`
`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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`
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`
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`CONF {MATION NO.
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`13/404,352
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`02/24/2012
`
`Teruko YAMAMOTO
`
`P41595
`
`4561
`
`7055
`7590
`04/10/2014
`GREENBLUM & BERNSTEIN, P.L.C.
`1950 ROLAND CLARKE PLACE
`RESTON, VA 20191
`
`EXAMINER
`NELSON, MATTHEW M
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`ART UNIT
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`3732
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`PAPER NUMBER
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`
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`NOT *ICATION DATE
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`DELIVERY MODE
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`04/10/2014
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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):
`
`gbpatent @ gbpatent.c0m
`greenblumbernsteinplc @ gmail.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 13/404,352 YAMAMOTO ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`3732MATTHEW NELSON first“
`
`-- 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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) 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).
`
`In no event, however, may a reply be timely filed
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`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on 12/5/2013.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:| This action is non-final.
`2a)IZ| This action is FINAL.
`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)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)|XI Claim(s) 1,2 and 6-16 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`7)IZ| Claim(s) 1,2 and 6-16 is/are rejected.
`8)I:I Claim(s) _ is/are objected to.
`
`9)|:l 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
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`participating intellectual property office for the corresponding application. For more information, please see
` S
`htt
`://www.usoto. ov/ atentS/init events) .h/index.‘
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`
`
`
`
`, or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I 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).
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`Priority under 35 U.S.C. § 119
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I 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
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`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.
`
`Attach ment(s)
`
`
`
`3) I] Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date 12/5/2013 3/10/2014.
`4) D Other: —-
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`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20140404
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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: 3732
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`o
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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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):
`(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.
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`.
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`Claims 1-2, 6-16 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 "a second shape that surrounds the braces and conforms to an
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`envelope of an outermost outer surface of the braces" which would be the outer shape
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`of the bracket and wire including the unevenness. However, claim 1 then goes on to
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`state “the envelop being defined by a surface enveloping the outermost surface of the
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`braces so as to be devoid of the unevenness of the outer surface of the braces".
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`It is
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`unclear how it can both envelop the outer uneven shape and simultaneously be devoid
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`of unevenness. The Office has attempted to address this by citing both the trimming of
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`Bergersen to better fit the brackets and simply draping the appliance over the brackets
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`resulting in evenness.
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`

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`Application/Control Number: 13/404,352
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`Page 3
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`Art Unit: 3732
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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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`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, 14-16 are rejected as best understood under 35 U.S.C. 102(b) as
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`being anticipated by 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 braces (col. 2, lines 13-34 for instance) having brackets and an arch
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`wire to move the teeth wherein the braces have an outer surface including an
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`unevenness (such as at an archwire slot); and a dental mouthpiece (Fig. 1 for instance)
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`to be mounted on the teeth on which the braces are mounted to align the tooth to be
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`aligned (col. 2, lines 13-34), the dental mouthpiece having an inner surface which
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`includes a first shape that conforms to an outer shape of the teeth (Fig. 1 for instance)
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`and a second shape that surrounds the braces and conforms to an envelope of an
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`outermost outer surface of the braces (the soft material of Bergersen would drape over
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`the bracket and not cover all edges of the bracket, or alternatively, material is removed
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`to fit the brackets and wire better in col. 4, lines 27-36), the envelope being defined by a
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`surface enveloping the outermost surface of the braces so as to be devoid of the
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`unevenness of the outer surface of the braces (see the 112 rejection above; Bergersen
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`draping over the brackets would accomplish the unevenness, in addition to trimming
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`

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`Application/Control Number: 13/404,352
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`Page 4
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`Art Unit: 3732
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`which provides a better fit), and wherein the dental mouthpiece has sufficient rigidity to
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`maintain a fixed shape both in a state where the dental mouthpiece is mounted over the
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`teeth and in a state where the dental mouthpiece is separated from the teeth (holds
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`form in both states in order to accomplish tooth movements). With respect to claim 4,
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`the braces include a plurality of brackets and orthodontic wire (col. 2, lines 13-34). With
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`respect to claims 14, the dental mouthpiece is mountable on the entire teeth (Fig. 4, 5
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`show the sockets that accept entire teeth). With respect to claim 15, the dental
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`mouthpiece is so shaped as to be mountable on a part of the teeth (at 20, 21 in Fig. 4-5
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`for instance, only part of the teeth would be mounted). With respect to claim 16, “the
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`inner surface shape of the dental mouthpiece that surrounds the braces is suction
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`molded, thereby providing the precise conformance to the overall shape” is product-by-
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`process language where only the resulting structure is at issue, which would be an inner
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`surface that fits the bracket/wire. Bergersen teaches trimming the inner surface to fit
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`the bracket/wire, and thus meets the end structure achieved by this process.
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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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`.
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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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`Application/Control Number: 13/404,352
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`Page 5
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`Art Unit: 3732
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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 (1 O, 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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`.
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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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`

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`Application/Control Number: 13/404,352
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`Page 6
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`Art Unit: 3732
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`o
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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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`Response to Arguments
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`o
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`Applicant's arguments filed have been fully considered but they are not
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`persuasive.
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`.
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`While some structure has been attributed to the now positively recited braces,
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`the other amendments bring back the 112 rejection making it unclear what the shape
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`relationship between the braces and mouthpiece is. Bergersen’s teaching is generally
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`to trim the inner surface to fit that of the bracket/wire, which would be done dependent
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`on the bracket/wire and appear to fit the present claim language as best understood by
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`the Office.
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`.
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`Applicant also argues that Bergersen does not show wherein upon removing the
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`mouthpiece the conforming shape is maintained. This has been addressed in the
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`

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`Application/Control Number: 13/404,352
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`Page 7
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`Art Unit: 3732
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`above rejection and specifically, Bergersen teaches in col. 4, lines 27-36 for instance
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`that the appliance is adjusted (by trimming the interior of the sockets) to allow the
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`brackets and arch wires to fit better, which trimming is a permanent form of deformation
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`that would exist when removed from the teeth. Trimming has explicitly been done for
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`the purpose of conforming to the brackets/wire and therefore inherency is not at issue.
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`It is also noted that even in the previously recited portions of Bergersen referring to the
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`soft portion, at least the occlusal surface, and possible buccal surfaces if the braces are
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`thin would conform on and off the teeth since no deformation would be present.
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`It is
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`further noted that the current claim limitations do not require that a fixed shape is the
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`same in both the mounted and unmounted state, but rather that the mouthpiece has a
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`fixed shape in both states.
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`0
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`Applicant argues with respect to the new product-by-process claim in that the
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`different method would result in a different end structure. However, this does not
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`appear to be the case, as Bergeresen teaches trimming the inner surface to fit the
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`bracket/wire and Applicant recites suction molding to fit the bracket/wire. Both
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`processes result in a mouthpiece that fits the bracket/wire.
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`It is not clear what the
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`resulting structural difference would be.
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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 8
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`Art Unit: 3732
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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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`the examiner’s supervisor, Cris Rodriguez, at (571) 272-4964. 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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`
`TC37 OO___W orkgroup____D___Inquiries Q71? uspto . gov .
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`
`/MMN/
`
`/SUNIL K SINGH/
`
`Primary Examiner, Art Unit 3732
`
`