`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`13/404,352
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`02/24/2012
`
`Teruko YAMAMOTO
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`P41595
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`4561
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`7055
`7590
`11/23/2012
`GREENBLUM & BERNSTEIN, P.L.C.
`1950 ROLAND CLARKE PLACE
`RESTON, VA 20191
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`EXAMINER
`NELSON, MATTHEW M
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`ART UNIT
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`3776
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`PAPER NUMBER
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`NOT *ICATION DATE
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`DELIVERY MODE
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`11/23/2012
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`gbpatent @ gbpatent.c0m
`greenblumbernsteinplc @ gmail.c0m
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`PTOL—90A (Rev. 04/07)
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`

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`Office Action Summary
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`Application No.
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`Applicant(s)
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`13/404,352
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`YAMAMOTO ET AL.
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`Examiner
`MATTHEW NELSON
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`Art Unit
`3776
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)IZI Responsive to communication(s) filed on 24 February 2012.
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`2a)I:l This action is FINAL.
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`2b)IZ| This action is non-final.
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`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)IZI Claim(s) 1-15is/are pending in the application.
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`5a) Of the above claim(s) _ is/are withdrawn from consideration.
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`6)I:I Claim(s) _ is/are allowed.
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`7)|Zl Claim(s)_1-15 is/are rejected.
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`8)I:I Claim(s) _ is/are objected to.
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`9)I:l Claim((s)
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`are subject to restriction and/or election requirement.
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`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway
`program at a participating intellectual property office for the corresponding application. For more information, please see
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`htt
`:/'/www.us to. {av/Watents/Init events/neb/Indexls or send an inquiry to PPeredback usntq.L 0v.
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`Application Papers
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`10)|:l The specification is objected to by the Examiner.
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`11)|Z| The drawing(s) filed on 24 February 2012 is/are: a)|Zl accepted or b)I:l objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)IZ| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)lX| AII
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`b)I:I Some * c)|:l None of:
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`1.I:I Certified copies of the priority documents have been received.
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`2.I:I Certified copies of the priority documents have been received in Application No. _
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`3.IZI Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) X Notice of References Cited (PTO-892)
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`2) IX! Information Disclosure Statement(s) (PTO/SB/OS)
`Paper No(s)/Mai| Date 5/24/2012.
`US. Patent and Trademark Office
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`3) D Interview Summary (PTO-413)
`Paper No(s)/Mai| Date.
`4) D Other:
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`PTOL-326 (Rev. 09-12)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20121114
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`

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`Application/Control Number: 13/404,352
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`Page 2
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`Art Unit: 3776
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 1 12
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`o
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`The following is a quotation of 35 U.S.C. 112(b):
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`(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.
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`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
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`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.
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`.
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`Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
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`applicant regards as the invention.
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`.
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`Claim 1 recites “the dental mouthpiece having an inner surface form
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`corresponding to a shape of the teeth and the braces without edges of the braces”.
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`It is
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`unclear exactly what this entails, since the edges define the shape of the braces and
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`therefore would be required in order for the mouthpiece to form to the braces.
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`It is also
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`noted that since the brackets shape has not been defined in the claims, it is further
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`unclear what the inner surface form of the mouthpiece is. The dependent claims state
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`similar unclear limitations with respect to the edges.
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`Claim Rejections - 35 USC § 102
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`o
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`Application/Control Number: 13/404,352
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`Page 3
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`Art Unit: 3776
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`A person shall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in
`the United States.
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`.
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`Claims 1, 3-5, 14-15 are rejected under 35 U.S.C. 102(b) as being anticipated by
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`Bergersen (US 6,626,664).
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`.
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`Bergersen teaches an orthodontic appliance for aligning teeth (col. 2, lines 13-
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`27), comprising a dental mouthpiece (Fig. 1 for instance) mountable on the teeth on
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`which braces are mounted in such a manner as to align the tooth to be aligned (col. 2,
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`lines 13-34), the dental mouthpiece having an inner surface form corresponding to a
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`shape of the teeth and the braces (col. 2, lines 28-34) without edges of the braces (the
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`soft material of Bergersen would drape over the bracket and not cover all edges of the
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`bracket). With respect to claim 3, since the mouthpiece is in conformity with a user's
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`teeth and braces, it would be in conformity with a cast of the user's teeth and braces,
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`since they would have the same geometry. With respect to claim 4, the braces include
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`a plurality of brackets and orthodontic wire (col. 2, lines 13-34). With respect to claim 5,
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`the mouthpiece envelopes the outer shape of the braces and avoids interference of the
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`unevenness of the braces (col. 2, lines 28-34). With respect to claims 14, the dental
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`mouthpiece is mountable on the entire teeth (Fig. 4, 5 show the sockets that accept
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`entire teeth). With respect to claim 15, the dental mouthpiece is so shaped as to be
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`mountable on a part of the teeth (at 20, 21 in Fig. 4-5 for instance, only part of the teeth
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`would be mounted).
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`Application/Control Number: 13/404,352
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`Page 4
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`Art Unit: 3776
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`Claim Rejections - 35 USC § 103
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`o
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
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`0
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`Claims 2, 6-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Bergersen in view of Kurz (US 4,348,178).
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`.
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`Bergersen discloses the device as previously described above, but fails to show
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`a vibrating element to generate mechanical vibration to the tooth to be aligned, the
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`vibrating element encapsulated therein and mountable on the teeth.
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`.
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`Kurz teaches a vibrational orthodontic appliance having a mouthpiece with a
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`vibrating element (10, 22, 24) to generate mechanical vibration to the tooth to be
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`aligned (col. 2, lines 33-42), the vibrating element encapsulated therein and mountable
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`on the teeth (Fig. 1; col. 2, lines 33-42). With respect to claim 6, the vibrating element is
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`a motor (1 0). With respect to claims 10 and 11, further comprising a battery as a direct-
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`current power source stored with (self-contained) the motor being DC driven in electrical
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`connection (col. 2, lines 43-47). With respect to claim 12, the motor provides vibration
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`normal to the teeth (vibration provides force in all directions and therefore some would
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`be normal to the teeth). Therefore, it would have been obvious to one having ordinary
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`skill in the art at the time of invention to modify Bergersen’s mouthpiece by including the
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`vibration means of Kurz in order to further reduce treatment time (col. 2, lines 57-65 for
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`instance). However, Kurz fails to show the details of the motor.
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`Application/Control Number: 13/404,352
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`Page 5
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`Art Unit: 3776
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`.
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`It would have been obvious to one having ordinary skill in the art at the time of
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`invention to modify Kurz’s motor by selecting a rotary or linear motor since these types
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`of motors are well known in the art for producing vibrations.
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`.
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`Claim 13 is rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Bergersen in view of Kurz as applied to claim 2 above, and further in view of Smiley et
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`al. (US 4,511,330).
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`0
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`Bergersen/Kurz discloses the device as previously described above, but fails to
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`show the vibrating element is a permanent magnet for generating mechanical vibration
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`in response to a magnetic field generated outside the dental mouthpiece.
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`.
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`Smiley teaches a mouthpiece with permanent magnet acting as the vibrating
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`element (21, 23) for generating mechanical vibration in response to a magnetic field
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`generated outside the dental mouthpiece (col. 1, lines 33-44). Therefore, it would have
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`been obvious to one having ordinary skill in the art at the time of invention to modify
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`Bergersen/Kurz's mouthpiece by substituting the magnet of Smiley in order to take
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`advantage of alternative means for producing vibrations aiding orthodontic or
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`periodontal therapy, and reduce mouthpiece bulk by having an external power supply.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to MATTHEW NELSON whose telephone number is
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`

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`Application/Control Number: 13/404,352
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`Page 6
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`Art Unit: 3776
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`(571 )270-5898. The examiner can normally be reached on Monday-Friday 7:30am-
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`5:OOpm EDT.
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`If attempts to reach the examiner by telephone are unsuccessful, please contact
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`the examiner’s supervisor, Todd Manahan, at (571) 272-4713. The fax phone
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`number for the organization where this application or proceeding is assigned is 571-
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`273-8300.
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`If there are any inquiries that are not being addressed by first contacting
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`T Z370(lm‘y‘i’orkgroupmiiflnquiries @ uspto, gov.
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`/MMN/
`
`/TODD E. MANAHAN/
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`Supervisory Patent Examiner, Art Unit 3776
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`