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 Group I, and Species A in the reply filed on 02/19/2026 is acknowledged.
Claims 35, 37, 39, 41, 43, 45, 47, 49, 52, 54, 56, 58, 60, 62, and 63 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II-IV, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/19/2026.
The limitation of “or cinching via a built-in pull-string routed around the perimeter edge” recited in claim 42, and the dependent claims 44, 46, and 48 are each drawn to embodiments of the mouth guard which utilize built-in-pull string adjustment mechanisms identified in the election restriction requirement mailed 02/10/2026 as species E-H. Thus, the full scope of claim 42 is drawn to non-elected species E due to the identified limitation, and the dependent claims 44, 46, and 48 are drawn non-elected species E (claims 44, and 46), and species G (claim 48). Therefore, claims 42, 44, 46, and 48 are further withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 112(a) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 18/361,256 and prior-filed Provisional Application No. 63/354,221, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The prior-filed applications do not provide support for the materials bark, cork, wool, leather, fungal substrate, palm leaf, or bio-based plastics recited in claim 36. Thus, claim 36 is given the effective filing date of 05/09/2025.
The prior-filed applications do not provide support for molding the mouth guard from heat or water-based methods as recited in claim 38. Thus, claim 38 is given the effective filing date of 05/09/2025.
The prior-filed applications do not provide support for a woven or integrated edge structure that supports customization by folding, tying, cinching, looping, tucking, or knotting as recited in claim 50. Thus, claim 50 is given the effective filing date of 05/09/2025.
The prior-filed applications do not provide support for the structure including raised edges formed by manual techniques, integrated shaping, or natural, non- synthetic preforming during manufacturing as recited in claim 51. Thus, claim 51 is given the effective filing date of 05/09/2025.
The prior-filed applications do not provide support for at least a portion of the mouth guard includes non-peripheral contours, ridges, flexible elements or other surface-adaptive structures as recited in claim 53. Thus, claim 53 is given the effective filing date of 05/09/2025.
The prior-filed applications do not provide support for the components are assembled using only natural, non-synthetic materials and natural assembly techniques, including but not limited to stitching, knotting, folding, wrapping, binding, compression fitting, thermal forming of bio-based materials, or the use of natural adhesives such as tree sap, resin, or chicle as recited in claim 55. Thus, claim 55 is given the effective filing date of 05/09/2025.
The prior-filed applications do not provide support for one or more portions are treated, coated, or infused with natural substances including, but not limited to propolis, plant-based oils, essential oils, natural dyes and pigments, or other non-synthetic substances, to enhance antimicrobial performance, reduce moisture absorption, improve intraoral durability or comfort, impart natural scent, flavor, appearance or other sensory characteristics that increase user acceptability or commercial appeal as recited in claim 59. Thus, claim 59 is given the effective filing date of 05/09/2025.
Double Patenting
Claims 34, 36, 38, 40, 50, 55, 57, 59, and 61 of this application is patentably indistinct from amended claims 24, 25, 26, 27, 29, 30, 31, 33, 35, 36, and 41 of Application No. 18/361,256 submitted on 01/04/2026. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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 34, 36, 38, 40, 50, 55, 57, 59, and 61 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 24, 25, 26, 27, 29, 30, 31, 33, 35, 36, and 41 of copending Application No. 18/361,256 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Application
18/361,256
34. A mouth guard comprising:
(a) two strips made entirely of natural, non-synthetic materials, each strip formed from a structure having sufficient pliability and structural integrity to conform to the left and right sides of a wearer's mouth; and
(b) a flexible connector composed of natural, non-synthetic materials, integrated into each strip by sewing, weaving, or other natural methods that exclude synthetic adhesives or synthetic bonding agents;
wherein the connector is flexible and non-rigid, permitting independent movement of the two strips and, in some embodiments, allowing adaptation to angular or width variations in a wearer's mouth; and
wherein no synthetic polymers, thermoplastics, or synthetic adhesives are used in any component of the mouth guard.
24. A mouth guard comprising:
a configuration formed entirely of natural, non-synthetic materials (see claim 25 that the configuration includes first and second strips) configured to maintain functional structural integrity through repeated intraoral use (see figure 9 that the two strips conform to the left and right sides of a wearer’s mouth),
(see claim 26 that the configuration includes a flexible connector; see figure 2 and specification [0012] that the connecter is sewn to the strips)
(see claim 27)
24. … exclude all synthetic thermoplastic or synthetic polymer components
36. The mouth guard of claim 34, wherein the natural, non-synthetic materials include, but are not limited to, hemp, flax, …bamboo, jute, …silk…straw…
where all such materials are non-synthetic and not subjected to synthetic processing.
29. The mouth guard of claim 24, where the natural non-synthetic materials comprise long natural fibers selected from hemp, jute, flax, or silk.
30. … the natural non-synthetic materials are selected from straw, bamboo…
(natural, non-synthetic materials are non-synthetic and not subjected to synthetic processing).
38. (New) The mouth guard of claim 34, wherein the natural, non-synthetic materials …exhibit thermoplastic or pliable behavior, allowing the device to be optionally molded by a wearer through the application of … pressure-, …based methods, provided that all materials remain non-synthetic and free from synthetic polymers, petroleum derivatives, synthetic additives, synthetic adhesives, compressible padding, or rigid bar formations.
36. The mouth guard of claim 24, wherein the natural, non-synthetic materials are configured to conform passively to the upper and lower teeth of the wearer (pliable behavior) through applied pressure (a user biting the device does not introduce any of the excluded limitations).
Claim 36 of Application 18/361,256 does not explicitly disclose the natural, non-synthetic materials include one or more bio-based structural substances. However, claims 29 and 30 of Application 18/361,256 disclose the use of multiple bio-based structural substances (plant materials). Thus, in view of claims 29 and 30, it is obvious that the natural, non-synthetic materials as recited in claim 36 are bio-based structural substances.
40. (New) The mouth guard of claim 34, wherein the structure is sufficiently pliable to gradually conform to a wearer's bite pattern through repeated wear, in the absence of active heat-, pressure-, or water-based shaping.
36. The mouth guard of claim 24, wherein the natural, non-synthetic materials are configured to conform passively (i.e. sufficiently pliable) to the upper and lower teeth of the wearer through applied pressure (pressure coming from the user’s teeth during use).
50. (New) The mouth guard of claim 34, wherein the perimeter comprises a woven or integrated edge structure that supports passive or manual customization, including, but not limited to … trimming….
35. The mouth guard of claim 24, wherein the configuration is customizable by trimming an edge of perimeter (thereby disclosing an “integrated edge structure” which supports manual customization by trimming).
55. (New) The mouth guard of claim 34, wherein the components are assembled using only natural, non-synthetic materials and natural assembly techniques, including but not limited to stitching, …wherein the components are free from synthetic plastics, synthetic resins, thermoplastics, or synthetic adhesives.
41. The mouth guard of claim 24, wherein the configuration comprises stitching used for assembly of one or more intraoral structural components, securing said components for intraoral use without the use of synthetic adhesives.
57. (New) The mouth guard of claim 34, wherein the natural materials used …are structurally resilient to permit repeated use without physical or dimensional degradation,
or are treated with natural substances that enhance such properties while maintaining biocompatibility and structural integrity.
24. A mouth guard comprising:
a configuration formed entirely of natural, non-synthetic materials configured to maintain functional structural integrity through repeated intraoral use (maintaining functional structural integrity means the materials are structurally resilient without physical or dimensional degradation.
(see claim 31 that the configuration is coated with beeswax).
Claims 24 and 31 of Application 18/361,256 do not disclose the natural materials used possess inherent antimicrobial, antibacterial, or antifungal, or low moisture retention properties, or that the natural substances for treating the portions enhance the claimed properties. However, Application 18/361,256 specification paragraph [0018] discloses “Hemp is naturally anti-fungal, anti-microbial”, and paragraph [0019] discloses “coated in beeswax, which reduces potential fraying and keeps the hemp wick free from bacteria due to the beeswax's anti-microbial properties”. Thus, in view of paragraphs [0018] and [0019], it is obvious that the natural materials recited in claim 24 possess inherent antimicrobial, antibacterial, or antifungal, or low moisture retention properties, and the natural substances for treating the portions recited in claim 31 enhance the claimed properties.
59. (New) The mouth guard of claim 34, wherein one or more portions are treated, coated, or infused with natural substances including, but not limited to, beeswax, … to enhance antimicrobial performance, ….
31. The mouth guard of claim 24, wherein the configuration is coated with beeswax. (see discussion of paragraph [0019] above with respect to beeswax having anti-microbial properties).
61. (New) The mouth guard of claim 34, wherein each strip is formed into a dense structure using natural techniques including but not limited to interlacing…, and is materially distinct from conventional fabric by exhibiting increased fiber density, structural thickness, and tensile strength.
33. The mouth guard of claim 24, wherein the configuration comprises an interlaced structure formed of long natural fibers, the interlaced structure being sufficient to independently function as a durable intraoral barrier between upper and lower teeth while maintaining structural integrity through repeated intraoral use (the materials used are the same, the method of manufacturing is the same. Thus, the interlaced structure is considered to exhibit the material properties of increased fiber density, structural thickness, and tensile strength (see MPEP 2112.01).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the current drawings are black and white photographs of the claimed invention. As per 37 C.F.R. 1.84(b)(1) “Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention”. Additionally “The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent”. In the instant case, photographs are not the only practicable medium for illustrating the claimed invention. Applicant alleges that photographs are the only practicable medium for illustrating the claimed invention in paragraph [0007] of the specification filed 07/14/2025. The Examiner points out that line drawings were submitted in parent application 18/361,256 which demonstrates that photographs are not the only practicable medium for illustrating the claimed invention. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.84(h)(5) because Figures 15 and 16 show(s) modified forms of construction in the same view. 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.
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 flexible elements of claim 53 must be shown or the feature(s) canceled from the claim(s). 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the originally filed specification does not provide proper antecedent basis for the claimed subject matter of:
Water-based molding methods as recited in claim 38.
Passive or manual customization including tying, looping, tucking, or knotting as recited in claim 50.
The formation of raised edges via non-synthetic preforming during manufacturing as recited in claim 51.
Ridges, Flexible elements or other surface-adaptive structures configured to align with or support intraoral surfaces during use as recited in claim 53.
The natural assembly techniques, including knotting, folding, wrapping, compression fitting, and thermal forming of bio-based materials as recited in claim 55.
The natural assembly technique of wrapping as recited in claim 61.
The amendment of the specification filed 05/19/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
Customization of the mouth guard through the application of water in [0006] and [0026].
Passive or manual customization including tying, looping, tucking, or knotting in [0026]
Shaping the natural materials wrapping, or pressure-compression using weighted molds in [0026]
Shaping the two strips by wrapping in [0028]
Non-peripheral features such as natural ridges, shallow depressions, or internal surface contours that align with intraoral structures or improve comfort, conformity, or retention during use recited in [0031]
The device excluding soft fabric laminates in [0033]
Conformation of the mouth guard to the wearer’s anatomy via water, heat pre-forming in [0034]
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
Claims 34, 36, 38, 40, 50, 51, 55, and 56 are objected to because of the following informalities:
Claim 34 recites the limitation “two strips” in line 2. This limitation should be amended to recite “a first strip and a second strip” to properly present the limitations. Subsequent recitations of “strips” (i.e. each strip) in claim 34 and the dependent claims should be amended in view of the suggested amendment to avoid future objections.
Claim 34 recites the limitation “made entirely of natural, non-synthetic materials” in line 2. This limitation should be amended to recite “a/at least one natural, non-synthetic materials” to properly present the limitations.
Claim 34 recites the limitation “the left and right sides of a wearer’s mouth” in line 3. This limitation should be amended to include configured to language.
Claim 34 recites the limitation “a wearer’s mouth” in line 4. This limitation should be amended to recite “a mouth of a wearer” to properly present both limitations.
Claim 34 recites the limitation “wherein the connector is flexible and non-rigid, permitting” in line 8. This limitation should be amended to recite “wherein the flexible connector permits” to maintain consistency in the claims, and to remove redundant limitations because “a flexible connector” is both “flexible” and “non-rigid” (i.e. able to flex).
Claim 34 recites the limitation “permitting independent movement” in line 8. This limitation should be amended to recite “permitting an independent movement” to properly present the limitation.
Claim 34 recites the limitation “angular or width variations in a wearer's mouth” in line 9. This limitation should be amended to include configured to language.
Claim 34 recites the limitation “a wearer’s mouth” in line 9. This limitation, while not unclear, should be amended to recite “the mouth of the wearer” to avoid a lack of clarity in the claims.
Claim 34 recites the limitation “wherein no synthetic polymers, thermoplastics, or synthetic adhesives are used in any component of the mouth guard” in line 11. This limitation, while not unclear, should be amended to recite “wherein the mouth guard does not comprise a synthetic polymer, a thermoplastic material, or a synthetic adhesives in the first strip, the second strip, or the flexible connector” to properly present the limitations, concisely claim the exclusion of the materials from the mouth guard, positively recite the structures encompassed by any component, and avoid any potential clarity issues.
Claim 36 recites the limitation “where all such materials are non-synthetic and not subjected to synthetic processing”. This limitation should be removed from the claim as it is redundant in view of “natural, non-synthetic materials” as natural, non-synthetic materials are non-synthetic or subjected to synthetic processing.
Claim 38 recites the limitation “that exhibit thermoplastic or pliable behavior” in line 2. This limitation should be amended to recite “a thermoplastic or a pliable behavior” to properly present the limitations.
Claim 38 recites the limitation “a wearer” in line 3. This limitation should be amended to recite “the wearer” as a wearer was presented earlier in the claims.
Claim 38 recites the limitation “molded by a wearer” in line 3. This limitation should be amended to recite “configured to be molded”.
Claim 38 recites the limitation “provided that all materials remain non-synthetic and free from synthetic polymers, petroleum derivatives, synthetic additives, synthetic adhesives, compressible padding, or rigid bar formations”. This limitation should be removed from the claim, as the limitations do not further specify the structures being claimed, recite redundant limitations (such as free from synthetic polymers, synthetic adhesives), and appears to contradict earlier claimed limitations.
Claim 40 recites the limitation “a wearer’s bite pattern” in line 2. This limitation should be amended to recite “a bite pattern of the wearer” to properly present the limitation and avoid reciting a user twice.
Claim 40 recites the limitation “to gradually conform to a wearer's bite pattern” in line 2. This limitation should be amended to recite “configured to gradually conform”.
Claim 40 recites the limitation “in the absence of active heat-, pressure-, or water-based shaping”. This limitation should be removed from the claim as the limitations do not further specify the structures being claimed, and are redundant in view of “through repeated wear” which establishes that repeated wear is how the structure is shaped to the wearer’s bite pattern.
Claim 50 recites the limitation “passive or manual customization”. This limitation should be amended to recite “a manual customization or a passive customization”. to properly present the limitation.
Claim 51 recites the limitation “wherein the structure includes raised edges”. This limitation should be amended to recite “includes at least one or more raised edges” to properly present the limitation.
Claim 55 recites the limitation “wherein the components are free from synthetic plastics, synthetic resins, thermoplastics, or synthetic adhesives”. This limitation should be removed from the claim as the limitation does not further specify the structures being claimed, and is redundant in view of claim 1 reciting “wherein no synthetic polymers (which include plastics and resins), thermoplastics, or synthetic adhesives are used in any component of the mouth guard”.
Claim 56 recites the limitation “possess inherent antimicrobial, antibacterial, or antifungal, or low moisture retention properties”. This limitation should be amended to recite “possess an antimicrobial, an antibacterial, an antifungal, or a low moisture retention property” to properly present the limitations.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 38, 50, 51, 53, 55, and 61 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In regards to claim 38, the subject matter not disclosed by the originally filed specification is: Water-based molding methods.
In regards to claim 50, the subject matter not disclosed by the originally filed specification is: passive or manual customization including tying, looping, tucking, or knotting.
In regards to claim 51, the subject matter not disclosed by the originally filed specification is: the formation of raised edges via non-synthetic preforming during manufacturing.
In regards to claim 53, the subject matter not disclosed by the originally filed specification is: ridges, flexible elements or other surface-adaptive structures configured to align with or support intraoral surfaces during use.
In regards to claim 55, the subject matter not disclosed by the originally filed specification is: the natural assembly techniques, including knotting, folding, wrapping, compression fitting, and thermal forming of bio-based materials
In regards to claim 61, the subject matter not disclosed by the originally filed specification is: the natural assembly technique of wrapping.
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 34, 36, 38, 40, 50, 51, 53, 55, 57, 59, and 61 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.
Claim 34 recites the limitation “each strip formed from a structure” in line 3. This limitation renders the claim indefinite because it is unclear as to if Applicant is redundantly claiming each strip (i.e. each strip structure) is a structure, or of Applicant is claiming the strips are initially part of a separate structure and formed therefrom. For the purpose of examination, Examiner will interpret this limitation each strip (i.e. each strip structure) is a structure.
The term “sufficient pliability and structural integrity” in claim 34 is a relative term which renders the claim indefinite. The term “sufficient” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, Examiner will interpret this limitation as “having pliability and structural integrity”.
Claim 34 recites the limitation "the left and right sides of a wearer’s mouth" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, Examiner will interpret this limitation as “a left side and a right side of a wearer’s mouth”.
Claim 34 recites the limitation “a flexible connector composed of natural, non-synthetic materials” in line 5. This limitation renders the claim indefinite because it is unclear as to if the material of the flexible connector is the same material of the two strips, or a new material. For the purpose of examination, Examiner will interpret material of the flexible connector as being the same material presented earlier in the claim.
Claim 34 recites the limitation “or other natural methods that exclude synthetic adhesives or synthetic bonding agents”. This limitation renders the claim indefinite because it is unclear as to what methods Applicant considers “natural”, and because the metes and bounds of the limitation are not described in the specification, or the claim to allow one of ordinary skill in the art to ascertain what is being claimed by “or other natural methods”. For the purpose of examination, Examiner will interpret this limitation as best understood.
Claim 34 recites the limitation “in some embodiments” in line 9. This limitation renders the claim indefinite because it is unclear as to if flexible connector allowing adaptation to angular or width variations in a wearer's mouth is required by the claim, or is merely a preferred, optional embodiment of the flexible connector. For the purpose of examination, examiner will interpret this limitation as optional, not required by the claim and the prior art need not teach in order to anticipate/obviate the claim.
Claim 36 recites the limitation “the natural, non-synthetic materials include, but are not limited to” in line 2. This limitation renders the claim indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "not limited to"), thereby rendering the scope of the claim(s) unascertainable. For the purpose of examination, Examiner will interpret this limitation as “the natural, non-synthetic materials are selected from a group of materials consisting of”.
Claim 36 recites the limitation “bio-based plastics… where all such materials are … not subjected to synthetic processing”. This limitation renders the claim indefinite because bio-based plastics during their formation are subjected to synthetic processing, and bio-based plastics are thermoplastics. Thus, bio-based plastics contradicts claim 34’s recitation of “wherein no thermoplastics are used in any component”, and claim 36’s recitation of “not subjected to synthetic processing” which renders the claim unclear. For the purpose of examination, Examiner will interpret this limitation as best understood.
Claim 36 recites the limitation “all such materials”. This limitation renders the claim indefinite because it is unclear as to if this limitation is limiting the recited materials, or includes similar materials as well. For the purpose of examination, Examiner will interpret this limitation as “where the natural, non-synthetic materials are”.
Claim 38 recites the limitation “the device” in line 3. There is insufficient antecedent basis for this limitation in the claims. For the purpose of Examination, Examiner will interpret this limitation as “the mouth guard”.
Claim 38 recites the limitation “to be optionally” in line 3. This limitation renders the claim indefinite because it is unclear as to if the molding process is required by the claim, or is merely an optional capability of the device. For the purpose of examination, examiner will interpret this limitation as optional, not required by the claim and the prior art need not teach in order to anticipate/obviate the claim.
Claim 38 recites the limitation “the application” in line 3. There is insufficient antecedent basis for this limitation in the claims. For the purpose of Examination, Examiner will interpret this limitation as “an application”.
Claim 38 recites the limitation “heat-, pressure-, and/or water-based methods”. This limitation renders the claim indefinite because the specification does not provide an adequate description of what methods are encompassed by the limitation “heat-, pressure-, and/or water-based methods” such that one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, Examiner will interpret this limitation as best understood.
Claim 38 recites the limitation “all materials”. This limitation renders the claim indefinite because it is unclear as to if this limitation is limiting the recited materials, or includes unclaimed materials as well. For the purpose of examination, Examiner will interpret this limitation as “provided the natural, non-synthetic materials remain”.
Claim 40 recites the limitation "the structure" in line 1. This limitation renders the claim indefinite because two structures are claimed in claim 34’s recitation of “ two strips… each strip formed from a structure”. Therefore, it is unclear as to which of the two structures are being limited by claim 40. For the purpose of examination, Examiner will interpret this limitation as “wherein the two strips”.
The term “sufficiently pliable” in claim 40 is a relative term which renders the claim indefinite. The term “sufficiently” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, Examiner will interpret this limitation as pliable.
Claim 40 recites the limitation "the absence" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, Examiner will interpret this limitation as “an absence”.
Claim 50 recites the limitation "the perimeter" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, Examiner will interpret this limitation as “a perimeter”.
Claim 50 recites the limitation “passive or manual customization, including, but not limited to” in line 2. This limitation renders the claim indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "not limited to"), thereby rendering the scope of the claim(s) unascertainable. For the purpose of examination, Examiner will interpret this limitation as “a woven or integrated edge structure that is customizable by a technique selected from a group consisting of: folding, tying, cinching, looping, tucking, trimming, or knotting”.
Claim 51 recites the limitation "the structure" in line 1. This limitation renders the claim indefinite because two structures are claimed in claim 34’s recitation of “ two strips… each strip formed from a structure”. Therefore, it is unclear as to which of the two structures are being limited by claim 51. For the purpose of examination, Examiner will interpret this limitation as “wherein the two strips”.
Claim 51 recites the limitation “composed entirely of natural, non-synthetic materials” in line 4. This limitation renders the claim indefinite because it is unclear as to if the material of the raised edges are the same material of the two strips and flexible connector, or a new material. For the purpose of examination, Examiner will interpret material of the raised edges as being the same material presented earlier in the claims.
Claim 51 recites the limitation “configured to improve intraoral retention”. This limitation renders the claim indefinite as it is unclear as to how raised edges “improve” the ability of the device to be retained in the user’s mouth. For the purpose of examination, Examiner will interpret this limitation as best understood.
Claim 53 recites the limitation “a portion of the mouth guard”. This limitation renders the claim indefinite as it is unclear if “a portion” is referring to a new structure of the mouth guard, or is referring to one of the two strips, and flexible connector. For the purpose of examination, Examiner will interpret this limitation as best understood.
Claim 53 recites the limitation “or other surface-adaptive structures”. This limitation renders the claim indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by " or other surface-adaptive structures "), thereby rendering the scope of the claim(s) unascertainable. For the purpose of examination, Examiner will interpret this limitation as best understood.
Claim 53 recites the limitation “to enhance anatomical conformity, comfort, or retention”. This limitation renders the scope of the claim indefinite as it is unclear as to how non-peripheral contours, ridges, flexible elements or other surface-adaptive structures can “enhance anatomical conformity, comfort, or retention” in every user (i.e. does the claimed structures enhance conformity, comfort, and retention in every user). For the purpose of examination, Examiner will interpret this limitation as best understood.
Claim 55 recites the limitation “the components” in lines 1 and 5. There is insufficient antecedent basis for this limitation in the claims. For the purpose of examination, Examiner will interpret this limitation as “the two strips and the flexible connector”.
Claim 55 recites the limitation “natural, non-synthetic materials” in line 2. This limitation renders the claim indefinite because it is unclear as to if the material of claim 55 are the same material of the two strips and flexible connector, or a new material. For the purpose of examination, Examiner will interpret material of claim 55 as being the same material presented earlier in the claims.
Claim 55 recites the limitation “natural assembly techniques, including but not limited to” in line 2. This limitation renders the claim indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "not limited to"), thereby rendering the scope of the claim(s) unascertainable. For the purpose of examination, Examiner will interpret this limitation as “natural assembly techniques selected from a group consisting of:”.
Claim 55 recites the limitation “bio-based materials”. This limitation renders the claim indefinite as it is unclear as to if the bio-based materials recited in claim 55 are the natural, non-synthetic materials recited earlier in the claims, or new materials. For the purpose of examination, Examiner will interpret this limitation as best understood.
Claim 55 recites the limitation "the use" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, Examiner will interpret this limitation as “a use”.
Regarding claim 55, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 57 recites the limitation "the natural materials used" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, Examiner will interpret this limitation as “the natural, non-synthetic materials”.
Claim 57 recites the limitation “natural substances”. This limitation renders the claim indefinite because it is unclear whether the natural substances includes the natural, non-synthetic materials (i.e. natural substances), or if this is a new substance. For the purpose of examination, Examiner will interpret this limitation as a new substance.
Regarding claim 57, the phrase "such properties" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 59 recites the limitation “one or more portions”. This limitation renders the claim indefinite because it is unclear whether the one or more portions is referring to a new structure of the mouth guard, or is referring to one of the two strips, and flexible connector. For the purpose of examination, Examiner will interpret this limitation as “one of the two strips, and flexible connector”.
Claim 59 recites the limitation “natural substances, including but not limited to” in line 2. This limitation renders the claim indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "not limited to"), thereby rendering the scope of the claim(s) unascertainable. For the purpose of examination, Examiner will interpret this limitation as “natural substances selected from a group consisting of:”.
Claim 59 recites the limitation “or other non-synthetic substances” in line 3. This limitation renders the claim indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or other non-synthetic substances"), thereby rendering the scope of the claim(s) unascertainable. For the purpose of examination, Examiner will interpret this limitation as best understood.
Claim 59 recites the limitation “improve intraoral durability”. This limitation renders the claim indefinite as it is unclear as to how a treatment, coating, or infusion of a mouth guard can improve intraoral durability (i.e. the durability of the user’s oral cavity”. For the purpose of examination, Examiner will interpret this limitation as “improve durability of the mouth guard”.
Claim 59 recites the limitation “improve intraoral…comfort”. This limitation renders the scope of the claim indefinite as it is unclear as to how a treatment, coating, or infusion of a mouth guard can “improve intraoral…comfort” in every user (i.e. does the claimed treatment, coating, or infusion improve comfort in every user). For the purpose of examination, Examiner will interpret this limitation as best understood.
Claim 59 recites the limitation “impart natural scent, flavor, appearance”. This limitation renders the claim indefinite as it is unclear as to what scents, flavors, or appearances Applicant considers “natural”. For the purpose of examination, Examiner will interpret this limitation as best understood.
Claim 59 recites the limitation “other sensory characteristics that increase user acceptability or commercial appeal”. This limitation renders the scope of the claim indefinite as it is unclear as to how a treatment, coating, or infusion of a mouth guard can “increase user acceptability or commercial appeal” for every user (i.e. does the claimed treatment, coating, or infusion improve user acceptability or commercial appeal for every user). For the purpose of examination, Examiner will interpret this limitation as best understood.
Claim 61 recites the limitation “using natural techniques including but not limited to including, but not limited to” in line 2. This limitation renders the claim indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "not limited to"), thereby rendering the scope of the claim(s) unascertainable. For the purpose of examination, Examiner will interpret this limitation as “using natural techniques selected from a group consisting of: folding, tying, cinching, looping, tucking, trimming, or knotting”.
Claim 61 recites the limitation “is materially distinct from conventional fabric”. This limitation renders the claim indefinite as it is unclear as what Applicant considers “convention fabric” and as to how the dense structure is “materially distinct from conventional fabric” as conventional fabrics can also exhibit increased fiber density, structural thickness, and tensile strength. For the purpose of examination, Examiner will interpret this limitation as best understood.
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) 34, 36, 38, 40, 50, 51, and 57 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao (US 8,800,568 B1).
In regards to claim 34, Zhao discloses a mouth guard (100; see [col 5 ln 1]; see figure 3) comprising:
(a) two strips (104 and 106; see [col 5 ln 2]; see figure 3) made entirely of natural, non-synthetic materials (latex; see [col 4 ln 65-67]), each strip formed from a structure having sufficient pliability and structural integrity to conform to the left and right sides of a wearer's mouth (see figure 3 that 104 and 106 are intended to be placed on left and right sides of the wearer’s mouth; see [col 4 ln 65-67] that the strips are formed from latex and thus, have sufficient pliability and structural integrity to conform as claimed); and
(b) a flexible connector (112; see [col 5 ln 8]; see figure 3) composed of natural, non-synthetic materials (latex; see [col 4 ln 65-67]), integrated into each strip by sewing, weaving, or other natural methods that exclude synthetic adhesives or synthetic bonding agents (the structures are integrally formed from latex as one piece and thus, excludes synthetic adhesives or synthetic bonding agents; see [col 4 ln 60-65]);
wherein the connector (112) is flexible and non-rigid (the device (and thus, the connector) has flexibility and elasticity; see [col 4 ln 60-65]), permitting independent movement of the two strips (104 and 106) and, in some embodiments, allowing adaptation to angular or width variations in a wearer's mouth (the flexibility and elasticity of 112 permits movement of 104 and 106 to allow adaptation to a user’s mouth); and
wherein no synthetic polymers, thermoplastics, or synthetic adhesives are used in any component of the mouth guard (100 is formed from a one-piece construction of latex and thus, does not use synthetic polymers, thermoplastics, or synthetic adhesives).
In regards to claim 36, Zhao discloses the invention as discussed above.
Zhao further discloses wherein the natural, non-synthetic materials include, but are not limited to, hemp, flax, cotton, bamboo, jute, wool, silk, leather, bark, cork, palm leaf, straw, fungal substrates, natural rubber (latex) (see [col 4 ln 65-67]), or bio-based plastics, where all such materials are non-synthetic and not subjected to synthetic processing (latex is non-synthetic, and Zhao does not disclose the use of synthetic formation or processing).
In regards to claim 38, Zhao discloses the invention as discussed above.
Zhao further discloses wherein the natural, non-synthetic materials include one or more bio-based structural substances (latex is a bio-based structural substance) that exhibit thermoplastic or pliable behavior (latex is a natural rubber, and thus, exhibits thermoplastic or pliable behavior), allowing the device (100) to be optionally molded by a wearer through the application of heat-, pressure-, and/or water-based methods, provided that all materials remain non-synthetic and free from synthetic polymers, petroleum derivatives, synthetic additives, synthetic adhesives, compressible padding, or rigid bar formations (latex can be optionally molded through heat-, pressure-, and/or water-based methods, and such methods do not introduce the excluded materials into the latex).
In regards to claim 40, Zhao discloses the invention as discussed above.
Zhao further discloses wherein the structure is sufficiently pliable to gradually conform to a wearer's bite pattern through repeated wear (104 and 106 is formed from latex, and thus is “sufficiently pliable” to conform to a wearer’s bit through repeated use as claimed), in the absence of active heat-, pressure-, or water-based shaping.
In regards to claim 50, Zhao discloses the invention as discussed above.
Zhao further discloses wherein the perimeter (perimeter of 104 and 106) comprises a woven or integrated edge structure (110; see [col 5 ln 6]; see figure 3) that supports passive or manual customization, including, but not limited to folding, tying, cinching, looping, tucking, trimming, or knotting (110 also being formed from latex permits the passive and manual customizations of at least trimming as latex is capable of being trimmed by scissors).
In regards to claim 51, Zhao discloses the invention as discussed above.
Zhao further discloses wherein the structure (104 and 106) includes raised edges (110; see [col 5 ln 6]; see figure 3) formed by passive adaptation, manual techniques, integrated shaping, or natural, non-synthetic preforming during manufacturing (the device is fabricated in one piece (See [col 4 ln 60-65]), thus, 110 is formed via integrated shaping or natural, non-synthetic preforming of the latex material during manufacturing), the raised edges (110) being composed entirely of natural, non-synthetic materials (the entire device, and therefore 110 are formed from latex) and configured to improve intraoral retention or reduce lateral displacement (110 engages a user’s gums (See [col 5 ln 6] and thus improves intraoral retention by ensuring 104 and 106 maintain their position over the user’s teeth).
In regards to claim 57, Zhao discloses the invention as discussed above.
Zhao further discloses wherein the natural materials (latex) used possess inherent antimicrobial, antibacterial, or antifungal, or low moisture retention properties (latex is a rubber and thus has low moisture retention properties), and are structurally resilient to permit repeated use without physical or dimensional degradation (latex is a rubber, and thus is elastic and is structurally resilient to permit repeated use without physical or dimensional degradation), or are treated with natural substances that enhance such properties while maintaining biocompatibility and structural integrity.
Claim(s) 34, 55, and 61 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karni (US 2016/0175137 A1).
In regards to claim 34, Karni discloses a mouth guard (101; see [0030]; see figure 1a) comprising:
(a) two strips (left and right 102; see [0031]; see figure 1a) made entirely of natural, non-synthetic materials (cotton; see [0009]), each strip formed from a structure having sufficient pliability and structural integrity to conform to the left and right sides of a wearer's mouth (see [0031] that 102 wraps around the gums and thus, has sufficient pliability and structural integrity to conform to the left and right sides of a wearer's mouth); and
(b) a flexible connector (103; see [0030]; see figure 1a) composed of natural, non-synthetic materials (cotton; see [0009]), integrated into each strip by sewing, weaving, or other natural methods that exclude synthetic adhesives or synthetic bonding agents (compacting cotton as discussed in [0009] is a natural method that exclude synthetic adhesives or synthetic bonding agents);
wherein the connector (103) is flexible and non-rigid, permitting independent movement of the two strips (left and right 102) and, in some embodiments, allowing adaptation to angular or width variations in a wearer's mouth (see [0010] in reference to the adjustability of the device; thus, 103 is considered flexible and non-rigid permitting independent movement of left and right 102); and
wherein no synthetic polymers, thermoplastics, or synthetic adhesives are used in any component of the mouth guard (101 is formed from compacted cotton and thus does not use synthetic polymers, thermoplastics, or synthetic adhesives).
In regards to claim 55, Karni discloses the invention as discussed above.
Karni further discloses wherein the components (102 and 103) are assembled using only natural, non-synthetic materials and natural assembly techniques, including but not limited to stitching, weaving (compacted cotton is woven cotton fabric that is compacted; thus 102, and 103 are partially formed via weaving), knotting, folding, wrapping, binding, interlocking, compression fitting (compacted cotton is woven cotton fabric that is compacted (i.e. compression fitted), thermal forming of bio-based materials, or the use of natural adhesives such as tree sap, resin, or chicle, wherein the components are free from synthetic plastics, synthetic resins, thermoplastics, or synthetic adhesives.
In regards to claim 61, Karni discloses the invention as discussed above.
Karni further discloses wherein each strip (left and right 102) is formed into a dense structure (compacted cotton is a dense structure) using natural techniques including but not limited to interlacing, weaving, braiding, knitting, wrapping, or binding (compacted cotton is cotton that has been woven, interlaced, or knitted into a fabric and then compacted to reduce shrinkage), and is materially distinct from conventional fabric by exhibiting increased fiber density, structural thickness, and tensile strength (compacted cotton at least exhibits increased fiber density or structural thickness due to the compaction process with respect to uncompacted cotton).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 53 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao in view of Chodorow (US 2010/0147315 A1).
In regards to claim 53, Zhao discloses the invention as discussed above.
Zhao does not disclose wherein at least a portion of the mouth guard includes non-peripheral contours, ridges, flexible elements or other surface-adaptive structures configured to align with or support intraoral surfaces during use, and to enhance anatomical conformity, comfort, or retention.
However, Chodorow teaches an analogous mouth guard (10; see [0065]; see figure 1) comprising two strips (14; see [0065]; see figure 1), and a connector (12; see [0065]; see figure 1); wherein at least a portion (14) of the mouth guard includes non-peripheral contours, ridges, flexible elements or other surface-adaptive structures (42/43; see [0071]; see figure 8) configured to align with or support intraoral surfaces during use, and to enhance anatomical conformity, comfort, or retention (see [0025] in reference to the grooves allowing the pad material to absorb forces applied to the teeth against each other that would otherwise cause grinding of teeth surfaces while a person sleeps, thereby increasing comfort when using the device).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the first and second strips as disclosed by Zhao and to have included the contours or ridges as taught by Chodorow in order to have provided an improved first and second strip that would add the benefit of including structures that allow the strips to absorb forces applied to the teeth against each other that would otherwise cause grinding of teeth surfaces while a person sleeps (see [0025]).
Claim(s) 59 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao in view of Jones et al. (US 5,746,221 A) (hereinafter Jones).
In regards to claim 59, Zhao discloses the invention as discussed above.
Zhao does not disclose wherein one or more portions are treated, coated, or infused with natural substances including, but not limited to, beeswax, propolis, plant-based oils, essential oils, natural dyes and pigments, or other non- synthetic substances, to enhance antimicrobial performance, reduce moisture absorption, improve intraoral durability or comfort, impart natural scent, flavor, appearance or other sensory characteristics that increase user acceptability or commercial appeal.
However, Jones teaches an analogous mouth guard (15; see [col 5 ln 55-60]; see figure 5a); wherein one or more portions are treated, coated, or infused with natural substances including, but not limited to, beeswax, propolis, plant-based oils, essential oils, natural dyes and pigments (see [col 5 ln 35-45]), or other non- synthetic substances, to enhance antimicrobial performance, reduce moisture absorption, improve intraoral durability or comfort, impart natural scent, flavor, appearance or other sensory characteristics that increase user acceptability or commercial appeal (see [col 5 ln 35-45]) for the purpose of providing desired aesthetic properties that would be attractive to the user (see [col 5 ln 35-45]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the mouth guard as disclosed by Zhao and to have included the pigments as taught by Jones in order to have provided an improved mouth guard that would add the benefit of providing desired aesthetic properties that would be attractive to the user (see [col 5 ln 35-45]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL MILLER whose telephone number is (571)270-5445. The examiner can normally be reached Mon-Fri 8am-4pm.
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/DANIEL A MILLER/Primary Examiner, Art Unit 3786