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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/5/2026 has been entered.
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 8-13 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 8 recites “application of both the non- ablative laser radiation and the whitening treatment, followed by a remineralization cycle comprising fluoride, further results in a microhardness measurement of at least 18% greater relative to the treatment surface with only the whitening treatment applied thereto followed by the remineralization cycle without application of the non-ablative laser radiation.”, it is unclear if these are functional steps performed by an operator or controller of the system, such as the laser or if these are steps performed by the system that result in the provided microhardness. For the purpose of examination, the limitation is interpreted as an outcome of a method using the system.
Claim 9 recites “application of both the non- ablative laser radiation and the whitening treatment further results in an inhibited demineralization of at least 64% greater relative to the treatment surface without application of the non-ablative laser radiation” it is unclear if these are functional steps performed by an operator or controller of the system, such as the laser or if these are steps performed by the system that result in the provided inhibited demineralization. For the purpose of examination, the limitation is interpreted as an outcome of a method using the system.
Claim 10 and 11 recites “application of both the non- ablative laser radiation and the whitening treatment further results in a Vita shade guide measurement of at least 6 times greater relative to the treatment surface without application of the non-ablative laser radiation” it is unclear if these are functional steps performed by an operator or controller of the system, such as the laser or if these are steps performed by the system that result in the provided vita shade guide measurement. For the purpose of examination, the limitation is interpreted as an outcome of a method using the system.
Claim 12 recites “application of the non-ablative laser radiation and thereafter the whitening treatment results in a microhardness measurement of at least 18% greater relative to a treatment surface with only the whitening treatment applied thereto without application of the non-ablative laser radiation, and wherein the microhardness measurement is a Knoop hardness number measured by a microhardness tester” it is unclear if these are functional steps performed by an operator or controller of the system, such as the laser or if these are steps performed by the system that result in the provided microhardness. For the purpose of examination, the limitation is interpreted as an outcome of a method using the system.
Claim 13 recites “the whitening treatment results in a Vita shade guide measurement of at least 6 times greater relative to a treatment surface without application of the non-ablative laser radiation and the whitening treatment, and wherein the Vita shade guide measurement is obtained by manually matching tooth shade to a shade guide” it is unclear if these are functional steps performed by an operator or controller of the system, such as the laser or if these are steps performed by the system that result in the provided vita shade guide measurement. For the purpose of examination, the limitation is interpreted as an outcome of a method using the system.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 12 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kirsch et al (US 5,800,165).
Regarding claim 12, Kirsch discloses a system for treating a dental hard tissue (col 6, lines 5-7 discloses the dental instrument being used to bleach discolored teeth), comprising:
a laser source for generating a laser beam (col 4, lines 7-9 discloses a laser light source 27 and col 7, lines 25-29 discloses the instrument using the viewing channel 24 to produce a laser light); and
a handpiece (dental instrument 10) comprising:
at least one optic (optic delivering fiber 23) in optical communication with the laser source (col 4, lines 6-13 discloses the optic delivering fiber being in communication with the laser light source) and adapted to define and direct a non-ablative laser radiation to a treatment surface of the dental hard tissue (prior art provides several examples of adaptions to deliver a non-ablative laser radiation in addition to the ablative laser radiation: for example col 4, lines 27-40 discloses the delivery of laser energy capable of sterilizing the decaying and surrounding tissue in addition to the ablating and cutting capabilities and col 7, lines 33-55 disclose the delivery of laser energy to induce chemical decomposition and bleach or treat the surface of the teeth), and
a conduit (irrigation channel 16) adapted to apply a whitening treatment to the treatment surface (col 2, lines 53-54 discloses the irrigation channel being used to deliver a bleaching solution),
The limitation “application of the non-ablative laser radiation and thereafter the whitening treatment” is considered intended use of the claimed invention. As all of the structural limitations are disclosed are capable of being executed. The recitation of the intended use of a claimed invention must result in a structural difference between the claimed invention as the prior art to patentably distinguish the claimed invention from the prior art. As Kirsch is capable of performing the intended use of the claimed invention, and the recitation of the intended use does not result in a structural difference.
The limitation “a resulting microhardness measurement of at least 18% greater than the treatment surface without application of the non-ablative laser radiation, after bleach applications and a remineralization cycle comprising fluoride” is considered the results of the claimed invention and achievable by the prior art, as there is no claimed structural or functional limitation differentiating from the prior art. (See MPEP 2145, II)
In regard to claim 13, Kirsch discloses a system for treating a dental hard tissue (col 6, lines 5-7 discloses the dental instrument being used to bleach discolored teeth), comprising:
a laser source for generating a laser beam (col 4, lines 7-9 discloses a laser light source 27 and col 7, lines 25-29 discloses the instrument using the viewing channel 24 to produce a laser light); and
a handpiece (dental instrument 10) comprising:
at least one optic (optic delivering fiber 23) in optical communication with the laser source (col 4, lines 6-13 discloses the optic delivering fiber being in communication with the laser light source) and adapted to define and direct a non-ablative laser radiation to a treatment surface of the dental hard tissue (prior art provides several examples of adaptions to deliver a non-ablative laser radiation in addition to the ablative laser radiation: for example col 4, lines 27-40 discloses the delivery of laser energy capable of sterilizing the decaying and surrounding tissue in addition to the ablating and cutting capabilities and col 7, lines 33-55 disclose the delivery of laser energy to induce chemical decomposition and bleach or treat the surface of the teeth), and
a conduit (irrigation channel 16) adapted to apply a whitening treatment to the treatment surface (col 2, lines 53-54 discloses the irrigation channel being used to deliver a bleaching solution),
The limitation “application of the non-ablative laser radiation and thereafter the whitening treatment” is considered intended use of the claimed invention. As all of the structural limitations are disclosed are capable of being executed. The recitation of the intended use of a claimed invention must result in a structural difference between the claimed invention as the prior art to patentably distinguish the claimed invention from the prior art. As Kirsch is capable of performing the intended use of the claimed invention, and the recitation of the intended use does not result in a structural difference.
The limitation “further results in a Vita shade guide measurement of at least 6 times greater relative to the treatment surface without application of the non-ablative laser radiation.” is considered as a result of using the claimed invention and achievable by the prior art, as there is no claimed structural or functional limitation differentiating from the prior art.
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 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kirsch et al.
Regarding claim 1, Kirsch discloses a system for treating a dental hard tissue (col 6, lines 5-7 discloses the dental instrument being used to bleach discolored teeth), comprising:
a laser source for generating a laser beam (col 4, lines 7-9 discloses a laser light source 27 and col 7, lines 25-29 discloses the instrument using the viewing channel 24 to produce a laser light); and
a handpiece (dental instrument 10) comprising:
at least one optic (optic delivering fiber 23) in optical communication with the laser source (col 4, lines 6-13 discloses the optic delivering fiber being in communication with the laser light source) and adapted to define and direct a non-ablative laser radiation to a treatment surface of the dental hard tissue (prior art provides several examples of adaptions to deliver a non-ablative laser radiation in addition to the ablative laser radiation: for example col 4, lines 27-40 discloses the delivery of laser energy capable of sterilizing the decaying and surrounding tissue in addition to the ablating and cutting capabilities and col 7, lines 33-55 disclose the delivery of laser energy to induce chemical decomposition and bleach or treat the surface of the teeth) ,
a conduit (irrigation channel 16) adapted to apply a whitening treatment to the treatment surface (col 2, lines 53-54 discloses the irrigation channel being used to deliver a bleaching solution),.
Kirsch fails to explicitly disclose the whitening treatment comprises application of at least one of bleach or hydrogen peroxide for at least ten minutes and the non-ablative laser radiation and the whitening treatment resulting in ∆E measurement of at least 2.5 times greater relative to the treatment surface with only the whitening treatment applied thereto without application of the non- ablative laser radiation, wherein ∆E represents a change in color of the treatment surface and ∆E between a pair of spectroscopic measurements is calculated by
∆
E
=
L
2
-
L
1
2
+
a
2
-
a
1
2
+
b
2
-
b
1
2
, where L represents lightness, a represents redness-greenness of the color, and b represents yellowness-blueness of the color.
However, Kirsch discloses the laser system with a handpiece that comprises at least one optic and conduit (see figure 1), the application of non-ablative laser radiation and an application of bleach (col 7, lines 32-55), the whitening treatment comprises application of at least one of bleach or hydrogen peroxide for a period of time (col 2, lines 52-56 discloses the application of bleach but does not give a specific time, however this limitation is interpreted as intended use of the claimed invention, as the prior art discloses the application of bleach it is capable of allowing the bleach to be on the surface of the tooth for a given amount of time) and that the application of non-ablative laser radiation to a bleach/peroxide agent results in increased absorption, sterilization and whitening (col 7, lines 32-55). Establishing that the application of the non-ablative laser radiation and whitening treatment are result effective variables.
As such it would be obvious to one of ordinary skill in the art, at the time of applicants filing to modify the amount of whitening treatment of Kirsch to allow application of bleach or hydrogen for at least ten minutes, as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Additionally, as Kirsch discloses the structure of a handpiece, a delivery system of whitening treatment and a non-ablative laser having a resulting ∆E measurement of at least 2.5 times greater relative to the treatment surface with only the whitening treatment applied thereto without application of the non- ablative laser radiation, wherein ∆E represents a change in color of the treatment surface and ∆E between a pair of spectroscopic measurements is calculated by
∆
E
=
L
2
-
L
1
2
+
a
2
-
a
1
2
+
b
2
-
b
1
2
, where L represents lightness, a represents redness-greenness of the color, and b represents yellowness-blueness of the color is considered the results of the claimed invention and achievable by the prior art, as there is no claimed structural or functional limitation differentiating from the prior art.
Regarding claim 11, Kirsch discloses the claimed invention as set forth above in claim 1 and further discloses including a system configured or capable of application of the non-ablative laser radiation and whitening treatment (col 7, lines 33-55). The limitation “further results in a Vita shade guide measurement of at least 6 times greater relative to the treatment surface without application of the non-ablative laser radiation.” is considered the results of the claimed invention and achievable by the prior art, as there is no claimed structural or functional limitation differentiating from the prior art.
Claims 2-6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kirsch as applied to claim 1 above, and further in view of Groves, JR. et al (US 2018/0325622).
Regarding claim 2, Kirsch fails to disclose the laser beam comprising wavelengths in the range being between 9-11 microns
Groves teaches a system for treating dental hard tissue (par 4 discloses the invention relates to a system for treating dental hard tissue), comprising a laser source for generating a laser beam (par 4 discloses the system includes a laser source for generating at least one pulse of a laser beam), at least one optic in optical communication with the laser source (par 4 discloses the optic in optical communication with the laser source) and adapted to define and direct a non-ablative laser radiation to a treatment surface of the dental hard tissue (abstract discloses treatment parameters which treat the hard tissue without melting or ablating the tissue; par 76 discloses the surface temperature being above the lowest treatment threshold but below the melting ablating temperature threshold), the laser beam comprise a wavelength in a range from 8-12 microns (par 5) for the purpose of providing surface modification without local fluences or hot spots (par 77).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kirsch to have the laser beam comprise a wavelength in a range from 8-12 microns as taught by Groves for the purpose of providing surface modification without local fluences or hot spots (par 77).
Kirsch/Groove fail to disclose the smaller range 9-11 microns, however it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention to modify the wavelength range of Groves from 8-12 microns to 9-11 microns, since it has been held that that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In regard to claim 3, Kirsch fails to disclose the at least one optic comprises a galvanometer.
However, Groves further teaches the at least one optic comprises a galvanometer (par 103) for the purpose of controlling the laser beam (par 103).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify Kirsch to have at least one optic comprises a galvanometer as taught by Groves for the purpose of controlling the laser beam.
In regard to claim 4, Groves further teaches the at least one optic further comprises a turning mirror (par 25 discloses a partially transmissive mirror which is a type of turning mirror) for the reasons set forth above.
In regard to claim 5, Groves further teaches non-ablative laser radiation comprises a fluence profile at a focus having: a maximum local fluence less than an upper threshold fluence, the upper threshold fluence defined as a minimum fluence that causes a surface modification of the dental hard tissue, and at least one other local fluence greater than a lower threshold fluence, the lower threshold fluence defined as a fluence that causes at least one of (i) acid dissolution and (ii) decrease in an amount of surface carbonate (par 4) for the purpose of providing surface modification without local fluences or hot spots (par 77).
In regard to claim 6, Kirsch further discloses the surface modification comprises at least one of melting or ablation (col 2, lines 35-37).
In regard to claim 8, Kirsch discloses the claimed invention as set forth above in claim 1, including a system configured or capable of application of the non-ablative laser radiation and whitening treatment (col 7, lines 33-55), but fails to disclose a system which is capable of following up with a remineralization cycle comprising fluoride.
However, Groves teaches the application of both the non-ablative laser radiation, whitening treatment and remineralization cycle with fluoride (par 123 discloses the laser treatment followed by whitening agent activation and par 124 discloses the use of fluoride for remineralization) for the purpose of increasing resistance to cavities and erosion (par 124).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify Kirsch to have the system which is capable of following up with a remineralization cycle comprising fluoride as taught by Groves for the purpose of increasing resistance to cavities and erosion.
The limitation “a resulting microhardness measurement of at least 18% greater than the treatment surface without application of the non-ablative laser radiation, after bleach applications and a remineralization cycle comprising fluoride” is considered the results of the claimed invention and achievable by the prior art, as there is no claimed structural or functional limitation differentiating from the prior art.
Regarding claim 9, Kirsch/Groves discloses the claimed invention as set forth above in claim 8. Kirsch further discloses including a system configured or capable of application of the non-ablative laser radiation and whitening treatment (col 7, lines 33-55). The limitation “further results in an inhibited demineralization of at least 64% greater relative to the treatment surface without application of the non-ablative laser radiation” is considered the results of the claimed invention and achievable by the prior art, as there is no claimed structural or functional limitation differentiating from the prior art.
Regarding claim 10, Kirsch/Groves discloses the claimed invention as set forth above in claim 8. including a system configured or capable of application of the non-ablative laser radiation and whitening treatment (col 7, lines 33-55). The limitation “further results in a Vita shade guide measurement of at least 6 times greater relative to the treatment surface without application of the non-ablative laser radiation.” is considered the results of the claimed invention and achievable by the prior art, as there is no claimed structural or functional limitation differentiating from the prior art.
Response to Arguments
Applicant's arguments filed 02/05/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, applicant argues on pages 2-3 that it would be non-obvious to one of ordinary skill to modify the ablative system of Kirsch with the non-ablative system of Grove Jr because they perform “diametrically opposed function”. The examiner does not find this argument persuasive as both Kirsch and Grove disclose treatment of hard tissue, the system of Kirsch discloses an ablative operation (see above) the system of Grove is disclosed as capable of both ablative and non-ablative operation with the disclosed structure (par 7 discloses the invention can include some ablation and abstract discloses the use of non-ablative operation).
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.,” the structure and the process parameters (see Figure 4) that enable the attainment of the claimed high E measurements” and “a conduit adapted to apply a whitening treatment to a treatment surface in a quantity sufficient to achieve the high E measurement recited in independent”) 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).
Applicant argues that the prior art fails to disclose the subject matter of claim 1, because neither discloses the resulting change in E measurement from the application of both the non-ablative laser radiation and the whitening treatment. However, the prior art Kirsch discloses the application of non-ablative radiation and whitening treatment (see above), the claims recite the change in E measurement is a result of applying the non-ablative radiation and whitening treatment but fails to disclose if this is a result of a functional or structural element of the claimed invention. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). It is further noted that the effectiveness of the whitening treatment is dependent of the patient’s response, as everyone responds differently to bleaching treatment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANNEL N BELK whose telephone number is (571)272-9671. The examiner can normally be reached Mon. -Fri. 11:30 am - 3:30 pm.
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/S.N.B./Examiner, Art Unit 3772
/HEIDI M EIDE/Primary Examiner, Art Unit 3772
3/9/2026