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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/09/2026 has been entered.
Response to Amendment
Applicant’s amendments to claims 1, 6-7, and 12 filed on 06/09/2026 are acknowledged by the Examiner.
Claims 2, 13, 18, and 20 remain cancelled.
Claims 1, 3-12, 14-17, and 19 are currently pending and are under examination.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In light of the amendments to the claims, the office action has been updated.
Claim Objections
Claim 6 is objected to because of the following informalities:
Regarding claim 6, “a top surface of said molar shim” in line 3 should be recited as “the upper surface of the at least two non-adjustable, removable, and stackable individual molar shims.”
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35
U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1, 3-4, 6, 10-12, 14-17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winter (US 2018/0085208 A1) in view of Cross, III et al. (referred to as “Cross III”) (US 5,865,619).
Regarding claim 1, Winter discloses a molar shim system (10) serving as an oral bite registration guide (see Figs. 1-7 and [0020]; bite registration device 10 is a molar shim system as shims 48,50,52 may be utilized and serve as an oral bite registration guide) comprising:
at least two bilateral posterior molar shim stacks (12+45+50) configured to not extend anterior to the bicuspids (see Figs. 1-6c; the pair of side bodies 12 on left and right sides each receive shims 48+50 and thus form two bilateral posterior molar shim stacks, which are capable of not extending anterior to the bicuspids, as when the bite registration is taken, it is taken of the patient’s first and second molars, and possibly the patient’s first and second bicuspids, see [0023]), the at least two bilateral posterior molar shim stacks comprising at least two non-adjustable, removable, and stackable individual molar shims (48+50) configured to receive at least one additional molar shim (52) (see Figs. 1-6c and [0027]; shims 48+50 are each two non-adjustable, removable, and stackable individual molar shims that are configured to receive shim 52 which is an additional molar shim), the at least two non-adjustable, removable and stackable individual molar shims (48+50) having smooth undersurfaces in which a mandible can slide (see Figs. 1-6c; the shims 48+50 each have smooth undersurfaces, as they are not rough in texture and may have only one opening 58, and the lower jaw or mandible can slide, also see [0030] as the patient may move their mandible forward), the smooth undersurfaces being configured to allow registration of protrusive and lateral jaw movement (see Figs. 1-7 and [0030]; the smooth undersurfaces are capable of allowing registration of protrusive and lateral jaw movement), the smooth undersurfaces being free of lateral interfaces, and being configured to have unrestricted horizontal, lateral, anterior, and asymmetrical movement of the mandible (see Figs. 1-7 and [0030]; the smooth undersurfaces of the shims 48+50 are free of lateral interfaces, and are capable of having unrestricted horizontal, lateral, anterior, and asymmetrical movement of the mandible), the at least two bilateral posterior molar shim stacks being configured to minimize a slant angle of the jaw so that an oral sleep appliance can dilate an airway thereby minimizing sleep apnea (see Figs. 1-7 and [0026]-[0027]; the pair of side bodies 12 + the shims 48+50 are configured to minimize a slant angle of the jaw as the shims 48+50 adjust the vertical relationship between the jaws and thus an oral sleep appliance can dilate an airway to minimize sleep apnea); the at least two non-adjustable, removable, and stackable individual molar shims having a planar upper surface (see Figs. 1-6c; the shims 48+50 each have a planar upper surface as the upper surface is level and lies in a two dimension plane); and
a shim coupler (14), configured to be partially extraoral, the shim coupler (14) being configured to avoid the contact surface of the patient’s teeth anterior to the bicuspids, such that the shim coupler (14) cannot register interference of vertical, lateral, protrusive, and asymmetrical jaw movement (see Figs. 1-6c; the strap 14 is a shim coupler as strap 14 connects the pair of side bodies 12 together, and strap 14 is capable of being partially extraoral depending on a user’s anatomy, as the strap 14 is slidably adjustable within structure 16, see [0024], and thus is capable of avoiding contact surface of the patient’s teeth anterior to the bicuspids, such that the strap 14 cannot register interferences of vertical, lateral, protrusive and asymmetrical jaw movement as the strap 14 is adjustable and depends on a patient’s anatomy).
Winter is silent on the at least two non-adjustable, removable, and stackable individual molar shims having a planar upper surface including at least one exposed protrusion, wherein the at least one exposed protrusion extends above a top of the planar upper surface, the at least one exposed protrusion configured to touch a contact surface of a patient’s maxillary teeth, thereby restricting lateral movement of a maxilla.
However, Cross III teaches analogous at least two non-adjustable, removable and stackable individual molar shims (272) (see Figs. 9-13; occlusal posterior pads 272 are each at least two non-adjustable, removable and stackable individual molar shims as the definition of shim is “a small object or piece of material used between two parts of something to make them fit together, or to prevent them rubbing against each other,” https://dictionary.cambridge.org/us/dictionary/english/shim#google_vignette” and is configured to receive the molars of a user and is placed in between the maxilla and mandible of a user), the at least two non-adjustable, removable, and stackable individual molar shims having a planar upper surface including at least one exposed protrusion (300), wherein the at least one exposed protrusion (300) extends above a top of the planar surface (see Figs. 9-13; the plurality of protrusions 300 is an exposed protrusion that extends above a top of the planar or flat surface of the occlusal posterior pads 272), the at least one exposed protrusion (300) configured to touch a contact surface of a patient’s maxillary teeth, thereby restricting lateral movement of a maxilla (see Figs. 9-13; the plurality of protrusions 300 are configured to touch a contact surface of a patient’s maxillary teeth, as best seen in Figs. 11 and 18b, thereby restricting lateral movement of a maxilla as the plurality of protrusions 300 help to keep the oral appliance in place), providing to keep the oral appliance in an optimal
position.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the at least two non-adjustable, removable, and stackable individual molar shims (48+50) in the device of Winter to include at least one exposed protrusion (300) on the planar upper surface that extends above the planar upper surface, and the at least one exposed protrusion configured to touch a contact surface of a patient’s maxillary teeth, thereby restricting lateral movement of a maxilla as taught by Cross III to have provided an improved molar shim system that provides to keep the oral appliance system in an optimal position.
Regarding claim 3, Winter in view of Cross III discloses the invention as discussed in claim 1. Winter in view of Cross III further discloses wherein the at least two bilateral posterior molar shim stacks are configured to be placed between upper and lower molar teeth to reduce or eliminate the slant angle of the jaw (see Figs. 1-6c of Winter and [0023], [0027] of Winter; the shim stacks 48+50 of Winter are configured to be placed between upper and lower molar teeth to reduce or eliminate the slant angle of the jaw, as the shim stacks 48+50 of Winter adjust the vertical relationship of the upper and lower jaw of the posterior/molar teeth).
Regarding claim 4, Winter in view of Cross III discloses the invention as discussed in claim 1. Winter in view of Cross III further discloses wherein the molar shim system (10 of Winter) is capable of accurately registering an inter-arch jaw position resulting from symmetric and asymmetric movement (see Figs. 1-6c of Winter and Abstract; the device 10 of Winter is capable of accurately registering an inter-arch jaw position resulting from symmetric and asymmetric jaw movement).
Regarding claim 6, Winter in view of Cross III discloses the invention as discussed in claim 1.
Cross III further teaches wherein the at least one exposed protrusion (300) includes at least two alignment pegs configured along the planar upper surface of the at least two non-adjustable, removable, and stackable individual molar shims (272) (see Figs. 9,11,14 which shows the plurality of protrusions 300 includes two alignment pegs configured along the planar upper surface of the posterior pads 272), providing a sufficient number of protrusions to keep the oral appliance system in an optimal position.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the at least one exposed protrusion of Winter in view of Cross III to include at least two alignment pegs (300) as taught by Cross III to have provided an improved molar shim system that provides a sufficient number of protrusions to keep the oral appliance system in an optimal position.
Regarding claim 10, Winter in view of Cross III discloses the invention as discussed in claim 1. Winter in view of Cross III further discloses further discloses wherein each non-adjustable, removable, and stackable individual molar shim (48+50+52 of Winter) has at least one shim coupler slot configured distally along a longitudinal axis (see Figs. 1-6c of Winter; the opening/slot in between tabs 56 of Winter of each of the shims 48+50+52 of Winter forms a shim coupler slot configured distally along a longitudinal axis of each of the shims 48+50+52 of Winter, as the opening/slot in between the tabs 56 of Winter are configured to mate with the sidewall guides 54 of Winter to connect the shims 48+50+52 of Winter to the strap 14 of Winter).
Regarding claim 11, Winter in view of Cross III discloses the invention as discussed in claim 1. Winter in view of Cross III further discloses wherein the shim coupler (14 of Winter) is comprised of a rectangular wire (see Figs. 1-4 of Winter; the strap 14 is rectangular in shape as the ends form a right angle, and is interpreted as a wire as the definition of wire is “something (such as a thin plant stem) that is wirelike,” https://www.merriam-webster.com/dictionary/wire, and thus strap 14 is wirelike).
Regarding claim 12, Winter in view of Cross III discloses the invention as discussed in claim 1. Winter in view of Cross III further discloses a method of establishing an interocclusal bite position for fabrication of a bite registration system comprising the following steps:
a) providing a molar shim system (10 of Winter), comprising the system of claim 1 (see claim 1, see Figs. 1-6c of Winter; device 10 of Winter is a molar shim system);
b) assembling at least one terminal end of the shim coupler (14 of Winter) that is configured to be partially extraoral into at least one shim coupler slot (16 of Winter) of the at least two bilateral posterior molar shim stacks (see Figs. 1-6c of Winter; a terminal end of strap 14 of Winter is assembled into structure 16 of Winter of the pair of bodies 12 of Winter);
c) inserting the molar shim system (10 of Winter) into a patient’s mouth until the at least two bilateral posterior molar shim stacks are positioned bilaterally over at least one rear molar, such that the patient’s jaw and teeth are placed into their desired anterior and lateral positions and desired vertical dimension (see Figs. 1-6c of Winter; when device 10 of Winter is inserted into a patient’s mouth, the pair of bodies 12 of Winter are positioned bilaterally over at least one rear molar, see [0023] of Winter, such that the patient’s jaw and teeth are placed into their desired anterior and lateral positions and desired vertical dimension, see [0030] of Winter);
d) checking a bite slant and adding at least one additional shim if necessary (see [0030], [0027] and Figs. 1-7; once device 10 is inserted into a patient’s mouth, the dentist may adjust the positioning of the device to appropriately space the jaws to correct proportion and thus is checking a bite slant by adding shims 48 to either or both maxillary 22 and mandibular bite surfaces 24);
e) installing an impression putty onto the at least two bilateral posterior molar shim stacks (see [0032], [0007] and Figs. 1-7; a bite registration material, which may be polyvinyl siloxane which is known in the art to be an impression putty, see [0007], is installed onto the pair of bodies 12+shims 48+50 of Winter that form the bilateral posterior molar shim stacks, as the bite registration material enters into spaces 35,37 and flows around the patient’s maxillary and/or mandibular teeth)
f) having the patient bite down, such that the patient’s inter-arch jaw position is registered (see [0032], [0033]; a patient bites down and the bite registration material flows around one or more of the patient’s maxillary and/or mandibular teeth, such that the patient’s inter-arch jaw position is registered and ready to be used in the manufacture of a dental appliance).
Regarding claim 14, Winter in view of Cross III discloses the invention as discussed in claim 1. Winter in view of Cross III further discloses wherein the molar shim system (10 of Winter) is an oral bite registration guide configured to direct a motion and position of the mandible (see Figs. 1-6c of Winter; the device 10 of Winter is an oral bite registration guide as the device 10 of Winter is capable of directing a motion and position of the mandible, see Abstract of Winter).
Regarding claim 15, Winter in view of Cross III discloses the invention as discussed in claim 14. Winter in view of Cross III further discloses wherein the bite registration guide is configured to be temporarily placed in a mouth to allow at least one movable parameter including at least one of the mandible, soft palate, hyoid bone and pharynx to be optimally positioned, such that a patient’s dental arches are stabilized for fixed registration of a beneficial arch position and the molar shim system (10 of Winter) is removed after registration of the beneficial arch position (see Figs. 1-6c of Winter; the device 10 of Winter is temporarily placed in a mouth to allow at least one movable parameter including at least one of the mandible, soft palate, hyoid bone and pharynx to be optimally positioned, such that a patient’s dental arches are stabilized for fixed registration of a beneficial arch position and the device 10 of Winter is removed after registration of the beneficial arch position, see Abstract and [0030], [0032] of Winter).
Regarding claim 16, Winter in view of Cross III discloses the invention as discussed in claim 1. Winter in view of Cross III further discloses wherein the shim coupler (14 of Winter) is retained in position by the at least two bilateral posterior molar shim stacks (12+48+50 of Winter) (see Figs. 1-6c of Winter; the strap 14 of Winter is retained in position by the pair of side bodies 12 of Winter which is part of the bilateral posterior molar shim stacks).
Regarding claim 17, Winter in view of Cross III discloses the invention as discussed in claim 12. Winter in view of Cross III further discloses registering the bite recording for appliance fabrication (see [0033]; the recorded bite registration is ready to be used in the manufacture of a dental appliance).
Regarding claim 19, Winter in view of Cross III discloses the invention as discussed in claim 12. Winter in view of Cross III further discloses herein the impression putty is installed onto a maxillary surface of the at least two bilateral posterior molar shim stacks such that a portion of the patient’s mouth anterior to the at least two bilateral posterior molar shim stacks is free of the impression putty when recording the interocclusal bite position (see Figs. 1-7 and [0032]-[0033] of Winter; the bite registration material, which may be polyvinyl siloxane which is known in the art to be an impression putty, see [0007] of Winter, is installed onto a maxillary surface of the molar side bodies/shim stacks 12+48,50 of Winter, as the bite registration material enters into space 35 of Winter, see Fig. 1 of Winter, which is a maxillary surface, such that a portion of the patient’s mouth anterior to the at least two bilateral posterior molar shim stacks 12+48,50 of Winter is free of the bite registration material when recording the interocclusal bite position, as the bite registration material is only for the side bodies 12 of Winter).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winter in view of Cross III further in view of Morgan (US 2018/0360579 A1).
Regarding claim 5, Winter in view of Cross III discloses the invention as discussed in claim 1. Winter in view of Cross III further discloses the at least two bilateral posterior molar shim stacks (12+48+50 of Winter) having rounded corners for patient comfort (see Figs. 6a-6c of Winter which shows the shims 48+50 of Winter having rounded corners).
Winter in view of Cross III is silent on wherein the at least two bilateral posterior molar shim stacks are made of a rigid material including, but not limited to, plastic or epoxy.
However, Morgan teaches an analogous at least two bilateral posterior molar shim stacks (44) made of a rigid material including, but not limited to, plastic or epoxy (see Figs. 1, 7, and 8; tab 44 may stacked with multiple tabs, see [0037], and thus forms an analogous at least two bilateral posterior molar shim stacks, and tab 44 may be made of a hard or rigid polymer material or nylon polymer which is a plastic), providing molar shim stacks that are durable and able to withstand a patient’s bite.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the material of the at least two bilateral posterior molar shim stacks (12+48+50 of Winter) in the device of Winter in view of Cross III to be made of a rigid material including, but not limited to, plastic or epoxy, as taught by Morgan to have provided an improved molar shim stack that is durable and able to withstand a patient’s bite.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winter in view of Cross III further in view of Sims et al. (referred to as “Sims”) (US 2008/0202530 A1).
Regarding claim 7, Winter in view of Cross III discloses the invention as discussed in claim 6.
Winter in view of Cross III is silent on wherein each non-adjustable, removable, and stackable individual molar shim has at least two alignment apertures configured along a bottom surface of said non-adjustable, removable, and stackable individual molar shim, the at least two alignment apertures configured to engage said at least two alignment pegs on said planar upper surface of a second non-adjustable, removable, and stackable individual molar shim for stacking.
However, Sims teaches an analogous individual molar shim (332,334) (see Fig. 6A and [0046]; spacer platforms 332,334 are analogous molar shims as the definition of shim is “a small object or piece of material used between two parts of something to make them fit together, or to prevent them rubbing against each other,” https://dictionary.cambridge.org/us/dictionary/english/shim#google_vignette,” and spacer platforms 332,334 are small objects used in between upper and lower teeth of a user), wherein each individual molar shim (332,334) has at least two alignment apertures configured along a bottom surface of said individual molar shims (332, 334), the at least two alignment apertures configured to engage said at least two alignment pegs (338) on said planar upper surface of a second individual molar shim for stacking (see Figs. 6A-7 and [0046]-[0048]; the guide rods 338 extend through the lower spacer platform 332 to the upper spacer platform 334 as seen in Fig. 6A, and thus by paragraph [0046] it is evident that each of the guide rods 338 extends through an alignment apertures, and thus there are at least two alignment apertures configured along a bottom surface of the upper spacer platform 334 and lower spacer platform 332, as Fig. 6B also shows the bottom surface of the spacer platform 332 and the apertures are configured to engage the guide rods 338 on the top surface of upper spacer platform 334 for stacking), providing a mechanism to make stacking of the molar shims together more stable when placed in a user’s mouth.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the non-adjustable, removable, and stackable individual molar shims in the device of Winter in view of Cross III to have at least two alignment apertures configured along a bottom surface of said non-adjustable, removable, and stackable individual molar shim, such that the at least two alignment apertures are configured to engage said at least two alignment pegs on said top surface of a second non-adjustable, removable, and stackable individual molar shim for stacking as taught by Sims to have provided an improved molar shim system that provides a mechanism to make stacking of the molar shims together more stable when placed in a user’s mouth.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winter in view of Cross III in view of Sims further in view of FALKEL (US 2018/0078343 A1).
Regarding claim 8, Winter in view of Cross III further in view of Sims discloses the invention as discussed in claim 7.
Winter in view of Cross III further in view of Sims is silent on wherein the at least two alignment apertures have a diameter slightly larger than the at least two alignment pegs to allow for a friction fit therebetween.
However, FALKEL teaches analogous alignment apertures (female component) and an analogous alignment pegs (male component), wherein the at least two alignment apertures have a diameter slightly larger than the at least two alignment pegs to allow for a friction fit there between (see [0090]; the maxillary blocks 12 and mandibular blocks 14 can have an attachment mechanism, which includes male components, e.g., a protrusion, which is an analogous alignment peg as the protrusions are used to fasten or attach into a particular place, and female components, e.g. a hole, which is an analogous alignment aperture as the hole receives the protrusions and form an interference or friction fit, as the dimensions of the holes can be slightly larger than the protrusions, as the male component can have a form factor that is slightly smaller than the female component to generate an interference fit), providing an interference fit so that there is no need for other attachment mechanisms for a secure fit.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the diameter of the at least two alignment apertures of Winter in view of Cross III further in view of Sims to be slightly larger than the at least two alignment pegs as taught by FALKEL to have provided an improved molar shim system that provides an interference fit so that there is no need for other attachment mechanisms for a secure fit. Therefore, the combination of Winter in view of Cross III in view of Sims further in view of FALKEL results in the at least two alignment apertures have a diameter slightly larger than the at least two alignment pegs to allow for a friction fit there between (as previously modified, the alignment apertures of Sims have diameters that are slightly larger than the plurality of protrusions 300 of Cross III and thus allow for an interference or friction fit).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winter in view of Cross III in view of Morgan further in view of Fallon et al. (referred to as “Fallon”) (US 2012/0145166 A1).
Regarding claim 9, Winter in view of Cross III discloses the invention as discussed in claim 1.
Winter in view of Cross III is silent on wherein each non-adjustable, removable, and stackable individual molar shim has a shim thickness indicia embossed onto a shim surface.
However, Morgan teaches an analogous non-adjustable, removable, and stackable molar shim (44), wherein each non-adjustable, removable, and stackable individual molar shim (44) has a shim thickness indicia onto a shim surface (tabs 44 are analogous non-adjustable, removable, and stackable molar shims as they are worn at the back of a user’s mouth near the molars and provide vertical spacing between the upper and lower jaw, see Figs. 1, 8, 9, and [0038] and are stackable, removable, and non-adjustable, see [0037], and each individual tabs 44 may be provided with indicia of the thickness of the tabs 44 imparted on a surface or shim surface of the given tab, see [0046] and Fig. 16).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided each non-adjustable, removable, and stackable individual molar shim (48+50 of Winter) in the device of Winter in view of Cross III with a shim thickness indicia onto a shim surface as taught by Morgan to have provided an improved molar shim system that allows an easy way for a user or dental professional to know the exact thickness of the molar shim.
Winter in view of Cross III further in view of Morgan is silent on indicia being embossed.
However, Fallon teaches an analogous indicia (58) (see Fig. 3), wherein indicia (58) is embossed (see [0036] and Fig. 3; indicator 58 is an analogous indicia and is molded into a surface, or embossed as the definition of emboss is “to mold or carve in relief,” https://www.wordnik.com/words/emboss), providing to be more clearly visible to a user.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the shim thickness indicia in the device of Winter in view of Cross III further in view of Morgan to be embossed onto a shim surface as taught by Fallon to have provided an improved molar shim system that provides markings that are more clearly visible to a user.
Conclusion
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/ROBIN HAN/Examiner, Art Unit 3786
/KARI K RODRIQUEZ/Primary Patent Examiner, Art Unit 3786
