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 35 is objected to because of the following informalities:
Claim 35, line 6 change “device, the second signal” to “device and the second signal”.
Claim 37, line 2 change “the tooth, the sensor” to “the tooth and the sensor”.
Claim 38, lines 1-2 “an aligner, and” to “an aligner and”.
Claim 40, line 2 change “orthodontic appliances, the compliance device” to “orthodontic appliances and the compliance device”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 29-30 and 34 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 29 and 30 recites the limitation "the system of claim 1". There is insufficient antecedent basis for this limitation in the claim. Claim 1 is a compliance device and does not positively recite a system to further limit. For the purpose of examination, as system with a compliance device of claim 1.
Claim 29 recites “a probe having a third transceiver or a third light emitter”, however this limitation is unclear as no second transceiver or light emitter is claimed. For the purpose of examination, the limitation is interpreted as an additional transceiver or light emitter.
Claim 34 recites “an orthodontic appliance”, it is unclear if this is the same orthodontic appliance as recited in claim 33 or an additional orthodontic appliance.
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 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Rahman et al (US 2006/0166157) in view of Kassayan et al (US 2009/0105523)
Regarding claim 1, Rahman discloses a compliance device (compliance monitor 104/compliance sensor 106) that is configured to be disposed within a patient's mouth (see figures 1-8 and 11), the compliance device comprising:
a sensor (106) configured to detect at a first time and at a second time an input associated with whether an orthodontic appliance is at least partially disposed within the patient's mouth (par 53 discloses the compliance sensor taking sensor output at predetermined frequencies, the second time being subsequent to the first time and par 51 discloses the compliance monitor being within the orthodontic device which would be positioned in the mouth of a user) and
wherein the compliance device is configured to store data associated with input detected by the sensor at the first time and the second time (via RAM 224, see par 52), the compliance device comprising a transceiver or a light emitter (par 55 discloses the use of infrared or optical transmission).
Rahman fails to disclose wherein the compliance device is configured to be bonded directly to a tooth of the patient.
Kassayan teaches the attachment of an electronic device (64) used in combination with an orthodontic appliance (60) wherein the electronic device is configured to be bonded directly to a tooth of the patient (see figures 6A-B and par 95) for the purpose of allowing the electronic to be replaced when needed (par 95).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Rahman to have the compliance device which is adjacent to the tooth be configured to be bonded directly to a tooth of a patient as taught by Kassayan for the purpose of allowing a modular configuration between the compliance device and an orthodontic appliance to allow replacement of the compliance device when needed.
Claim 30, Rahman/Kassayan disclose the claimed invention as set forth above in claim 1. Kassayan further teaches a housing (assembly 64/housing 62) which is configured to be bonded directly to the tooth of the patient (see par 95, which discloses bonding of the assembly placed within the housing to the surface of a tooth).
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Rahman in view of Kassayan as applied to claim 1 above, and further in view of Sears et al (US 2009/0286195).
Kassayan further teaches an additional transceiver or light emitter (transmitter assembly 22) configured to receive wireless signals from the attached electronic (par 85 discloses the assembly located outside of the mouth can be used to receive auditory signals via a wireless signal) for the purpose of providing constant communication between the exterior processor and the attached electronic (par 85).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify Rahman/Kassayan to have an additional transceiver or light emitter configured to receive wireless signals from the compliance device as taught by Kassayan for the purpose of providing external information.
However, Rahman/Kassayan fail to disclose the additional transceiver or light emitter being in a probe.
Sears teaches an additional or exterior light emitter or transceiver that is within a probe (par 20 discloses the hand-held detector includes a detector that wirelessly communicated and detects light optically or par 23 discloses the wand tip 16-2a that is an RF detector element, see figure 1)
As both Kassayan and Sears disclose additional transceiver or light emitters in external devices (par 86 of Kassayan discloses the transmitter may be in a watch, necklace, lapel, phone etc. and par 23 of Sears places the additional transceiver or light emitter within a wand/probe), as such it would be obvious to one of ordinary skill in the art, at the time of invention to substitute the various forms that include the additional transceiver or light emitters of Kassayan with the probe that includes the additional transceiver or light emitter of Sears to achieve the predictable results of communicating information from the compliance device to the operator/dentist.
Allowable Subject Matter
Claims 4-17, 31-33, and 35-46 allowed.
Claim 34 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: See office action mailed 8/1/2025 for detailed reason of allowance for claim 4. Claims 5-17 and 31-32 are indicated allowable based on claim dependency on claim 4.
Regarding claim 33, the closest prior art of record is Brawn (US 2017/0080249) discloses a system for a compliance device that is configured to be disposed within a patient’s mouth (par 251 discloses a microprocessor that has compliance), comprising: a sensor configured to detect an input (par 251 discloses the proximity detector which collects information regarding compliance), the compliance device storing said input and comprises transceiver and light emitter (par 251 discloses the compliance transmits data via Bluetooth or wireless mechanism) and a light therapy apparatus comprising a mouthpiece (see figure 47 and par 248 discloses the intra-oral apparatus 2100 is configure to be useful for light therapy), but the compliance device is incorporated into the light therapy apparatus. However, the prior art of record fails to disclose or render obvious the compliance device being configured to couple to the orthodontic appliance or to a tooth of the patient and the light therapy apparatus comprising a second transceiver or a second light emitter being configured to receive wireless signal from the compliance device, the signal comprising data associated with input detected by the sensor at the first time and the second time in combination with all additionally recited limitations of claim 33. Claims 34-46 are indicated allowable subject matter based on claim dependency.
Response to Arguments
Applicant's arguments filed 10/03/2025 have been fully considered but they are not persuasive. Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on the combination of reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 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
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772