P32297.A03
`
`REMARKS
`
`Initially, Applicants would like to express their appreciation to the Examiner for
`
`the detailed Official Action provided, for the acknowledgment of Applicants Information
`
`Disclosure Statement by return of the Form PTO-1449, for acknowledgement of the
`
`Applicants claim for priority and receipt of certified copy of the priority document, and
`
`for acknowledging the acceptability of the Drawings.
`
`Upon entry of the above amendments, claims 1-4, 7, 8, 13 and 20 will have been
`
`amended, and claims 6 and 12 will have been canceled without prejudice or disclaimer to
`
`the subject matter contained therein. Claims 1-5, 7-1] and 13-20 are currently pending.
`
`Applicants respectfully request reconsideration of the objection and rejections, and
`allowance ofall the claims pending in the present application.
`
`Objection to the Title
`
`In the Official Action, the Examiner objected to the Title of the Specification (see
`
`page 2, paragraph 2 of the Official Action).
`
`In this regard, Applicant submits that the Title of the Specification has been
`
`amended as suggested by the Examiner. Accordingly,
`
`the objection to the Title is
`
`believed to be moot and should be withdrawn.
`
`Rejection under 35 U.S.C. § 112
`
`In the Official Action, the Examiner rejected claims 2-4, 6 (Applicants note that
`
`the Examiner apparently intends to reject claim 7, and not 6, since claim 7 recites “at a
`
`part thereof”) and 8 under 35 U.S.C. § 112, second paragraph.
`
`{P32297 0072983 1.DOC}
`
`3
`
`
`
`REMARKS
`
`Initially, Applicants would like to express their appreciation to the Examiner for
`
`the detailed Official Action provided, for the acknowledgment of Applicants Information
`
`Disclosure Statement by return of the Form PTO-1449, for acknowledgement of the
`
`Applicants claim for priority and receipt of certified copy of the priority document, and
`
`for acknowledging the acceptability of the Drawings.
`
`Upon entry of the above amendments, claims 1-4, 7, 8, 13 and 20 will have been
`
`amended, and claims 6 and 12 will have been canceled without prejudice or disclaimer to
`
`the subject matter contained therein. Claims 1-5, 7-1] and 13-20 are currently pending.
`
`Applicants respectfully request reconsideration of the objection and rejections, and
`allowance ofall the claims pending in the present application.
`
`Objection to the Title
`
`In the Official Action, the Examiner objected to the Title of the Specification (see
`
`page 2, paragraph 2 of the Official Action).
`
`In this regard, Applicant submits that the Title of the Specification has been
`
`amended as suggested by the Examiner. Accordingly,
`
`the objection to the Title is
`
`believed to be moot and should be withdrawn.
`
`Rejection under 35 U.S.C. § 112
`
`In the Official Action, the Examiner rejected claims 2-4, 6 (Applicants note that
`
`the Examiner apparently intends to reject claim 7, and not 6, since claim 7 recites “at a
`
`part thereof”) and 8 under 35 U.S.C. § 112, second paragraph.
`
`{P32297 0072983 1.DOC}
`
`3
`
`
`
`P32297,.A03
`
`Without acquiescing to the propriety of the Examiner’s rejections, Applicants
`
`submit that claims 2-4 and 7 and have been amended, where appropriate, in order to
`
`address the Examiner’s concerns. Further, Applicants note that claim 6 will have been
`
`cancelled upon entry of the present amendment. Therefore, the rejection of claim 6 is
`
`believed to be moot.
`
`Accordingly, Applicants submit that
`
`the rejection under 35 U.S.C.
`
`§ 112 is
`
`believed to be improper and should be withdrawn.
`
`Rejections under 35 U.S.C. § 103
`
`In the Official Action, the Examiner rejected claims 1-6, 12, 13 and 17-20 under
`
`35 U.S.C. § 103 as being unpatentable over KURZ (U.S. Patent No. 4,123,844) in view
`
`of SMILEYet al (U.S. Patent No. 4,511,330);
`
`the Examiner rejected claims 7-9 under 35 U.S.C. § 103 as being unpatentable
`
`over KURZ in view of SMILEY, and further in view of LOTTE (U.S. Pub. No.
`2003/0207224):
`
`the Examiner rejected claims 7, 10 and 11 under 35 U.S.C. § 103 as being
`unpatentable over KURZ in view of SMILEY,and further in view ofABOLFATHI(U.S.
`
`Pub. No. 2005/0186524); and
`
`the Examiner rejected claims 14 and 16 under 35 U.S.C.
`
`§ 103 as being
`
`unpatentable over KURZ in view of SMILEY, and further in view of KARLIN (US.
`
`Patent No. 6,062,855).
`
`{P32297 C0729831.DOC}
`
`9
`
`
`
`P32297.A03
`
`Without acquiescing to the propriety of the Examiner’s rejections, Applicants
`
`submit that claim 1 has been amendedsolely in order to more clearly recite the present
`
`invention and expedite prosecution of the same.
`
`In this regard, Applicants submit that
`
`the applied prior art, alone or in any
`
`properly reasoned combination, does not discloses at least the combination of features
`
`generally recited in independent claim 1.
`
`In particular, claim 1 generally sets forth an orthodontic appliance including:
`
`braces to be mounted on a specified tooth included in the teeth to align the teeth; a
`
`magnetic field generator; a magnetic elementto be attached to the teeth so as to vibrate in
`
`response to a magnetic field generated by the magnetic field generator and apply the
`
`vibration to the tooth on which the braces are mounted; and a dental mouthpiece
`
`configured to be mounted on teeth,
`
`the dental mouthpiece including a storage space
`
`whichstores only the magnetic elementinside, the storage space being shaped to provide
`
`the magnetic element with play which permits an independent vibration of the magnetic
`
`element itself within the storage space.
`
`In setting forth the rejection,
`
`the Examiner asserts that KURZ discloses the
`
`presently claimed orthodontic appliance comprising the presently claimed braces. The
`
`Examiner acknowledges, inter alia, that KURZ does not disclose the presently claimed
`
`storage spaced shaped to permit the magnetic elementitself to movein the storage space
`(see paragraph8 on page 3 of the Officail Action). Nevertheless,the Examiner asserts
`that SMILEY supplies the ackowledged deficines of KURZ.
`
`Contrary to the Examiner’s assertions, Applicants submit that the devicesof the
`
`applied priorart are very different structurally from the presently claimed invention.
`
`{P32297 00729831.DOC}
`
`10
`
`
`
`P32297.A03
`
`More specifically, Applicants submit that KURZ discloses a vibrating element
`
`stored in a mouthpiece 16. However, Applicants submit that the vibrating element of
`KURZ must be connected to a vibration motor 10, positioned outside of the mouthpiece
`16, via electrical wires. Accordingly, thevibrating element of KURZ is relatively large
`(ie, in comparison to the vibrating element of the presently claimed invention) and
`cannot be independently stored in the mouthpiece (i.e., because the vibrating element
`must be connected to the vibration motor 10 via wires).
`|
`Furthermore, Applicants note that the Examiner apparently acknowledges that
`
`KURZ does not disclose the presently claimed storage spaced shaped to permit the
`
`magnetic elementitself to move in the storage space.
`
`Additionally, Applicants submit
`
`that SMILEY does not disclose any féature
`
`which can reasonably be considered to supply the deficiencies of KURZ, as discussed
`
`above, and as apparently acknowledged by the Examiner.
`
`In particular, Applicants submit that SMILEY merely discloses an intra oral
`
`magnetic module 17 and an extra oral magnetstructure 15 (see column 2,lines 34-39 of
`
`SMILEY), and does not disclose a mouthpiece mounted to the teeth.
`
`In this regard, the
`
`intra oral magnetic module 17 of SMILEY is comprised of arch wire mounted on a tooth
`
`not protected in an oral cavity (see Figure 1 and lines 36 and 37). Therefore, Applicants
`
`submit that, because SMILEY does not disclose or contemplate a mouthpiece, SMILEY
`
`cannot possibly disclose a mouthpiece having a storage space which stores only a
`magnetic element apart from a magnetic field generator so at to permit an independent
`
`vibration of the magnetic element in the mouthpiece.
`
`{P32297 00729831.DOC}
`
`11
`
`
`
`P32297.A03
`
`Thus, Applicants submit that, even assuming arguendo that the teachings of
`
`KURZ and SMILEY can be properly combined, the applied prior art, alone or in any
`properly reasoned combination, does not disclose at leastthe presently claimed dental
`mouthpiece including a storage space which stores only themagnetic element inside, the
`storage space being shaped to provide the magnetic element with play which permits an
`independent vibration of the magnetic element itself within the storage space, as recited
`
`in amended claim 1.
`
`In regard to independent claim 20, this claim sets forth an orthodontic method for
`
`aligning teeth including: attaching a dental mouthpiece which includes a storage space
`
`storing only a magnetic element inside and having such a shape so as to provide the
`
`magnetic element with play which permits an independent vibration of the magnetic
`
`element itself within the storage space; and forming a magnetic field for vibrating the
`magnetic element in the storage space of the dental mouthpiece attached to the teeth and
`
`applying the vibration of the magnetic elementto the tooth on which the braces are
`
`mounted.
`
`Therefore, Applicants submit that independent claims 20 is allowable forat least
`
`reasonssimilar to claim 1 as discussed supra.
`
`Accordingly, Applicants submit that the rejections of claims 1-20 under 35 U.S.C.
`
`§§ 102 and 103 are believed to be improper and should be withdrawn.
`
`In view of the amendments and remarks herein, Applicants
`submit
`that
`independent claims 1 and 20 are in condition for allowance, for reasons discussed supra.
`With regard to dependent claims 2-5, 7-1 1 and 13-20, Applicants assert that these claims
`are allowable on their own merit, as well as because of their dependencies from claim 1,
`
`whichis allowable for reasons discussed supra.
`
`{P32297 00729831.DOC}
`
`12
`
`
`
`P32297.A03
`
`Thus,it is respectfully submitted that all pending claimsin the present application
`
`are clearly patentable over the references cited by the Examiner, either alone or in
`
`combination, and an indication to such effect is respectfully requested, in due course.
`
`{P32297 00729831.DOC}
`
`13
`
`
`
`P32297.A03
`
`SUMMARY
`
`Applicants submit that the present application is in condition for allowance, and
`
`respectfully requests an indication to that effect. Applicants have demonstrated the
`
`allowability of the claims. Accordingly, reconsideration of the outstanding Official
`
`Action and allowanceofthe present application and all the claims therein are respectfully
`
`requested and is now believed to be appropriate.
`
`Applicants note that this amendment is being made to advance prosecution of the
`
`application to allowance and should not be considered as surrendering equivalents of the
`
`territory between the claims prior to the present amendment and the amended claims.
`
`Further, no acquiescence as to the propriety of the Examiner’s rejections are made by the
`
`present amendment. All other amendments to the claims which have been madein this
`
`amendment, and which have not been specifically noted to overcome a rejection based
`
`upon the prior art, should be considered to have been made for a purpose unrelated to
`
`patentability, and no estoppel should be deemedto attach thereto
`
`{P32297 00729831.DOC}
`
`14
`
`
`
`P32297,.A03
`
`Should the Examiner have any questions, the Examiner is invited to contact the
`
`undersignedat the below-listed telephone number.
`
`Respectfully submitted,
`Teruko YAMAMOTOetal.
`
`j
`
`oi
`
`Bruce HH. Bernstein
`
`~~
`
`Enoch E. Peavey
`Reg. No. 57,686
`
`June 24, 2009
`GREENBLUM & BERNSTEIN, P.L.C.
`1950 Roland Clarke Place
`Reston, VA 20191
`(703) 716-1191
`
`{P32297 0072983 1.DOC}
`
`15
`
`
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