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 and Species A in the reply filed on December 20, 2025 is acknowledged. The traversal is on the grounds that “independent Claim 1 for an apparatus (frame) and independent Claim 18 for a method are obvious variants of each other having commensurate claim scope.” This is not found persuasive because an apparatus (machine) and a method (process) are statutorily different inventions (see MPEP 2106.03) and therefore cannot be obvious variants.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-20 and 22-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 December 20, 2025. Please note: the examiner is withdrawing all claims not directed to the elected invention of Group I. Requirement for restriction is withdrawn for Claim 11 as it has been amended to depend from claim 1.
Claim Objections
Claims 12-17 and 20 are objected to because of the following informalities: although the claims are withdrawn, the text of the claim should still appear in the listing of the claims – see MPEP 714, 37 CFR 1.121(c) . Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “retraction of the first and second parts of the dental dam over each other” of Claim 3, the portions attached to the dental dam of Claims 3 and 6, the “first and second portions being independently rotatable relative to the intermediate portion” of Claim 6, the “independent rotation of each of the first and second pieces about the intermediate piece” of Claim 7, and the detents selectively engageable of Claims 5 and 8 must be shown or the features canceled from the claims. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Additionally, the drawings are objected to for not having reference numbers to indicate elements. See MPEP 1606.
Specification
The disclosure is objected to because of the following informalities: the specification does not contain reference numbers that correlate with reference numbers on the Figures to indicate claimed subject matter.
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 3-5 and 7-9 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.
Regarding Claim 3, it is unclear what is meant by “retraction of the first and second parts of the dental dam over each other.” The dental dam is not shown in the Figures, so it is difficult to ascertain what specifically is meant that the first and second parts are “over” each other, i.e. do they overlap, or is one higher that the other, or do they cross.
Regarding Claims 4 and 8, it is unclear what is meant by the detent(s) being “selectively engageable” with the hinges. This appears to be a term of degree, in which case one of ordinary skill in the art would not be able to ascertain what constitutes “selectively engageable” and what does not.
Regarding Claims 4 and 5, it is unclear how a detent (singular) engaged with a hinge (singular) is capable of affecting the movement of both (plural) the first and second pieces relative to each other.
Regarding Claim 7, it is unclear how the “independent rotation of each of the first and second pieces about the intermediate piece” is possible. It appears from the drawings that the pieces rotate relative to the central axis of the hinge, not around the intermediate piece directly.
Regarding Claim 9, it is unclear what is meant by “facilitate fitting of the frame”.
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, 3, 6, 7, 9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ahlers (US 6,299,446 B1).
Regarding Claim 1, Ahlers discloses a frame for a dental dam (abstract), the frame comprising a body (frame of Figure 1) defining two portions (ends of frame 4 and 6) configured to engage with the dental dam and that are situated at opposite sides of the body, the body being conformationally adaptable between an open configuration (Figures 1 and 2) and a retracted configuration (Figure 4) such that the two portions are splayed away from each other in the open configuration to spread out the dental dam (as seen in Figures 1 and 2) and are drawn towards each other in the retracted configuration to fold the dental dam (as seen in Figure 4), where the body is elongated between the opposite sides from a first terminal end to a second terminal end, the second terminal end spaced apart from the first terminal end to form a gap at an end of the frame (in the retracted configuration, terminal ends at 4 and 6 are spaced apart from each other to form a gap).
Regarding Claim 3, Ahlers discloses the frame of Claim 1 and further discloses that the two portions comprise a first piece (end 4 taken with legs 3) defining the first terminal end and capable of attachment to a first part of a dental dam, and the two portions comprise a second piece (end 6 taken with legs 5) defining the second terminal end and capable of attachment to a second part of a dental dam, and the body comprises a hinge of the body (7) coupling the first piece to the second piece to allow rotation of the first and second pieces relative to each other that would allow retraction of the first and second parts of the dental dam over each other.
Regarding Claim 6, Ahlers discloses the frame of claim 1, and further discloses that the two portions include a first portion attached to a first part of the dental dam and a second portion attached to a second part of the dental dam, the first and second portions attached to each other via an intermediate portion (where the intermediate portion is the hinge pin 7) disposed between the first and second portions, the first and second portions being independently rotatable relative to the intermediate portion to permit the first and second parts of the dental dam to be selectively retracted towards each other (as the first and second portions would be independently rotatable relative to the hinge pin (e.g. around the hinge pin) when the other portion is held stationary).
Regarding Claim 7, Ahlers discloses the frame of claim 6, and further discloses that the first portion is a first piece, the second portion is a second piece, and the intermediate portion is an intermediate piece, the first and second pieces being hinged at opposed ends of the intermediate portion to allow independent rotation of each of the first and second pieces about the intermediate piece (as portions would be connected at opposite ends of the hinge pin, they can be considered a first piece and a second piece with an intermediate piece and are hinged at opposed ends of the intermediate portion allowing rotation about the intermediate piece).
Regarding Claim 9, Ahlers discloses the frame of Claim 1, and further discloses that the two portions comprise first and second portions (3 and 5) that extend in a common plane and connect to each other in a plane that is offset (offset seen in Figure 2) from the common plane to facilitate fitting of the frame.
Regarding Claim 11, Ahlers discloses the frame of claim 1 , and is capable for use in a dental procedure to facilitate intraprocedural access to an oral cavity of a patient, where the body is mounted over the oral cavity such that the open configuration is suitable to hinder access to the oral cavity and the retracted configuration is suitable to allow access to the oral cavity (as would be the case with use of the frame of Ahlers). Please note: as this claim is only functional in nature and does not claim additional structure, the frame of Ahlers is capable of meeting the limitation as claimed.
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 4, 5, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ahlers in view of Sauveur (US 4,820,155).
Regarding Claim 4, Ahlers discloses the frame of claim 3, but does not disclose that the body includes a detent selectively engageable with the hinge to prevent rotation of the first and second pieces relative to each other. In the same art of frames for dental dams, Sauveur teaches a detent (as seen on either side of hinge at 5A and 5B) that is selectively engageable (when selected to be in an extended position it would be engaged) with the hinge and would prevent rotation of first and second pieces (2 and 3) relative to each other (as seen in Figures 2 and 3). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to construct the hinge of Ahlers with detents as taught by Sauveur to provide a more stable connection between the first and second pieces that would be less prone to deformation due to stress.
Regarding Claim 5, Ahlers in view of Sauveur discloses the frame of claim 4, and the detent of Ahlers as modified by Sauveur would be slidably engageable (as it opens it would slide into place) with the first piece to at least partially girdle the hinge to obstruct rotation of the first and second pieces about the hinge (detents would at least partially prevent rotation). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to construct the hinge of Ahlers with detents as taught by Sauveur to provide a more stable connection between the first and second pieces that would at least partially prevent rotation and therefore be less prone to deformation due to stress.
Regarding Claim 8, Ahlers discloses the frame of claim 7, but does not include a first detent selectively engageable with a first hinge hinging the first piece to the intermediate piece to prevent rotation of the first and intermediate pieces about the first hinge, and a second detent selectively engageable with a second hinge hinging the second piece to the intermediate piece to prevent rotation of the second and intermediate pieces about the second hinge. In the same art of frames for dental dams, Sauveur teaches a detent (as seen on either side of hinge at 5A and 5B) that is selectively engageable (when selected to be in an extended position it would be engaged) with the hinge and would prevent rotation of first and second pieces (2 and 3) and intermediate piece relative to each other (as seen in Figures 2 and 3). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to construct the hinge of Ahlers with detents as taught by Sauveur to provide a more stable connection between the first and second pieces that would be less prone to deformation due to stress.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ahlers in view of Shanel (US 4,583,946).
Regarding Claim 10, Ahlers discloses the frame of Claim 1, but does not disclose that the body includes a plurality of spikes extending outwardly therefrom to pierce and frictionally engage with the dental dam. In the same art of frames for dental dams, Shanel teaches spikes extending from a body (as seen in Figure 9). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to utilize the spikes of Shanel on the frame of Ahlers in order to hold the rubber sheet of a dental dam in place as is taught by Shanel (Column 7, lines 7-15).
Conclusion
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.
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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