Detailed Action1
Election/Restriction
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups and species, there being no allowable generic or linking claim.
Applicant's election without traverse of Group I, claims 1-14, in the reply filed on July 25, 2025 is acknowledged.
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(l) & (m) because all drawings must be made by a process which will give them satisfactory reproduction characteristics—thus, solid black shading areas are not permitted. Figures 1 and 3-8 have solid shading that reduces legibility and will not have satisfactory reproduction characteristics. 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. 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 disclosure is objected to because of the following informalities: in para. [0051] of the originally filed disclosure “top claim” should be changed to “top clamp”; and in para. [0057] “a metal rule 20” should be changed to “a metal ruler 20”.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of an informality: the word “the” should be inserted before “piston” in the second to last line. Claim 4 is objected to because of an informality: for consistency, “a metal root insert” should be changed to “the metal root insert” (claims 6 and 7 use “the” when referring to the metal root insert). Appropriate correction is required.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention
Claims 1-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
While original claims are generally viewed as part of the written description, “issues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the applicant had possession of the claimed invention at the time of filing.” See MPEP 2163(1)(A). In addition, “The specification must still be examined to assess whether an originally-filed claim has adequate support in the written disclosure and/or the drawings.” See MPEP 2163(I). In this case, as detailed below, claim 1 is not described with sufficient particularity and/or contradict the originally filed specification and drawings, thus one of skill in the art would not recognize that the applicant had possession of claim 1 at the time of filing.
Claim 1 recites the top cover disposed perpendicularly to the bottom plate. Applicant’s originally filed drawings and detailed description teach the top cover disposed parallel to the bottom plate so that the struts extend between the bottom plate and top cover (see figs. 1-2 & para. [0049] of Applicant’s originally filed specification, i.e. “the top
cover 5 disposed parallel to the bottom plate 1 a and spaced therefrom.”). Thus, since this claim limitation contradicts the teachings of the originally filed drawings and detailed description (and no embodiment is described or suggested where the top cover is perpendicular to the bottom plate), one of skill in the art would not believe Applicant had possession of a system where the top cover is disposed perpendicularly to the bottom plate. One of skill in the art would reasonably assume that an error was made when drafting the claim and when drafting para. [0007] of the originally filed disclosure (which is essentially a mirror image of claim 1 written in sentence form instead of claim form), instead of assuming that Applicant contemplated another embodiment of the invention where the top cover is perpendicular to the bottom plate because this hypothetical embodiment would need a significant redesign that it not taught or suggested by the originally filed disclosure.
Claims 2-14 are rejected for depending from claim 1.
The following is a quotation of 35 U.S.C. 112:
(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 1-14 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 applicant regards as the invention.
Claim 1 recites the chassis having a bottom plate having a first end and a second end, defining a length therebetween, the chassis having generally planar a top surface and a bottom surface defining a thickness therebetween, the chassis further having a pillar having a first end disposed on the first side of the top surface of the bottom plate. It is unclear if the top surface is intended to be of the chassis or the bottom plate. In light of Applicant’s disclosure, it appears “the chassis having generally planar a top surface and a bottom surface defining a thickness therebetween” should be “the bottom plate having generally planar a top surface and a bottom surface defining a thickness therebetween”.
In addition, the phrase “generally planar a top surface” is awkwardly written and should be changed to “a generally planar top surface” or “a top surface being generally planar”.
Further, it is unclear if “the first side” is referring to the previously introduced first end.
Claim 1 also recites an absorber clamp disposed on the pillar, the absorber clamp extending perpendicular to the pillar, the absorber clamp having a circular bearing configured to hingedly close; a top clamp disposed at the second end of the pillar, the top clamp having a cylindrical bearing configured to vertically translate relative to the top clamp. The clamps having bearings are unclear because a clamp generally performs a different function than a bearing. A clamp is generally used to securely fasten an object thereto, whereas a bearing is generally used to allow motion of an object. Thus, it is confusing as to what is required to infringe the absorber clamp and top clamp. Applicant’s originally filed disclosure teach using the clamps to secure the metal root insert during the insertion of a stopper. Thus, for purposes of examination, the bearings will be interpreted as clamping portions.
It is also unclear how the “bearing” of the absorber clamp is “circular” while the bearing of the top clamp is cylindrical. The drawings illustrate the absorber clamp having a cylindrical clamping part. Paragraph [0053] of Applicant’s originally filed specification also states “The absorber clamp(s) 7 may be configured to contact and wrap (partially or entirely) around the cylindrical sidewall of the metal root insert”. Thus, it appears the absorber clamp has a cylindrical clamping part similar to that of the top clamp.
It is further unclear how the cylindrical bearing can translate relative to the top clamp if the cylindrical bearing is part of the top clamp.
For purposes of examination, these limitations are interpreted as: an absorber clamp disposed on the pillar, the absorber clamp extending perpendicular to the pillar, the absorber clamp having a cylindrical clamping portion configured to hingedly close; a top clamp disposed at the second end of the pillar, the top clamp having a cylindrical clamping portion configured to vertically translate relative to another portion of the top clamp.
Claim 8 recites the four struts equiaxially spaced proximate the second end of the bottom plate, the at least four struts each having a first end disposed on the top surface of the bottom plate and a second end disposed on a bottom surface of the top cover. It is unclear if “a first end” and “a second end” are referring to the first and second ends of the struts introduced in claim 1. The examiner recommends amending these limitations to recite “the first end” and “the second end”.
In addition, it is unclear what “equiaxially spaced” means. Is this supposed to recite “equally spaced”?
Claims 2-7 and 9-14 are rejected for depending from claim 1 and/or 8.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Sunil Singh (571-272-3460). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.