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 .
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, line 7, --corresponding to a single molar or premolar—should be inserted after “surface”. Appropriate correction is required.
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 1-8,22 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 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 a interference element 162’, the bite interference element 162’ formed in the occlusal appliance surface according to a single molar or premolar (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.
Clark does not explicitly disclose a plurality of interference elements.
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. 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 a plurality of 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 claim 2, note that the 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’.
With regard to claim 3, note that Tsai et al discloses that the plurality of elements may be between 2 and 20 elements, which includes the claimed number of 3 elements as recited. See paragraph 72.
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 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 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.
With regard to claim 22, note that Clark/Tsai et al discloses that the bite interference elements may be sized to fit substantially in the center portion of the occlusal portion of each tooth. See fig. 8A of Clark.
Allowable Subject Matter
Claim 21 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 7/15/26 have been fully considered but they are not persuasive.
Applicant’s arguments are based on the assertion (page 8 of applicant’s response) that Clark does not recognize the importance of using a disc-shaped bite interference element to reduce deformation of the element. This is not found persuasive, as Clark clearly discloses the use of a disc shaped bite interference element. The exact motivation for using the disc shaped element in Clark is irrelevant.
Applicant also argues (pages 8-9 of applicant’s response) that Tsai et al cannot be used to modify the teachings of Clark because Tsai et al discloses the use of ball shaped elements. This is not found persuasive, because the only teaching of Tsai et al that is relied upon to modify Clark is the teaching of multiple (anywhere from 2-20) bite interference elements, disclosed by Tsai et al.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772
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