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 .
Foreign Priority
The claim to priority to The Republic of Korea Application No. 30-2023-0008368, filed with the Korean Intellectual Property Office on 03/07/2023 is acknowledged. Certified copies of the foreign priority documents have been received.
Acknowledgement of Amendments
The amendments and drawings received 08/15/2025, and foreign priority document received 08/20/2025, are acknowledged. Applicant’s amendments to the specification have been carefully considered and are accepted. Applicant’s amendments to the drawings overcome some of the issues pointed out, but not all. Additionally, with the scope of the claim clarified, a prior art rejection is forthcoming. As such, the claim is rejected under 35 USC 112 (a) and (b) and 35 USC 103 as follows.
Rejection Under 35 USC 112 (a)&(b)
The claim is again rejected under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails 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.
The claim is indefinite and nonenabling because the shape, appearance, and description of some portions of the design are unclear due to inconsistent and insufficient disclosure of the claimed design as currently depicted.
The visual disclosure is inadequate such that the appearance and shape or configuration of the design for which protection is sought cannot be determined or understood (MPEP § 1504.04), specifically:
The recessed area seen within the center of the article in 1.6 cannot be understood. There is no view which clarifies the inner recessed plane seen within the top opening. As this inner plane is only seen in 1.6, the single, straight-on view does not provide information on the plane’s dimensionality nor exact location within the article body. This area should be removed from the claimed design. It is suggested dot-dash boundary lines be inserted just inside the inner circumference of the circle in 1.6 to remove this area from the claim. See annotations below.
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Issue with 1.6
Suggested Correction
Certain features are shown as claimed in figure views that cannot be understood. The views presented do not clarify the features’ shape, configuration, or dimensionality, and at what relative depth features are located to the adjacent surfaces.
While the application contains drawings of the invention in multiple views, the inconsistencies in the different figures present confusing and contradictory conditions along with insufficient disclosures that require the examiner to rely on conjecture to understand the intention of the applicant.
These portions of the design that are inconsistently depicted may be made consistent in order to overcome that portion of the rejection.
Portions of the design considered insufficiently disclosed may be removed from the claim by conversion to broken lines or as defined by a broken line boundary with all shading/contour lines removed. Applicant is cautioned however that removal of random items from the claim could introduce new matter if the resulting claimed design was not evident within the originally filed drawings.
Correction of the drawing is suggested.
Any change to the drawing or specification must have support from the original disclosure.
When preparing new or replacement drawings, be careful to avoid introducing new matter.
New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
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”. 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.
Comment
As explained in the above rejection, the claim is indefinite because it is subject to more than one interpretation, i.e. the design is indefinite and nonenabled due to unclear appearance. The difference in these interpretations would not affect rejection of the claim for anticipation over cited prior art. Acting on this determination, the claim is also rejected under 35 USC § 103 as follows. See MPEP 2143.03(I).
Rejection Under 35 USC 103
The claim is rejected under 35 U.S.C. 103 as being unpatentable over WIPO Patent No. 2013028990 of Simon McDonald, entitled “Dental Bur” (hereby known as “McDonald”), patented 02/28/2013, in view of US Patent No. 20070259312 of Shih Chun Wang, entitled “TURBINE FOR DENTAL BURR HANDPIECE” (hereby known as “Wang”), patented 11/08/2007.
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 designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
The McDonald design has design characteristics that are visually similar to those of the claimed design:
a smooth, cylindrical body with a beveled edge at one end, both of visually similar proportion
See a comparison of the claimed design and the McDonald design below on the following page:
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Instant Application
McDonald (some annotations around figure removed for visual simplicity)
The McDonald design differs from the claimed design in that one end of the McDonald design has a flat plane, where the instant application shows an end with an opening having a smooth and cylindrical inner side wall.
The design of Wang teaches one end having an opening with a smooth and cylindrical inner side wall:
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Instant Application
Wang
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the claimed invention to modify the McDonald design by making one end have an opening with a smooth and cylindrical inner side wall as taught by Wang, because such modification is no more than a simple substitution of one known design element for another. Moreover, the substitution of one known design element for another known design element in the same field would have been well within the skill of an ordinarily skilled designer.
Applicant is reminded a design may be embodied in less than the entire article, In re Zahn, 204 USPQ 988 (CCPA 1980). This practice also opens to the examiner the liberty of relying upon the features of a reference embodied in less than the entire article. The examiner has done so in the above rejection.
The claimed design would have no patentable distinction over the examiner’s combination of references.
Summation
The claim stands rejected for the reasons set forth above.
The references cited but not applied, are considered cumulative art related to the claimed design.
Hague - Reply Reminder
Applicant is reminded that any reply to this Refusal must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
NOTES ON CORRESPONDANCE
Discussion of the Merits of the Application
All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP 713. The examiner will not discuss the merits of the application with applicant’s representative if the representative is not registered to practice before the USPTO. Appointment as applicant’s representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.
Telephonic or In-Person Interviews
A telephonic or in person interview may only be conducted with an attorney or agent registered to practice before the USPTO (“registered practitioner”) or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).
The registered practitioner may either be of record or not of record. To become “of record”, a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA /80 “Power of Attorney to Prosecute Applications Before the USPTO”, available at https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012, may be used for this purpose. See MPEP 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an “Applicant Initiated Interview Request Form” (PTOL-413A) (available at the USPTO web page indicated above). See MPEP 405. For acceptable ways to submit forms to the USPTO, see “When Responding to Official USPTO Correspondence” below.
If a pro se applicant or registered practitioner located outside of the United States wishes to communicate by telephone, it is suggested that such person email the examiner at amanda.berlinski@uspto.gov to arrange a time and date for the telephone interview. Please include proposed days and times for the proposed call. When proposing a day/time for the interview, please take into account the examiner’s work schedule indicated in the last paragraph of this communication. The email should also be used to determine who will initiate the telephone call.
Email Communications
The merits of the application will not be discussed via email (or other electronic medium) unless appropriate authorization for internet communication is filed in the application. Form PTO/SB/439 “Authorization for Internet Communications in a Patent Application or Request to Withdraw Authorization for Internet Communications” may be used to provide such authorization and is available at the USPTO web page indicated above. The authorization may not be sent by email to the USPTO. For acceptable ways to submit the authorization form to the USPTO, see “When Responding to Official USPTO Correspondence” below. See MPEP 502.03 II for further information.
When Responding to Official USPTO Correspondence
When responding to official correspondence issued by the USPTO, including a notification of refusal, please note the following:
The USPTO transacts business in writing. All replies must be signed in accordance with 37 CFR 1.33(b). Pursuant to 37 CFR 1.33(b)(3), a reply submitted on behalf of a juristic applicant must be signed by an attorney or agent registered to practice before the USPTO. Applicants may submit replies to Office actions only by:
Online via the USPTO's Electronic Filing System-Web (EFS-Web) (Registered eFilers only)
https://www.uspto.gov/patents-application-process/applying-online/efs-web-guidance-and-resources
Mail: Commissioner For Patents, P.O. Box 1450, Alexandria, VA, 22313-1450
Facsimile to the USPTO's Official Fax Number (571-273-8300)
Hand-carry to USPTO's Alexandria, Virginia Customer Service Window
https://www.uspto.gov/patents-maintaining-patent/responding-office-actions
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BERLINSKI whose telephone number is 571-272-8061. The examiner can normally be reached Monday - Friday 10:00a-6:00p EST.
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, MICHAEL C STOUT can be reached on 408-918-7558. 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.
/A.J.B./
Examiner, Art Unit 2924
/BAO-YEN T NGUYEN/Primary Examiner, Art Unit 2919
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