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 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 (i.e., changing from AIA to pre-AIA ) 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) 1-2 and 6-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mueller et al. (US 2020/0188060).
Regarding claims 1-2: Mueller et al. (US ‘060) discloses a film clamping element having a film 12 extended between rings 14, 16 [abstract; 0060; 0067; Fig. 1], wherein the film 12 and rings 14, 16 are elastically deformable [0067]. Mueller et al. (US ‘060) discloses the film is made from an elastomer or soft silicone [0014]. Mueller et al. (US ‘060) discloses elastic bands 20, 22 [abstract; 0022; 0060; 0067; Fig. 1] which extend circularly around the film [0017] and are produced from the same material as the film by forming a film of several layers with one layer forming the elastic band in the shape of a ring (integral with film) [0042; 0044; 0073].
Mueller et al. (US ‘060) discloses the pressure exerted on the lips of the patient and the resulting wearing comfort depends on the materials used [0006-0007; 0010-0012; 0020]. Mueller et al. (US ‘060) does not specifically disclose the film having a modulus of elasticity of less than 2 KN/mm2 [instant claim 1]; a modulus of elasticity of more than 1 KN/mm2 [instant claim 2]. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claims 6-7: Mueller et al. (US ‘060) discloses the film is drawn towards the inside such that the ring is more prominent in the mouth which facilitates insertion of the film clamping element [0020].
Mueller et al. (US ‘060) does not specifically disclose the film has a coefficient of static friction µH < 0.4 and a coefficient of gliding friction µG ≤ 0.35 [instant claim 6]; the coefficient of static friction µH of the film and the coefficient of gliding friction µG of the film differ by less than 0.05 [instant claim 7]. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claim 8: Mueller et al. (US ‘060) discloses the film clamping element is configured for use in the mouth of a patient [0002-0003; 0017-0018].
Regarding claim 9: Mueller et al. (US ‘060) discloses the basic claimed film tensioning element [as set forth above with respect to claim 1].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Regarding claim 10: Mueller et al. (US ‘060) does not disclose a coating; i.e. the film clamping element is free of a coating [abstract; 0067].
Allowable Subject Matter
Claims 3-4 and 11-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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: Mueller et al. (US 2020/0188060) discloses a film clamping element having a film 12 extended between rings 14, 16 [abstract; 0060; 0067; Fig. 1], wherein the film 12 and rings 14, 16 are elastically deformable [0067]. Mueller et al. (US ‘060) discloses the film is made from an elastomer or soft silicone [0014]. Mueller et al. (US ‘060) does not disclose the film is made from a polyolefin, polyester or a polyamide. Mueller et al. (US ‘060) does not disclose a scan head of a scanner. Mueller et al. (US ‘060) does not disclose the method of instant claim 16.
Response to Arguments
Applicant's arguments filed 4/15/26 have been fully considered but they are not persuasive. The rejection of claims based upon Mueller et al. (US 2020/0188060) is maintained.
Mueller et al. (US 2020/0188060) was relied on for disclosing a film clamping element having a film 12 extended between rings 14, 16 [abstract; 0060; 0067; Fig. 1], wherein the film 12 and rings 14, 16 are elastically deformable [0067]. Mueller et al. (US ‘060) discloses the film is made from an elastomer or soft silicone [0014]. Mueller et al. (US ‘060) discloses elastic bands 20, 22 [abstract; 0022; 0060; 0067; Fig. 1] which extend circularly around the film [0017] and are produced from the same material as the film by forming a film of several layers with one layer forming the elastic band in the shape of a ring (i.e. integral with the film) [0042; 0044; 0073].
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 tensioning rings are injected molded at the top and bottom of the film) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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