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 .
Information Disclosure Statement
The listing of references in the specification, for example, p. 7 line 3, p. 9 line 23, p. 22 lines 12-13, and so on throughout the rest of the specification, is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Examiner suggests citing the references mentioned in the Specification in an IDS.
Drawings
The drawings were received on 03 March 2026. These drawings are acceptable.
Claim Objections
Claim 13 is objected to because of the following informalities:
Examiner suggests amending claim 13 lines 2-3 to “[[the]]a ratio of [[the]]a whitening boost”.
Appropriate correction is required.
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.
Claims 1-4, 9-14, 16-17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Davies-Smith et al (U.S. Publication No. 2023/0009906 A1, hereinafter “Davies-Smith”) in view of Rajaiah et al (U.S. Patent No. 2022/0040061 A1, hereinafter “Rajaiah”).
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In regard to claim 1, Davies-Smith discloses a method of whitening teeth (Abstract, Figs. 1-11) using a portable, self-contained light device (300 in Fig. 1, 3A-3B) comprising a light source (330 in Fig. 3A, para. 0038), the method comprising:
applying a whitening composition to the teeth (400 in Fig. 4, para. 0043), wherein the whitening composition comprises a peroxide active having a concentration of 0.05% to 5%, by weight of the whitening composition (para. 0045, weight percentage of 0.1% or 3%);
maintaining the whitening composition on the teeth for a first time period of greater than 0 seconds to about 120 minutes without activating the light source of the portable, self-contained light device (401 in Fig. 4, paras. 0044 and 0047, between 5 and 30 seconds); and
after the first time period, directing electromagnetic radiation from the light source toward the teeth for a second time period of greater than 0 seconds to about 120 minutes (402 in Fig. 4, para. 0048 and 0050, between five and thirty minutes), wherein the electromagnetic radiation is provided at a wavelength between about 400 nm to about 520 nm (para. 0048, 405-415 nm).
Davies-Smith does not disclose that the electromagnetic radiation is an average light intensity of about 200 mW/cm2 or greater.
Rajaiah teaches a similar method of whitening teeth (Figs. 1-6), the method comprising applying a whitening composition to the teeth (para. 0219) and directing electromagnetic radiation from a light source toward the teeth (para. 0221) at a wavelength between about 400 nm to about 520 nm (para. 0224, 400 nm – 500 nm) and an average light intensity of about 175 - 225 mW/cm2 (para. 0224). Rajaiah discloses that the value of the average light intensity needs to be optimized to be suitable for bleaching the tooth (paras. 0278 and 0281). As seen in paras. 0278 and 0281, the device value of average light intensity affects bleaching efficacy and as such the value of the average light intensity is a result effect variable in that changing the value changes the efficacy. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the average light intensity is at least 200 mW/cm2 as a matter of routine optimization since it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05.II.A).
The references and the claimed invention are considered to be analogous to the claimed invention because they are in the same field of tooth whitening methods. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Davies-Smith by specifying the electromagnetic radiation is an average light intensity of about 200 mW/cm2 or greater as taught by Rajaiah in order to allow for increased efficacy in bleaching the teeth (Rajaiah para. 0278).
In regard to claim 2, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith further discloses wherein the first time period is from greater than 0 seconds to about 60 minutes (401 in Fig. 4, paras. 0044 and 0047, between 5 and 30 seconds).
In regard to claim 3, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith further discloses further comprising removing at least a portion of the whitening composition from the teeth (405 in Fig. 4, para. 0055).
In regard to claim 4, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith further sets forth Bloch et al (U.S. Publication No. 2020/0114165 A1) (see Davies-Smith para. 0041) which discloses wherein the portable, self-contained light device (1000 in Fig. 1) is rechargeable (para. 0069, rechargeable batteries).
In regard to claim 9, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith further discloses wherein the concentration of the peroxide active is about 3% or lower, by weight of the whitening composition (para. 0045, 3% weight percentage), and wherein directing the electromagnetic radiation to the teeth provides a whitening boost of at least about 100% compared to a control composition without electromagnetic radiation (Fig. 13 Treatment 1, change in whitening of 3% HP ONW, which is a control composition since the variable is LED device, is slightly more than 3.5 and change in whitening of 3% ONW + LED device is around 8, para. 0064).
In regard to claim 10, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith further discloses wherein the concentration of the peroxide active is about 0.1% by weight of the whitening composition (para. 0045). Davies-Smith does not disclose wherein directing the electromagnetic radiation to the teeth provides a whitening boost of at least about 250% compared to a control composition without electromagnetic radiation, though Davies-Smith does disclose wherein directing the electromagnetic radiation to the teeth provides a whitening boost (Fig. 17).
Davies-Smith discloses that the value of the whitening boost provided by electromagnetic radiation needs to be optimized to be suitable for efficient whitening of the tooth (para. 0068). As seen in para. 0068 and Figs. 14 and 17, the value of the whitening boost provided by electromagnetic radiation affects bleaching efficacy and as such the value of the whitening boost provided by electromagnetic radiation is a result effect variable in that changing the value changes the efficacy. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the directing of the electromagnetic radiation to the teeth provides a whitening boost of at least about 250% compared to a control composition without electromagnetic radiation as a matter of routine optimization since it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05.II.A).
In regard to claim 11, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith does not disclose wherein a ratio of a whitening boost from the electromagnetic radiation to self-reported tooth sensitivity is at least about 1:1.
Rajaiah further discloses wherein a ratio of a whitening boost from the electromagnetic radiation to self-reported tooth sensitivity is at least about 1:1 (paras. 0216-0217, at least about 6).
The references and the claimed invention are considered to be analogous to the claimed invention because they are in the same field of tooth whitening methods. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Davies-Smith by specifying a ratio of a whitening boost from the electromagnetic radiation to self-reported tooth sensitivity is at least about 1:1 as taught by Rajaiah in order to allow for increased efficacy in bleaching the teeth (Rajaiah para. 0278).
In regard to claim 12, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith further discloses wherein the concentration of the peroxide active is about 3%, by weight of the whitening composition (para. 0045, weight percentage of 3%). Davies-Smith does not disclose wherein a ratio of a whitening boost from the electromagnetic radiation to self-reported tooth sensitivity is at least 5:1.
Rajaiah further discloses wherein a ratio of a whitening boost from the electromagnetic radiation to self-reported tooth sensitivity is at least about 5:1 (paras. 0216-0217, at least about 6).
The references and the claimed invention are considered to be analogous to the claimed invention because they are in the same field of tooth whitening methods. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Davies-Smith by specifying a ratio of a whitening boost from the electromagnetic radiation to self-reported tooth sensitivity is at least about 5:1 as taught by Rajaiah in order to allow for increased efficacy in bleaching the teeth (Rajaiah para. 0278).
In regard to claim 13, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith further discloses wherein the concentration of the peroxide active is about 0.1% by weight of the whitening composition (para. 0045). Davies-Smith does not disclose wherein a ratio of a whitening boost from the electromagnetic radiation to self-reported tooth sensitivity is at least 70:1.
Rajaiah further discloses wherein a ratio of a whitening boost from the electromagnetic radiation to self-reported tooth sensitivity is at least 70:1 (paras. 0216-0217, at least about 100).
The references and the claimed invention are considered to be analogous to the claimed invention because they are in the same field of tooth whitening methods. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Davies-Smith by specifying a ratio of a whitening boost from the electromagnetic radiation to self-reported tooth sensitivity is at least 70:1 as taught by Rajaiah in order to allow for increased efficacy in bleaching the teeth (Rajaiah para. 0278).
In regard to claim 14, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith further discloses wherein the second time period is at least about 2 minutes (402 in Fig. 4, para. 0048 and 0050, between five and thirty minutes),
In regard to claim 16, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith further discloses wherein the device further comprises a mouthpiece (mouthpiece in annotated Fig. 1), the mouthpiece comprising a first arm (arm 1 in annotated Fig. 1) having a first inner surface (inner surface 1 in annotated Fig. 3A), a second arm (arm 2 in annotated Fig. 1) having a second inner surface (inner surface 2 in annotated Fig. 3A), and a bite shelf (303 in Fig. 3A, para. 0037) extending along the first inner surface and the second inner surface (Figs. 1 and 3A, para. 0037).
In regard to claim 17, Davies-Smith in view of Rajaiah discloses the invention of claim 16. Davies-Smith further discloses wherein the first arm and the second arm (arm 1 and arm 2 in annotated Fig. 1) extend above and below the bite shelf (Fig. 3A), para. 0037).
In regard to claim 19, Davies-Smith discloses a method of whitening teeth (Abstract, Figs. 1-11) comprising:
providing a portable, self-contained light device (300 in Fig. 1, 3A-3B) comprising:
a mouthpiece (mouthpiece in annotated Fig. 1) comprising a lens (para. 0038, lens plate);
a light source (330 in Fig. 3A) being capable of emitting electromagnetic radiation at a wavelength between about 440 nm to about 470 nm (para. 0040, light source may emit between 375 and 520 nm and is therefore capable of emitting at a wavelength between about 440 nm to about 470 nm);
a battery capable of powering the light source, the battery being rechargeable or replaceable (Davies-Smith sets forth Bloch et al (U.S. Publication No. 2020/0114165 A1) in para. 0041, which discloses a battery capable of powering the light source, the battery being rechargeable (Bloch et al para. 0069, rechargeable batteries));
applying a whitening composition to the teeth (400 in Fig. 4, para. 0043), wherein the whitening composition comprises a peroxide active having a concentration of 0.05% to 3%, by weight of the whitening composition (para. 0045, weight percentage of 0.1% or 3%); and
directing the electromagnetic radiation from the light source toward the teeth after applying the whitening composition to the teeth (402 in Fig. 4, para. 0048 and 0050).
Davies-Smith does not disclose that the electromagnetic radiation is an average light intensity of about 200 mW/cm2 or greater.
Rajaiah teaches a similar method of whitening teeth (Figs. 1-6), the method comprising directing electromagnetic radiation from a light source toward the teeth (para. 0221), the light source being capable of emitting electromagnetic radiation at a wavelength between about 440 nm to about 470 nm (para. 0224, 455 nm) and an average light intensity of 175 - 225 mW/cm2 (para. 0224). Rajaiah discloses that the value of the average light intensity needs to be optimized to be suitable for bleaching the tooth (paras. 0278 and 0281). As seen in paras. 0278 and 0281, the device value of average light intensity affects bleaching efficacy and as such the value of the average light intensity is a result effect variable in that changing the value changes the efficacy. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the average light intensity is at least 200 mW/cm2 as a matter of routine optimization since it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05.II.A).
The references and the claimed invention are considered to be analogous to the claimed invention because they are in the same field of tooth whitening methods. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Davies-Smith by specifying the electromagnetic radiation is an average light intensity of 200 mW/cm2 or greater as taught by Rajaiah in order to allow for increased efficacy in bleaching the teeth (Rajaiah para. 0278).
In regard to claim 20, Davies-Smith discloses a kit for whitening teeth (Figs. 1-11, Abstract, para. 0029) comprising:
a) a whitening composition (211 in Fig. 2B) comprising from about 0.1% to about 3%, by weight of the whitening composition, of a bleaching agent (para. 0045, weight percentage of 0.1% or 3% hydrogen peroxide);
; and
b) a portable, self-contained light device (300 in Fig. 1, 3A-3B) comprising:
a mouthpiece (mouthpiece in annotated Fig. 1) comprising a lens (para. 0038, lens plate);
a light source (330 in Fig. 3A) being capable of emitting electromagnetic radiation at a wavelength between about 440 nm to about 470 nm (para. 0040, light source may emit between 375 and 520 nm and is therefore capable of emitting at a wavelength between about 440 nm to about 470 nm)
a battery capable of powering the light source, the battery being rechargeable or replaceable (Davies-Smith sets forth Bloch et al (U.S. Publication No. 2020/0114165 A1) in para. 0041, which discloses a battery capable of powering the light source, the battery being rechargeable (Bloch et al para. 0069, rechargeable batteries)).
Davies-Smith does not disclose that the electromagnetic radiation is an average light intensity of about 200 mW/cm2 or greater.
Rajaiah teaches a similar kit (Figs. 1-6, para. 0277), comprising a light source (Fig. 6) being capable of emitting electromagnetic radiation toward the teeth (para. 0221) at a wavelength between about 440 nm to about 470 nm (para. 0224, 455 nm) and an average light intensity of 175 - 225 mW/cm2 (para. 0224). Rajaiah discloses that the value of the average light intensity needs to be optimized to be suitable for bleaching the tooth (paras. 0278 and 0281). As seen in paras. 0278 and 0281, the device value of average light intensity affects bleaching efficacy and as such the value of the average light intensity is a result effect variable in that changing the value changes the efficacy. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the average light intensity is at least 200 mW/cm2 as a matter of routine optimization since it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05.II.A).
The references and the claimed invention are considered to be analogous to the claimed invention because they are in the same field of tooth whitening kits. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the light source of Davies-Smith by specifying the light source is capable of emitting electromagnetic radiation at an average light intensity of 200 mW/cm2 or greater as taught by Rajaiah in order to allow for increased efficacy in bleaching the teeth (Rajaiah para. 0278).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Davies-Smith in view of Rajaiah and Cohen et al (U.S. Publication Number 2022/0265409 A1, hereinafter “Cohen”).
In regard to claim 5, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith further discloses further comprising: after the second time period, maintaining the whitening composition on the teeth for a third time period without directing the electromagnetic radiation from the light source toward the teeth (403 and 404 in Fig. 4, para. 0054). Davies-Smith does not disclose that after the third time period, directing the electromagnetic radiation from the light source toward the teeth for a fourth time period of about 2 minutes to about 120 minutes.
Cohen teaches a method of placing a whitening composition on the teeth, and directing the electromagnetic radiation from the light source toward the teeth for a time period of about 2 minutes to about 15 minutes (para. 0026 discloses repeating process).
The references and the claimed invention are considered to be analogous to the claimed invention because they are in the same field of tooth whitening kits. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Davies-Smith in view of Rajaiah after the third time period by adding the step of directing the electromagnetic radiation from the light source toward the teeth for a fourth time period of about 2 minutes to about 15 minutes as taught by Cohen in order to allow for repetition of treatment for daily treatment of internal and external factors of tooth discoloration (Cohen paras. 0026-0027).
In regard to claim 6, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith does not disclose further comprising reapplying the whitening composition on the teeth after the second time period and maintaining the whitening composition on the teeth for a third time period of about 2 minutes to about 120 minutes.
Cohen teaches a method of reapplying a whitening composition on the teeth, after a time period (para. 0026, repeat daily) and maintaining the whitening composition on the teeth for a time period of about 2 minutes to about 15 minutes (para. 0026).
The references and the claimed invention are considered to be analogous to the claimed invention because they are in the same field of tooth whitening kits. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Davies-Smith in view of Rajaiah after the second time period by adding the step of reapplying the whitening composition on the teeth after the second time period and maintaining the whitening composition on the teeth for a third time period of about 2 minutes to about 15 minutes as taught by Cohen in order to allow for repetition of treatment for daily treatment of internal and external factors of tooth discoloration (Cohen paras. 0026-0027).
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Davies-Smith in view of Rajaiah and Sagel (U.S. Publication No. 2011/0306004 A1).
In regard to claim 7, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith does not disclose wherein no photosensitizing agents are applied to the teeth.
Sagel teaches a method wherein no photosensitizing agents are applied to the teeth (paras. 0046, may have other additives so its addition is optional, see also claim 5).
The references and the claimed invention are considered to be analogous to the claimed invention because they are in the same field of tooth whitening kits. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Davies-Smith in view of Rajaiah to specify that no photosensitizing agents are applied to the teeth as taught by Sagel in order prevent inadvertent irritation and sensitivity of the user’s tissue (Sagel para. 0024).
In regard to claim 8, Davies-Smith in view of Rajaiah discloses the invention of claim 1. Davies-Smith does not disclose wherein the whitening composition is free of a photosensitizing agent.
Sagel teaches a method wherein the whitening composition is free of a photosensitizing agent (para. 0046, may have other additives so its addition is optional, see also claim 13).
The references and the claimed invention are considered to be analogous to the claimed invention because they are in the same field of tooth whitening kits. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Davies-Smith in view of Rajaiah to specify that the whitening composition is free of a photosensitizing agent as taught by Sagel in order prevent inadvertent irritation and sensitivity of the user’s tissue (Sagel para. 0024).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Davies-Smith in view of Rajaiah and Chapman et al (U.S. Publication No. 2020/0345472 A1, hereinafter “Chapman”).
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In regard to claim 18, Davies-Smith in view of Rajaiah discloses the invention of claim 16. Davies-Smith does not disclose wherein the bite shelf extends past the first arm and the second arm.
Chapman discloses a device (Figs. 6 and 7, para. 0061) comprising a mouthpiece (mouthpiece in annotated Fig. 6) comprising a first arm (1st arm in annotated Fig. 6), a second arm (2nd arm in annotated Fig. 6), and a bite shelf (600 in Fig. 6, para. 0063), wherein the bite shelf extends past the first arm and the second arm (Fig. 6, para. 0063).
The references and the claimed invention are considered to be analogous to the claimed invention because they are in the same field of tooth whitening systems. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the bite shelf of Davies-Smith in view of Rajaiah to extend past the first and second arms as taught by Chapman in order to allow for an increased bite surface area for a user to improved the likelihood of proper positioning of the mouthpiece within the user’s mouth (Chapman para. 0063).
Response to Arguments
Applicant's arguments filed 03 March 2026 have been fully considered but they are not persuasive.
Applicant argues that in regard to the rejection of claims 1-4, 9-17, and 19-20 under 35 U.S.C. 103 as being unpatentable over Davies in view of Rajaiah, the unexpected results demonstrated in the present application are sufficient to rebut the prima facie case. Applicant argues that the tooth whitening method recited in the claims resulted in the unexpected discovery that combining a low concentration of a peroxide active with a high average light intensity results in an unexpectedly high whitening efficacy, and that a POSITA would not have predicted that high-intensity light is amplified at low peroxide concentrations. Applicant argues that the high whitening efficacy and whitening boost achieved when high intensity electromagnetic radiation is combined with low peroxide concentrations is a counter-intuitive result. Applicant notes that a 0.1% H2O2 composition yields a 275% whitening boost, and a 3% H2O2 composition yields a 113% boost (Table 17, Page 68), and argues that these results are unexpected and run counter to prior art teachings which indicate that increasing light intensity beyond a certain threshold provided only marginal additional benefits. Applicant argues that Davies and Rajaiah, alone or in combination, do not suggest such a relationship, and that while Rajaiah may disclose a range of optional light intensities, they do not teach or suggest that this intensity would have a pronounced effect when used with low peroxide concentrations. Applicant argues that combining Davies and Rajaiah is only obvious in hindsight and that the claimed method as a whole, which requires the combination of low peroxide concentration and high light intensity, yields unexpected results and would not have been obvious to a POSITA at the time of the invention.
Examiner notes that in regard to Applicant’s argument regarding unexpected results, no declaration under 37 CFR 1.132 has been filed. Examiner notes that a declaration should include a description of precisely what was tested. It must include both the invention as claimed, and the closest prior art; a description of all of the test conditions; test results, which must include both the results of the test performed on the invention as claimed, and the results of the test performed on the closest prior art; and an analysis of the test results. The comparison must be under the substantially the same conditions except for the novel features of the invention. Examiner notes that the experimental results of Specification p. 62-68 for “Evaluating Whitening Boost”, compare the Oral Compositions I and II, using the device and method of the claims of the invention, with closest prior art Oral Composition III, using the device and method of the prior art. Examiner notes that the experimental results did not test the prior art Oral Composition III and prior art device using the method of the claims, as they are instead tested using the prior art method. Examiner further notes that Rajaiah also discloses that there are surprising results regarding the use of low concentrations of active agents with electromagnetic radiation (para. 00004, 0306). In an experiment, the composition Example-IA, which contains 0.2857 Wt.% peroxide active (see table of para. 0290) is applied to patient’s teeth, and electromagnetic radiation of 400-500 nm with intensity of about 175-225 mW/cm2 is directed to patient’s teeth (paras. 0290, 0296-0306). The results of the experiment show that the low peroxide concentration with high light intensity results in surprisingly high efficacy and a greater mean change in yellowness of the teeth from a baseline (paras. 0304-0306). In a further experiment, when the composition Example-IA was compared to the composition of a prior art with a higher hydrogen peroxide concentration of 5.25%, Example-IA resulted in a surprisingly high efficacy despite having a lower concentration of hydrogen peroxide (paras. 0311-0315). Therefore, the result of light intensity having a pronounced effect when used with low peroxide concentrations would not be unexpected to a person of ordinary skill in the art as this result is disclosed in prior art. Applicant is directed to the rejections in view of the amendments. Examiner notes that combining Davies and Rajaiah is not hindsight as one of ordinary skill in the art would have been motivated to have modified the method of Davies-Smith, which discloses a low peroxide concentration (Davies-Smith para. 0045), by Rajaiah, which discloses surprising results with a low peroxide concentration (Rajaiah para. 0306), in order to allow for increased efficacy in bleaching the teeth (Rajaiah para. 0278).
In regard to the rejection of 5 and 6 under 35 U.S.C. 103 as being unpatentable over Davies in view of Rajaiah and Cohen, the rejection of claims 7 and 8 under 35 U.S.C. 103 as being unpatentable over Davies in view of Rajaiah and Sagel, and the rejection of claim 18 under 35 U.S.C. 103 as being unpatentable over Davies in view of Rajaiah and Chapman, Applicant argues that Cohen, Sagel, and Chapman do not cure the deficiencies of Davies and Rajaiah and that the unexpected results shown in the present application are sufficient to rebut a prima facie case of obviousness.
Examiner notes that, as discussed in the above response to Applicant’s arguments, Davies in view of Rajaiah discloses the invention of amended claim 1. Applicant is directed to the rejections in view of the amendments.
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.
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/COURTNEY N HUYNH/Examiner, Art Unit 3772
/ERIC J ROSEN/Supervisory Patent Examiner, Art Unit 3772