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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/439, 966, filed on 09/16/2021.
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:
wherein the radius of the corners is between 0.1cm and 7cm in line 4 of claim 2. The specification does not disclose the lower limit 0.1cm.
wherein the radius of the corners is between 0.2 to 4cm in line 2 of claim 4. The specification does not disclose the lower limit 0.2.
The disclosure is objected to because of the following informalities: “claim 17” in pages 5, 11, 16, and 22 - 24. The referenced claim “claim 17” is not disclosed in the current application. 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 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.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12376942. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 1 is anticipated by patent claim 14.
Patent claim 14 of U.S. Patent No. 12376942 recites: a covering device for covering the lips and labial angles and for holding the lips, cheeks and labial angles away from rows of teeth in a mouth of a patient, comprising an elastic lip clamping element (110, 210, 310), at least one elastic vestibular clamping element (120, 220, 320), and a film (130, 230, 330) connecting the lip clamping element and at least one elastic vestibular clamping element, wherein the clamping elements are arranged along two opposite end regions of the film, wherein the at least one vestibular clamping element (120, 220, 320) comprises at least one section (121, 221, 321) curved toward the lip clamping element in a longitudinal direction, said curved section extending anterior to a vestibular fold when the covering device is inserted, wherein the clamping elements (110, 210, 310; 120, 220, 320) are elastically deformable and span the film (130, 230, 330) in a relaxed state in the form of a ring or tube, wherein the vestibular clamping element (120, 220, 320) comprises at least four protrusions or protruding corners (512, 514, 516, 518) which protrude convexly toward an outside compared to a pointed oval (505) or oval, and wherein a shape of the vestibular clamping element (520) is incongruent with or geometrically dissimilar to the pointed oval (505) or oval.
Therefore, application claim 1 is in essence a “species” of the generic invention of patent claim 14. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claim 2 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12376942. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 2 is anticipated by patent claim 15.
Patent claim 15 of U.S. Patent No. 12376942 recites: the covering device as claimed in claim 14, wherein, in a top view, the vestibular clamping element (520) has substantially a shape of a rectangle with rounded corners, wherein a radius of the rounded corners is between 0.1 cm and 7 cm.
Therefore, application claim 2 is in essence a “species” of the generic invention of patent claim 15. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claim 3 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12376942. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 3 is anticipated by patent claim 16.
Patent claim 16 of U.S. Patent No. 12376942 recites: covering device as claimed in claim 14, wherein the lip clamping element (510) is congruent with or geometrically similar to the vestibular clamping element (520), or wherein the lip clamping element (510) and the vestibular clamping element (520) deviate in shape from one another by less than 20%.
Therefore, application claim 3 is in essence a “species” of the generic invention of patent claim 16. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claim 4 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12376942. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 4 is anticipated by patent claim 17.
Patent claim 16 of U.S. Patent No. 12376942 recites: the covering device as claimed in claim 14, wherein a radius of the corners is between 0.2 to 4 cm.
Therefore, application claim 4 is in essence a “species” of the generic invention of patent claim 17. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claim Rejections - 35 USC § 112
Claim(s) 3 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 3 recites the limitation " similar " in line 2 of the claim. It is unclear what is considered similar or not. It is unclear whether the limitation “similar” is defined as the lip clamping element and the vestibular clamping element having analogous shapes or whether the lip clamping element and the vestibular clamping element having the same dimensions.
Claim Rejections - 35 USC § 102
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 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Muller et al. (US 20170196659 A1).
Regarding claim 1, Muller et al. discloses a covering device (Fig. 1) for covering the lips and labial angles ([0034-0035]) and for holding the lips, cheeks and labial angles away from the rows of teeth in the mouth of a patient ([0034]), comprising an elastic lip clamping element (12 Fig. 1),at least one elastic vestibular clamping element (14 Fig. 1), and a film (16 Fig. 1) connecting the clamping elements (see Fig. 1), wherein the clamping elements are arranged along two opposite end regions of the film (see Fig. 1), wherein the clamping elements (12 Fig. 1) are elastically deformable and span the film (abstract and [0040]) in a relaxed state (abstract and [0033]) in the form of a ring or tube (Fig. 1), wherein the vestibular clamping element (14 Fig. 1) comprises at least two protrusions or protruding corners (26, 28, 30, and 32 Fig. 1) which protrude convexly toward the outside compared to a pointed oval or oval (see Fig. 1), and wherein the shape of the vestibular clamping element is incongruent with or geometrically dissimilar to the pointed oval or oval (see Fig. 1; the shape of the protrusions or protruding corners are dissimilar to the shape of a mouth which is open up to one third to one half as defined in page 22 of the SPEC).
Regarding claim 3, Muller et al. discloses the invention substantially as set forth in claim 1. Muller et al. further discloses the covering device (Fig. 1), wherein the lip clamping element (12 Fig. 1) is congruent with or geometrically similar to the vestibular clamping element (14 Fig. 1) (see Figs. 1-3 and 10), or wherein the lip clamping element (12 Fig. 1) and the vestibular clamping element (14 Fig. 1) deviate in shape from one another by less than 20% (see Figs. 1-3 and 10).
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.
Claim(s) 2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Muller et al. (US 20170196659 A1).
Regarding claim 2, Muller et al. discloses the invention substantially as set forth in claim 1. Muller discloses in a top view, the vestibular clamping element has substantially the shape of a rectangle with rounded corners (Figure 1). However, Muller et al. does not disclose wherein the radius of the rounded corners is between 0.1cm and 7cm. However, at the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to configure the radius of the rounded corners to be between 0.1cm and 7cm for the purpose of having the substantially rectangular shape of the vestibular clamping element to have rounded corners, since applicant has not disclosed that having the radius of the rounded corners to be between 0.1cm and 7cm provides an advantage, solves any stated problem, or is used for any particular purpose and it appears that the device would perform equally well with either designs.
Furthermore, absent a teaching as to criticality of rounded corners with radius between 0.1cm and 7cm, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975).
Regarding claim 4, Muller et al. discloses the invention substantially as set forth in claim 1. Muller et al. does not disclose that the radius of the corners is between 0.2 to 4cm. However, at the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to configure the radius of the corners to be between 0.2 to 4cm for the purpose of having the protruding corners of the vestibular clamping element to have rounded corners, since applicant has not disclosed that having the radius of the corners to be between 0.2 to 4cm provides an advantage, solves any stated problem, or is used for any particular purpose and it appears that the device would perform equally well with either designs.
Furthermore, absent a teaching as to criticality of the radius of the corners being between 0.2 to 4cm, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975).
Conclusion
The following documents are relevant to the current claimed invention but were not relied upon for the current Office Action: US 20200188060 A1, US D660969 S, CN 2850556 Y, US 20080153058 A1, US 20050192157 A1, and US 6514176 B1.
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/C.A./ Patent Examiner, Art Unit 3772
/ERIC J ROSEN/ Supervisory Patent Examiner, Art Unit 3772
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