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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/6/26 has been entered.
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.
Claims 1-10,12-17, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Saleh et al WO2020089248 in view of Krygier 4889491.
With regard to claims 1,9, Saleh et al discloses a one-piece spacer for acquiring, with a mobile telephone, 2D or 3D representations of a user's teeth, the spacer comprising a tubular part 30 (note that section 48 of tubular part may be transparent (see translation) having a longitudinal axis (X, see fig. 11A) and
-having a length greater than 3 cm (see page 10, lines 8 and 9 of translation);
- opening out via an acquisition opening (top) and through an oral opening (bottom, see fig. 11C).;
- being shaped to be detachably attached to the mobile telephone (16, see fig. 2A), in an acquisition position in which an optical objective of the mobile telephone has an at least partial view of the oral opening through the acquisition opening; and
[AltContent: textbox (Acquisition opening)]- comprising a non-deformable portion (see annotated figure below) opening out through the acquisition opening and, in continuation of the non-deformable portion, a deformable portion (comprising tabs 26A/26B) opening out through the oral opening and deformable, in a service position, between a rest configuration wherein the oral opening has a maximum area and a contracted configuration wherein the oral opening has a minimum area.
[AltContent: textbox (Tubular part comprising non deformable section)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Oral opening)][AltContent: arrow]
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[AltContent: textbox (Deformable section)][AltContent: arrow]
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With further regard to claims 1,2 Saleh et al do not disclose the ratio of the minimum area to the maximum area being less than 0.95, or less than 0.7. However, Saleh et al discloses that the device may be made of plastic (see page 7, line 17) and that element 25 allows the device to elastically move (page 7, lines 7-10). Thus, Saleh et al clearly contemplates that the deformable section has a maximum area and a minimum area.
Further, it appears that one skilled in the art would have had a reasonable expectation of success in selecting the ratio of the minimum area to the maximum area to be less than 0.95, or less than 0.7, as it only involves adjusting the range of expansion of the deformable section to provide the stated desired property of elasticity. Therefore, it would have been obvious to one skilled in the art to provide the ratio of the minimum area to the maximum area of Saleh et al to be less than 0.95, or less than 0.7 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 (CCPA1955).
With further regard to claim 1, Saleh et al does not explicitly disclose the spacer being made in a single piece and the deformable portion being in one piece with the non-deformable portion.
Krygier discloses a one-piece oral spacer (see fig. 3) in which deformable portions 12,18 are formed as one piece with non-deformable portions 24. See col. 2, lines 35-38 and 43-45.
It would have been obvious to one skilled in the art to form the spacer of Saleh et al as a single piece with the deformable portion being in one piece with the non-deformable portion, in view of the teaching of Krygier that it is known to make an intraoral spacer with a one-piece design with both deformable and non-deformable portions. Furthermore, it has been held that to use a one piece construction instead of multiple pieces would merely be a matter of obvious engineering choice. See In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
With regard to claim 3, note that the deformable potion comprises a plurality of tabs 26A/26B, each tab
- partially delimiting the oral opening (see above annotated figure);
- being physically and exclusively connected to the non-deformable portion by a junction (27A/27B) at one end of said tab (each tab 26a/26b); and
- being elastically deformable or bendable under the effect of a thrust (elastic; page 7, lines 7-10) directed towards said longitudinal axis between the rest and contracted configurations.
With regard to claim 4, note that Saleh et al discloses a stop member (see below annotated figure) arranged to block movement of tabs 26A/26B towards the longitudinal axis when the tabs reach a contracted configuration.
[AltContent: arrow][AltContent: arrow][AltContent: textbox (Stop members)]
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With regard to claim 5, note that when the stop members touch each other in a contracted configuration (see above annotated figure), each tab 26a/26b is spaced apart by a distance. However, Saleh et al does not explicitly disclose the distance between each tab is greater than 1 mm, from each of the adjacent tongues.
Further, it appears that one skilled in the art would have had a reasonable expectation of success in selecting the distance between the tabs to be greater than 1mm, when the stop members touch each other in a contracted configuration, as it only involves adjusting the range of expansion of the deformable section to provide the stated desired property of elasticity. Therefore, it would have been obvious to one skilled in the art to provide the distance between the tabs to be greater than 1mm 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 (CCPA1955).
With regard to claim 6, note that Saleh et al discloses a coupling member 25 (see above annotated figure) which couples the movement of at least one tab 26a with the movement of at least one adjacent tab 26b, from the rest configuration to the compacted configuration.
With regard to claim 7, note that Saleh et al discloses a masking flap (see annotated figure below) configured to (capable of) completely mask the space extending between two adjacent tabs.
[AltContent: arrow][AltContent: textbox (At least one tab (tongue) comprises support to keep part of lips away from teeth)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Adjacent tongues)][AltContent: textbox (Masking flap completely masks space between adjacent tongues )]
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With regard to claim 8, note that at least one tab comprises a support shaped so as, in a service position, spread part of the lips of the user away from the user's teeth. See annotated figure above. At least one said support is shaped so as to allow, in the service position, sliding of the user's lips away from the user's teeth.
With regard to claim 10, note that Saleh et al discloses that the plurality of tabs comprises (see below annotated figure),
- right and left lateral tabs comprising right and left lateral supports shaped so as, in a service position, to spread right and left corners of the user’s lips away from the user's teeth, respectively; and
- upper and lower central tabs comprising upper and lower supports shaped so as, in the service position, to spread an upper and lower central of the lips away from the user's teeth, respectively.
[AltContent: arrow][AltContent: textbox (Lower support)][AltContent: arrow][AltContent: textbox (Upper support)][AltContent: arrow][AltContent: textbox (Lower central tab)][AltContent: arrow][AltContent: textbox (Upper central tab)][AltContent: arrow][AltContent: textbox (Right side support)][AltContent: arrow][AltContent: textbox (Left side support)][AltContent: arrow][AltContent: textbox (Left side tab)][AltContent: arrow][AltContent: textbox (Right side tab)]
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With regard to claim 12, note that at least one side support has a free end (see below annotated figure) which, in the rest configuration, extends to a distance from the longitudinal axis so as to elastically spread one cheek of the user in the service position.
Saleh et al does not disclose that the distance is greater than 45 mm.
[AltContent: arrow][AltContent: textbox (Side (lateral) support)][AltContent: textbox (Free end)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Longitudinal axis)]
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Further, it appears that one skilled in the art would have had a reasonable expectation of success in selecting the distance from the longitudinal axis to the free end of the side support to be greater than 45mm, as it only involves adjusting the range of expansion of the deformable section to provide the stated desired property of elasticity. Therefore, it would have been obvious to one skilled in the art to provide the distance from the longitudinal axis to the free end of the side support to be greater than 45mm 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 (CCPA1955).
[AltContent: textbox (Oral opening)] With regard to claim 13, note that each lateral (side) support moves progressively away from the longitudinal axis from the oral opening to a free end of said lateral (side) support.
[AltContent: arrow][AltContent: textbox (Free end)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Lateral support)]
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With regard to claim 14, note that Saleh et al discloses a mechanism 25 for keeping the deformable portion in the contracted configuration which can be activated and deactivated by moving the tabs (see above) wherein each tab partially delimits the oral opening and is physically and exclusively connected to the non-deformable portion by a junction at one end of the tab, and is elastically bendable under the effect of a thrust directed towards the longitudinal axis between rest and contracted configurations.
With regard to claim 15, note that Saleh et al discloses a kit for acquiring 2D or 3D representations of a user's teeth, comprising: a mobile telephone 16 equipped with an optical objective (camera) for acquiring a 2D representation and/or a 3D representation, and a spacer according to claim 1 (as modified, see above rejection/analysis of claim 1), on which the mobile phone 16 is attached. The mobile phone 16 is attached to the spacer in such a way that the objective has at least a partial view of the oral opening (bottom, see figure 11C) through the acquisition opening (top, see figure 11B).
With regard to claim 16, note that Saleh et al discloses a method for acquiring a 2D or 3D representation by means of an acquisition kit according to claim 15 (see above rejection/analysis of claim 15), said method comprising the following steps:
a) partial insertion, by the user, of the spacer into the user's mouth (the deformable section is inserted) to a service position in which the optical objective of the mobile phone 16 has a view of the user's teeth through the oral opening (see page 13 of translation), supports of the spacer separating the lips of the user to expose said teeth; b) activation of the mobile phone 16 so as to acquire said 2D or 3D representation; c) modification of the positioning of the oral opening relative to the user, by rotation around the user, then return to step b). See page 13, lines 21-23 of the translation.
With regard to claim 17, note that Saleh et al discloses a member for coupling the movement of at least one tab with the movement of at least one adjacent tab, from the rest configuration to the contracted configuration, wherein a lateral tab comprises the coupling member, the coupling member bearing on at least one central tab. See below annotated figure.
[AltContent: textbox (Member that couples movement of tab with movement of adjacent tab)]
[AltContent: arrow][AltContent: textbox (Lateral tab)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Central tab)]
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Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 8/6/26 have been fully considered but they are not persuasive.
Applicant presents arguments (pages 6-8 of response) directed toward the newly presented limitations in claim 1 regarding the spacer being a single piece with the deformable portion being in one piece with the non-deformable portion. These arguments have been addressed with a new grounds of rejection as articulated above.
Applicant also presents arguments (pages 8 and 9 of response) regarding the alleged nonobviousness of the ratio of the minimum to maximum areas as claimed. Applicant argues that such areas would not be obvious because Saleh et al discloses that the device can be used with spacers of different sizes, and thus one would utilize different size spacers via replacement, as opposed to optimizing the deformable portion with the ranges as claimed by applicant.
This is not found persuasive. Clearly, Saleh et al discloses that the portion inserted into a user’s mouth is deformable. One skilled in the art would recognize that the deformable portion of Saleh et al is deformable in order to facilitate placement in a user’s mouth. Thus, this deformability clearly includes a maximum and a minimum area (as do all oral retractors that have deformable portions). Therefore, it is the position of the examiner that one skilled in the art would recognize that the maximum and minimum areas of the deformable portion of the Saleh et al device would be obvious for the reasons as stated in the above rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS D LUCCHESI whose telephone number is (571)272-4977. The examiner can normally be reached M-F 800-430.
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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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/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772
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