The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
The following is a Final Office Action on the merits.
Response to Amendment
Acknowledgement is made to the amendment received February 11, 2026, amending Claims 5-11 and 15.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means”, “step”, or a generic placeholder but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “apparatus” in Claims 1-4, 11, and 12, “member” in Claims 1, 4-10, “tooth cleaning device” in Claim 2, “vibratory motion device” in Claim 3, and “device” in Claims 5-10 and 13.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
As necessitated by amendment, Claims 1-4 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Evans et al. US 2021/0085436 (hereafter Evans et al.) in view of design choice.
Regarding Claim 1, Evans et al. teaches:
1. (Previously Presented) An apparatus for use with a mouthpiece (mouthpiece 180) which is inserted into a user's mouth during use, comprising:
an extension (handle 104) which extends outward from the mouthpiece (Figure 1D);
a member (stabilization structure, Paragraph [0025]) having an end and extending from the extension (see discussion below) to a location where the end is in contact with the skin of the user while the mouthpiece is inserted into the user's mouth (Paragraph [0025] - The stabilization structure may be configured to engage with one or more of a wearer's chin, forehead, and cheeks).
Evans et al. discloses a stabilization structure in Paragraph [0025] that may be configured to engage with one or more of a wearer’s chin, forehead, and cheeks. However, Evans et al. does not describe how the stabilization structure extends on the device. As shown in Figure 1D, the device comprises a mouthpiece 180 and a handle 104. During operation, it is obvious that the mouthpiece is inserted into the mouth, leaving the handle extending outside the mouth. It would have been an obvious matter of design choice to one having ordinary skill before the effective filing date of the claimed invention that the stabilization structure, as described, would extend from device structure outside the mouth, therefore, it would have been obvious that the stabilization structure would extend from the handle 104 as claimed and have a surface that ends at the point of contact with the user’s face allowing it to provide the disclosed device stabilization support.
Regarding Claim 2, Evans et al. teaches:
2. (Previously Presented) The apparatus of claim 1 wherein the mouthpiece (mouthpiece 180) is a tooth cleaning device (cleans by applying cleaning fluid, Paragraph [0103]).
Regarding Claim 3, Evans et al. teaches:
3. (Previously Presented) The apparatus of claim 2 wherein the extension (handle 104) comprises a housing (housing of handle 104 shown in Figure 1D) containing a power source (optional battery, Paragraphs [0091] and [0093]) and/or a vibratory motion device (vibration mechanism, Paragraphs [0091] and [0093]).
Regarding Claim 4, Evans et al. teaches:
4. (Previously Presented) The apparatus of claim 1 wherein the end of the member (stabilization structure, Paragraph [0025]) contacts an area (Paragraph [0025] - The stabilization structure may be configured to engage with one or more of a wearer's chin) of a user's face between the user's bottom lip and chin when in use (note: stabilization on a “chin” needs to be located as claimed since the boundary of a chin is not precisely identifiable).
Regarding Claim 13, Evans et al. teaches:
13. (Previously Presented) A method for producing a device capable of stimulating nerves on the face of a user of a mouthpiece (mouthpiece 180) comprising:
attaching to the mouthpiece an extension (handle 104) extending from the mouthpiece (Figure 1D);and
providing a member (stabilization structure, Paragraph [0025]) extending from the extension (see discussion below) to a location where its end is capable of contacting the skin of the user while the mouthpiece is inserted into the user's mouth (Paragraph [0025] - The stabilization structure may be configured to engage with one or more of a wearer's chin, forehead, and cheeks).
Evans et al. discloses a stabilization structure in Paragraph [0025] that may be configured to engage with one or more of a wearer’s chin, forehead, and cheeks. However, Evans et al. does not describe how the stabilization structure extends on the device. As shown in Figure 1D, the device comprises a mouthpiece 180 and a handle 104. During operation, it is obvious that the mouthpiece is inserted into the mouth, leaving the handle extending outside the mouth. It would have been an obvious matter of design choice to one having ordinary skill before the effective filing date of the claimed invention that the stabilization structure, as described, would extend from device structure outside the mouth, therefore, it would have been obvious that the stabilization structure would extend from the handle 104 as claimed and have a surface that ends at the point of contact with the user’s face allowing it to provide the disclosed device stabilization support.
Allowable Subject Matter
Claims 5-12 and 14-15 are objected to as being dependent upon a rejected base claim but it would be allowable if rewritten to overcome the rejection(s) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Claim Objection
The Examiner has reviewed the Applicant’s amendments and found them satisfactory. Therefore, the Examiner withdraws the previous Claim Objection.
Rejections Under 35 U.S.C. 112(b)
The Examiner has reviewed the Applicant’s amendments and found them satisfactory. Therefore, the Examiner withdraws the previous rejections under 35 U.S.C. 112(b).
Rejections Under 35 U.S.C. 112(d)
The Examiner has reviewed the Applicant’s amendments and found them satisfactory. Therefore, the Examiner withdraws the previous rejections under 35 U.S.C. 112(d).
Rejections Under 35 U.S.C. 103
Applicant’s arguments with amendments, filed February 11, 2026, with respect to the 35 U.S.C. 103 rejection(s) Claims 1-4 and 13 under Evans et al. US 2021/0085436 have been fully considered and are not persuasive.
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., to stimulate nerve endings and/or apply pressure on pressure points to reduce gag reflex) 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). Therefore, the member having an end in contact with the skin of the user as claimed is taught by the Evans et al. device, which includes a stabilization structure engaging one or more of a wearer's chin, forehead, and cheeks. As presented, it would have been obvious that this stabilization structure would extend from the mouthpiece so that it is outside the mouth and touches the skin surface of the chin, forehead, or cheeks. The Applicant’s arguments that the structure of Evans et al. needs to provide nerve stimulation are moot.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC CARLSON whose telephone number is (571)272-9963. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm.
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/MARC CARLSON/Primary Examiner, Art Unit 3723