DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 2 and 14-17 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 2 recites two instances of “a proximal end of the guide body” (line 10, lines 11-12); and two instances “a distal end of the guide body” (lines 10-11, line 12). It is unclear whether such two instances of each recitation refer to the same or different element(s).
All dependent claims are rejected herein based on dependency
Claim Rejections - 35 USC § 102
4. 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.
5. Claims 1-9 and 14-18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jeong Ji Won (WO 2020/130601). Also refer to the machine-generated English translation.
Claims 1 and 4-9:
Regarding claim 1, Jeong discloses: a dental implement (Figs. 1-18) defining a longitudinal axis and comprising:
a cutting head 40, 240, 440, 640 defining a proximal end; a distal end; and at least one cutting surface (Figs. 1-2, 5, 8, 11-12, 14; see English translation - paragraphs [50], [61] “drill part 40 is the part where the blade of the drilling machine is formed”; paragraph [62] “drill part 40 can have a twist drill type blade… the number of blades can be changed…”);
and
a guide body 20/30 positioned proximally of the at least one cutting surface 40, 640, wherein the cutting surfaces 40, 640 on the dental implement are exclusively located on the cutting head 40, 640 (Figs. 1-2, 13-18);
The guide body is shown including:
at least one longitudinal flute 32, 232, 532, 632 configured to facilitate communication of an irrigation fluid to a surgical site within a patient (paragraphs [49] “cooling path”, [71] “cooling water path 32”); in the embodiment of Figs. 14-18, the at least one longitudinal flute 632 or 632’ extends between a proximal end of the guide body and a distal end of the guide body 620/630 (Figs. 14-18; paragraph [100] “coolant path 632 is formed… in… portion 620 and… 630”); and
a stop 24 (outer ring portion of 20, 120, 220, 320, 420, 520, 620) formed integrally with the guide body and extending radially outward from the proximal end thereof, the stop defining a maximum transverse cross-section of the dental implement extending in generally orthogonal relation to the longitudinal axis and being configured for contact with a surgical guide positioned adjacent to the surgical site to limit advancement of the dental implement (Figs. 1-3; paragraph [18] “a stopper part protruding in the direction of diameter from the guide part and not inserted into the guide hole and thus limiting the machining depth of the drill part”; paragraphs [74]-[75] “the outer ring 24 also serves as a stopper part. The outer ring (24) has a diameter larger than the guide portion 30 and has a shape that protrudes in the direction of the diameter than the guide portion 30“).
As to claims 4-6, the guide body 620/630 is shown defining an interrupted (i.e. by flutes 632) outer wall; there are a plurality of longitudinal flutes 632’ spaced axially from the cutting head along the longitudinal axis (Fig. 18).
As to claim 7, Fig. 18 shows a first longitudinal flute 632’ extending parallel in relation to the longitudinal axis. There are three flutes 632’, equivalent to the claimed first, second, and third longitudinal flutes extending in parallel relation as claimed.
As to claims 8-9, Fig. 18 show the three flutes 632’ are spaced circumferentially and approximately equidistant from each other about a circumference of the guide body.
Claims 2 and 14-17:
Regarding claim 2, Jeong discloses a dental implement defining a longitudinal axis and comprising: a proximal end portion 10; a distal end portion 20/30/40 including a cutting head 40 defining at least one cutting surface 40, and a guide body 20/30 positioned proximally of the cutting head 40 (Figs. 1-2).
The guide body 20/30 is devoid of any cutting surfaces 40 and includes:
a stop 24 defining a maximum transverse cross-section of the dental implement extending in generally orthogonal relation to the longitudinal axis (Figs. 1-3; paragraphs [74]-[75] “the outer ring 24 also serves as a stopper part. The outer ring (24) has a diameter larger than the guide portion 30 and has a shape that protrudes in the direction of the diameter than the guide portion 30“); and
at least one flute 32 extending in generally parallel relation to the longitudinal axis and configured to direct irrigation fluid to a surgical site within a patient (paragraph [49] “cooling path”, [71] “cooling water path 32”).
In the embodiment of Figs. 14-18, the at least one longitudinal flute 632 or 632’ extends between a proximal end of the guide body and a distal end of the guide body 620/630 (paragraph [100] “coolant path 632 is formed… in… portion 620 and 630”); wherein the at least one flute 632 includes a first end adjacent to a proximal end 620 of the guide body 620/630 and a second end adjacent to a distal end 630 of the guide body 620/630.
As to claim 14, the at least one cutting surface 40 is positioned between the at least one flute 36 and a tip (distal point) of the cutting head 40 along the longitudinal axis (Figs. 1-2). As to claim 15, wherein the guide body 20/30 extends radially outward from a proximal end of the cutting head 40
As to claims 16-17, the stop 24 is formed integrally with the guide body, wherein the stop extends radially outward from the guide body and is configured for contact with a surgical guide positioned adjacent to the surgical site to limit advancement of the dental implement. (Figs. 1-3, 14-18; paragraphs [74]-[75] “the outer ring 24 also serves as a stopper part. The outer ring (24) has a diameter larger than the guide portion 30 and has a shape that protrudes in the direction of the diameter than the guide portion 30“).
Claims 3 and 18:
Regarding claim 3, Jeong discloses a dental implement defining a longitudinal axis and comprising: a proximal end portion 10, 610 configured for connection to a drive apparatus (Figs. 1-2, 14; [58] “joint portion”); a cutting head 40 defining at least one cutting surface 40 and a first transverse cross-sectional dimension 40; and a guide body 20/30 positioned proximally of the cutting head 40, wherein the guide body 20/30 is devoid of any cutting surfaces.
The guide body 20/30 includes: an outer wall defining a second transverse cross-sectional dimension greater than the first transverse cross-sectional dimension; and a plurality of flutes 32 extending through the outer wall and configured to direct irrigation fluid to a surgical site (paragraph [49] “cooling path”, [71] “cooling water path 32”). The Figures also show the plurality of flutes 32 being spaced circumferentially from each other such that the guide body defines an interrupted outer wall (Figs. 2-3, 13-18).
As to claim 18, the plurality of flutes 32 are positioned proximally of the at least one cutting surface 40 along the longitudinal axis (Figs. 2-3, 13-18).
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 10-13 and 19-20 are rejected under 35 U.S.C.103 as being unpatentable over Joeng in view of Ura (5,941,706).
Joeng discloses the invention as applied to claims 1 and 3, respectively, as detailed above. However, per claims 10-13 and 19-20, Joeng discloses the flutes 32 being curved concave surfaces, failing to define a base wall (i.e. apex depth of the flute) and a pair of side walls extending radially outwardly from the base wall, wherein the side walls are parallel or non-parallel to each other.
Ura discloses a dental drill 10 comprising a guide body 18 having a vertical or axially oriented flute 21 extending in generally parallel relation to a longitudinal axis of the drill (Figs. 1-3). Ura further discloses the flute 21 defining a base wall 28 and a pair of side walls 26 extending radially outwardly from and orthogonal to the base wall 28 (Fig. 7). The side walls 26 extend in generally parallel relation to each other (Fig. 7) and to the longitudinal axis of the dental implement (Figs. 1 and 3; column 4 lines 51-67). The side walls 26 are shown extending in generally orthogonal to the base wall 28 (Fig. 7). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Joeng’s curve concave flutes to have a base wall and a pair of side walls as taught by Ura as a suitable alternative cross-sectional shape for such flutes yielding the same and/or predictable results.
Double Patenting
Statutory double patenting
8. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
9. Claim 2 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of patent U.S. Patent No.12,161,517. This is a statutory double patenting rejection.
Application claim 2 is essentially the same as the patent claim 1.
Nonstatutory double patenting
10. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
11. Claims 1-9, and 14-18, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,576,748.
Although the claims at issue are not identical, they are not patentably distinct from each other because: The difference between the application claims and the patent claims lies in the fact that the patent claims include more element(s) and are thus much specific.
Thus the invention of the patent claims is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner HAO D. MAI whose telephone number is (571)270-3002. The examiner can normally be reached on Mon-Fri 8:00-4:30. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached on (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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/HAO D MAI/
Examiner, Art Unit 3772