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 .
Response to Arguments
Claim Rejections Under 35 U.S.C. 102
Applicant’s arguments filed on 06/23/2026 have been fully considered but are not persuasive.
Applicant argues that Yoshida does not disclose the following features:
“the entire spatially fitting surface of the outer layer is configured to fit geometrically to the set of teeth at a position above a gum line on a lower jaw and below the gum line on an upper jaw”
“wherein all three layers are configured to be positioned between the electronic circuit and the set of teeth”
Regarding feature i), Examiner respectfully disagrees. As discussed below (see section Claim Rejection 35 USC 102), Yoshida discloses an outer layer (1) that both comprises a spatially fitting surface (bottom surface of 1 that covers tooth) and at least partially covers the first material (Examiner FIG. 1, shows 1 covering “the first material”, i.e., material of 3). As shown in Examiner FIG. 1, the entire spatially fitting surface is configured to fit to the set of teeth at a position “above a gum line on a lower jaw and below the gum line on an upper jaw”. Additionally, Examiner notes that even if such a feature was not disclosed by Yoshida, the limitation “configured to fit geometrically to the set of teeth at a position above a gum line on a lower jaw and below a gum line on an upper jaw”, comprises functional language and is given patentable weight only in how it materially alters or adds structure to the apparatus of the claims. See MPEP 2114. The prior art need only be able to perform the function in order to anticipate the claimed invention. It is clear that the intraoral application of Yoshida could be fit geometrically to a set of teeth in such a manner if desired, for example, on a mammal with an elongated/larger tooth.
Regarding feature ii), 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
Applicants’ arguments filed on 06/23/2026 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 § 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 (bottom surface of 1 that covers tooth) 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 entire spatially fitting surface of the outer layer is configured to fit geometrically to the set of teeth (FIG. 1), at a position above a gum line on a lower jaw and below the gum line on an upper jaw (FIG. 1),
wherein all three layers are configured to be 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 ([0062]: “acrylic resin” is a millable material)
wherein the millable material comprises
polymethacrylate ([0062]: “acrylic resin”, 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].
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
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.
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
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