DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 1 objected to because of the following informalities:
Claim 1, line 8-9 recites “wherein starting from an underside of the base body, narrows in the direction towards the suction opening” to “wherein the mirror accommodating portion narrows starting from an underside of the base body in the direction towards the suction opening”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
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 before the effective filing 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kayser et al (DE 102012100119 B3) in view of Tavor et al (US 2018/0168441).
Regarding claim 1, Kayser discloses a dental mirror suction device for suctioning liquids and particles from an oral cavity of a patient (see par 1 of translation), the dental mirror suction device (mirror suction cup 10) comprising:
a tubular hollow base body (12) having an inner surface (14), an outer surface (16), a longitudinal axis (X-X), a connection opening (18) for a hose (see par 53 of translation), and a suction opening (20), wherein the inner surface has a mirror (22), which is viewable at least in some portions through the suction opening (par 54 of translation), with a mirror surface (24/54) and a mirror back (a back side of the mirror 22, which can be seen in figure 6),
wherein the base body has in the inner surface (14), in the region of the suction opening (20), a mirror-accommodating portion, which is configured as a depression (mirror holding groove 50) and in which the mirror is positively retained (par 66 of translation), wherein starting from an underside of the base body (the mirror accommodating portion 52, starting at the portion of 52 adjacent to the body portion 51), narrows in the direction towards the suction opening (along the wall 52 as seen in figure 6),wherein the mirror-accommodating portion has an undercut (pointed out as the free space 56 in figure 6) formed by an upper retaining shoulder (retaining wall 52, see figure 6 and par 66) surrounds an entire outer wall of the mirror (par 66 of translation discloses retaining wall 52 rests against a mirror outer side 54 and that the holding wall surrounds the entire mirror), the upper retaining shoulder (52) being substantially peripherally extending (see figure 6, where the retaining wall extends inwardly towards the periphery of the mirror), elastic (par 66 of translation discloses the holding wall 52 being prestressed such that the wall can be minimally compressed or elastically deformed) and integrally formed with the base body (via connecting surface 36, which is disclosed as part of the basic body in par 56, see figure 6), wherein an inner wall of the mirror accommodating portion (50) forms the retaining shoulder (52, see figure 6) contacting an upper face of the mirror (see figure 6, where the upper face is interpreted as the upward facing surfaces, which includes the outer side 54) and retaining the mirror in the mirror-accommodating portion, wherein the retaining should contacts the upper face of the mirror over the entire circumference (see par 65 and 66 of translation discloses the mounting groove surrounding the entire outer circumference of the mirror 22 and see figure 6),
wherein the mirror is retained in the mirror-accommodating portion without adhesive (par 29 discloses the mirror being held in the mirror mounting grove exclusively and without additional adhesive), and the mirror-accommodating portion or the upper retaining shoulder (50/52) is flexible and is configured to be elastic to move back when the mirror is pressed in (par 66 of translation discloses the holding wall 52 being prestressed such that the wall can be minimally compressed or elastically deformed, where elastically deformed is considered flexible), and the mirror is configured to snap into the mirror accommodating portion (where the limitations “to move back when the mirror is pressed in, and the mirror is configured to snap into the mirror accommodating portion” are considered intended use of the claimed invention which is anticipated by the disclosure of par 66 that states the mirror 22 is pressed against the holding wall and the holding wall being compressed and then figure 6 which discloses the retaining wall being above the mirror which would result in a snapped in configuration),
wherein the mirror has a conical cross-section whereby a diameter decreases from a front of the mirror towards the mirror back (where the mirror surface 24 and mirror outer side 54 are considered the front of the mirror and the diameter decreases to the mirror back which is at the bottom of the groove, see figure 6)
Regarding the limitation “wherein the mirror is configured to be inserted only from above, whereby the mirror is inserted by pressing the mirror into the depression such that the upper retaining shoulder is first pressed outwardly and the depression expands its diameter to accommodate insertion of the mirror, and contacts an upper face of the mirror, and secondly the upper retaining shoulder moves back, such that the diameter of the depression decreases and retains the mirror in the mirror-accommodating portion” , applicant appears to be attempting to define the claim by the process of which the product is made. However, products are not limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the instant case, the prior art discloses the mirror shape (par 18 discloses the mirror being circular or oval in shape and figure 6 shows the included conical shape and tapering to the mirror back as set forth above) which enables the prior art to perform the claimed limitation of inserting the mirror into the depression by pressing the mirror from above. The prior art disclosure of the retaining shoulder being prestressed and elastically deformable (par 66) enables the movement of the shoulder outward and back to the original position giving the change in diameter disclosed. As such, the device of Kayser has all of the structure required by the functional limitation.
Kayser further discloses a final product configuration of the main body 12, as seen in figures 1-2, where the halves of the main body part 32 and 34 are put together to create the main body 12, but fails to specifically disclose the base body being formed as a solitary piece by injection molding.
Tavor teaches a dental mirror suction device (see figure 3) which has a base body (mirror frame 1 and handle suction tube 4) being formed of a solitary piece (par 26 discloses all parts being the single continuous unit or piece of plastic).
As both Kayser and Tavor disclose a final configuration of the mirror body being singular (see figure 1 of Kayser and figure 3 of Tavor, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to substitute the two-part base body of Kayser with the one/solitary piece construction, as taught by Tavor to achieve the predictable result of providing a disposable single body. Furthermore, it has been held the use of a one-piece construction is merely a matter of obvious engineering choice, which would not change the operation of the claimed invention. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
Applicant is advised that statement “by injection molding” is considered a product by process claim limitation and reminded that product-by-process claim limitations are limited by and defined by the process, determination of patentability is based on the product itself. See MPEP 2113.
Regarding claim 4, Kayser discloses wherein the mirror (22) is formed in a circular manner (see par 65 of translation and figure 7).
Regarding claim 6, Kayser discloses wherein the base body is made from plastic (par 63 of translation).
Allowable Subject Matter
Claim 7 is allowed.
The following is an examiner’s statement of reasons for allowance: see office action mailed 4/23/2025 for detailed reason for allowance.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed 2/12/2026 have been fully considered but they are not persuasive.
Pages 1 and 2 of remarks, applicant argues that amended claim 1 discloses a narrowing geometry of the mirror accommodating portion that necessitates insertion only from above, as the conical mirror with decreasing diameter can “only be accommodated by a correspondingly narrowing depression” and that the complete circumferential contact of the retaining shoulder with the upper face of the mirror is the structural result of the elastic shoulder expansion and snap back retention mechanism. The examiner does not find this argument persuasive. As set forth above, Kayser explicitly discloses the upper retaining shoulder being elastic (par 66), the mirror groove surrounding the entire outer circumference of the mirror (par 55) and the shoulder extending to contact the upper surface of the mirror (see figure 6 and par 55 which discloses the walls contact with the outer side 54 which is a part of an upper surface of the trapezoidal shaped mirror). In summary, the claimed limitations to the narrow structure is disclosed by Kayser and applicant has not disclosed any structural differences which are the results of the product by process limitations that are not disclosed by Kayser.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a conical mirror with decreasing diameter corresponding to the narrowing depression of the mirror accommodating portion) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/S.N.B./Examiner, Art Unit 3772
/HEIDI M EIDE/Primary Examiner, Art Unit 3772
4/23/2026
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