DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the Evacuation conduit of claims 2 and 12, the Curvilinear intersection region of claim 2, the Second curvilinear intersection region of claims 11 and 12, the First curvilinear intersection region of claim 12, and the Angled side walls of claims 3 and 20, must be shown or the features canceled from the claims. No new matter should be entered.
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.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-3, 5-6, 8, 10-12, 14-15 and 17-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 12, 16-18 of U.S. Patent No. 12290418 B2 in view of Hirsch (US 20060063129 A1).
Regarding claim 2, 11-12, U.S. Patent No. 12290418 B2 discloses a mouthpiece for a dental suctioning system including a main body that includes a first wall, a second wall and a third wall connecting the first wall and the second wall, a cheek retractor portion a tubular suction connector, and a mouth prop as claimed (claim 11 and 12).
However, U.S. Patent No. 12290418 B2 does not disclose the tubular suction connector including a proximal end portion that merges into the first end of the main body, where a portion of the proximal end portion includes a curvilinear intersection region that intersects with and connects to an exterior surface of the second wall (for claims 2 and 12); and wherein the proximal end portion of the tubular suction connector includes a second curvilinear intersection region that intersects with and connects to an exterior surface of the first wall, the mouth prop being directly adjacent to the second curvilinear intersection region (for claim 11).
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Hirsch teaches an intraoral device (20) generally including a main body, a prop and a tubular suction connector. The tubular suction connector includes a proximal end portion that merges into the first end of the main body, where a portion of the proximal end portion includes a curvilinear intersection region that intersects with and connects to an exterior surface of the second wall and another curvilinear intersection region that intersects with the exterior surface of the first wall forming a main evacuation channel 80 between the first and second walls that follows the curve shape of both walls (see annotated Fig. 1-2 and 5 above, and [0056]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the tubular suction connector of the U.S. Patent No. 12290418 B2, with the curvilinear intersection regions of Hirsch, in order to form a main evacuation channel along and between the first and second wall for evacuating fluids from the device taken along the second wall.
Regarding claim 3, U.S. Patent No. 12290418 B2 discloses that the mouth prop has angled side walls extending downwardly from the tubular suction connector, the angled side walls including a plurality of ridges (see claim 11, col. 8, lines 28-32).
Regarding claim 5 and 14, U.S. Patent No. 12290418 B2 discloses a stability bar corresponding to a thickened area of the main body, the stability bar extending along a longitudinal axis of the main body between the first wall and the second wall, wherein a thickness of the stability bar reinforces at least a portion of the main body (see claim 16-17).
Regarding claims 6 and 15, U.S. Patent No. 12290418 B2 discloses that the stability bar does not contact the first wall (see claim 18).
Regarding claim 8, U.S. Patent No. U.S. Patent No. 12290418 B2 discloses the claimed invention substantially as claimed, as set forth above for claim 2.
However, U.S. Patent No. U.S. Patent No. 12290418 B2 does not disclose that the mouth prop is detachable from the tubular suction connector.
Hirsch teaches a mouth prop (26) is detachable form the tubular suction connector (84) to be able to sterilize each portion for reusing it (see Fig. 2 above and [0046]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the mouth prop of U.S. Patent No. U.S. Patent No. 12290418 B2, with the detachable mouth prop of Hirsch, in order to better clean and sterilize the prop.
Regarding claim 10, U.S. Patent No. 12290418 B2 discloses that the plurality of troughs have a curved profile (see claim 11, col. 7, line 67 through col. 8, line 1, the troughs are part of the wave-like structure).
Regarding claim 17, U.S. Patent No. U.S. Patent No. 12290418 B2 discloses the claimed invention substantially as claimed, as set forth above for claim 12,
However, U.S. Patent No. U.S. Patent No. 12290418 B2 does not disclose that the mouth prop is detachable from the tubular suction connector.
Hirsch teaches a mouth prop (26) is detachable form the tubular suction connector (84) to be able to sterilize each portion for reusing it (see Fig. 2 above and [0046]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the mouth prop of U.S. Patent No. U.S. Patent No. 12290418 B2, with the detachable mouth prop of Hirsch, in order to better clean and sterilize the prop.
Regarding claim 18, U.S. Patent No. 12290418 B2 discloses that the third wall connects one of the first edges of the first wall to one of the second edges of the second wall (see claim 11 col. 8, lines 7—9 – “a third wall connecting the first wall and the second wall such that the first wall is spaced from the second wall”).
Regarding claim 19, U.S. Patent No. 12290418 B2 discloses that the plurality of troughs have a curved profile (see claim 11, col. 7, line 67 through col. 8, line 1, the troughs are part of the wave-like structure).
Regarding claim 20, U.S. Patent No. 12290418 B2 discloses that the mouth prop has angled side walls extending downwardly from the tubular suction connector, the angled side walls including a plurality of ridges (see claim 11, col. 8, lines 28-32).
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. U.S. Patent No. 12290418 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the U.S. Patent No. 12290418 B2 discloses a mouthpiece for a dental suctioning system including a main body that includes a first wall, a second wall and a third wall connecting the first wall and the second wall, a cheek retractor portion a tubular suction connector, and a mouth prop as claimed (see claim 11).
Allowable Subject Matter
Claims 4, 7, 13 and 16 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 4 and 13, the U.S. Patent No. U.S. Patent No. 12290418 B2 does not disclose in any claim in combination with claim 11 that the cutout includes three primary sides.
Regarding claim 7 and 16, the U.S. Patent No. U.S. Patent No. 12290418 B2 does not disclose in any claim in combination with claim 11 a material used to form the main body is a flexible, translucent, autoclavable silicone-based material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MIRAYDA ARLENE APONTE whose telephone number is (571)270-1933. The examiner can normally be reached M-F 8-5.
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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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/MIRAYDA A APONTE/Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772
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