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 .
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)(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 1-7, 9, and 11-23 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ericson et al. (US 2011/0306007 A1, hereinafter “Ericson”).
Regarding Claim 1, Ericson discloses a dental procedure device (abstract), comprising a body (Figure 1, all elements taken together as the body) comprising a matrix (2) with an inner matrix surface (not labeled but seen in Figure 4), and a lower member (lower member is portion between wedge 3 and matrix 2 as seen in Figure 6 – when used between upper teeth, this portion would be the “lower” portion) providing a wedge shape (as seen in Figure 2) and an inner surface that extends downward (as the lower member extends from the wedge to the matrix it would be extending downward when inserted) from a bottom portion of the inner matrix surface to form a smooth continuous surface to abut a tooth (as seen in Figure 8, this surface abuts the tooth via the inner matrix surface and is smooth and continuous, i.e. without protrusion or interruption), where a dimension of the inner surface of the lower member gradually increases along a length of the lower member to provide a downward protruding portion (as seen in Figure 2, the dimension of the height of the lower member would get wider as it progresses from a first end to a second end and protrudes downward in the orientation where it is used for the upper teeth). Ericson further discloses a handle (4) connected to the body at a first end of the body and extending from the body, where the lower member at least partially forms a tapered lead in portion (7) at a second end of the body opposite the first end of the body coupled to the handle, the lead in configured to facilitate positioning of the dental procedure device.
Regarding Claim 2, Ericson discloses the dental procedure device of claim 1, and further discloses an upper member (Figures 1-4,1) including a contoured inner surface (as seen in Figure 4, member 1 is contoured) and an upper wedge portion (3) extending away from the contoured inner surface of the upper member, wherein the contoured inner surface is configured to abut an upper portion of a tooth (as would be the case during insertion).
Regarding Claim 3, Ericson discloses the dental procedure device of claim 2, and further discloses that the upper wedge portion of the upper member extends away from the contoured inner surface at an obtuse angle (as seen in Figure 7, the angulation between wedge 3 and surface of upper member 1 is obtuse).
Regarding Claim 4, Ericson discloses the dental procedure device of claim 2, and further discloses that the upper member is configured to support one or more natural contours in a marginal ridge of a tooth during a dental procedure (as described in [0031]).
Regarding Claim 5, Ericson discloses the dental procedure device of claim 1, and further discloses that a portion of at least one of the matrix, the lower member, and the upper member is capable of being detached from the body while the dental procedure device is inserted between adjacent teeth (a seen in Figure 5, fixating members 6a and 6b would make at least a portion of the device capable of being detached).
Regarding Claim 6, Ericson discloses the dental procedure device of claim 1, and further discloses that the inner matrix surface is configured to contour to a tooth surface to control and confine restorative materials during a dental procedure (dental filling materials are confined in place as described in [0031]).
Regarding Claim 7, Ericson discloses the dental procedure device of claim 1, and further discloses that a portion of the lower member includes a V-shaped cross-sectional area (as seen in Figures 3 and 4) a cross-section could be taken of the lower member that would be “V-shaped.” Please note: as parameters are not given for the “portion” that is to be seen in cross-section to be “V-shaped”, nor is this element seen in the Figures, the examiner interprets this element broadly, and as the lower member is tapered, it is capable of this cross-section at a portion.
Regarding Claim 9, Ericson discloses the dental procedure device of claim 2, where the upper member further comprises an extension disposed at the second end that curves away from the contoured inner surface of the upper member (end of the wedge portion that is at the second end curves away from the contoured inner surface as an extension as seen in Figure 5).
Regarding Claim 11, Ericson discloses the dental procedure device of claim 1, and further discloses that the lead in portion formed by the lower member comprises a curved tip (end of lead in portion 7 is curved) that curves toward the inner surface of the lower member (as seen n Figure 6) and that is configured for initiating insertion of the body between two adjacent teeth (insertion described in [0030]).
Regarding Claim 12, Ericson discloses a dental procedure assembly (abstract), comprising a body (all elements in Figure 1 taken together are the body) comprising a lower member with an inner surface and a protruding edge formed along at least a portion of the lower member (lower member is portion between wedge 3 and matrix 2 as seen in Figure 6 – when used between upper teeth, this portion would be the “lower” portion) and a matrix (2) with an inner matrix surface that extends upward away from a top portion of the inner surface of the lower member (as seen in Figures 5 and 6) to form a smooth continuous surface to abut a tooth (as seen in Figure 8, this surface abuts the tooth via the inner matrix surface and is smooth and continuous, i.e. without protrusion or interruption), and a lead in portion (7) disposed at a distal end of the body.
Regarding Claim 13, Ericson discloses the dental procedure assembly of claim 12, and further discloses a handle (4) physically connected to the body at an end of the body opposite the lead in portion, where the handle includes at least one gripping surface (outer surface of the handle could be gripped between two fingers).
Regarding Claim 14, Ericson discloses the dental procedure device of claim 12, and Ericson further discloses that the lower member further includes a downward protruding portion (as seen in Figure 6, the height of the lower member increases along the length from the distal end) that is capable of separating a portion of gingiva from a tooth during a dental procedure.
Regarding Claim 15, Ericson discloses the dental procedure assembly of claim 12, and further discloses that the lower member includes a varying cross-sectional area (cross sections of the lower member would vary) which are capable of providing, at insertion, a separation force between adjacent teeth during a dental procedure (as described in [0031]).
Regarding Claim 16, Ericson discloses the dental procedure assembly of claim 12, and further discloses that the matrix includes a uniform cross-sectional area (as seen in Figure 8, the cross section of matrix 2 is uniform), and that the inner matrix surface is configured to abut one or more tooth surfaces, including subgingival tooth anatomy, during a dental procedure (as seen in Figure 8).
Regarding Claim 17, Ericson discloses the dental procedure assembly of claim 12, where the body further comprises an upper member (Figures 1-4,1) with a cross-sectional area configured to support one or more natural contours in a marginal ridge of a tooth during a dental procedure (as seen in Figure 7, the cross-sectional area of the upper member is capable of supporting one or more natural contours in a marginal ridge of a tooth).
Regarding Claim 18, Ericson discloses the dental procedure assembly of claim 17, and further disclose that a portion of the upper member includes a cross-sectional area capable of physically supporting a position of the matrix during a dental procedure and provide an increased clamping force between the upper member and a tooth during a dental procedure (as seen in Figure 7).
Regarding Claim 19, Ericson discloses the dental procedure assembly of claim 12, where the lower member includes a downward protruding frontal edge with a convex shape along at least a portion of the lower member (as seen in Figure 6, when used for upper teeth, the lower frontal edge of the lower member would be protruding and has a convex shape at the distal end).
Regarding Claim 20, Ericson discloses the dental procedure assembly of Claim 19, and further discloses that the downward protruding frontal edge is capable of enabling a portion of the lower member to support one or more natural contours of subgingival tooth anatomy (as seen in Figures 7 and 8 and would be the case during insertion).
Regarding Claim 21, Ericson discloses the dental procedure assembly of claim 12, and further discloses that lead in portion comprises an angled tip that extends away from the inner surface of the lower member at an obtuse angle (as seen in Figure 6).
Regarding Claim 22, Ericson discloses a dental procedure device (abstract) with a body (Figure 1, all elements taken together) to be inserted to be disposed between two adjacent teeth (see Figures 7 and 8), namely a treatment tooth and a neighboring tooth (17a and 17b), the body comprising a lower member providing a triangular wedge (lower member is taken as portion as seen in Figure 6 that extends between 2 and 3, and includes what would be the distal half of 3 when oriented for use in the upper teeth – lower half of wedge 3 would be triangular shaped) to separate the adjacent teeth as the lower member is inserted into position between the adjacent teeth (as seen in Figure 7), where the lower member provides an inner surface to contour to a lower portion of a lateral surface of the treatment tooth of the two adjacent teeth (lower member inner surface is capable of contouring the lower portion of a lateral surface of the treatment tooth as seen in Figure 7). Ericson further discloses a matrix (2) extending upward from the lower member to form a smooth continuous surface to abut a tooth (as seen in Figure 8, this surface abuts the tooth via the inner matrix surface and is smooth and continuous, i.e. without protrusion or interruption), during utilization, be disposed between the treatment tooth and the adjacent tooth (as seen in Figures 7 and 8), the matrix providing an inner matrix surface to contour to the lateral surface of the treatment tooth (Figure 7), and a handle (4) at a proximal end of the body, the handle configured to be grasped by a user to insert the body into position between the adjacent teeth (handle 4 is capable of grasping), where a distal portion of the matrix and a distal portion of the lower member together form a tapered lead in portion (7) at a distal end of the body opposite the proximal end that is coupled to the handle, the lead in portion tapering to a tip configured to facilitate insertion of the body between the adjacent teeth (Figure 6).
Regarding Claim 23, Ericson discloses the dental procedure device of claim 22, and further discloses an upper member (1) providing an inner surface to contour to an upper portion of a lateral surface of a tooth and including an upper wedge portion (other half of wedge 3 that adjacent 1) extending away from the inner surface, where the upper member is positioned at a top of the matrix (as seen n Figure 6).
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ericson in view of Burton (US 2023/0320816 A1).
Regarding Claim 8, Ericson discloses the dental procedure device of claim 1 substantially as claimed above, but does not disclose a crush rib formed in an outer surface of the lower member. In the same art of dental wedges, Burton teaches the use of a rib (Figure 10A, 1010) with a wedge device. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the device of Ericson with a rib as taught by Burton in order to engage tissue to help secure the wedge in place as is taught by Burton, which in turn would create a separation force between adjacent teeth during a dental procedure.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ericson in view of MISHAELOFF (US 2022/0287801, hereinafter “Mishaeloff”).
Regarding Claim 10, Ericson discloses the device of Claim 2 substantially as claimed as described above, but does not disclose that the upper member has a passage configured to communicate restorative materials used during a dental procedure through the upper member during a dental procedure. In the same art of dental restoration devices, Mishaeloff discloses a passage (Figure 13, 480) in a covering for a tooth during a restoration procedure for introducing material through the opening. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the device of Ericson with an opening in the upper member as is taught by Mishaeloff in order to provide an avenue for dispensing additional restorative materials to the surface of the tooth without removing the stabilizing device.
Response to Arguments
Applicant's arguments filed December 24, 2025 have been fully considered but they are not persuasive. Regarding the argument that Ericson does not teach the newly added claim limitation of “a lower member providing a wedge shape and an inner surface that extends downward from a bottom portion of the inner matrix surface to form a smooth continuous surface to abut a tooth” the examiner respectfully disagrees. As described above, the matrix (2) of Ericson meets this limitation and extends in a direction that can be considered “downwards” based on placement of the device, with a “smooth, continuous surface” as the surface does not contain projections or interruptions. The matrix of Ericson is capable of abutting a tooth, and the applicant is reminded that for functional limitations, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Additionally, as the inner surface of the lower member is not required to be unitary, the structure of Ericson meets the limitations as claimed as described above.
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 CHRISTINE L NELSON whose telephone number is (571)270-5368. The examiner can normally be reached M - F 7:30-4:30 PT.
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, Eric Rosen can be reached at 571-270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINE L NELSON/Examiner, Art Unit 3772
/EDWARD MORAN/Primary Examiner, Art Unit 3772
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