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 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.
Claim(s) 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DeSoutter et al (US 2020/0069316 A1).
Regarding claim 8, DeSoutter et al discloses an endodontic instrument (see instrument of Figs. 5-6c, structure of which is described in Figs. 2-4b; instrument capable of being used to open access to a root canal and/or widen/drill a tooth root of an appropriate size to the tool) extending along a longitudinal axis between a first assembly end (126) and a second free end (closer to 150), said endodontic instrument having an active portion (150) which extends from the second free end, and an assembly portion (120) which extends from the first assembly end, wherein said assembly portion has a locking segment (124), at which three flattened portions are formed on the instrument (see Fig. 6c), each of said three flattened portions (130) being respectively complementary, in each cross sections of said locking segment, to a side of an equilateral triangle centered on said longitudinal axis (see citations below and Figs. 3c and 6c), at least one of said flattened portions being terminate, at an end thereof closest to said first assembly end, by a shoulder oriented toward said second free end of said endodontic instrument (e.g. instance of 128 on side of 124 closer to end 126; e.g. shoulder to the right of groove in Figs. 5-6c; Examiner notes that locking segment is interpreted as any instance of 124 in Fig. 5-6c). See also [0067], [0069], [0072], [0074], [0078]-[0080], [0082]-[0083].
Regarding claim 9, the term wherein the instrument is “formed by machining a cylindrical rod with an axis of symmetry which constitutes said longitudinal axis” is a product by process limitation. As noted by MPEP2113, product by process limitations are not limited by the particular steps of forming the product (e.g. machining a cylindrical rod), but only by the structure imparted thereby; in this case the tool with required flat portions and longitudinal axis, which DeSoutter discloses as explained above, meeting the limitations of the claims (see MPEP 2113).
DeSoutter et al further discloses wherein each of said three flattened portions is terminated, at respective ends thereof closest to the second free end of the endodontic instrument, by a shoulder oriented toward the first assembly end of the endodontic instrument (e.g. instance of 128 on the side of 124 closer to free end; e.g. 128 on left of 124; per claim 10); wherein each of said three flattened portions forms a flat surface (see citations and Figs. above; per claim 11); and wherein the flat surface of each of said three flattened portions is parallel to said longitudinal axis (see Figs. and citations above; per claim 12).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over DeSoutter et al.
Regarding claim 13, DeSoutter et al discloses wherein each of the flattened portions is located a distance from the longitudinal axis (see Figs. 3c, 6c and [0075]-[0076] and wherein the instrument is formed of a cylindrical rod having a diameter (see Figs. and citations above), but does not explicitly teach wherein the distance is between 0.25 and 0.35 mm relative to the longitudinal axis, or wherein the diameter of the tool is between 0.8 to 1.2 mm as required. However, the Examiner notes that the specific diameter of the tool and the distance from the longitudinal axis are result effective variables dependent on the intended location of use of the desired, desired flexibility and/or stiffness, torque intended to be applied, desired locking/clamping effect, and the corresponding chuck’s movement. Additionally, such values are described as merely preferable in the instant specification, and are not described as to impart any particular criticality (see [0027] and [0057]). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the device of DeSoutter to include a distance from the longitudinal axis to the flats of 0.25 and 0.35 mm and a diameter of the tool to be between 0.8-1.2 mm as such modification would merely involve the optimization of a result effective variable, which has been held to be within the skill of the ordinary artisan, obtained through routine experimentation in determining optimum results (see MPEP 2144.05(II)(A)).
Additionally, the term “formed by machining” is a product by process limitation. As noted by MPEP2113, product by process limitations are not limited by the particular steps of forming the product (e.g. machining), but only by the structure imparted thereby; in this case the tool with required flat portions, cylindrical shape and longitudinal axis, which DeSoutter discloses as explained above, meeting the limitations of the claims (see MPEP 2113).
Regarding claim 14, DeSoutter, as modified above, further discloses wherein said assembly portion has an end segment (e.g. last instance of 122 in Fig. 6b approaching 126), between said assembly end and said locking segment (see Fig. 6b), said end segment having three flattened portions (129 on end segment as explained above), respectively parallel to the three flattened portions of said locking segment (see [0079] last 3 lines; parallel in first direction), and located at a greater distance from said longitudinal axis than said flattened portions of said locking segment (as shown in Fig. 6b, and Fig. 4a-b, flattened portions 129 extend outward from 130, and thereby are located at a greater distance from the longitudinal axis, at least in part, as shown).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached PTO892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD MORAN whose telephone number is (571)270-5349. The examiner can normally be reached Monday-Friday 7 AM-4 PM EST.
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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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/EDWARD MORAN/Primary Examiner, Art Unit 3772
