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 Species B drawn to claims 1-20 in the reply filed on 04/13/2026 is acknowledged.
No Claims are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/13/2026.
Claim Objections
Claim 8 is objected to because of the following informalities: the limitations, “…wherein the seal is arranged to be positioned between a dentition of the user and lips of the user” should read “…wherein the seal is configured . Appropriate correction is required.
Claim 17 is objected to because of the following informalities: the limitations, “…An apparatus comprising: an arched seal arranged to: engage an oral appliance comprising an upper arched frame and a lower arched frame; be positioned between a dentition of a user and lips of the user; exert a tensile force between the upper arched frame and the lower arched frames to pull the lower arched frame in an anatomically anterior direction relative to the upper arched frame; configured to inhibit breathing through a mouth of the user; and extend beyond cuspids of the dentition” should read, “An apparatus comprising: an arched seal arranged to: engage an oral appliance comprising an upper arched frame and a lower arched frame; configured to be positioned between a dentition of a user and lips of the user; exert a tensile force between the upper arched frame and the lower arched frames to pull the lower arched frame in an anatomically anterior direction relative to the upper arched frame; inhibit breathing through a mouth of the user; and configured to extend beyond cuspids of the dentition”. Appropriate correction is required.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-4 and 8-10 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 of U.S. Patent No. (12,186,231 B2). Although the conflicting claims are not identical, they are not patentably distinct from each other because the application claims are a broader recitation of the invention than that of the patented application.
Claim 1 of the instant application recites an oral appliance comprising: an upper arch arranged to be positioned proximate a maxillary dentition of a user, the upper arch comprising a first tab and a second tab positioned on opposite sides of a plane substantially bisecting the upper arch; and a seal defining a first receptacle and a second receptacle arranged to receive the first and second tabs to couple the seal to the upper arch and to inhibit breathing through a mouth of the user.
Claim 1 of U.S. Patent No. (12,186,231 B2) recites: an oral appliance configured to inhibit breathing through a mouth of a user, the oral appliance comprising: an upper arch configured to be positioned within the mouth proximate a maxillary dentition of the user when the upper arch is positioned in the mouth, the upper arch comprising a first upper attachment point and a second upper attachment point, the first upper attachment point and the second upper attachment point being positioned, with respect to each other, on opposite sides of a plane substantially bisecting the upper arch; a seal configured to couple to the upper arch at the first upper attachment point and the second upper attachment point to inhibit breathing through the mouth when the oral appliance is positioned in the mouth, each of the first upper attachment point and the second upper attachment point comprises a tab that extends from the upper arch, the seal comprises a first receptacle and a second receptacle, each of the first receptacle and the second receptacle configured to receive at least one tab to couple the seal to the upper arch; and an electronic device coupled to the seal, the electronic device configured to monitor a feature of an environment proximate the seal.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between claim 1 of the current application and claim 1 of U.S. Patent No. (12,186,231 B2) lies in the fact that the patented claims include many more elements and is thus much more specific. Thus, the invention of patented claim 1 is in effect a “species” of the “generic” invention of the instant application claim 1. It has been held that the generic invention is “anticipated” by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 of the instant application is anticipated by claim 1 of U.S. Patent No. (12,186,231 B2), it is not patentably distinct from claim 1 of U.S. Patent No. (12,186,231 B2).
All of the limitations of claim 2 of the instant application can be found in claim 2 of U.S. Patent No. (12,186,231 B2).
All of the limitations of claim 3 of the instant application can be found in claim 3 of U.S. Patent No. (12,186,231 B2).
All of the limitations of claim 4 of the instant application can be found in claim 4 of U.S. Patent No. (12,186,231 B2).
All of the limitations of claim 8 of the instant application can be found in claim 5 of U.S. Patent No. (12,186,231 B2).
All of the limitations of claim 9 of the instant application can be found in claim 6 of U.S. Patent No. (12,186,231 B2).
All of the limitations of claim 10 of the instant application can be found in claim 7 of U.S. Patent No. (12,186,231 B2).
Claims 1-4 and 8-10 and 17-18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 and 13-14 of U.S. Patent No. (10,376,408 B2). Although the conflicting claims are not identical, they are not patentably distinct from each other because the application claims are a broader recitation of the invention than that of the patented application.
Claim 1 of the instant application recites an oral appliance comprising: an upper arch arranged to be positioned proximate a maxillary dentition of a user, the upper arch comprising a first tab and a second tab positioned on opposite sides of a plane substantially bisecting the upper arch; and a seal defining a first receptacle and a second receptacle arranged to receive the first and second tabs to couple the seal to the upper arch and to inhibit breathing through a mouth of the user.
Claim 1 of U.S. Patent No. (10,376,408 B2) recites: an oral appliance configured to inhibit breathing through the user's mouth, the oral appliance comprising: an upper arch configured to be positioned within a user's mouth proximate the user's maxillary dentition when the upper arch is positioned in the user's mouth, the upper arch comprising a first upper attachment point and a second upper attachment point, the first attachment point and the second attachment point being positioned, with respect to each other, on opposite sides of a plane substantially bisecting the upper arch; and a seal configured to couple to the upper arch at the first and second upper attachment points to inhibit breathing through the user's mouth when the oral appliance is positioned in the user's mouth, each of the first and second attachment points comprises a tab that extends from the arched frame, the seal comprises a first receptacle and a second receptacle, each of the first and second receptacles configured to receive at least one tab to couple the seal to the arched frame.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between claim 1 of the current application and claim 1 of U.S. Patent No. (10,376,408 B2) lies in the fact that the patented claims include many more elements and is thus much more specific. Thus, the invention of patented claim 1 is in effect a “species” of the “generic” invention of the instant application claim 1. It has been held that the generic invention is “anticipated” by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 of the instant application is anticipated by claim 1 of U.S. Patent No. (10,376,408 B2), it is not patentably distinct from claim 1 of U.S. Patent No. (10,376,408 B2).
All of the limitations of claim 2 of the instant application can be found in claim 2 of U.S. Patent No. (10,376,408 B2).
All of the limitations of claim 3 of the instant application can be found in claim 3 of U.S. Patent No. (10,376,408 B2).
All of the limitations of claim 4 of the instant application can be found in claim 4 of U.S. Patent No. (10,376,408 B2).
All of the limitations of claim 8 of the instant application can be found in claim 5 of U.S. Patent No. (10,376,408 B2).
All of the limitations of claim 9 of the instant application can be found in claim 6 of U.S. Patent No. (10,376,408 B2).
All of the limitations of claim 10 of the instant application can be found in claim 7 of U.S. Patent No. (10,376,408 B2).
All of the limitations of claim 17 of the instant application can be found in claim 13 of U.S. Patent No. (10,376,408 B2).
All of the limitations of claim 18 of the instant application can be found in claim 14 of U.S. Patent No. (10,376,408 B2).
Allowable Subject Matter
Claims 5-7 and 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application.
Claims 11-16 are allowed.
Conclusion
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/OPHELIA A HAWTHORNE/Primary Examiner, Art Unit 3786
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