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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
(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.
Claim(s) 1 and 6-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Turkbas (US 20190209911 A1).
Regarding claim 1, Turkbas discloses a mouthguard 100 (Fig. 1-8) comprising:
a pair of spaced lateral bite wings 110a/100b (Fig. 108 and [0030]), each lateral bite wing 110a/110b having an upper dental occlusal surface 124a/124b ([0030] “upper teeth engaging surface 124a, 124b”), a lower dental occlusal surface 128a/128b ([0030] “lower teeth-engaging surfaces 128a, 128b), a front portion 130a/130b ([0030] respective forward portions 130a, 130b), and a rear portion 132a/132b (see [0030] “opposite rearward portions 132a, 132b”); and
a channel 115/158 (Fig. 1-8, see [0033] the conduit 115 being the structure for forming an air way channel 158) positioned between the front portions 130a/130b of the pair of lateral bite wings 110a/110b (Fig. 1-8 and [0034]) and having a front end 116, a rear end 118, an upper wall 150, a lower wall 154 (see Fig. 1-8 and [0034]), and a support portion 186 (Fig. 2, [0038] “interior wall 186”), wherein the support portion 186 extends from the front end 116 to the rear end 118 (see [0038]) to form a pair of airways 158 (Fig. 1-3 and [0038]) extending from the front end 116 to the rear end 118 within the channel 115/158 (Fig. 1-8 and [0038]), and wherein each airway 158 has a front opening 162 at the front end 116 and a rear opening 164 at the rear end 118 (Fig. 1-8 and [0037-0038]).
Regarding claim 6, Turkbas discloses the invention of claim 1 above.
Turkbas further discloses a front lip guard 120 (Fig. 1-8, [0030, 0039]) positioned at the front end 116 of the channel 115/158 and extending outward (Fig. 1-8, [0030] the lip shield member 120 is disposed about and extends radially outward with respect to the forward end 116 of the conduit 115), wherein the front lip guard 120 includes a rear surface 123 configured to face the user's lips during use (see [0039] “the rear face 123 is positioned and shaped to generally confront the outer surface of the wearer's lips when in use, while the front face 122 is oriented to face away from the wearer's lips when in use”).
Regarding claim 7, Turkbas discloses the invention of claim 1 above.
Turkbas further discloses wherein the channel 115/158 tapers inward from the front end 116 to the rear end 118, causing a distance between the upper wall 150 and lower wall 154 at the front end 116 to be greater than that at the rear end 118 (see [0036], “In the various embodiments, the upper and lower walls 150, 154 of the conduit 115 are arranged to taper inward from the forward end 116 toward the rearward end 118 of the conduit 115. As such, the distance between the upper and lower walls 150, 154 at the forward end 116 of the conduit 115 is greater than the corresponding distance between the upper and lower walls 150, 154 at the rearward end 118 of the conduit 115).
Regarding claim 8, Turkbas discloses the invention of claim 1 above.
Turkbas further discloses wherein a cross-sectional area of the front opening 162 of each airway 158 is larger than that of the rear opening 164 ([0036] “the front opening 162 of the air channel 158 has a larger cross-sectional area than the rear opening 164 of the air channel 158”).
Regarding claim 9, Turkbas discloses the invention of claim 1 above.
Turkbas further discloses wherein the upper wall 150 defines an upper incisor occlusal surface 170 ([0035] “the upper wall 150 defines an upper incisor engaging surface 170”),
wherein the lower wall 154 defines a lower incisor occlusal surface 174 ([0035] “the lower wall 154 defines a lower incisor engaging surface 174”), and
wherein both the upper incisor occlusal surface 170 and the lower incisor occlusal surface 174 are near the rear end 174 (see [0035]).
Regarding claim 10, Turkbas discloses the invention of claim 9 above.
Turkbas further discloses wherein the channel 115/118 includes an outer barrier wall 140 on the upper wall 150 (Fig. 6, [0032] rim wall 140 is on the upper wall 150) and an inner barrier wall 142 on the lower wall 154 (Fig. 7, [0032] rim wall 142 is on the lower wall 154),
wherein the outer barrier wall 140 extends from the front portion of one lateral bite wing 110a/110b to the other (Fig. 6, extends from a front portion of each wing and to the other), and
wherein the inner barrier wall 142 is near the rear end 118 and extends from an inner edge of one lateral bite wing 110a/110b to the inner edge of the other (Fig. 7, wherein Examiner notes that in the figures reference number 119 should be 118 as Turkbas does not use a reference number 119 in the specification, wherein as seen the barrier wall 142 is near the rear end 118 and extends from an inner edge of each of the wings to the inner edge of the other).
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.
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.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Turkbas (US 20190209911 A1) in view of Engel (US 20170120135 A1).
Regarding claim 2, Turkbas discloses the invention of claim 1.
Turkbas does not disclose wherein the support portion includes a pair of support walls connected to each other and symmetrical, and wherein each support wall extends from the front end to the rear end and connects the upper wall and lower wall.
However, Engel teaches an analogous mouth guard (title) having an analogous support portion (See Annotated Figure 7 below) connected to upper and lower walls and extending from a front end to a rear end to form breathing channels (see Annotated Figure 7, see [0004] wherein breathing channels/conduits run substantially anterior-to-posterior therethrough, see [0040] mouthguard holes of Fig. 7 enable breathing), wherein
the support portion includes a pair of support walls connected to each other and symmetrical (See Annotated Figure 7, wherein pair of support walls are symmetrical about the drawn axis to form an “X”), and wherein each support wall extends from the front end to the rear end and connects the upper wall and lower wall (See Annotated Figure 7 and [0004, 0040]).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have altered the shape of the support portion 186 of Turkbas to be the pair of support walls as taught by Engel in order to provide a form of shock absorption structure to the opening if sufficient compressive force was applied (see Engel [0038, 0040]), and as changes in shape have been held to be a matter of design choice absent persuasive evidence that the particular configuration of the claimed shape was significant. See MPEP 2144(IV)(B) and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). (Applicant’s disclosure provides the shape aids in reducing the weight of the invention, which Examiner finds to not be critical significance to the field of endeavor of a mouthguard wherein Turkbas substantially discloses all the same critical functions and structures of the present invention).
Regarding claim 3, Turkbas in view of Engel discloses the invention of claim 2.
Engel further teaches each support wall is arc-shaped (Annotated Fig. 7).
Regarding claim 4, Turkbas in view of Engel discloses the invention of claim 2.
Engel further teaches wherein the pair of support walls are axially symmetric with an X-shaped cross-section (See Annotated Figure 7, wherein the pair of support walls are substantially axially symmetric and form an X-shaped cross section).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Turkbas (US 20190209911 A1) in view of Engel (US 20170120135 A1), in further view of Martucci (US 20120000472 A1).
Regarding claim 5, Turkbas in view of Engel discloses the invention of claim 2.
Engel further teaches wherein the support portion forms an upper support groove between the pair of support walls and the upper wall (See Annotated Figure 7 of Engel), and
a lower support groove between the pair of support walls and the lower wall (See Annotated Figure 7 of Engel), and
wherein the upper support groove and the lower support groove are open at the front end (See Annotated Figure 7, wherein the front ends are shown open in the configuration of Figure 7) and closed at the rear end (See [0040], wherein the conduits can be closed with compressive bite force, wherein in this state the rear end would be closed).
Turkbas and Engel do not disclose explicitly that the support grooves being open at the front end and closed at the rear end in a single configuration.
However, Martucci teaches an analogous mouthguard (Abstract, Figures 1-3B) having an analogous breathing channel 26 ([0040] and Figures 3A-3B), wherein the breathing channel is open at the front end and closed at the rear end (See Figures 3A-3B) by the flap 34 enabling a valve for encouraging inhalation through the nose and exhalation through the mouth (see [0041]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the channels according to Engel combined with Turkbas (thus including the upper and lower support grooves of Engel) to have the valve flap 34 as taught by Martucci thus causing an open front end and closed rear end in order to enable better breathing practices in the athlete (Martucci [0040-0041]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 12350551 B2 (X-shaped support structure in mouth device)
US 20190015726 A1 (breathing channels mouthguard)
US D782743 S (design patent of Engel)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN S ALBERS whose telephone number is (571)272-0139. The examiner can normally be reached Monday-Friday 7:30 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachael Bredefeld can be reached at (571) 270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN S ALBERS/Patent Examiner, Art Unit 3786
/RACHAEL E BREDEFELD/Supervisory Patent Examiner, Art Unit 3786