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 § 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.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sciafani (US 5.890.899) in view of Choi et al. (US 2019/0059714).
Sciafani discloses kit of dental instruments that includes at least one instrument (60) for the left lower side of the dental arch (Figs. 9-13) and the right side (column 5, lines 1-5; column 7, lines 5-7 discloses there are versions for different sides of the mouth that are mirrored); the instruments each having one handle (62); the lower arch instruments having a curved arm (16) directed in the lateral direction with respect to the handle (Figs. 9-13) and one curved arm (18) directed in the front direction (Figs. 9-13); the lateral arms capable of adapting to open the cheeks wide to allow for a scanner (column 6, lines 1-5); wherein the instruments are represented by a single body (column 6, lines 45-47 and column 7, lines 54-56); wherein the instruments for lower arch has a first lower handle (Figs. 9-13); a first front lower arm (the narrow section of 18 in Figs. 10,13); a first lateral lower arm (narrow section of 16 in Figs. 10 and 13); wherein the handle has profile shaped as a parallelpiped with rounded edges (Figs. 10-13); wherein the body of the instrument is represented as a single piece curved plate (Figs. 9-13). As to the limitation of the handles and arms are joined via welding, this is considered a product by process limitation. In product by process claims, the process has not been given patentable weight since the determination of patentability is based on the product itself. See MPEP 2113 & 2173.05 (P). However, Sciafani does not disclose a kit having an instrument for the upper arch as claimed.
Choi et al. teaches a dental instrument (500) for the upper arch (Fig. 9) made of a single wire [0050]; that includes an upper handle that is parallelpiped shaped with rounded edges (520) and two lateral arms (510) (Figs. 7,9) that is adapted/capable of opening the cheeks wide and allowing the sliding of a scanner [0032]. It would have been obvious to one having ordinary skill in the art to modify Sciafani with the upper arch instrument of Choi in order to provide a tool that will allow the dentist to open/isolate various portions of the mouth to perform a dental procedure (i.e. scanning). However, Sciafani/Choi fails to disclose wherein the kit of instruments comes in various claimed dimensions and the various materials.
It is known that patients mouth comes in various sizes and dimensions and therefore there is a need for a tool that can be used on the various sized mouths of a patient. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the Sciafani/Choi to include the claimed range of dimensions, since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233.
Furthermore it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Sciafani/Choi to be made of the various claimed materials, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments filed 02/02/2026 have been fully considered but they are not persuasive. The applicant states that Sciafani is used for a different purpose and that it does not retrack the cheeks and does not provide the handle shape that allows the operator to correctly manipulate and use the instrument together with an intraoral scanner. The applicant further argues that Sciafani makes no mention of intraoral scanning. However, it is noted that the claims are directed to dental kit and that the use of an intraoral scanner is only being functionally claimed. It is well established that a recitation with respect to the manner in which an apparatus is intended to be employed i.e., functional limitation, does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations as claimed. With respect to the shape of the handle, the applicant did not provide any structural differences in the claims nor in the arguments from the handle of the prior art. Furthermore, Sciafani does disclose that the instrument where “the buccal member 16 may also be dimensioned so as to deflect the patient's cheek a desired distance away from the mandibular arch” (see column 5, line 64 – column 6, line 12). Thus, it is the examiner position that Sciafani discloses the invention as claimed and is capable of performing the function as claimed. The examiner encourages the applicant to further distinguish the present invention structurally from the prior art. The applicant argues that Choi does not solve all the deficiencies of providing dental instruments for the lower arches. However, Choi is only being used to provide a device for retracting the upper arch. The motivation is to allow a dentist with the proper equipment to retract and isolate various portions of the mouth in order to adequately perform the dental procedures.
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 SUNIL K SINGH whose telephone number is (571)272-3460. The examiner can normally be reached M-F 9:00AM - 5:00PM.
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, Edward Lefkowitz can be reached at 571-272-2180. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722
Prosecution Insights