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 without traverse of claims 1-8 in the reply filed on 3/23/26 is acknowledged.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/23/26.
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.
Claims 3-5 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 claims 3,4 and 5, the recitation “the appliance surface corresponding to a single molar or premolar” has no prior antecedent basis, and is unclear which appliance surface is being referred to. It is suggested that “the occlusal appliance surface” be changed to –an occlusal appliance surface--. For purposes of this office action, the recitation will be treated as such.
In claim 8, line 3, “of a plurality of adjacent teeth” is unclear. It appears that “of” should be changed to –corresponding to--.
Claim Rejections - 35 USC § 102
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 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 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Clark 20190099242.
With regard to claim 1, Clark discloses a dental appliance 160, comprising at least one polymeric (see paragraph 83, Clark discloses the appliance is an Essix appliance, which is made of plastic) shell (see fig. 7C) having a plurality of cavities shaped to fit over a patient's teeth, the polymeric shell including an occlusal appliance surface (the top surface) shaped to fit over an occlusal tooth surface; and one or more bite interference elements 162’, each bite interference element 162’ formed in the occlusal appliance surface (the top surface, see fig. 7C) and including a partially disc-shaped feature (see elements 162’, which have at least a partial disc shape), extending radially away from the occlusal tooth surface (the top surface) when worn by a patient.
With regard to claim 2, note that the one or more bite interference elements 162’ provide a displacement between upper and lower teeth when worn by the patient. This occurs when a patient bites down on the elements 162’.
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 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Clark 20190099242 in view of Tsai et al 20220257344.
With regard to claim 3, Clark does not explicitly disclose that the one or more interference elements include three partially disc shaped features in an occlusal surface corresponding to a single molar or premolar.
Tsai et al disclose a similar dental appliance, in which a plurality of bite interference elements are on an occlusal surface corresponding to a single molar, and includes three bite interference elements. See figure 2 and paragraph 72, which discloses that there may be anywhere between 2 and 20 bite interference elements.
It would have been obvious to one skilled in the art to include three bite interference elements on the occlusal surface corresponding to a single molar of the appliance of Clark, in view of the teaching of Tsai et al that an appliance may include anywhere between 2 and 20 bite interference elements.
With regard to claims 4,6 and 7, Clark as modified by Tsai et al does not explicitly disclose each bite interference element positioned in the occlusal appliance surface corresponding to a single molar or premolar is spaced between about 1.0 mm and 3.0 mm apart, nor discloses the partially disc-shaped feature of each of the one or more bite interference elements has a diameter of between about 3.5 mm to 4.5 mm, nor the disc-shaped feature of each of the one or more bite interference elements has a width of between about 0.3 mm to 0.7 mm.
It would have been obvious to one skilled in the art to space the bite interference elements between about 1.0 mm and 3.0 mm apart, to form the partially disc-shaped features to have a diameter of between about 3.5 mm to 4.5 mm and a width of between about 0.3 mm to 0.7 mm, with the appliance of Clark/Tsai et al, as a matter of routine optimization since it has been held by the Federal Circuit that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
With regard to claim 5, note how each bite interference element positioned in the occlusal appliance surface corresponding to a single molar or premolar has an apex located in a single plane. See fig. 7C of Clark.
With regard to claim 8, Clark does not explicitly disclose that the one or more bite interference elements include a plurality of bite interference elements formed in the occlusal appliance surface of a plurality of adjacent teeth.
Tsai et al disclose that bite interference elements may be formed in an occlusal appliance surface corresponding to a plurality of adjacent teeth. See fig. 14.
It would have been obvious to one skilled in the art to form the bite interference elements of Clark in an occlusal appliance surface corresponding to a plurality of adjacent teeth, in view of the teaching of Tsai et al that bite interference elements may be included on areas of an appliance that correspond to adjacent teeth.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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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