Election/Restrictions
Applicant’s election without traverse of species A (figures 3-12) in the reply filed on 12/17/2025 is acknowledged.
Claims 2-3 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/17/2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/31/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 1, 3-20 are 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.
The claim 12 recites the limitation of “about 1.5 millimeters to about 2 millimeters” is indefinite since originally filed specification fails to describe the width as claimed. Originally filed specification describes it is being in between 1.5 millimeters to 2 millimeters; about limitation is not mentioned in originally filed specification. The range should be corrected by an amendment.
The claim 14 recites the limitation of “about 2 millimeters to about 3 millimeters” is indefinite since originally filed specification fails to describe the width as claimed. Originally filed specification describes it is being in between 2 millimeters to 3 millimeters; about limitation is not mentioned in originally filed specification. The range should be corrected by an amendment.
Claim 1 recites the limitation "the user" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the user’s lower jaw" in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the posterior lower teeth" in line 14. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the user’s upper jaw" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the lower jaw" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the user’s mouth" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation " the user’s mouth" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the height of contour" in lines 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the user’s mouth" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "the facial portion height" in line 1 and “the height of contour” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the user’s upper jaw structure" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the lower jaw teeth" in line 9. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the body" in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "the subject’s lower jaw" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the anterior upper jaw teeth" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 20 recites the limitation "the subject" in line 3. There is insufficient antecedent basis for this limitation in the claim.
The remaining claims are necessarily rejected as being dependent upon a rejected base claim and therefore includes the same unpatentable subject matter.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 13-14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim limitations of claim 13 is not further limiting the invention since it is claiming structure of tooth and contour it’s not further defining the device as claimed in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 13-14 are rejected under 35 U.S.C. 101 because 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 13-14 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). The limitations of “each upper posterior tooth has a tooth height and a height of contour” is claiming a human body.
Claims 13-14 are objected to under 35 U.S.C. 101. because the claimed invention is directed to non-statutory subject matter. The claims positively recite “each upper posterior tooth has a tooth height and a height of contour” and “the facial portion height is greater than the height of contour”. A claim or claims directed to or including within its scope a human being or a part of a human being is not patentable subject matter under 35 U.S.C. 101. The grant of a patent giving limited, but exclusive property right to a human being is prohibited by the Constitution. Therefore, it is suggested that any claim that would include a human being, or part thereof, within its scope should use a negative limitation to define the metes and bounds of the claimed subject matter which is a permissible form of expression.
Therefore, it is suggested that any claim that would include a human being, or part thereof, within its scope should use “adapted to____”, “adapted for____”, “configured to____" and “configured for____” to define the metes and bounds of the claimed subject matter which is a permissible form of expression.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 4-11 and 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Magness (2016/0022474).
With respect to claim 1, Magness discloses a device for mitigation of temporomandibular joint disorder (see figures 1 and 4-11) comprising: a middle portion (portion where 20b is shown in figure 1) having a top surface and a bottom surface (as shown in figure 1 it is shown to have a top surface and a bottom surface), the top surface being configured to communicate with lingual surfaces of one or more of a user's anterior upper jaw teeth and hard palate (as shown in figures 1 the top surface of middle element portion of 20 is in communication with lingual surfaces of user’s anterior upper jaw), the bottom surface of the middle portion being comprised of an anterior pad (22 as shown in figure 1) that is configured such that movement of one or more anterior lower jaw teeth of the user relative to the anterior pad can be freely accomplished by translational movement of the user's lower jaw (as described in paragraph 0049-0051 that the movement of teeth is provided to reduce the numbers of ailments); and at least one tooth receptacle (U-shaped receptacle 20 is extending from the middle portion) extending the middle portion, each tooth receptacle shaped to receive a corresponding upper posterior tooth within the tooth receptacle (U-shaped receptacle 20 is extending from the middle portion and to receive a corresponding upper tooth) and having a facial portion that communicates with a facial surface of the corresponding upper posterior tooth (U-shaped receptacle 20 is extending from the middle portion and back part of 20 having a facial surface that communicate with posterior tooth); wherein the anterior pad has a thickness such that the anterior lower jaw teeth contact the anterior pad and the posterior lower teeth do not substantially engage the tooth receptacles (see figure 1).
With respect to claim 4, Magness discloses wherein said top surface is configured to communicate with at least one occlusal surface of at least one anterior upper jaw tooth (see figure 1).
With respect to claim 5, Magness discloses wherein a portion of the device that engages the anterior teeth of the user's upper jaw is configured to only engage the lingual surfaces of the anterior teeth of the user's upper jaw (see figure 1).
With respect to claim 6, Magness discloses wherein the anterior pad is configured such that movement of the anterior lower jaw teeth relative to the anterior pad can be freely accomplished by voluntary forward translational movement of the lower jaw [paragraph 0049-0051 describes the forward movement of the jaw].
With respect to claim 7, Magness discloses wherein the device is conformed substantially in a U-shape, and wherein the device is positioned adjacent a soft palate of the user (see figure 1).
With respect to claim 8, Magness discloses wherein each tooth receptacle is integrally formed with the middle portion (see figure 1).
With respect to claim 9, Magness discloses wherein the tooth receptacles are configured to retain the device in an operative position in the user's mouth (see figure 1).
With respect to claim 10, Magness discloses wherein each tooth receptacle further includes a lingual portion and an occlusal portion that communicate with a lingual surface and an occlusal surface respectively of the corresponding upper posterior tooth [paragraph 0051-0052 and 0056 describes placement of device over the teeth].
With respect to claim 11, Magness discloses wherein the facial portion of the at least one tooth receptacle has a facial portion width such that the device has a rigidity that allows for retention in the user's mouth and a flexibility that allows for easy insertion into and removal from the user's mouth [0056 describes the flexibility of the device for positioning over the teeth].
With respect to claim 17, Magness discloses a device, comprising: a main U-shaped body (20) configured for placement in an upper jaw of a subject that includes a middle portion (portion where 20b is shown in figure 1), and at least one tooth receptacle (20a) extending from the middle portion and shaped to receive a corresponding upper posterior tooth (see figure 1); a top surface of the middle portion configured to communicate with a hard palate of the subject and lingual surfaces of four or more anterior teeth of the upper jaw (see figure 1); and a bottom surface of the middle portion having an anterior pad (22), the anterior pad configured such that voluntary forward translational movement of the lower jaw teeth relative to the body can be freely accomplished (as described in paragraph 0049-0052 that the transverse directional is interpreted as translational movement of teeth is provided to reduce the numbers of ailments).
With respect to claim 18, Magness discloses wherein the body is positioned adjacent to at least one of a soft palate of the subject and the posterior teeth of the subject's lower jaw (see figure 1).
With respect to claim 19, Magness discloses wherein a portion of the device that communicates with the anterior teeth of the upper jaw engages the lingual surfaces of the anterior upper jaw teeth (see figure 1).
Allowable Subject Matter
Claims 12-16 and 20 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.
Claims 12-16 and 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is an examiner’s statement of reasons for allowance:
With respect to claim 12, The subject matter of the independent claims could either not be found or was not suggested in the prior art of record. The subject matter not found was wherein the facial portion width of the at least one tooth receptacle is between 1.5 millimeters to 2 millimeters, and wherein the atleast one tooth receptacle is configured to apply a force to retain the corresponding tooth within the at least one tooth receptacle without moving the corresponding tooth or other teeth of the user, in combination with the other elements (or steps) of the apparatus and method recited in the claims.
With respect to claim 13. the subject matter of the independent claims could either not be found or was not suggested in the prior art of record. The subject matter not found was the facial portion of the at least one tooth receptacle has a facial portion height and an upper end; and the facial portion height is greater than the height of contour but less than the tooth height of the corresponding tooth such that the device may remove from the user's mouth by applying force to the upper end of the facial portion without the source of the force contacting the user's gumline, in combination with the other elements (or steps) of the apparatus and method recited in the claims.
With respect to claim 15. the subject matter of the independent claims could either not be found or was not suggested in the prior art of record. The subject matter not found was wherein the at least one tooth receptacle comprises at least two tooth receptacles extending from at least one pad wing and positioned adjacent to each other, and a junction is located between each of the facial portions of the tooth receptacles, wherein at least a portion of each junction is spaced from the facial surfaces of the corresponding teeth by a distance, in combination with the other elements (or steps) of the apparatus and method recited in the claims.
With respect to claims 16 and 20. the subject matter of the independent claims could either not be found or was not suggested in the prior art of record. The subject matter not found was pad wings extending posteriorly from corresponding opposite extremes of the middle portion, said pad wings having a top surface configured to communicate with the hard palate of the user's upper jaw structure and tooth clearances for one or more posterior teeth, wherein each of the at least one tooth receptacles extends from a corresponding pad wing, in combination with the other elements (or steps) of the apparatus and method recited in the claims.
Conclusion
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/TARLA R PATEL/ Primary Examiner, Art Unit 3786