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 .
Election/Restrictions
Applicant's election with traverse of Group I, Species II in the reply filed on 5/11/2026 is acknowledged. The traversal is on the ground(s) that Species I-III would not require undue searching and examination.
This is not found persuasive because each species has their own distinctive design that embodies its identity, which would require additional search and examination for each embodiment. For example, Species I have no hinges or prongs and has three ridge members (figures 3-6), Species II has a pair of flexible hinges and has one ridge member (figures 7-10), and Species III involves a pair of prongs, a pair of openings, and one ridge member (figures 11-12). Therefore, the requirement is still deemed proper and is therefore made FINAL.
Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/11/2026.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: upper wall portion and lower wall portion.
Claim Objections
Claim 1 objected to because of the following informalities: “the movable surface member” should be “the at least one movable surface member” in lines 10-12. Appropriate correction is required.
Claim 1 objected to because of the following informalities: “the elastic member” should be “the at least one elastic member” in line 11. Appropriate correction is required.
Claim 3 objected to because of the following informalities: “the subject’s teeth” should be “a [[the]] subject’s teeth” in line 3. Appropriate correction is required.
Claim 5 objected to because of the following informalities: “the movable surface member” should be “the at least one movable surface member” in line 1. Appropriate correction is required.
Claim 6 objected to because of the following informalities: “the movable surface member” should be “the at least one movable surface member” in line 1. Appropriate correction is required.
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 and 7-8 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. Claims 3-6 are also rejected due to their dependency on claim 1.
Claim 1 recites the limitation "the upper wall" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the lower wall" in line 5. There is insufficient antecedent basis for this limitation in the claim.
The term “generally” in claim 1 is a relative term which renders the claim indefinite. The term “generally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the limitation “the lower wall extending in a second generally opposite direction” is rendered indefinite.
Claim 1 recites the limitation "the direction" in line 12. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "the upper movable surface member" in line 2. There is insufficient antecedent basis for this limitation in the claim. The claim was examined as best understood.
Claim 3 recites the limitation "the lower movable surface member" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. The claim was examined as best understood.
The term “generally” in claim 5 is a relative term which renders the claim indefinite. The term “generally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the limitation “a first portion having a first end and a second opposite end and is generally flat” is rendered indefinite.
The term “generally” in claim 6 is a relative term which renders the claim indefinite. The term “generally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the limitation “a first side portion extending from the first end and generally perpendicular to the first portion and a second side portion extending from the second end and generally perpendicular to the first portion and parallel to the first side portion” is rendered indefinite.
Claim 7 recites the limitation "the flexible member" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the flexible member" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (KR 200460724 Y1).
Regarding claim 1, Kim discloses a bite block (1 – figure 1, a main body that is inserted into the mouth: paragraph 0021) for using during endoscopic procedures (the bite block [1] is used during endoscopic procedures: paragraph 0001), the bite block (1) comprising: a tubular body (11 – figure 1, oral cavity supporting part [11]: paragraph 0022) having an internal lumen (12 – figure 1, a through-hole which the endoscope cable passes through: paragraph 0023) configured to receive an endoscope (the internal receives the endoscope: paragraph 0043), and having an upper outer surface (A – see annotated figure 1, an upper outer surface of the tubular body) and a lower outer surface (B – see annotated figure 1, a lower outer surface of the tubular body); a front plate (10 – figure 1, front side support parting which supports the lips: paragraph 0022) comprising an upper wall portion (C – see annotated figure 1, upper wall portion of the front plate) and a lower wall portion (D – see annotated figure 1, lower wall portion of the front plate), both connected to the tubular body (11) (see annotated figure 1, the upper [C] and lower wall portions [D] are connected to the tubular body [11]: paragraph 0023) and the upper wall (C) extending in a first direction (see annotated figure 1, the upper wall [C] extends in the first direction upwards) and the lower wall (D) extending in a second generally opposite direction (see annotated figure 1, the lower wall [D] extends in a second direction opposite the first direction); at least one movable surface member (20 – figure 4, a shock absorbing portion to protect the teeth when the upper and lower teeth strongly bite the tooth buffer member [2 – figure 4] against each other; the tooth buffer member [2] comprising the shock absorbing portion [20] is a soft ring shape, therefore, when the user bite onto the shock absorbing portion [20], it is a movable surface member: paragraph 0024/0026/0031) mounted to at least one of the upper outer surface (A) and the lower outer surface of the tubular body (B) (figure 4/see annotated figure 1, the at least one movable surface member [20] is mounted onto the groove [13 – figure 4] of the tubular body [11]; hence, it is mounted onto both the upper outer surface [A] and lower outer surface of the tubular body [B]: paragraph 0024-0025) and configured to move relative to the tubular body (11) (figure 3/figure 4, the at least one movable surface member [20] is configured to move relative to the tubular body [11] since the at least one movable surface member [20] is used to absorb impact/shock from the user’s teeth: paragraph 0028/0031); and at least one elastic member (22 – figure 4, a weak portion that increases elastic force that allows the tooth buffer member [2] that facilitates attachment and detachment from the tubular body [11]: paragraph 0029-0030) joining the movable surface member (20) to the tubular body (11) (figure 4, the at least one elastic member [22] assists in joining the movable surface member [20] to the tubular body [11] via groove [13]: paragraph 0029-0030), whereby the elastic member (22) is configured to exert a force against movement of the movable surface member (20) in the direction of the tubular body (11) (the elastic member [22] exerts a force [impact absorption/restoring force] against movement of the movable surface member [20] in the direction of the tubular body [11] [such as when a user bites onto the movable surface member {20} or when user releases bite from the movable surface member {20}] when the tooth buffer member [2] is placed on the tubular body [11] via the groove [13]: paragraph 0028-0031).
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Annotated figure 1: front view of Kim’s bite block
Regarding claim 2, Kim discloses the invention as discussed in claim 1. Kim further discloses comprising a strap or band (141 – figure 10, a connection bands: paragraph 0038) connected to the bite block (1) and configured to retain the bite block (1) to a subject’s head (the band [141] retains the bite block [1] to the subject’s head: paragraph 0038).
Regarding claim 4, Kim discloses the invention as discussed in claim 1. Kim further discloses wherein the bite block (1) comprises an upper movable surface member (Z – see annotated figure 2, an upper movable surface member; a shock absorbing portion to protect the teeth when the upper and lower teeth strongly bite the tooth buffer member [2 – figure 4] against each other; the tooth buffer member [2] comprising the shock absorbing portion [20] is a soft ring shape, therefore, when the user bite onto the shock absorbing portion [20], it is a movable surface member: paragraph 0024/0026/0031) and a lower movable surface member (E – see annotated figure 2, a lower movable surface member; a shock absorbing portion to protect the teeth when the upper and lower teeth strongly bite the tooth buffer member [2 – figure 4] against each other; the tooth buffer member [2] comprising the shock absorbing portion [20] is a soft ring shape, therefore, when the user bite onto the shock absorbing portion [20], it is a movable surface member: paragraph 0024/0026/0031).
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Annotated figure 2: back view of Kim’s bite block
Regarding claim 5, Kim discloses the invention as discussed in claim 1. Kim further discloses wherein the movable surface member (20) comprises a first portion (F – see annotated figure 3, a first portion) having a first end (G – see annotated figure 3, a first end of the first portion) and a second opposite end (H – see annotated figure 3, a second end of the first portion that is opposite of the first end) and is generally flat (see annotated figure 3/figure 2/figure 5, the first portion [F] is generally flat).
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Annotated figure 3: annotated of the first portion and side portions
Regarding claim 6, Kim discloses the invention as discussed in claim 5. Kim further discloses wherein the movable surface member (20) further comprises a first side portion (I – see annotated figure 3, a first side portion) extending from the first end (G) (see annotated figure 3, the first side portion [I] extends from the first end [G]) and generally perpendicular to the first portion (F) (see annotated figure 3, the first side portion [I] is generally perpendicular to the first portion [F]) and a second side portion (J – see annotated figure 3, a second side portion) extending from the second end (H) and generally perpendicular to the first portion (F) (see annotated figure 3, the second side portion [J] is generally perpendicular to the first portion [F]) and parallel to the first side portion (I) (see annotated figure 3, the first [I] and second side portions [J] are parallel to each other).
Regarding claim 7, Kim discloses the invention as discussed in claim 1. Kim further discloses wherein the flexible member (22) comprises one or more of an elastic spring, an elastic hinge and an elastic strip (figure 4, the flexible member [22] is a strip of elastic material: paragraph 0031).
Regarding claim 8, Kim discloses the invention as discussed in claim 1. Kim further discloses wherein the flexible member (22) comprises one or more elastic hinges (24 – figure 2, the tooth buffer member [2] comprising the flexible member [22] also comprises a step [23] formed on the periphery of the front end thereof to be caught by the locking step [131] of the front end of the fitting groove [13] and also comprises an inclined surface [24] thereof corresponding to the inclined surface [132] formed at the end of the fitting groove [13]. As a result, there is a space [211] help absorb the impact from the teeth bite, which can change the angle between the at least one movable surface member [20] and inclined surface [24] [see examiner further notes below]: paragraph 0028).
Examiner further notes: in the instant application’s specification, hinge was defined by pair of walls to form an angle joint (page 8).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR 200460724 Y1) in view of Kim Byung Su (KR 100915624 B1).
Regarding claim 3, Kim discloses the invention as discussed in claim 1.
However, Kim fails to disclose comprising at least one of an upper ridge and a lower ridge extending from the upper movable surface member and the lower movable surface member, respectively, and configured to interact with the subject’s teeth to resist the bite block from sliding out of a subject’s mouth in use.
Kim Byung Su teaches comprising at least one of an upper ridge (K – see annotated figure 4, plurality of upper ridges) and a lower ridge (L – see annotated figure 4, plurality of lower ridges) extending from an analogous upper movable surface member (3 – see annotated figure 4, upper teeth support portion made of silicone to protect and support the teeth when force is applied [since silicone is elastic, if a force is applied, the surface is movable]: Background of the Invention) and an analogous lower movable surface member (M – see annotated figure 4, lower teeth support portion made of silicone to protect and support the teeth when force is applied [since silicone is elastic, if a force is applied, the surface is movable]: Background of the Invention), respectively, and configured to interact with the subject’s teeth to resist an analogous bite block (figure 1, a mouthpiece for an endoscope examination: Background of the Invention) from sliding out of a subject’s mouth in use (see annotated figure 4, there are upper ridges [K] on the upper movable surface member [3] and lower ridges [L] on the lower movable surface member [M]; the ridges [K/L] prevent the teeth from slipping from the bite block [figure 1]: Background of the Invention).
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Annotated figure 4: cross section view of the mouthpiece of Kim Byung Su
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the movable surface members of Kim with ridges extending from the movable surface members as taught by Kim Byung Su in order to provide a bite block that has an improved movable surface members that helps secure the bite block to the user’s mouth and prevent the teeth from slipping (Background of the Invention, Kim Byung Su).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW JUN-WAI MOK whose telephone number is (703)756-4605. The examiner can normally be reached 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alireza Nia can be reached at (571) 270-3076. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW JUN-WAI MOK/Examiner, Art Unit 3786
/ALIREZA NIA/Supervisory Patent Examiner, Art Unit 3786
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