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
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 18, 2026.
Applicant's election with traverse of Group I in the reply filed on March 18, 2026 is acknowledged. The traversal is on the ground(s) that there would not be a serious search burden for the non-elected inventions. This is not found persuasive because the non-elected inventions contain limitations that differ in classification requiring different search fields.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “protrusion extending circumferentially from an outer surface of at least a portion of the body” of Claims 1, 3, and 9 must be shown or the feature canceled from the claim. The figures show a “protrusion” 144 in the Figures but that appears to be a protrusion of the abutment and does not meet the limitation as claimed. It appears that the “protrusion” as claimed may be the “cutting surface” 109. Additionally, the “cutout” of Claim 3 is not seen in the drawings or described in the specification. The limitation of an aperture “extending from the opening through at least a portion of the body” as claimed in Claim 6 is not shown in the drawings. Figure 7 shows aperture 114 but it is not seen in any other figures to demonstrate the extension through the body as claimed. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the “cutout” of Claim 3 does not appear anywhere in the specification and therefore the specification does not provide antecedence or disclosure of this claimed element.
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 1-11 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, 3, and 9, the “protrusion” as claimed is confusing and unclear, as it is not disclosed in the specification or seen in the figures. Protrusion 144 as seen in Figure 11 is described in the specification as a portion of the abutment. This terminology is inconsistent with the claimed element of a protrusion in Claim 1 that is a part of the rotary instrument and extends from an outer surface of the body. From reading the specification and the description of the claimed element, the examiner finds that the “cutting surface” 109 may be the intended limitation. For the purpose of examination, the “protrusion” as recited in Claims 1, 3, and 9 will be interpreted as the cutting surface 109 as seen in Figure 6.
Regarding Claim 9, it is unclear which first end is being referenced in line 4, the first end of the body or the first end of the tip. For the purpose of examination, the limitation will be interpreted as the first end of the body as the examiner believes was the intent of the applicant.
All claims not specifically addressed above are rejected based on their dependency on Claim 1.
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 1-6 and 8-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shaw (US 5,261,818).
Regarding Claim 1, Shaw discloses a rotary instrument (abstract) comprising a body (12 and including portion interior of 16 taken together) with a first end and a second end (see Figure 1 where first end is closer to tip 13 and second end is at end farthest from tip), a tip (13) connected to and extending from the first end of the body, where the tip has a first end and a second end (see Figure 1), and a protrusion (portion of 16 that extends laterally from midline) extending circumferentially from an outer surface of at least a portion of the body (as seen in Figure 1).
Regarding Claim 2, Shaw discloses the rotary instrument of claim 1, and further discloses that the tip has a truncated cone shape (as seen at 14 in Figure 1, where the tip is truncated by end of channels at 28).
Regarding Claim 3, Shaw discloses the rotary instrument of claim 1, and further discloses that wherein the body further comprises a first portion (portion interior 16) and a second portion (12), the first portion receiving the protrusion, and the second portion having at least one cutout in the outer surface of the body and extending from the first portion to the second end (channel 18 is a cutout portion that begins in the outer surface of the body at 20 and extends from the first portion at 16 to the second end).
Regarding Claim 4, Shaw discloses the rotary instrument of claim 3, and further discloses that the second portion further comprises a flat end contacting the second end of the body (at second end, the end is flat as seen in Figure 1).
Regarding Claim 5, Shaw discloses the rotary instrument of claim 1, and further discloses that the tip further comprises an edge contacting the body (edge contacts the body at end of tip closest to the body), and a raised lip (32) extending circumferentially along the edge.
Regarding Claim 6, Shaw discloses the rotary instrument of claim 1, and further discloses that the tip further comprises an opening (34) and an aperture (channel 18 as it traverses tip 13), the aperture extending from the opening through at least a portion of the body along an axis extending longitudinally through a center of the body (as seen in Figure 1).
Regarding Claim 8, Shaw discloses the rotary instrument of claim 1, and further discloses that the tip further comprises a wide end, a narrow end, and a side extending between the narrow end and the wide end, the side having a first portion and a bevel, where the first portion extends from the wide end to the bevel, and where the bevel extends from the first portion to the narrow end (see annotated Figure below).
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Regarding Claim 9, Shaw discloses the rotary instrument of claim 1, and further discloses that the protrusion further comprises a top surface, and a side surface, where the top surface is connected to the side surface, where the top surface extends perpendicular to the body and faces towards the first end of the body, and where the side surface extends parallel to the outer surface of the body (see annotated Figure below).
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Regarding Claim 10, Shaw discloses the rotary instrument of claim 1, and further discloses that the tip has a smooth outer surface (see annotated Figure of tip above).
Regarding Claim 11, Shaw discloses the rotary instrument of Claim 1, and further discloses that the tip and the body are longitudinally aligned along an axis extending through a longitudinal center of the body (as seen in Figure 1).
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacoby et al. (US 2020/0246116 A1, hereinafter “Jacoby”).
Regarding Claim 1, Jacoby discloses a rotary instrument (Figure 1a, 100) comprising a body (120 and 128 taken together) with a first end and a second end (see Figure 1a where first end is closer to tip 116 and second end is at end farthest from tip), a tip (116) connected to and extending from the first end of the body, where the tip has a first end and a second end (see Figure 1a), and a protrusion (portion of 128 that extends laterally from midline) extending circumferentially from an outer surface of at least a portion of the body (as seen in Figure 1a).
Regarding Claim 7, Shaw discloses the rotary instrument of claim 1, and further discloses that the body and the tip are monolithically formed (as seen in Figure 2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE L NELSON whose telephone number is (571)270-5368. The examiner can normally be reached M - F 7:30-4:30 PT.
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.
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/CHRISTINE L NELSON/Examiner, Art Unit 3772
/EDWARD MORAN/Primary Examiner, Art Unit 3772