Status under America Invents Act
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Objection to the Drawings
The drawings (Figures 1-12, filed November 15, 2024) are objected to under 37 CFR 1.84 (b)(1) because black and white photographs are not ordinarily permitted in utility applications because they reproduce poorly. Conventional drawings are a practical medium for illustrating the claimed invention.
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.
Rejections based on 35 U.S.C. 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 2 and 4-12 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.
In regard to claim 2, it is unclear how the “second poseable wire integrated into the tubing of the second suction tube” relates to that already set forth in line 7 of parent claim 1.
In claims 4, 5, and 6, it is unclear how the “open channel” of the first and second lip retractors relates to the claimed inner and outer surface of the lip retractors. As worded in the claims, it is unclear if the “outer surface” is being defined as having the “open channel” or if it is the “lip retractor” has the “open channel.” It would help to clarify what is being claimed if the “open channel” of the first and second retractors were further described as “for receiving a patient’s lips.” Additionally, in claims 4, 5, and 6, the “first retractor flange” and the “second retractor flange” are defined as “extending outwards from the other surface.” It is unclear what “other surface” is being referred to. The claims each set forth an “inner surface” and an “outer surface” for the first and second lip retractors, but provide no basis for the further claimed “other surface.”
Rejections based on Prior Art
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anderson (US 7,785,105).
In regard to claim 1, Anderson discloses an intra-oral dental appliance (note annotated Figure 8, below) comprising: an external member (40, 42); a flexible and poseable first suction arm 20 (left side) comprising: a first end; a second end 22, hollow tubing; and a suction tip 22 provided at the second end 22 of the first suction arm; a flexible and poseable second suction arm 20 (right side) comprising: a first end; a second end 22; hollow tubing; a poseable wire integrated into the tubing (see column 8, lines 23-26, “A compliant ductile metallic wire is embedded within the walls of the plastic tubing”); and a suction tip 22 provided at the second end 22 of the second suction arm; and a connector (see column 8, lines 18-21, “The operatory suction tubing can employ a Y-shaped fitting so that multiple saliva ejectors can be used during a patient’s treatment”) connected to the first end of the first suction arm and the first end of the second suction arm, the connector connectable to a vacuum source, wherein the second end of the first suction arm is positionable independently from the second end of the second suction arm, and wherein the first suction arm and the second suction arm connectable (element 43, note further column 9, lines 46-55, “the lip retractors 40 can also be equipped with guides, notches or openings to facilitate passage of the saliva ejectors 20”) to the external member.
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In regard to claim 2, note Anderson column 8, lines 23-27. In regard to claim 3, note the Anderson disclosed slits (column 8, lines 36-37) that form the claimed “apertures.” In regard to claim 4, note annotated Figure 1 below of Anderson identifying each of the claimed elements.
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Additionally, with regard to the “flexible resilient member” limitation of claim 4, note column 7, line 67-column 8, line 3 indicating that at least members 36 are flexible to allow for insertion of the device into the patient’s mouth.
Claims 6-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cohen et al (US 4019,255).
As best illustrated in the annotated Figure 2 of Cohen et al below, Cohen et al disclose an external member 15, 16 for keeping a patient's mouth open (Fig 1), the external member
comprising: a first lip retractor (17, left side of Fig 2) having a generally arcuate shape with an inner surface and an outer surface having an open channel (for receiving a patient’s lips, Fig 1) with a substantially semi-circular cross-section; a second lip retractor (17, right side of Fig 2) having a generally arcuate shape with an inner surface and an outer surface having an open channel with a substantially semi-circular cross-section; a first retractor flange 25 (left side of Figure 2) having a front end connected to the first lip retractor 17 and extending outwards from the other surface (? – note 35 U.S.C. 112 rejection above) of the first lip retractor 17; a second retractor flange 25 (right side of Fig 2) having a front end connected to the second lip retractor 17 and extending outwards from the other surface (? – note the 35 U.S.C. 112 rejection above) of the second lip retractor; a first wing member (left side of Figure 2) attached to the first lip retractor 17 and extending backwards from the inner surface of the first lip retractor (as identified in the annotated Figure 2 the first wing member integrally extends backwards from the retractor element 17); a second wing member (right side of Figure 2, consistent with the first wing identification) attached to the second lip retractor 17 and extending backwards from the inner surface of the second lip retractor 17; a flexible resilient member 27 connected between the first retractor flange 25 (left side) and the second retractor flange 25 (right side), the flexible resilient member biasing the first lip retractor 17 (left side) and the second lip retractor 17 (fight side) apart; a first aperture (identified in annotated Figure 2) sized to accept tubing 36 and passing through at least one of: the first lip retractor 17; and, the first retractor flange; a first opening (identified in annotated Figure 2) in the inner surface (identified in annotated Figure 2) of the of the first lip retractor sized to allow tubing 36 to pass through the first opening, the first opening leading into the first aperture (it is noted that the limitation of an opening leading to an aperture is open to broad interpretations as an aperture is an opening – defining the boundary between where an aperture ends and the opening begins is subjective); a second aperture (right side of annotated Figure 2) sized to accept tubing 36 and passing through at least one of: the second lip retractor 25 (right side of Figure 2); and, the second retractor flange; and a second opening in the inner surface of the of the second lip retractor sized to allow tubing to pass through the second opening, the second opening leading into the second aperture (note the remarks with respect to the first aperture/opening above).
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In regard to claim 7, note the identified front and back walls in annotated Figure 2 of Cohen et al above. In regard to claim 8, the boundary between the “front wall of the lip retractor” and “retractor flange” where the two elements are an integral continuous piece (as with applicant’s disclosed invention) is a subjective interpretation and for purposes of this rejection the right side of the identified first aperture above is a “portion” that passes through the front wall and the left side of the identified aperture is the “portion” that extends through the retractor flange. In regard to claim 9-11, note the remarks with respect to claim 8. In regard to claim 12, the external member of Cohen et al is capable of receiving a tubing 36 that is pressure fitted into the aperture.
Allowable Subject Matter
The prior art of record fails to teach or reasonably suggest an external member for keeping a patient’s mouth open that includes first and second lip retractors, first and second flanges, first and second wing members, a flexible member connected between the first and second flanges, first and second apertures extending through the first and second flanges and more particularly first ans second channels provided in the first and second wing members with an outer wall of the channel extending further than an inner wall all as explicitly set forth in pending claim 5. Accordingly claim 5 would be allowable if rewritten to overcome the 35 U.S.C. 112 rejection above. (note also the typographical error in the “second channel” limitation).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ralph Lewis whose telephone number is (571)272-4712. The examiner can normally be reached Monday-Friday from 9AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Edelmira Bosques 571 270-5614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RALPH A LEWIS/Primary Examiner, Art Unit 3772 (571) 272-4712