Attorney Docket No. P10162USD1
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`REMARKS
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`This paper is submitted in response to the final Office action mailed on December 4,
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`2018. This paper amends claims 45 and 51. Accordingly, after entry of this Amendment
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`and Response, claims 37-56 will be pending.
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`l. Claim Amendments
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`Claims 45 and 51 were amended to correct a typographical omission.
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`In the step of
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`forcing/pressing the word “feature” should be “features”. The words morphology and
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`topology were also changed for “features” to provide appropriate antecedent basis.
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`ll. Claim Re'ections Under 35 U. S. C.
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`103
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`The Examiner rejected claims 45-56 under 35 U.S.C. § 103(a) as unpatentable over
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`Horton, Jr. et al. (US. Patent Publication No. 2002/0162605; hereinafter “Horton”) in view of
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`Scruggs et al. (US. Patent No. 5,711,363; hereinafter “Scruggs”) and Otani et al. (US.
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`Patent No. 5,049,074; hereinafter “Otani”). For at least the following reasons, Assignee
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`respectfully disagrees with this rejection.
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`Independent claims 45 and 51 include the step of:
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`pressing/forcing the heated body against a mold to form a plurality of surface
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`features on the outer surface (emphasis added).
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`None of the references taken alone or together teach this step. The surface features
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`and pores are important for surface morphology (Assignee’s published application
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`2012/0158151 paragraph 0036). The claimed method uses casting and surface
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`microstructuring process to form the surface morphology (Assignee’s published application
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`paragraphs 0038-0040 and 0043-0044).
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`Horton teaches BMG implants but does not mention surface features much less a
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`way to form them.
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`In fact, Scruggs teaches away from forming surface features. Scruggs
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`teaches die casting with am mold to form am outer surface (Scruggs col. 4 lines
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`13-19; col.8 lines 36-41).
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`Otani teaches a dental implant with a core material and a porous layer on the core
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`material. Otani teaches the core material may be roughened by blasting with abrasive sand
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`(Otani col. 3 lines 58—66) rather than by molding as claimed herein. The porous surface
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`layer in Otani is formed by a fibrous material (col. 3 lines 2—5; col. 4 lines 8-15) which is not a
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`BMG material.
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`Improved bonding of the implant to surrounding area is done by flame
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`spraying (Otani col. 4 line 65- col. 5 line 2). Thus Otani does not teach the method claimed
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`in claims 45 and 51.
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`Attorney Docket No. P10162USD1
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`In short, none of the cited references taken alone or together teach pressing/forcing
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`the heated body against a mold to form a plurality of surface features on the outer surface of
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`the implant.
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`Independent claims 45 and 51 are allowable over the cited references.
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`Claims 40, 46-50 and 52-56 are allowable as being dependent from an allowable
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`base claim. Assignee makes this statement without reference to, or waiving, the
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`independent bases for patentability in any dependent claim. The Assignee reserves the right
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`to separately argue the patentability of dependent claims 40, 46-50 and 52-56 in a
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`subsequently filed response if necessary.
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`III. Double Parenting
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`Claims 37-56 are rejected on the grounds of non-statutory obviousness type double
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`patenting as being unpatentable over claims 1-20 of U.S. Patent No. 7,560,001. Assignee
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`includes a Terminal Disclaimer herewith.
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`IV. Conclusion
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`The Assignee thanks the Examiner for the thorough review of the application. The
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`Assignee respectfully submits the present application, as amended, is in condition for
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`allowance and respectfully requests the issuance of a Notice of Allowability as soon as
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`practicable.
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`This Amendment is filed with a Certification and Request for Consideration Under the
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`After Final Consideration Pilot Program, and a petition for a one-month extension of time.
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`Payment by credit card for the requisite fee is being made with this filing. The Assignee
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`believes no additional fees or petitions are due with this filing. However, if any such petitions
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`or fees are necessary, please consider this a request therefor and authorization to charge
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`Deposit Account No. 504621 accordingly.
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`Attorney Docket No. P10162USD1
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`If the Examiner should require any additional information or amendment, please
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`contact the undersigned attorney.
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`Dated: April 2, 2019.
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`Respectfully submitted,
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`/Timothy R. Schulte/
`Timothy R. Schulte, Registration No. 29,013
`Attorney for Assignee
`USPTO Customer No. 130551
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`Brownstein Hyatt Farber Schreck, LLP
`410 Seventeenth Street
`Suite 2200
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`Denver, Colorado 80202
`Phone: (303) 223-1100
`Fax: (303) 223-111129,013
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