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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the at least one optic comprising a galvanometer or a turning mirror as disclosed in claims 3 and 4 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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, 3, 5-6, 8, 10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kirsch (US 5,800,165) in view of Groves, JR. et al (US 2018/0325622).
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 (a laser light source 27) for generating a laser beam (col 7, lines 25-29 discloses the instrument using the viewing channel 24 to produce a laser light),
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 from the laser source 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 disclose the light beam comprising a wavelength in a range from 9 microns to 11 microns, 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).
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).
Additionally, as Kirsch/Groves 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
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. It is further noted that the change in color is dependent on the types of stains and individual reaction to treatments as not everyone response equally to whitening treatment.
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 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, Groves further discloses the surface modification comprises at least one of melting or ablation (par 5).
In regard to 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), 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.
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).
Kirsch fails to disclose the laser beam comprising a wavelength in a range from 9 micorns to 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).
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).
Kirsch fails to disclose the laser beam comprising a wavelength in a range from 9 micorns to 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).
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kirsch in view of Groves et al as applied to claim 1 above, and further in view of Courtin et al (US 2016/0157958).
Regarding claim 4, Kirsch/Groves fails to disclose the at least one optic further comprises a turning mirror.
However, Courtin teaches the combination of a galvometer with a turning mirror (par 26) for the purpose of controlling the path of the laser beam (par 26).
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/Groves to have the at least one optic further comprise a turning mirror as taught by Courtin for the purpose of controlling the path of light for a desired delivery of energy or detected light.
Response to Arguments
Applicant's arguments filed 5/18/2026 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 that there is no motivation to combine the disclosure of Kirsch and Groves on page 8, which in summary stated that the modification of Kirsch to have the laser generate a laser beam comprising a wavelength in a range from 9 micrometer to 11 micrometers is non-obvious because Kirsch discloses the forming of a hole and treatment of the hole and Groves discloses use of non-ablative laser radiation. The examiner does not find this argument persuasive, as Kirsch also discloses the laser beam is capable of “photolyzing the bleaching solution by delivering laser light”, which means the laser is functionally capable of performing other task than ablation and thus providing motivation to modify the laser source to be able to functionally produce a laser beam within the taught wavelength range of Groves, which can be used both ablatively or non-ablatively in a chemical reaction as set forth above. Additionally, 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 difference between the Kirsch and Groves is significant enough to make it non-obvious, such as the external abrasives of Kirsch, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The claims do not disclose or require that no abrasives be included on the system, the claim requires “at least one optic in optical communication with the laser source and adapted to define and direct a non-ablative laser radiation from the laser source to a treatment surface of the dental hard tissue” which is addressed in the rejection above. The use of Kirsch to create a hole does not render unobvious the combination/addition of a non-ablative laser radiation created by an optics and set within the desired wavelength as set taught by Groves above. Furthermore, Kirsch disclosure of rasp does not eliminate obviousness of non-ablative hard tissue treatment as set forth in Groves. The disclosed elements of the rasps of Kirsch does not teach away or make the combination of Groves and Kirsch inoperable.
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
10/8/2026
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