), the entrance to the threaded cavity having a tapered perimeter (Fig 1 showing tapering near 101); and
an implant structure (fig. 5 element 2), the implant structure having a tapered outer portion (Fig. 5 tapering of element 2), the implant structure having an unthreaded cavity, (Fig. 5 inside of 203) the implant structure having a shoulder within the unthreaded cavity configured to contact an underside of the head of the screw (Fig. 5 element 202 having a shoulder);
wherein the screw is configured to pass through the unthreaded cavity of the implant structure until the underside of the head contacts the shoulder, wherein the screw is configured to thread into the implant fixture thereby seating the implant structure such that the tapered perimeter of the implant fixture cavity aligns with the tapered outer portion of the implant structure (Fig. 3, all).
Regarding claims 2 and 10, Zhang discloses a screw for securing a dental structure to an implant fixture within the jawbone of a dental patient (Fig. 2 element 4/401) comprising:
a main body (Fig. 2 element 4) having a first end including a head (Fig. 2 element 401) defining a drive socket (fig 3 showing drive socket in head), the main body also having a second end including a tip (fig. 2 element 4 having a tip end), and a shank extending from the head to the tip, wherein at least a portion of the shank is threaded (Fig. 4a element 4 having a lower threaded end);
the head having a bottom end configured to seat against a shoulder within a cavity of the dental structure (Fig. 2 element 401 having a bottom),
the main body also having a second end including a tip (fig. 2 element 4 having a tip end), and a shank extending from the head to the tip, wherein at least a portion of the shank is threaded configured to pass through an unthreaded cavity of the dental structure (Fig. 4a element 4 having a lower threaded end);
and a magnetic element, carried with the main body, making up less than the entirety of the screw, and configured to at least partially retain the screw to a tip of a hand driver by magnetic attraction; (Fig. 2 element 401. Applicant discloses the magnetic element configured to at least partially retain the screw toa tip of a hand driver by magnetic attraction as comprising any of “a magnetic metal or magnetic metal alloy” including “electromagnetic, ferrimagnetic, or ferromagnetic materials” including “nickel, iron, cobalt and alloys thereof” and also “stainless steel” in paragraph [0046] or “a rare earth magnet, a composite magnet, a magnetic metal, or any other magnetic material” in paragraph [0050] or “ neodymium” in paragraph [0053]. Zhang discloses the head is of a material that is magnetized for function claimed in abstract line 4 disclosing the head is magnetized. Because both applicant’s disclosure and Zhang disclose the magnetic element as magnetized for performing the same function, the structures are considered to be identical structures under the 112f analysis. Should applicant disagree the structures are identical, examiner maintains the magnetized head of Zhang would be functionally equivalent structure).
Regarding claim 4, Zhang further discloses wherein the magnetic element forms a portion of the drive socket and is located entirely within the head (Fig. 3 the head 401 is the drive socket and is the only part taught as magnetized).
Regarding claim 7, Zhang further discloses wherein the shank is non-magnetic (Abstract line 4 only discloses the head is magnetized and thus the rest of the bolt would be non-magnetized).
Regarding claim 8, Zhang further discloses wherein the magnetic element is a surface layer including at least a portion of the drive socket (Fig. 2 the head is the surface layer with the drive socket).
Regarding claim 11, Zhang further discloses wherein the magnetic element is a surface layer(Fig. 2 the magnetized head is the surface layer).
Regarding claim 13, Zhang further discloses wherein the magnetic element forms a portion of the drive socket (Fig. 2 element 401 is the head and thus forms part of the drive socket).
14. (Original) The screw of claim 10, wherein the magnetic element is removable from the drive socket.
Regarding claim 15 and 16, these claims recite the limitation of the magnetic element being either fusion welded to the main body, or solid state welded to the main body. These limitation is being viewed as a product by process claim of merely reciting a process to make the product as discussed above, the presence of process limitations on product claims, which product does not otherwise patentably distinguish over prior art, cannot impart patentability to the product. In re Stephens 145 USPQ 656 (CCPA 1965).
Regarding claim 17, Goodman further wherein the magnetic element has a magnetic material composition (paragraph [0041] lines 1-2 stainless steel is composition of iron and chromium).
Regarding claim 18, Zhang further discloses wherein the drive socket forms a hexagonal channel (fig. 3 showing the socket cross section having 3 sides and thus 6 total for hexagonal).
Regarding claim 19, Zhang further discloses wherein the main body is non-ferromagnetic (Abstract line 4 only discloses the head is magnetized and thus the rest of the bolt would be non-magnetized).
Regarding claim 20, Goodman further discloses wherein the main body has a material composition including titanium or gold (Paragraph [0041] lines 1-2 disclosing the main body includes gold).
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 3, 5, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 204364152 U-translation cited for text) in view of Wegmueller et al. (EP 0347510 A1).
Regarding claim 3, Zhang discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose where the majority of the screw is non-ferromagnetic and includes gold or titanium.
However Wegmueller discloses a post for securing a dental structure to an implant fixture within the jawbone of a dental patient (Fig. 1 element 6) comprising:
a main body (Fig. 2 element 6) having a first end including a head (Fig. 2 element 14) defining a drive socket (fig. 2/3 element 17/20),
the main body also having a second end including a tip (fig.2 distal tip of 6), and a shank extending from the head to the tip (Fig. 2 element 6 having a length of shank),
and a magnetic element, carried with the main body, making up less than the entirety of the screw, and configured to at least partially retain the screw to a tip of a hand driver by magnetic attraction; (Fig. 2/3 element 16), where the majority of the post is made of non-ferromagnetic material of titanium (abstract lines 4-5 disclosing the post is made of titanium).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the majority of the post being non-ferromagnetic titanium as taught by Wegmueller into the screw shank as taught by Zhang for the purpose of being a biocompatible material as taught by Wegmueller (page 2 lines 16-17).
Regarding claims 5 and 14, Zhang discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose where the magnetic element is removable from the drive socket of the screw.
However Wegmueller further discloses where the magnetic element is removable from the drive socket (Fig. 3 element 19 being removable from the drive socket 18).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the ability to remove the magnetic element from the drive socket as taught by Wegmueller into the screw head magnet element as taught by Zhang for the purpose of being able to interchange the magnetic element as taught by Wegmueller (page 2 lines 28-30).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 204364152 U-translation cited for text)
Zhang discloses the claimed invention except for the length between the first end and the second end is 10 millimeters or less nor that the head includes a top surface that is 5 mm or less across.
However, there is no evidence of record that establishes that changing the dimensions of the screw would result in a difference in function of the Zhang et al. device. Further, a person having ordinary skill in the art, being faced with modifying the screw of Zhang, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being within the claimed dimensions. Lastly, applicant has not disclosed that the claimed range solves any stated problem, indicating that the angle “may” be within the claimed range, and offering other acceptable ranges and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the dimensions of the screw of Zhang et al. to have a length between the first end and the second end is 10 millimeters or less and that the head includes a top surface that is 5 mm or less across as an obvious matter of design choice within the skill of the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P SAUNDERS whose telephone number is (571)270-3250. The examiner can normally be reached M-F 9am-5pm.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.P.S/Examiner, Art Unit 3772 01/24/2026
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772