`
`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
`
`APPLICATION NO.
`
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
`
`13/404,352
`
`02/24/2012
`
`Teruko YAMAMOTO
`
`P41595
`
`4561
`
`7055
`7590
`03/01/2013
`GREENBLUM & BERNSTEIN, P.L.C.
`1950 ROLAND CLARKE PLACE
`RESTON, VA 20191
`
`EXAMINER
`NELSON, MATTHEW M
`
`ART UNIT
`
`3776
`
`PAPER NUMBER
`
`
`
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`03/01/2013
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`gbpatent @ gbpatent.c0m
`greenblumbernsteinplc @ gmail.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`
` 13/404,352 YAMAMOTO ET AL.
`Examiner
`Art Unit
`MATTHEW NELSON
`3776
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`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).
`
`Status
`
`1)|Zl Responsive to communication(s) filed on 20 February 2013.
`
`2a)IZI This action is FINAL.
`
`2b)|:l This action is non-final.
`
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`
`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)|Z Claim(s) 1,2 and 5-15 is/are pending in the application.
`
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`
`6)|:| Claim(s)_ is/are allowed.
`
`7)|Xl Claim(s) 1,2 and 5-15 is/are rejected.
`
`8)|:| Claim(s)_ is/are objected to.
`
`
`9)I:I Claim((s)
`
`are subject to restriction and/or election requirement.
`
`* 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
`
`httn:,I/www usntq. quwua'ertslanr events/
`h/Indexis or send an inquiry to PPeredback us Emmi.
`
`Application Papers
`
`10)|:| The specification is objected to by the Examiner.
`
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)|:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)I:I All
`
`b)|:l Some * c)I:I None of:
`
`1.I:I Certified copies of the priority documents have been received.
`
`2.|:l Certified copies of the priority documents have been received in Application No. _
`
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`
`
`Attachment(s)
`
`1) I] Notice of References Cited (PTO-892)
`
`2) E Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date 2/20/2013.
`US. Patent and Trademark Office
`PTOL-326 (Rev. 09-12)
`
`3) I] Interview Summary (PTO-413)
`Paper No(s)/Mai| Date.
`4) D Other:
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20130222
`
`

`

`Application/Control Number: 13/404,352
`
`Page 2
`
`Art Unit: 3776
`
`DETAILED ACTION
`
`Amendment filed on 2/20/2013 is acknowledged.
`
`Claim Rejections - 35 USC § 112
`
`o
`
`The following is a quotation of 35 U.S.C. 112(b):
`
`(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 1-15 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 the inventor or a joint inventor, or for pre-AIA the
`
`applicant regards as the invention.
`
`0
`
`Claim 1 recites “the dental mouthpiece having an inner surface shape that
`
`conforms to an outer shape of the teeth having the braces mounted thereon without
`
`edges of the brackets and the orthodontic wire”.
`
`It is unclear exactly what this entails,
`
`since the edges define the shape of the braces and therefore would be required in order
`
`for the mouthpiece to form to the braces.
`
`It is also noted that since the brackets shape
`
`has not been defined in the claims, it is further unclear what the inner surface form of
`
`the mouthpiece is. The dependent claims state similar unclear limitations with respect
`
`to the edges.
`
`

`

`Application/Control Number: 13/404,352
`
`Page 3
`
`Art Unit: 3776
`
`Claim Rejections - 35 USC § 102
`
`o
`
`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 —
`
`(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.
`
`.
`
`Claims 1, 5, 14-15 are rejected under 35 U.S.C. 102(b) as being anticipated by
`
`Bergersen (US 6,626,664).
`
`.
`
`Bergersen teaches an orthodontic appliance for aligning teeth (col. 2, lines 13-
`
`27), comprising a dental mouthpiece (Fig. 1 for instance) mountable on the teeth on
`
`which braces, which include a plurality of brackets and orthodontic wire (col. 2, lines 13-
`
`34), are mounted in such a manner as to align the tooth to be aligned (col. 2, lines 13-
`
`34), the dental mouthpiece having an inner surface shape that conforms to an outer
`
`shape of the teeth having the braces (col. 2, lines 28-34) mounted thereon without
`
`edges of the brackets and wire (the soft material of Bergersen would drape over the
`
`bracket and not cover all edges of the bracket, or alternatively, material is removed to fit
`
`the brackets and wire better in col. 4, lines 27-36), and wherein the dental mouthpiece is
`
`configured to maintain the conforming inner surface shape when the dental mouthpiece
`
`is separated from the teeth (particularly in col. 4, lines 27-36 where material is removed
`
`to better fit and in cases where the soft material is not flexed much). With respect to
`
`claim 4, the braces include a plurality of brackets and orthodontic wire (col. 2, lines 13-
`
`34). With respect to claim 5, the mouthpiece envelopes the outer shape of the braces
`
`and avoids interference of the unevenness of the braces (col. 2, lines 28-34). With
`
`

`

`Application/Control Number: 13/404,352
`
`Page 4
`
`Art Unit: 3776
`
`respect to claims 14, the dental mouthpiece is mountable on the entire teeth (Fig. 4, 5
`
`show the sockets that accept entire teeth). With respect to claim 15, the dental
`
`mouthpiece is so shaped as to be mountable on a part of the teeth (at 20, 21 in Fig. 4-5
`
`for instance, only part of the teeth would be mounted).
`
`Claim Rejections - 35 USC § 103
`
`o
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(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.
`
`.
`
`Claims 2, 6-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Bergersen in view of Kurz (US 4,348,178).
`
`.
`
`Bergersen discloses the device as previously described above, but fails to show
`
`a vibrating element to generate mechanical vibration to the tooth to be aligned, the
`
`vibrating element encapsulated therein and mountable on the teeth.
`
`.
`
`Kurz teaches a vibrational orthodontic appliance having a mouthpiece with a
`
`vibrating element (1 O, 22, 24) to generate mechanical vibration to the tooth to be
`
`aligned (col. 2, lines 33-42), the vibrating element encapsulated therein and mountable
`
`on the teeth (Fig. 1; col. 2, lines 33-42). With respect to claim 6, the vibrating element is
`
`a motor (1 0). With respect to claims 10 and 11, further comprising a battery as a direct-
`
`current power source stored with (self-contained) the motor being DC driven in electrical
`
`connection (col. 2, lines 43-47). With respect to claim 12, the motor provides vibration
`
`

`

`Application/Control Number: 13/404,352
`
`Page 5
`
`Art Unit: 3776
`
`normal to the teeth (vibration provides force in all directions and therefore some would
`
`be normal to the teeth). Therefore, it would have been obvious to one having ordinary
`
`skill in the art at the time of invention to modify Bergersen’s mouthpiece by including the
`
`vibration means of Kurz in order to further reduce treatment time (col. 2, lines 57-65 for
`
`instance). However, Kurz fails to show the details of the motor.
`
`.
`
`It would have been obvious to one having ordinary skill in the art at the time of
`
`invention to modify Kurz’s motor by selecting a rotary or linear motor since these types
`
`of motors are well known in the art for producing vibrations.
`
`.
`
`Claim 13 is rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Bergersen in view of Kurz as applied to claim 2 above, and further in view of Smiley et
`
`al. (US 4,511,330).
`
`0
`
`Bergersen/Kurz discloses the device as previously described above, but fails to
`
`show the vibrating element is a permanent magnet for generating mechanical vibration
`
`in response to a magnetic field generated outside the dental mouthpiece.
`
`.
`
`Smiley teaches a mouthpiece with permanent magnet acting as the vibrating
`
`element (21, 23) for generating mechanical vibration in response to a magnetic field
`
`generated outside the dental mouthpiece (col. 1, lines 33-44). Therefore, it would have
`
`been obvious to one having ordinary skill in the art at the time of invention to modify
`
`Bergersen/Kurz's mouthpiece by substituting the magnet of Smiley in order to take
`
`advantage of alternative means for producing vibrations aiding orthodontic or
`
`periodontal therapy, and reduce mouthpiece bulk by having an external power supply.
`
`

`

`Application/Control Number: 13/404,352
`
`Page 6
`
`Art Unit: 3776
`
`Response to Arguments
`
`o
`
`Applicant's arguments filed 2/20/2013 have been fully considered but they are
`
`not persuasive.
`
`0
`
`Applicant argues that the inner surface shape corresponding to the outer shape
`
`of the teeth having braces mounted thereon without edges is supported in the
`
`specification wherein wax or the like fills in clearances to eliminate edges. However, the
`
`claim in its current form makes no mention of wax or filler, where the wax or filler is
`
`located, or what the shape of the wax or filler is. Rather, the claims seems to require
`
`that it conforms to the teeth and brackets without wax, and thus the claim remains
`
`unclear as to how it can conform to the teeth and brackets if the edges of the brackets
`
`are not represented.
`
`.
`
`Applicant also argues that Bergersen does not show wherein upon removing the
`
`mouthpiece the conforming shape is maintained. This has been addressed in the
`
`above rejection and specifically, Bergersen teaches in col. 4, lines 27-36 for instance
`
`that the appliance is adjusted (by trimming the interior of the sockets) to allow the
`
`brackets and arch wires to fit better, which trimming is a permanent form of deformation
`
`that would exist when removed from the teeth.
`
`It is also noted that even in the
`
`previously recited portions of Bergersen referring to the soft portion, at least the occlusal
`
`surface, and possible buccal surfaces if the braces are thin would conform on and off
`
`the teeth since no deformation would be present. Additionally, this is moot until the
`
`

`

`Application/Control Number: 13/404,352
`
`Page 7
`
`Art Unit: 3776
`
`interior shape of the present invention is established in the claims to overcome the 112
`
`rejections.
`
`Conclusion
`
`.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MATTHEW NELSON whose telephone number is
`
`(571)270-5898. The examiner can normally be reached on Monday-Friday 7:30am-
`
`5:OOpm EDT.
`
`lf attempts to reach the examiner by telephone are unsuccessful, please contact
`
`the examiner’s supervisor, Todd Manahan, at (571) 272-4713. The fax phone
`
`

`

`Application/Control Number: 13/404,352
`
`Page 8
`
`Art Unit: 3776
`
`number for the organization where this application or proceeding is assigned is 571 -
`
`273-8300.
`
`If there are any inquiries that are not being addressed by first contacting
`
`the Examiner or the Supervisor, you may send an email inquiry to
`
`TC37GO___,\IVorkgroup___D___Inquirics @ uspto. gov.
`
`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://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/MMN/
`
`/TODD E. MANAHAN/
`
`Supervisory Patent Examiner, Art Unit 3776
`
`