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 .
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Response to Amendment
The amendment to the claims filed on 08/29/2023 is objected to as not complying with the requirements of 37 CFR 1.173(b)(2) and (d)(1)&(2) because each change relative to US Pat. No. 10,772,706 (“the ‘706 patent”) has not been properly marked. 37 CFR 1.173(b)(2) and (d)(1)&(2) state:
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “<U>” and end with “</U>” to properly identify the material being added.
The claims presented in the amendment filed 08/29/2023 do not include markings with respect to the original claims of the ‘706 patent. Any claim limitations to be omitted should be enclosed in single brackets and the markings should be maintained throughout the reissue prosecution with each submission. Any claim that omits or adds limitations with respect to the original patent should be marked as “(Amended)” and this designation should be maintained throughout the reissue prosecution with each submission. The marking of “(Previously Presented)” is not used in reissue prosecution. Any new claim with respect to the original patented claims should be marked as “(New)” and the claim should be underlined in its entirety which should be maintained throughout the reissue prosecution with each submission.
These corrections should be submitted with the next correspondence.
Claim Rejections - 35 USC § 112
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 13 and 25-27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: specifically dependent claim 13 and independent claim 26 each recite two limitations that are contradictory 1) the sheet metal plate is curved about at least one axis of curvature and 2) the at least one axis of curvature extends within a surface plane of the sheet metal plate in a non-curved state of the metal sheet. It is unclear how the sheet metal place can have an axis of curvature in a non-curved state of the metal sheet. For examination purposes with respect to the prior art, it is understood that the sheet metal has a radius of curvature when in the arc configuration.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-8 and 15-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2005/0181332 to Sernetz (“Sernetz”).
Regarding claims 1 and 15, Sernetz discloses a retainer (10/30/50) adapted to cooperate with a plurality of teeth (see Fig. 3) and configured to stabilize the plurality of teeth (see para. [0003], “The purpose of lingual retainers is to keep teeth in a new, corrected position following orthodontic treatment and to stabilize this position.”), the retainer comprising: at least one elongated arc which is shaped to a natural curvature of a lower jaw or an upper jaw (see para. [0039], “Bow 32 is anatomically pre-formed…”), wherein the retainer is machined from a sheet metal plate (see para. [0026], “The flat form, which is preferred, is easy to produce by manufacturing the lingual retainer from a titanium or titanium alloy sheet metal, e.g., by stamping or cutting.”) and includes first and second mutually parallel surfaces (considered inherent since sheet metal will by necessity include two parallel surfaces with a predetermined thickness therebetween), wherein a lower side of the retainer corresponds to the first mutually parallel surface (the lower side of the retainer is considered to be the side of the retainer shown in Fig. 1, and this side of the retainer corresponds to one surface of the sheet metal), wherein an upper side of the retainer corresponds to the second mutually parallel surface (the upper side of the retainer is considered to be the side of the retainer opposite that shown in Fig. 1, and this side of the retainer corresponds to the opposite surface of the sheet metal), wherein a front side of the retainer corresponds to a first cut made into the sheet metal plate (the front side of the retainer is considered to be the side of the retainer perpendicular to that shown in Fig. 1 toward reference #10, and this side of the retainer corresponds to the cut made when stamping or cutting), wherein a back side of the retainer correspond to a second cut made into the sheet metal plate (the back side of the retainer is considered to be the side of the retainer perpendicular to that shown in Fig. 1 opposite reference #10, and this side of the retainer corresponds to the cut made when stamping or cutting), wherein the sheet metal plate is made from a nickel titanium alloy (see para. 0026 and below), and wherein the at least one elongated arc has a parallelogram-shaped or rectangular cross section (considered inherent since sheet metal will by necessity include two parallel surfaces with a predetermined thickness therebetween and para. 0026 discloses that the retainer is stamped out of the sheet metal which will create to opposite parallel surfaces along the bow cut 12).
Sernetz meets the claim limitations as disclosed above but fails to specifically teach the sheet metal plate is made from a nickel titanium alloy. However, Sernetz does teach that the sheet metal is made from a titanium alloy.
At the time of filing, one skilled in the art would have found it obvious to make the retainer from a nickel titanium alloy such as nitinol since nitinol retainers are well known in the art and are advantageous for their shape memory properties. The motivation for the incorporation would have been since Sernetz already discloses the use of titanium alloy material of which nitinol is one and nitinol would have been chosen for its superior properties of shape memory.
Regarding claim 15, specifically, Sernetz discloses wherein a front surface of the retainer is shaped by a first cut made into the sheet metal plate (the front surface as identified above, i.e., the front side of the retainer is considered to be the side of the retainer perpendicular to that shown in Fig. 1 toward reference #10, and this side of the retainer corresponds to the cut made when stamping or cutting) and that the front surface is adapted and finished (stamped or cut into the bracket shape) to exactly abut (perpendicularly) to the plurality of the teeth and cooperate with the plurality of teeth as cut by the first cut.
Regarding claims 2 and 16, the prior art discloses the retainer according to claims 1 and 15 and further teaches wherein the retainer is adapted to connect to respective abutting teeth (see Fig. 3) within bonding portions (14,16) by a bonding material (see para. [0012], “glasionomer cement”) in a force-transferring manner (see para. [0002], “…in order to keep the patient's teeth in position following corrective treatment.”), wherein the retainer is embedded in the bonding material (see para. [0028], “lazer structuring creates retention sites…” it is these retention sites that embed the retainer in the bonding material) and is able to adhere to the respective abutting teeth (see Fig. 3), wherein a position of the retainer is able to be positioned a minimum distance from a respective tooth surface measured perpendicular to the respective tooth surface, and wherein a maximum distance between the respective tooth surface and the position of the retainer, is able to be set at the most 0.1 mm in each of the bonding portions (the retainer is directly bonded to the teeth; therefore, the distance will be less than 0.1mm).
Regarding claims 3-4 and 17-18, Sernetz does not specifically teach 1) the arc has a local radius of curvature of 1.0mm or less; and 2) wherein side lengths of the cross section are at most 0.7 mm
However, at the time of filing, it would have been obvious for one skilled in the art to make the retainer of these dimensions, since these values are consistent with dimensions that would be required in order to fit and function against the teeth in a user’s mouth.
Regarding claims 5 and 19, Sernetz discloses the retainer according to claims 1 and 15 and further teaches wherein the retainer is able to connect to at least three teeth in a force-transferring manner (see Fig. 4 and associated text).
Regarding claims 6 and 20, the prior art discloses the retainer according to claims 1 and 15 and further teaches wherein the retainer is configured in one piece (see para. [0034]).
Regarding claims 7 and 21, the prior art discloses the retainer according to claims 1 and 15 and further teaches wherein the retainer viewed in plane view is enclosable by an inner enveloping parabola and an outer enveloping parabola, and wherein locally in a region of an interdental space a distance measured perpendicular to the inner enveloping parabola between the inner enveloping parabola and the outer enveloping parabola is at least 1.0 mm (see annotated Fig. 3 below and the two parabolas).
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Regarding claims 8 and 22, the prior art discloses the retainer according to claims 1 and 15 and further teaches wherein the retainer has an at least partially roughened surface (see para. [0014]), and wherein all surfaces extending in the longitudinal direction (longitudinal direction is indicated on annotated Fig. 1 below with the arrows) of the retainer are roughened.
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Claim(s) 9 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Sernetz in view of US Pat. No. 3,855,701 to Le Clair (“Le Clair”).
Regarding claims 9 and 23, Sernetz discloses the retainer according to claims 1 and 15 but fails to teach wherein a surface of the retainer is at least partially treated by electro-polishing or plasma polishing. However, Le Clair teaches a retainer including a lingual bar that is polished before cemented into the patient’s mouth. At the time of filing, it would have been obvious to polish the retainer of Sernetz as taught by Le Clair before cementing the retainer into the patient. One skilled in the art would understand that polishing the retainer would remove any sharp edges from the surface of the retainer and thereby make the appliance more comfortable if touched by the patient’s tongue. Further, using electro-polishing or plasma polishing to polish the retainer as taught by Sernetz in view of Le Clair would have been obvious to one skilled in the art as a suitable method to achieve the polishing since Le Clair is silent as to the process of polishing the retainer.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Sernetz in view of US Pub. No. 2007/0154859 to Hilliard (“Hilliard”).
Regarding claim 10, Sernetz discloses the retainer according to claims 1 and 15 but fails to teach wherein the nickel titanium alloy has an AF temperature between 250 C and 350 C. However, Hilliard teaches the advantages of using Nitinol wire which has an AF temperature between 250 C and 350 C. One skilled in the art would have used Nitinol wire as taught by Hilliard in the device of Sernetz since Sernetz only discloses the general use of a nickel titanium alloy material. Hilliard provides a specific material that would meet the specifications, functions and requirements of Sernetz.
Claim(s) 11-13 and 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sernetz.
Regarding claims 11-12 and 25-26, Sernetz discloses a retainer (10/30/50) comprising: at least one elongated arc with a radius of curvature which is shaped to a natural curvature of a lower jaw or an upper jaw (see para. [0039], “Bow 32 is anatomically pre-formed…”), wherein the retainer is machined from a sheet metal plate (see para. [0026], “The flat form, which is preferred, is easy to produce by manufacturing the lingual retainer from a titanium or titanium alloy sheet metal, e.g., by stamping or cutting.”) and includes first and second mutually parallel surfaces (considered inherent since sheet metal will by necessity include two parallel surfaces with a predetermined thickness therebetween), wherein a lower side of the retainer corresponds to the first mutually parallel surface (the lower side of the retainer is considered to be the side of the retainer shown in Fig. 1, and this side of the retainer corresponds to one surface of the sheet metal), wherein an upper side of the retainer corresponds to the second mutually parallel surface (the upper side of the retainer is considered to be the side of the retainer opposite that shown in Fig. 1, and this side of the retainer corresponds to the opposite surface of the sheet metal), wherein a front side of the retainer corresponds to a first cut made into the sheet metal plate (the front side of the retainer is considered to be the side of the retainer perpendicular to that shown in Fig. 1 toward reference #10, and this side of the retainer corresponds to the cut made when stamping or cutting), wherein a back side of the retainer correspond to a second cut made into the sheet metal plate (the back side of the retainer is considered to be the side of the retainer perpendicular to that shown in Fig. 1 opposite reference #10, and this side of the retainer corresponds to the cut made when stamping or cutting), and wherein the at least one elongated arc has a parallelogram-shaped or rectangular cross section (considered inherent since sheet metal will by necessity include two parallel surfaces with a predetermined thickness therebetween and para. 0026 discloses that the retainer is stamped out of the sheet metal which will create to opposite parallel surfaces along the bow cut 12). The method steps are considered inherently necessary in order to produce the retainer as disclosed by Sernetz.
Sernetz meets the claim limitations as described above but fails to include making the first and second cut via a computer-controlled process. However, Sernetz discloses cutting or stamping. At the filing of the invention, one skilled in the art would have found it obvious to replace the manual activity of cutting or stamping with an automated computer-controlled process of cutting such as laser cutting or wire erosion. The motivation to make the substitution would have been in order to provide a faster and more accurate cutting process than stamping. See also In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958).
Regarding claim 13, Sernetz discloses the method according to claim 11 and further teaches wherein the sheet metal plate from which the retainer is machined is curved about at least one axis of curvature, and wherein the at least one axis of curvature extends within a surface plane of the sheet metal plate in a non-curved state of the metal sheet. See Fig. 3.
Claim(s) 14 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sernetz in view of Le Clair.
Regarding claims 14 and 27, Sernetz discloses the method according to claims 11 and 26 but fails to teach wherein the retainer after it has been machined from the sheet metal plate is electro-polished or plasma polished, so that edges of the retainer are rounded. However, Le Clair teaches a retainer including a lingual bar that is polished before cemented into the patient’s mouth. At the time of filing, it would have been obvious to polish the retainer of Sernetz as taught by Le Clair before cementing the retainer into the patient. One skilled in the art would understand that polishing the retainer would remove any sharp edges from the surface of the retainer and thereby make the appliance more comfortable if touched by the patient’s tongue. Further, using electro-polishing or plasma polishing to polish the retainer as taught by Sernetz in view of Le Clair would have been obvious to one skilled in the art as a suitable method to achieve the polishing since Le Clair is silent as to the process of polishing the retainer.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-23 and 25-27 filed 08/29/2023 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE SERKE WILLIAMS whose telephone number is (571)272-4970. The examiner can normally be reached Monday through Friday core hours 8am-4pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CATHERINE S WILLIAMS/ Reexamination Specialist, Art Unit 3993
Conferees:
/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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