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 Amendment
The declaration under 37 CFR 1.132 filed 07/13/2026 is insufficient to overcome the rejection of claims 1, 2, 5, 7, 28, 29, 32, 34-36, and 38 based upon the rejections set forth in the last Office action because:
Applicant has argued that the citation to the prior art teaching from Nakamura of “a plurality of LEDs” for the limitation of “ a first and second adjacent illumination sources” is a mischaracterization by reasoning that the their claim limitation should be read as requiring “ separate, independent illumination beams”, however the claim language only recites a “first and second adjacent illumination sources” which a plurality means more than one and thus requires at least two LEDs. Further the term LED means a light emitting diode. As the prior art recites at least two light emitting diodes each diode is a separate independent diode that emits light, even using applicant’s narrower argument. As such the plurality of LEDs from Nakamura does provide for the actual claim language.
The cited element of L in the drawings of Nakamura is in a single region that is defined in the prior art as the location of the plurality of diodes, each of which emits light and thus are within the claim terms of being adjacent each other.
Applicant has asserted that even though the prior art discloses that at least one of the LEDs is “a white LED” that this does not provide for the limitation of one of the illumination sources “configured to generate an illumination beam of white light”, however this is not persuasive as a light emitting diode that is disclosed in the prior art as a white light emitting diode clearly is an illumination source configured to generate an illumination beam of white light.
Applicant has further argued that the plurality of LEDs of Nakamura does not provide for the claim limitation of one of the illumination sources being a different wavelength of 405nm, however Nakamura was not relied upon for such a limitation.
Applicant has argued that the plurality of LEDs of Nakamura do not provide for the limitation of the “illumination source is oriented to generate a associated illumination beam at substantially a same focal point”, however as the beams of the plurality of LEDs are focused into the same optical fiber and thus provide for a “substantially a same focal point” of an optical fiber as all the light emitted from the plurality, an thus more than one physical diodes that are adjacent each other, is focused into the optical fiber. As all these elements are separate from each other the at least two, due to the term “plurality” must be configured so that their light would enter the end of the optical fiber and thus by being so configured to the single “an” optical fiber read on the term “substantially a same focal point”.
Applicant has further argued that office action failed to establish obviousness for the combination of the teachings of Nakamura and Scalco by asserting their disagreement that Nakamura discloses a plurality of LEDs and that at least one of those LEDs is “a white LED’, however as Nakamura does disclose in cited paragraph [0074] “The light source L includes a light emitting device Ld such as a white LED (Light Emitting Diode), and a housing Lh that holds the light emitting device Ld. The light emitting device Ld can be constituted by a single or a plurality of LEDs” this is not persuasive as the prior art clearly discloses such limitations.
Applicant has argued that the mapping of the cited words of Nakamura to the terms in the current claims is out of context by asserting that the cited portion of Nakamura should be read narrowly as a single heterogenous arrangement, however this is not persuasive as Nakamura does disclose a plurality of LEDs which is at least two individual LEDs and thus the structure that maps onto the current claim language. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case there is no hindsight as the argued limitations are all found in a single reference.
Applicant has further argued that the office action mischaracterized the teachings of Scalco by asserting that the illumination apparatus of Scalco being “capable of being installed in a high speed handpiece” as specifically recited in paragraph [0037] of Scalco, and thus would not be used in an electric handpiece which would operate at a lower rpm rate, and thus would somehow preclude Scalco and Nakamura as being completely different such that one having ordinary skill in the art would not have looked at Scalco to modify any portion of Nakamura, however this is not persuasive as the citation makes clear that both prior art are in the field of dental handpieces and one having ordinary skill in the art would be clearly motivated to review such art for what they would have taught.
Applicant has further argued that the cited lens of Scalco does not read on the claim term of “light guide”. 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., “independent, macroscale structural light guide (such as a fiber optic bundle or glass rod” that extends between the proximal and distal ends of a handpiece” 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). It is further noted that Nakamura was cited for the light guide recited it the instant claims and the domed top light guides of Scalco were cited merely for the understanding that the LEDs of Scalco also passed through a light guide.
Applicant has further argued that the term “would be positioned within” is an admission of a lack of disclosure that the illumination source of Scalco is positioned in a motor of a dental handpiece, however this is not persuasive or correct. The cited portion of Scalco is to the exploded view of the handpiece and one having ordinary skill in the art would clearly understand that in the assembled state the illumination source would be positioned within the handpiece.
Applicant has argued that Scalco was interpreted incorrectly in regard to the light source being within the handpiece would not have been obvious to place such a light source within the handpiece of Nakamura, however Nakamura already had a light source within the handpiece and thus Scalco was not relied upon for this limitation.
Applicant has argued that one having ordinary skill in the art would not have modified the light source of Nakamura to have an illumination source of 405nm by asserting without any evidence that the light would not be able to travel along undefined length of light guide before being totally absorbed. This is not persuasive as the cited light guide is in Nakamura and the light source of Nakamura is aligned to direct the emitted light through the light guide along a length of only the handpiece and thus does function. Applicant has not provided any arguments or evidence that the light being able to travel in a light guide of Nakamura would not function as Nakamura’s device would function to transmit light from the LEDs to the end of the light guide, as every patent is presumed valid any argument against operability of a reference must rebut the presumption with a preponderance of evidence (MPEP 716.07). In regard to the argument that modifying one of the plurality of LEDs of Nakamura with an LED that would emit light of 405nm for the actual citation motivation in the office action, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker. The failures of experimenters who have no interest in succeeding should not be accorded great weight”. In re Michalek, 162 F.2d 229, 74 USPQ 107 (CCPA 1947); In re Reid, 179 F.2d 998, 84 USPQ 478 (CCPA 1950). Applicant has argued in relation to “extreme attenuation, scattering, and transmission loss” or matching the Numerical Aperture and acceptance angle of a fiber optic, however the current disclosure is silent to any such considerations and only discloses the broad term “light guide”.
Applicant has further argued against the obviousness of incorporating the polarity switch of Scalco into the art of Nakamura by asserting that such a feature would require “massive engineering hurdles” however as applicant has not provided any evidence that the polity switch of Scalco is not operable such arguments against operability are not persuasive as every patent is presumed valid any argument against operability of a reference must rebut the presumption with a preponderance of evidence (MPEP 716.07).
Applicant has argued that the prior art teaches away from modifying one of the illumination sources of Nakamura such that there would be both the white illumination and a 405nm wavelength illumination by asserting unevidenced assertion of rapid attenuation or degradation of light in a light guide however the prior art of Nakamura with a light guide is an operable disclosure. Applicant has not addressed or evidence any such considerations in the instant disclosure to show they would be outside a normal understanding of one having ordinary skill in the art and further this is not what is required by a teaching away as applicant has not show the prior art explicitly discloses not modify an LED to have a wavelength of 405nm. Applicant has not provided any support or reference that the currently cited prior art actually teach away from their combination “a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit or otherwise discourage investigation into the invention claimed.") (internal quotations omitted) (quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)); and Schwendimann v. Neenah, Inc., 82 F.4th 1371, 1381, 2023 USPQ2d 1173 (Fed. Cir. 2023)”(MPEP 2145, X, D, 1).
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 polarity switching being within the external motor assembly) 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).
Applicant’s argument that the polarity switch of Scalco would not function if combined with Nakamura is not persuasive as the cited art is presumed operable and applicant has not provided any evidence that incorporating the switch would cause it to not longer operate as disclosed by Scalco. The polarity switch is connected to the different LEDs by wires which wires transmit power to different LEDs would be within the ability of only having ordinary skill in the art as both Nakamura and Scalco have LEDs with various power connections evidencing that such considerations were within the skill of an ordinary person.
Applicant has argued that it would not have been obvious to combined the teachings of Camlibel with those of Nakamura/Scalco by asserting that the structure of Camlibel is provided for preventing an micro scale photo-excitation and that they want the claims to be interpreted on the macro-scale, however this is not persuasive it is noted that the features upon which applicant relies (i.e., macro-scale photo-excitation) 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).
In response to applicant's argument that the examiner's conclusion of obviousness of combining the teaching of Camlibel into the teaching of Nakamura/Scalco is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Response to Arguments
Applicant's arguments filed 07/13/2026 have been fully considered but they are not persuasive. The presented arguments are not persuasive as they are the same arguments presented and addressed by the declaration filed 07/13/206. As the arguments by applicant’s representative and those in the declaration are the same they are not persuasive for the same reasons above.
Claim Objections
Claims 1, 28, and 35 objected to because of the following informalities: the claims each recite the limitation of “to illuminate an area on near a tooth”, which should read “to illuminate an area on or near a tooth”. Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1, 2, 5, 28, 29, 32, 35, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (US 2017/0215990 A1) in view of Scalco et al. (US 2015/0238279 A1).
Regarding claims 1, 2, 28, 29, and 35:
Nakamura discloses an apparatus to illuminate an area on or near a tooth surface while performing a dental procedure (title and abstract, paragraphs [0073]-[0074] disclosing the apparatus including a light source), the apparatus including:
a first and second adjacent stationary LED light sources (Fig. 7 element L showing location of light source, paragraph [0074] lines 1-5 disclosing the light source includes a plurality of LEDs and thus at least two adjacent sources), wherein each of said adjacent illumination sources is configured to generate an illumination beam when electrical power is applied to the illumination source (paragraph [0073] disclosing electric power is supplied to the light source),
wherein one or said illumination sources is configured to generate an illumination beam of white light (paragraph [0074] disclosing “a white LED”),
and wherein said apparatus is a component of an electric motor for a dental handpiece (Fig. 7 element 10 is a component of an electric motor, abstract noting element 10 is an electric motor, Fig. 1 element 10 is for use with a handpiece 9a),
the electric motor is external to the dental handpiece (Fig. 1 element 10 external to 9a), wherein the illumination source is positioned in the electric motor (Fig. 7 element L is within element 10), wherein the dental handpiece has a proximal end and a distal end, wherein the electric motor had a distal end and wherein when the distal end of the electric motor is connected to the proximal end of the dental handpiece the illumination source is configured to pass a said illumination beam from the electric motor through a light guide in the dental handpiece extending between the proximal end and the distal end of the dental handpiece (Fig. 1 showing the electric motor 10 having a distal end that is inserted into the proximal end of the handpiece 9a and thus the light source of fig. 7 element L passes the light beam along the light optical fiber in handpiece element 9a from its proximal end to its distal end paragraph [0102] lines 9-13).
Nakamura discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose where plurality of light sources is a dual wavelength lamp where one of the plurality of illumination sources is configured to generate an illumination beam at a wavelength of 405nm, nor a switching mechanism electrically connected to the first and second illumination sources and configured to selectively apply electrical power to only one of said illumination sources at a time as per claims 1, 28, and 35, nor were the switching mechanism is configured to switch polarity of electrical power delivered to an dual-output lamp thereby switching electrical power between the first LED and the second LED as per claims 2, 29, and further 35.
However, Scalco discloses a dental illumination apparatus for a motor of the type used in a dental instrument to illuminate an area on or near a tooth surface while performing a dental procedure (Fig. 2 element 1) the apparatus comprising: a dual output lamp having stationary first and second illumination sources (Fig. 2 elements 3/3b), wherein each of said adjacent illumination sources is configured to generate an illumination beam when electrical power is applied to the illumination source (paragraph [0014] lines 8-9 disclosing the LED’s are connectable to an external power source, paragraph [0019] lines disclosing the external power is also replaceable by an internal battery and thus are electric power),
first illumination source comprises a light emitting diode (LED) configured to emit white light ([0038], “white light”) and the illumination source comprises a different LED configured to emit light at the wavelength of about 405nm and ([0038] UV light is 400nm +/-5% thus being about 405),
a switching mechanism electrically connected to the first and second illumination sources and configured to selectively apply electrical power to only one of said illumination sources at a time (paragraphs [0015]-[0016], disclosing an electrically connected switch that is configured to “distinctly activated the LED UV or the white light LED)
wherein said apparatus is a component of a motor in a dental handpiece that is separable from the motor (Fig. 2 element 1 being a separable component that is to be installed to the motor handpiece of 9-10, paragraph [0037] lines 3-6 disclosing the element 1 being “capable of being installed on a high speed handpiece” and thus is separable from the handpiece), wherein the illumination source is positioned in the motor of the dental handpiece (Fig. 2 element 1 would be positioned with the motor handpiece of 9/10) and wherein the illumination source is configured to pass a said illumination beam through a light guide extending from the motor (Fig. 2 elements 3/3b being LED’s are diodes that pass light through their domed topped light guides) and to a cutting head (Fig. 3 showing the illumination passing through the light guides and to the cutting head of 10 by shining towards the cutting head of the drill/bur), and
further discloses wherein the switching mechanism is configured to switch polarity of electrical power delivered to the dual-output dual-wavelength lamp thereby switching power between the first and second illumination sources to change the wavelength of the illumination beam (paragraphs [0015]-[0016], disclosing an electrically connected switch that is configured to “by reversing switch of polarity, can choose the disclosing light with LED UV, or the simples lightning of work the area with white light LED”).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate a the illumination source being a dual wavelength lamp having a first illumination source comprises a light emitting diode configured to emit white light and a different LED configured to emit light at the wavelength of about 405nm, as well as a switching mechanism electrically connected to the first and second illumination sources and configured to selectively apply electrical power to only one of said illumination sources at a time by switching a polarity of electrical power delivered to the plurality of LEDs such that power would be switched between the first LED for 405nm light and the second LED for white light as taught by Scalco into the illumination source and control as taught by Nakamura for the purpose of providing for a handpiece that would settle previous drawbacks in limitations by evidencing a restorative material from original tooth structure during a dental procedure that is controllable through a switch that does not prejudice to the operation of the settings during use as taught by Scalco (paragraph [0013] lines 1-13 and [0016] lines 8-11).
Regarding claims 5, 32, and 36, Nakamura further discloses wherein each said illumination source is oriented to generate an associated illumination beam at substantially a same focal point (paragraph [0102] disclosing plurality of LEDs are oriented to focus light beams into the optical fiber for transmission).
Claims 7, 34, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (US 2017/0215990 A1) in view of Scalco et al. (US 2015/0238279 A1) as applied to claims 2, 29, and 35 respectively above and further in view of Camlibel (US 4,605,942).
Regarding claims, 7, 34 and 38, Nakamura/Scalco discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose wherein the non-powered LED does not fluorescence in response to radiation emissions by an adjacent powered led sufficiently to emit radiation or inhibiting emission of a non- selected wavelength along with a selected wavelength.
However, Camlibel teaches a multiple wavelength light emitting device in FIGS. 1-5, comprising a dual-wavelength lamp (Col. 2, lines 1-23, “dual wavelength light emitting device”) wherein said first illumination source 10 is configured to generate the illumination beam a first wavelength and wherein said second illumination source 11 is configured to generate the illumination beam at a second wavelength ((Col. 2, lines 30-37, “to emit at different wavelengths”); an optical barrier 120,121 disposed between the first and second illumination sources and configured to shield a non-powered illumination source from radiation emitted by an adjacent powered illumination source, wherein fluorescence of a non-powered illumination source, wherein fluorescence of a non-powered illumination source is minimized or inhibited as a result of said barrier, thus minimizing or inhibiting emission of a non- selected wavelength along with a selected wavelength (Col. 4, lines 13-35 , “problems which might have arisen due to photo-excitation of one device by another are corrected in part by utilizing heat sinks 120 and 121 and/or ohmic contact layers 131 and 132 as shields against interaction of the two devices”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify Nakamura/Scalco, by requiring an optical barrier disposed between the first and second illumination sources and configured to shield a non-powered illumination source from radiation emitted by an adjacent powered illumination source, wherein fluorescence of a non- powered illumination source is inhibited as a result of said barrier, thus inhibiting emission of a non-selected wavelength along with a selected wavelength as taught by Camlibel, for the purpose of preventing any spectral problems due to the optical interaction and incidental excitation of nearby light sources as taught by Camlibel (column 4 lines 25-35).
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 MATTHEW P SAUNDERS whose telephone number is (571)270-3250. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edelmira Bosques can be reached at (571) 270-5614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.P.S/Examiner, Art Unit 3772 09/23/2026
/EDWARD MORAN/Primary Examiner, Art Unit 3772
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