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
1. Applicant’s election without traverse of Group I- claims 1-10 in the reply filed on 09/04/2026 is acknowledged.
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.
2. Claims 5 and 7 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 5, claim 5 uses the phrase “applying an adhesive to an exposed inner side of after the sensor is positioned in the pocket”. It is entirely unclear to the Examiner what is being claimed, and therefore this statement is indefinite. It appears as if some words were deleted.
Regarding claim 6, claim 6 recites the limitation "the adhesive" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
3. Claims 1-8, and 10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Weinstein et al. (US 2023/0082672; hereafter Weinstein).
Regarding claim 1, Weinstein teaches a method for forming an intraoral monitor (Abstract) comprising providing a first base mold corresponding in shape to at least a portion of a set of teeth (mold- shown in Figure 37A) and then thermoforming an inner retainer around the first base mold ([0315]). After the inner retainer is formed, at least one sensor is attached to the inner retainer ([0318]; see Figure 38). Following the attachment of the sensor, an outer retainer is formed on the inner retainer ([0324]; noted as accomplished by “vacuum forming” in [0321]), then the outer retainer is then coupled to the inner retainer (an additional curing step- [0324]). The combination of the mold, inner retainer, and sensor can be interpreted as the second base mold, and in so doing takes the shape of the first base mold, which is noted as having the topography of the user’s teeth ([0317]) and thus corresponds to a set of teeth and the presence of the sensor corresponds to the sensor. This gives the outer retainer the ability to mount the set of teeth and the overall shape of teeth, and thus the outer surface comprises an occlusal side, a buccal side, and a lingual side just like teeth. The sensor is positioned on the buccal side of the retainer ([0323]; see also Figure 41). As the outer retainer is thermoformed, its inner side makes contact by positioning with the sensor, which makes the shape of a pocket or opening in the outer retainer. The positioning and pocket forming step occur at the same time. Following the coupling step, a portion of the outer retainer proximate to the sensor is removed to form an opening in the outer retainer ([0325]).
Regarding claim 2, Weinstein teaches to trim a perimeter portion of the inner retainer ([0328]).
Regarding claim 3, Weinstein teaches to trim a perimeter portion of the outer retainer ([0325]).
Regarding claim 4, Weinstein teaches to apply adhesive to the sensor ([0323]). This is done before the formation of the outer retainer ([0324]), and thus would be relevant to the positioning step.
Regarding claim 5, Weinstein teaches that the adhesive is applied to any present sides of the sensor ([0323]). The Examiner is unsure what is being claimed by claim 5, but this broad teaching of applying adhesive to multiple sides of the sensor would appear relevant to what is sought by Applicant.
Regarding claim 6, Weinstein teaches that coupling the outer retainer to the inner retainer includes curing the adhesive via exposure to ultraviolet light ([0324]).
Regarding claim 7, Weinstein teaches that removing a portion of the outer retainer proximate the sensor includes cutting a portion of the outer retainer away from the sensor, and that this also exposes other electrical components ([0325]). This can include a transducer ([0071]).
Regarding claim 8, Weinstein teaches of applying an adhesive to a seam formed between the outer retainer and the sensor ([0323]-[0324]).
Regarding claim 10, Weinstein teaches that the manufactured product can be around a singular tooth ([0188]), in which case the sensor would be positioned adjacent to a single tooth.
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.
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.
4. 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.
5. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Weinstein as applied to claim 1 above, and in view of Thomas (NPL Webpage- “The Advantages of Laser Cutting”; posted 1/27/2019; PDF included with Office Action).
Regarding claim 9, in applying Weinstein as in claim 1, Weinstein does not teach exposing an overlapping area formed by the outer retainer and the inner retainer to a laser beam, but does teach that an overlapping area formed by the outer retainer and the inner retainer is trimmed ([0325]). Thomas teaches that laser cutting is a preferred cutting technique due to its high precision and accuracy (Paragraph 1 under “Benefits of Laser Cutting” Section of page 2). Trimming by laser would be exposing the overlapping area to a laser beam. It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to apply the laser cutting technique in the trimming step of Weinstein for the advantage of having highly precise, accurate cuts.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER S WRIGHT whose telephone number is (571) 272-8343. The examiner can normally be reached Monday- Friday 8:30am-5:00 pm EST.
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, Philip Tucker can be reached on 571-273-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER S WRIGHT/Examiner, Art Unit 1745
/ALEX B EFTA/Primary Examiner, Art Unit 1745
