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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/09/2026 has been entered.
Response to Arguments
Claim Rejections Under 35 U.S.C. 102
Applicant’s arguments filed on 02/09/2026 have been fully considered but are not persuasive.
Applicant argues that Yoshida does not show all three layers positioned between the electronic device and the set of teeth. Examiner respectfully disagrees, as shown in Examiner FIG. 1 all three layers (1, 3, 4) of Yoshida are positioned between the electronic device (2) and the set of teeth (5; see Examiner FIG. 1 which shows all three layers positioned between the two dashed lines, i.e. “between the electronic device and the set of teeth”).
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Claim Rejections Under 35 U.S.C. 103
Applicant’s arguments filed on 02/09/2026 regarding Yoshida and Utley have been acknowledged but are considered moot, given that amended claim 1 is anticipated by Yoshida as discussed above.
Claim Rejections - 35 USC § 101
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-11 and 13-16 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
In re claim 1, the limitation “wherein all three layers are positioned between the electronic circuit and the set of teeth” implies that “the set of teeth” is a part of the claimed invention. As stated in MPEP 2105(III), claims directed to or encompassing a human organism are excluded from patentability. For the purposes of examination, the limitation “wherein all three layers are positioned between the electronic circuit and the set of teeth” will be interpreted to mean “wherein all three layers are configured to be positioned between the electronic circuit and the set of teeth”.
Claim Objections
Claims 3 and 4 are objected to because of the following informalities. Appropriate correction is required.
In re claim 3, a period is missing from the end of the limitation.
In re claim 4, “poly(meth)acrylate” should read “polymethacrylate”.
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.
Claim 4 is 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.
In re claim 4, the limitation “wherein the second material comprises a millable material comprising poly(meth)acrylate, polycarbonate or ceramic”, raises a question as to what is required by the claim. Specifically, the limitation as written can be interpreted in two ways :
wherein the second material comprises
a millable material comprising poly(meth)acrylate,
polycarbonate, or
ceramic
wherein the second material comprises a millable material comprising
polymethacrylate,
polycarbonate or
ceramic.
For the purposes of examination, the limitation “wherein the second material comprises a millable material comprising poly(meth)acrylate, polycarbonate or ceramic” will be interpreted according to interpretation (i).
In re claim 15, Examiner notes that claim 14 (from which claim 15 depends) does not claim “an electronic circuit”. Specifically, claim 14 requires that the circuit housing comprise an inner layer of a first material for waterproof enclosure of an electronic circuit, not the electronic circuit itself. Therefore, for examination purposes, the limitation of claim 15 ( “wherein the electronic circuit is enclosed by the first material”) will be interpreted as the method according to claim 14 further comprising enclosing the electronic circuit in the first material.
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 1-5, 8, 10, 11 and 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshida et al. (US 2021/0282651).
In re claim 1, Yoshida discloses a circuit housing (Examiner FIG. 1: device on tooth) for a wearable intraoral application (abstract), comprising
an inner layer (3) of a first material ([0076, 0077]: “silicone resin or a methacrylate”) for waterproof enclosure of an electronic circuit (2; [0039]; Examiner notes that the first material is a silicone resin or methacrylate [0076] both of which are waterproof); and
an outer layer (1) of a second material ([0062]: “thermoplastic polymeric compound”) comprising a spatially fitting surface (FIG 1: bottom surface of 1) for fitting the circuit housing to a set of teeth ([0063]; FIG. 1), which at least partially covers the first material (FIG. 1);
an intermediate layer (4) for bonding the inner layer and the outer layer [0078, 0080];
wherein the spatially fitting surface of the outer layer is adapted to fit geometrically to the set of teeth ([0063]; FIGS. 1-3),
wherein all three layers are positioned between the electronic circuit and the set of teeth (Examiner FIG. 1).
In re claim 2, Yoshida discloses wherein the first material comprises at least one protective varnish comprising
silicone [0076],
methacrylate resin [0076],
acrylate resin,
urethane resin,
epoxy resin,
parylene, or
mixtures thereof.
In re claim 3, Yoshida discloses wherein the second material comprises at least one 3D-printable material [0071] comprising light-polymerizable resin comprising
methacrylate resin,
acrylate resin
epoxy resin,
urethane resin,
thermoplastic ([0071] : “thermoplastic polymeric compound selected from polyethylene material, a polyurethane material and acrylic resin”) or
a mixture thereof
In re claim 4, Yoshida discloses wherein the second material comprises
a millable material comprising poly(meth)acrylate ([0062]: “acrylic resin”, is a millable material that comprises polymethacrylate),
polycarbonate, or
ceramic.
In re claim 5, Yoshida discloses wherein the second material has a fracture toughness of greater than 0.5 MPa
m
or a flexural modulus of less than 2500 MPa (*inherent).
*Note: The thermoplastic polymeric compounds that comprise the second material (see In re claim 3) have a flexural modulus of less than 2500 MPa. Specifically- Polyethylene: 335 – 1100 MPa, Polyurethane: 1000-1500 MPa, Acrylic resin: 1700 -1900 MPa.
In re claim 8, Yoshida discloses wherein the first and second materials have an electrical conductivity below 10-10 S/m (**inherent)
**Note: The first and second materials (see In re claim 2 and In re claim 3) have an electrical conductivity below 10-10 S/m). Specifically- (meth)acrylate resin: 10-14 – 10-13 S/m, Polyethylene: 10-17 S/m, Polyurethane: 10-12 – 10-8 S/m)
In re claim 10, Yoshida discloses wherein the circuit housing comprises an electronic circuit (FIG. 16 : 2) having:
a pH sensor, a lactate sensor, a temperature sensor, a glucose sensor, a volatile sulfur compound sensor, an alcohol sensor, an atmospheric pressure sensor, a cortisol sensor, an osmolality sensor, an ion-selective sensor, an acceleration sensor, a pressure sensor, and/or a moisture sensor (22; [0053]: “a temperature sensor, “an acceleration sensor”, “a pressure sensor”).
In re claim 11, Yoshida discloses wherein the circuit housing comprises
an electronic circuit for wireless transmission of energy,
a transceiver unit (26) for wireless data transmission [0051] and/or
an energy storage (21; [0051]: “battery”).
In re claim 13, Yoshida discloses wherein the circuit housing comprises an electronic circuit (2; FIG. 16).
In re claim 14, see above (In re claim 1).
In re claim 15, Yoshida discloses wherein the electronic circuit is enclosed by the first material (FIG. 5).
In re claim 16, Yoshida discloses wherein the first material is
***varnished onto the electronic circuit ([0082] : “completely covering the electronic device with the first dental resin material”) or
applied by physical vapor deposition (PVD) or
chemical vapor deposition (CVD).
***Varnishing is the process of applying a liquid coating to a surface for protection. Therefore, under the broadest reasonable interpretation the first material is varnished onto the electronic circuit, as it is applied onto electronic circuit and contributes to its protection [0038].
Claims 1, 10, 11, 13, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gonzales et al. (US 2020/0196947).
In re claim 1, Gonzales discloses a circuit housing (FIG. 7: device worn on teeth) for a wearable intraoral application (abstract) comprising
an inner layer (FIG. 3: 102) of a first material (material of “overlay surface”; see [0064]) for waterproof enclosure of an electronic circuit (101; [0064]; As known in the art, an overlay surface functions to protect a PCB from moisture); and
an outer layer (FIGS. 6A-6D: 84) of a second material ([0070]: “thermoplastic”) comprising a spatially fitting surface (bottom surface of 84) for fitting the circuit housing to a set of teeth (80, FIG. 6C; [0075]), which at least partially covers the first material (FIG. 6C: layer 82 covers backside (6) of PCB (2));
an intermediate layer ([0074]: “filler material”) for bonding the inner layer and the outer layer [0074];
wherein the spatially fitting surface of the outer layer is adapted to fit geometrically to the set of teeth (FIG. 6C),
wherein all three layers are positioned between the electronic circuit and the set of teeth (FIG. 6D).
In re claim 10, Gonzales discloses wherein the circuit housing comprises an electronic circuit (101/2; [0048]: “PCBA”) having: a pH sensor, a lactate sensor, a temperature sensor, a glucose sensor, a volatile sulfur compound sensor, an alcohol sensor, an atmospheric pressure sensor, a cortisol sensor, an osmolality sensor, an ion-selective sensor, an acceleration sensor ([0048]: “accelerometer/gyroscope”), a pressure sensor, and/or a moisture sensor.
In re claim 11, Gonzales discloses wherein the circuit housing comprises
an electronic circuit (101/2; [0064]: “PCB 101 would receive the electrical components and form the PCBA 2”)for wireless transmission of energy,
a transceiver unit ([0050]: “Bluetooth transceiver”) for wireless data transmission and/or
an energy storage ([0050]: “wireless charging receiver”).
In re claim 13, Gonzales discloses wherein the circuit housing comprises an electronic circuit (101/2; [0064]: “PCB 101 would receive the electrical components and form the PCBA 2”).
In re claim 14, see above (In re claim 1).
In re claim 15, Gonzales discloses wherein the electronic circuit is enclosed by the first material (FIG. 3).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (US 2021/0282651).
In re claim 6, Yoshida discloses
wherein the first and second materials allow transmission of electromagnetic radiation (FIG. 16; [0052]; wireless transceiver (26) serves to transmit sensed data to an outside network connector (27))
Yoshida does not disclose
where the electromagnetic radiation is in the range between 2.2 and 2.4 GHz.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide transmission of electromagnetic radiation in the range between 2.2 and 2.4 GHz, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 223.
In re claim 7, Yoshida discloses
wherein the first and second materials allow transmission of electromagnetic radiation (FIG. 16; [0052]; wireless transceiver (26) serves to transmit sensed data to an outside network connector (27))
Yoshida does not disclose
where the electromagnetic radiation is in the range between 13 and 14 MHz.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide transmission of electromagnetic radiation in the range between 13 and 14 MHz, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 223.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (US 2021/0282651) in view of Utley et al. (US 2005/0263160).
In re claim 9, Yoshida does not disclose wherein the circuit housing comprises an opening for a sensor.
Utley discloses an analogous intraoral device (FIG. 1:10) with a housing (40) for protecting the devices internal components [0022]. Utley further discloses the housing having an opening for a sensor to interact with inhaled or exhaled smoke within a user’s oral cavity [0060].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the housing taught by Yoshida, to include an opening for a sensor, as taught by Utley. One would have been motivated to make this modification because it may be desirable to measure parameters (like gas presence) that require the sensor to interact directly with the oral cavity (Utley, [0060]).
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Lathrop et al. (US 11,185,285) discloses an oral device (FIG. 11, FIG. 12) that includes an electronic circuit (12) encapsulated within a base member (14; abstract).
Dang et al. (US 2022/0142571) discloses an oral device with a variety of sensors embedded between two material layers that work together to create a hermetic seal (abstract).
Buckner et al. (US 6,089,864) discloses a diagnostic/therapeutic device used to treat chronic teeth grinding (abstract).
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVIA WALKER whose telephone number is (571)272-7052. The examiner can normally be reached M-F: 7-4pm CT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at (571)-270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLIVIA WALKER/Examiner, Art Unit 3796
/DAVID HAMAOUI/SPE, Art Unit 3796