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 Invention I in the reply filed on 12/22/2025, and of Species 1 in the reply filed on 03/10/2026, (claims 1-9) is acknowledged.
With respect to the invention election, the traversal is on the ground(s) that the restricted inventions are not independent inventions and that examination of both claimed inventions together would not present a serous burden on the U.S. Patent and Trademark Office. This is not found persuasive because the issue as to the meaning and intent regarding “independent and distinct” as used in 35 U.S.C 121 and 37 CFR 1.41 has been adequately addressed in MPEP §802.01. Therein, it is stated that the legislative intent was to maintain the substantive law on the subject of restriction practice prior to enactment of 35 USC 121. Such practice permitted restriction between distinct, albeit dependent inventions. If the intent had been otherwise, then only the term “independent” would have been used. Thus, restriction between the distinct inventions set forth in this application is proper even though these inventions are clearly related.
With respect to applicant’s allegation that joinder of these distinct inventions would not present a serious burden to the U. S. Patent and Trademark Office, such allegations relied on the unsupported assumption that the search and the examination of both the invention would be coextensive. Further, while there may be some overlap in the searches of the two inventions, there is not reason to believe that the searches would be identical. Therefore, based on the additional work involved in searching and examining both distinct inventions together, restriction of the distinct inventions is clearly proper.
With respect to the species election, the traversal is on the grounds that the are not mutually exclusive since, it is alleged, they represent different operation modes of the same oral care implement. Applicant’s argument is not persuasive. MPEP §806.04(f) states: “Where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive. Claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first.” That is the case here. Namely, Species 1 (as shown by, e.g., independent claim 1) requires, inter alia, a control circuit configured to generate a first user perceptible stimulus with the sensor indicator unit during the oral care session when the first sensor unit is detecting that the oral surface is free of the oral malady, which is not required by Species 2 (as shown by, e.g., claim 10). Indeed, claim 10 does not require a control circuit at all, never mind one configured according to claim 1. Further, Species 2 requires, inter alia, wherein the oral care implement is configured to operate in one of a normal mode and a quiet mode based on user selection, and wherein upon selection of the quiet mode by the user for an oral care session: (i) the first sensor unit is active during the oral care session; and (ii) the sensor indicator unit is inactive during the oral care session, as which is not required by Species 1.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention or species, there being no allowable generic or linking claim.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show rear surface ref. 288 (of the plate body ref. 286) as described in the specification (note para [0144], and Figs. 16A and 16B). The drawings are objected to because Fig. 16B appears to show reference character ref. 287 designating the front surface ref. 287 of the plate body ref. 286 but it appears to be shown on the rear surface of the plate body ref. 286 which is opposite/inaccurate of that recited in para [0144]). Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
Further, in Fig. 17, it appears reference character ref. 264c (lowermost occurrence; note, there are two occurrences of ref. 264c in Fig. 17) should instead read ref. 262c (e.g., see para [0146]).
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.
Specification
The disclosure is objected to because of the following:
On page 1 of the specification, in para [0001], the phrase “, now United States Patent No. 12,053,294”, or the like, should be added immediately after “2022” in line 2.
On page 41, in para [0141], line 3, it appears “221” should read “210”.
On page 41, in para [0141], line 3, it appears “engagement portion” should read “engagement component” for clarity and consistency purposes.
On page 48, in para [0156], line 15, it appears “10 O’ clock” should instead read “12 O’ clock”.
Appropriate correction is required.
Claim Objections
Claims 1 and 5 are objected to because of the following:
Regarding claim 1, the word “and” should apparently be added immediately after “user;” in line 3.
Regarding claim 5, the word “switching” in line 10 should apparently be replaced with “switch”.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: motion inducing unit in claim 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Based on a review of the specification, a motion inducing unit is interpreted to include an eccentric motor, a vibration generator, or equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,484,253 to Gatzemeyer et al. (“US ‘253”), which teaches an oral care system. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-19 of US ‘253 appear to disclose all structural features of present claims 1, 2 and 4.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,484,253 to Gatzemeyer et al. (“US ‘253”) in view of US 8,337,213 to Puurunen et al. (“US ‘213”).
Regarding present claim 3, the claims of US ‘253 discloses a system wherein the sensor indicator unit emits light (see, e.g., claim 6) but do not explicitly teach the system wherein the sensor indicator unit is in the form of a light ring provided on the handle of the oral care implement and circumscribing a longitudinal axis of the handle. However, indicator units in the form of a light rings provided on handles of oral care implements and circumscribing longitudinal axes of the handles were known in the art as effective for indicating a status of the implements (see, e.g., US ‘213 at, inter alia, col. 10, lines 48-56) and it would be obvious to one of ordinary skill in the art would find it obvious to modify the system of the US ‘253 claims as was known wherein the sensor indicator unit is in the form of a light ring provided on the handle of the oral care implement and circumscribing a longitudinal axis of the handle, with a reasonable expectation of success, since it is known as effective for indicating a status of implements. Note that changes in shape are prima facie obvious, as is rearrangement of parts. MPEP 2144.04(IV)(B) and (VI)(C).
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,484,253 to Gatzemeyer et al. (“US ‘253”) in view of US 2016/0242652 to Van Putten et al. (“US ‘2652”).
Regarding present claim 9, the claims of US ‘253 discloses a system wherein the first sensor unit is a plaque detection sensor (see, e.g., claim 5) but do not explicitly teach the system wherein the plaque detection sensor comprises a light source and an optical sensor. However, plaque detection sensors comprising light sources and optical sensors are known in the art as effective for determining the presence of absence of plaque (see, e.g., US ‘2652 at, inter alia, para [0051]) and the skilled artisan would find it obvious to modify the system of the US ‘253 claims as was known wherein the plaque detection sensor comprises a light source and an optical sensor, with a reasonable expectation of success, since they are known as effective for determining the presence of absence of plaque.
Allowable Subject Matter
Claims 5-8 are objected to as being dependent upon a rejected base claim (and claim 5 is objected to on other grounds as discussed above), but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims (and claim 5 properly amended to cure the objection).
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art reference is US 2018/0168332 to Wagner et al., which teaches a brushing device. The prior art references of record, taking alone or in combination, do not anticipate or suggest fairly the limitations of a timer unit configured to track time during performance of the oral care session; the control circuit further comprising a second sensor unit configured to determine orientation of the oral care implement during the oral care session; the control circuit further configured to determine a zone of the user's oral cavity in which the oral care tool is working during the oral care session based on data from the first sensor unit and the second sensor unit; the control circuit further configured to: upon detecting that the oral care tool is working in a singular zone of the user's oral cavity for a predetermined period of time, switch the sensor indicator unit from generating the second user perceptible stimulus to generating the first user perceptible stimulus despite the first sensor unit continuing to detect the presence of the oral malady on the oral surface, thereby prompting the user to move the oral care tool to a different zone of the user's oral cavity for working (as in claim 5), or the first sensor unit further configured to detect whether or not the oral care tool of the oral care implement is positioned within the user's oral cavity; the oral care implement further comprising a motion inducing unit in operable cooperation with the control circuit and configured to impart motion to the oral care tool; the control circuit further configured to: operate the motion inducing unit to impart a first type of motion to the oral care tool when the first sensor unit detects that the oral care tool of the oral care implement is positioned within the user's oral cavity; and operate the motion inducing unit to impart a second type of motion to the oral care tool when the first sensor unit detects that the oral care tool of the oral care implement is not positioned within the user's oral cavity, the first and second types of motion being different from one another (as in claim 6), in combination with the other structural elements as instantly recited. Upon further search no other prior art has been located at the date of this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2017/0013952 to Li teaches a toothbrush
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC GOLIGHTLY whose telephone number is (571)270-3715. The examiner can normally be reached M-F: 10 am - 7 pm.
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/ERIC W GOLIGHTLY/Primary Examiner, Art Unit 1714
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