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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/773,574
`
`01/27/2020
`
`Junichi HOSHINO
`
`083710-2856
`
`6481
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`ELLABIB, MAAP AHMED
`
`3785
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`11/09/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-2 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-2 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)(] The specification is objected to by the Examiner.
`11) The drawing(s) filed on 1/27/2020 is/are: a)(¥) accepted or b)() 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).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4.) Copies of the certified copies of the priority documents have been receivedin 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)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20221028
`
`Application No.
`Applicant(s)
`16/773,574
`HOSHINO, Junichi
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`MAAPA ELLABIB
`3785
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 09/28/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) 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 Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/773,574
`Art Unit: 3785
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1. The present application, filed on or after March 16, 2013, is being examined under the first inventor tofile
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`provisions of the AIA.
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`Response to Amendment
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`2. This office action is responsive to the amendmentfiled on September 28, 2022. As directed by the
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`amendment: claim 1 and 2 has been amended, no claims have been canceled, and no new claims have been
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`added. Thus, claims 1-2 are presently pending in the application.
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`Claim Rejections - 35 USC § 112
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`3. Claim 1 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second paragraph,as being indefinite
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`for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint
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`inventor (or for applications subject to pre-AlA 35 U.S.C. 112, the applicant), regards as the invention.
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`Whereapplicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its
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`ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon
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`definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that
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`claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir.
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`1999). The term “conical” in claim 1 line 13 is used by the claim to mean “resembling a cone especially in shape”
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`(et
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`; Accessed on 11/1/2022) and a cone being defined as
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`
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`point of the boundary of the base to a common vertex,” according to (3%
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` e; Accessed on 11/1/2022) while the accepted meaningis “frusto-conical.”It is clear
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`from Figure 4, Reference number 170, the space of the oral flosser storage space is frusto-conical whichis
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`defined as “of the shape of a frustum of a cone” (}3£
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`

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`Application/Control Number: 16/773,574
`Art Unit: 3785
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`Page 3
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`Accessed on 11/1/2022). The term is indefinite because the specification does not clearly redefine the term. For
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`purposes of examination, the Examineris examining the term “conical” as frusto-conical”.
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`Claim Rejections - 35 USC § 103
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`4.
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`Inthe event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as
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`subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection
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`will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting
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`the rejection, would be the same under either status.
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`5. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in
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`this Office action:
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`A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not
`identically disclosed as set forth in section 102,if the differences between the claimed invention and the prior
`art are such that the claimed invention as a whole would have been obvious beforethe effectivefiling date of
`the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.
`Patentability shall not be negated by the manner in which the invention was made.
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`6. The text of those sections of Title 35, U.S. Code not included in this action can be found inaprior Office
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`action.
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`7. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are
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`summarized as follows:
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`1. Determining the scope and contentsofthe prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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`8. This application currently namesjoint inventors. In considering patentability of the claims the examiner
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`presumesthat the subject matter of the various claims was commonly ownedas of the effective filing date
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`of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under
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`37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned
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`

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`Application/Control Number: 16/773,574
`Art Unit: 3785
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`Page 4
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`as of the effective filing date of the later invention in order for the examiner to consider the applicability of
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`35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`9. Claim 1 are rejected under 35 U.S.C. 103 as being unpatentable over Kishimoto (JP2005349134 A), in the
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`view of Thomas et al. (US 20080008979 A1)
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`Regarding claim 1, Kishimoto discloses an oral cavity washing device (oral cavity washer 1; Figure 1;
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`Paragraph 0018) that washesan oral cavity with a liquid, the oral cavity washing device comprising: a housing
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`(case body 12; Figure 1; Paragraph 0020); a storage space having a tubular shape having a bottom and a top and
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`being located in the housing (storage part 2; Figure 1; Paragraph 0017), the storage space being configured to
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`store the liquid (storage part 2; Figure 1; Paragraphs 0008-0009); and a pump (liquid pump 5; Figure 1;
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`Paragraph 0009 and 0017) housedin the housing to discharge the liquid stored in the storage space (Paragraph
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`0009), wherein the housing includes: a peripheral wall section constituting at least part of a peripheral wall of
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`the storage space and having a supply port for supplying the liquid from outside the housing into the storage
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`space (short cylindrical part 12b and tank body 15; Figure 1; Paragraph 0020-0021, 0034) and a lid disposed at
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`the bottom of the storage space to be able to entirely open and close a largest opening thatis larger in area
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`than any other opening in the housing (tank bottom cover; Figure 1; Paragraph 0021),
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`Kishimoto does not disclose the storage space in the housing has an inner peripheral surface of the
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`storage space has a conical shape, and a cross-sectional area orthogonal to a direction from the bottom to the
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`top gradually decreases from the bottom to the top with an advancement in the direction.
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`However, Thomas teaches the storage space (reservoir 45; Figure 9; Paragraph 0049-0051) in the
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`housing has an inner peripheral surface of the storage space has a conical shape, and a cross-sectional area
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`orthogonal to a direction from the bottom to the top gradually decreases from the bottom to the top with an
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`advancement in the direction (reservoir 45; Figure 9; Paragraph 0049-0051) (Figure A; Annotated below:
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`Examiner notes: the storage space is decreasing gradually from the bottom to the top of the space (45)).
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`

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`Application/Control Number: 16/773,574
`Art Unit: 3785
`
`Page 5
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`Therefore, Kishimoto in view of the Thomas are both considered to be analogous to the claimed
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`invention because they are in the same field of oral cavity washer. Therefore, it would have been obvious to one
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`having ordinaryskill in the art before the effective filing date of the invention to modify the storage space of
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`Kishimoto to include the storage space (reservoir 45; Figure 9; Paragraph 0049-0051) in the housing has an
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`inner peripheral surface of the storage space has a conical shape, and a cross-sectional area orthogonal to a
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`direction from the bottom to the top gradually decreases from the bottom to the top with an advancementin
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`the direction (reservoir 45; Figure 9; Paragraph 0049-0051) as taught by Thomas.
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`It would have been obvious as to one of ordinaryskill in the art before the effective filing date of the
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`claimed invention to modify the storage shape of Kishimoto to have the shape of the storage space to be frusto-
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`concial shownin Thomas such as becauseit is well within the skill of the art to design the shape of the storage
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`shape while still providing the purpose of storing fluid (Paragraph 0042 line 4). Applicant places no criticality on
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`one particular shape of the enclosure (pages 20 lines 23-25 of applicant’ s specification indicates the claimed
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`shape however no significance to one shape over another is present). Modifying Kishimoto to have the claimed
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`shape dimensions would not have adverse effects on the performance of the device and thus the changing
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`dimensions would not destroy the device. The courts have held that, “where the only difference between the
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`prior art and the claims was a recitation of relative shape of the claimed device and a device having the claimed
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`relative dimensions would not perform differently than the prior art device, the claimed device was not
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`patentably distinct from the prior art device”. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed.
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`Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
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`

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`Application/Control Number: 16/773,574
`Art Unit: 3785
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`Page 6
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`SSeS
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`i i q
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`i.
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`:
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`10. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kishimoto (JP2005349134A), in the
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`view of Mahawar (US 20180035797 A1).
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`Regarding Claim 2, Kishimoto discloses the oral cavity washing (oral cavity washer 1; Figure 1; Paragraph
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`0018) according to claim 1,
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`an area of the bottom is identical to the largest area of the housing in plan view (bottom 15b; Figure 1
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`(unlabeled) Examiner notes: one can interpret that the bottom is 15b; Paragraph 0021).
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`

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`Application/Control Number: 16/773,574
`Art Unit: 3785
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`Page 7
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`Kishimoto does not disclose the largest opening communicating with the storage space accounts for two
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`thirds or more of the bottom.
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`However, Mahawar teachesthe largest opening communicating with the storage space accountsfor two
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`thirds or more of the bottom (base 20 and cap 26; Figure 6; Paragraph 0022; Examiner notes: the device has a
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`base that has hollow body forming a base internal compartment and a cap that mechanically fastened to an
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`upper rim of the base (20; Figure 6; Paragraph 0018).
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`Therefore, Kishimoto and Mahawar are both considered to be analogous to the claimed invention
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`becausethey are in the same field of oral cavity washer devices and/or dental floss devices. Therefore, it would
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`have been obvious to someone of ordinaryskill in the art before the effective filing date of the claimed
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`invention to have modified Kishimoto to incorporate the largest opening communicating with the storage space
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`accountsfor twothirds or more of the bottom (base 20 and cap 26 ; Figure 6; Paragraph 0022) as taught by
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`Mahawar for the purpose of removing the at least one dental tool from the internal compartment.
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`Response to Arguments
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`1.
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`Applicant's argumentsfiled September 28, 2022 have been fully considered but they are not persuasive.
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`Applicant argues on page 1 of the remarks that the objection made on specification should not be
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`amended. Previously, examiner states that in the specification on page 6,line 8, “pair” should read as “pairs.”
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`Former informality applicant response is persuasive, the previous specification objection has been hereby
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`withdrawn.
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`Applicant argues on page 1 and 2 of the remarks that none of the cited references disclose or suggest
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`that the housing has an inner peripheral surface of the storage space has a conical shape, and a cross-sectional
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`area orthogonal to a direction from the bottom to the top gradually decreases from the bottom to the top with
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`an advancementin the direction in the new amended claim 1. However, the applicant has amended the
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`rejections and the new 103 rejection stated above addresses the new limitation of the claim. Kishimotois
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`modified by Thomas to have a “frusto-conical” shape that is in the housing and the cross-sectional area
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`

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`Application/Control Number: 16/773,574
`Art Unit: 3785
`
`Page 8
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`gradually decreases from the bottom to the top with an advancementin the direction (See Annotated Figure A
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`above). The claim limitations are met, and the rejections to claims 1-2 stand.
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`Conclusion
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`1.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
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`Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of
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`time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the
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`mailing date of this action.
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`In the eventa first reply is filed within TWO MONTHS of the mailing date ofthis final
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`action and the advisory action is not mailed until after the end of the THREE-MONTHshortenedstatutory
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`period, then the shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action.
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`In no
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`event, however,will the statutory period for reply expire later than SIX MONTHS from the date ofthis final
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`action.
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`11. Any inquiry concerning this communication or earlier communications from the examiner should be directed
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`to MAAP AHMED ELLABIB whosetelephone number is (571)272-5879. The examiner can normally be
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`reached 8-5.
`
`Examiner interviewsare available via telephone, in-person, and video conferencing using a USPTO
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`supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO
`
`Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KENDRA
`
`CARTER can be reached on 571-272-9034. The fax phone number for the organization wherethis application or
`
`proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from Patent
`
`Center. Unpublished application information in Patent Center is available to registered users. To file and manage
`
`

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`Application/Control Number: 16/773,574
`Art Unit: 3785
`
`Page 9
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`
`/MAAP AHMED ELLABIB/
`Examiner, Art Unit 4165
`
`/KENDRA D CARTER/
`Supervisory Patent Examiner, Art Unit 3785
`
`