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 .
Status of Claims and Application
This final action on the merits is in response to the remarks and amendment received by the office on 27 July 2026. Claims 1-8, 10, & 11 are pending. Claims 10 and 11 are withdrawn as nonelected. Claims 1 and 7 are amended. No claims have been added. No Claims have been cancelled.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the occlusal registration tool with teeth already in occlusion that may be inserted into a patients mouth and take a digital impression 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: page 6 of the as filed specification refers to reference numbers (1), (2) and (10). 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. 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 as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Figure 1 includes reference characters UKB, VE, UZF, OZF and OKB that are not described in the specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(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 1-8 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.
Claim 1 currently recites an occlusal registration tool with teeth already in occlusion that is inserted into the patient’s mouth “to take a digital impression”. The understanding of this phrase is that the occlusal registration tool which is the only tool discussed in the claimed method takes a digital impression. The specification as originally filed does not support an occlusal registration tool with teeth already in occlusion that is inserted into the patient’s mouth that takes a digital impression. The impression of the occlusal registration tool is a physical impression. As discussed in Schweiger (US 2013/0122454), a digital impression represents images that are taken while a physical or analogue impression relies upon the physical object (¶ 0017) such as a set of teeth already in occlusion. Applicant’s specification discusses starting at page 5 ln 27: “The occlusal registration tool for the maxilla can be fixedly connected via an encryption element to the occlusal registration tool of the mandible. The data are thereupon scanned by an intraoral scanner and transferred into software provided for this purpose.” It is thus clear from applicant’s specification that support is provided for an intraocular scanner being the tool “to take a digital impression” and not the occlusal registration tool with teeth already in occlusion. In the event applicant disagrees with this interpretation of the clause “to take a digital impression” as currently written a prior art rejection is provided below in which it is a digital scanner that takes the digital impression.
Claims 2-8 depend upon claim 1 and are therefore also rejected.
Claim 7 has been amended to change the previously claimed implant connecting element to an implant encryption element. While the specification as originally filed does support the previously claimed implant connecting element, there is not support for the newly presented implant encryption element. For the purposes of examination, the implant encryption element will be regarded as a digital simulation of a physical artifact.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2017/0319313 to Beohmert (‘313 hereafter) in view of U.S. Patent Application Publication 2013/0275107 to Alpern et al (‘107 hereafter).
Regarding claim 1, ‘313 teaches a method for producing a denture for a patient (paragraph 0010) comprising providing tooth casts (OKB, UKB) that are fabricated and mounting them on respective upper and lower jaw bite registration tools (UZF, OZF) (paragraph 0039, Fig. 1a) which can be connected by an encryption element to be positioned in occlusion and inserted into a patient’s mouth with impression compound present between the lower and upper jaw and the lower and upper jaw registration tools respectively (paragraph 0039). This set of upper and lower cast teeth in occlusion represents a predefined dental arch. This allows the patient to already experience and examine the spatial conditions of the total prosthesis in the first visit. ‘313 teaches that following the impression the data associated with the bite registration tools and impression is digitized with a digital scanner (paragraph 0042) thus taking a digital impression. This digital data is then utilized to generate the prosthetic.
‘313 does not explicitly teach that the cast teeth are provided from digital data stored in a digital dental arch database of maxilla dental arch and mandible dental arch data already in occlusion and digitally defined in advance.
In a similar field of endeavor of making dentures from digital representations, ‘107 teaches a method for producing a denture for a patient, comprising a) providing a digital dental arch database that stores digital data in which a maxilla dental arch and a mandible dental arch already in occlusion are digitally defined in advance (paragraph 0043); c) generating the denture on the basis of the digital data (paragraph 0044). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to utilize the database of predefined dental arches in occlusion as discussed in ‘107 to provide a design for forming the teeth utilized in ‘313 as both relate to the formation of dentures utilized forming artificial teeth presenting a reasonable expectation of success, ‘313 does not teach a specific means for providing the design of the cast teeth prompting one of ordinary skill to look to related art, and doing so applies a known technique of having digital databases of the predefined dental arches to a known method with predictable results. See MPEP 2143.I.D.
Regarding claim 2, ‘313 does not teach digital data. In the same field of endeavor, ‘107 teaches the method comprising the digital data of maxilla and mandible dental arches in occlusion are positioned in a situation-related position (paragraph 0043) for the benefit of simulating the dynamic mouth situation. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘313 with those of ‘107 for the reasons stated above
Regarding claim 3, ‘313 does not teach digital data. In the same field of endeavor, ‘107 teaches the method comprising the situation-related position is predefined (paragraph 0042) for the benefit of simulating the dynamic mouth situation. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘313 with those of ‘107 for the reasons stated above.
Regarding claim 4, ‘313 does not teach predefined data. In the same field of endeavor,‘107 teaches the method comprising the predefined situation-related position is provided by the data of maxilla and mandible dental arches in occlusion (paragraph 0042) for the benefit of simulating the dynamic mouth situation. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘313 with those of ‘107 for the reasons stated above
Regarding claim 5, ‘313 does not teach a database of individual teeth. In the same field of endeavor,‘107 teaches the method wherein generating the denture comprises adapting individual teeth from the dental arch database individually (paragraph 0043) for the benefit of simulating the dynamic mouth situation. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘313 with those of ‘107 for the reasons stated above.
Regarding claim 6, ‘313 teaches the method the denture is generated using subtractive and/or additive production methods (paragraph 0023).
Regarding claim 7, ‘313 does not teach digital data. In the same field of endeavor, ‘107 teaches the method comprising one or more implant encryption elements are digitally positioned and designed in the maxilla and mandible on the basis of the digital data of maxilla and mandible dental arches in occlusion (paragraphs 0053-0060, Fig 4 items 406 and 410) for the benefit of simulating the dynamic mouth situation. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘313 with those of ‘107 for the reasons stated above
Regarding claim 8, ‘313 teaches the method comprising the tooth shape and/or tooth size and/or tooth color and/or tooth arch width of the digital data of maxilla and mandible dental arches in occlusion are adapted to scanned data of a mouth situation of a patient (paragraph 0023).
Response to Arguments
In support of the patentability of the instant claim, applicant has argued that the previous and above applied prior art fails to teach or properly suggest the claims as instantly amended. Specifically, applicant argues that the ‘993 does not teach an occlusal registration tool where each component comprises predefined dental arches as claimed. Examiner agrees. Accordingly, an updated search was conducted and newly identified relevant prior art was uncovered and applied.
Conclusion
Relevant prior art made of record: Groscurth et al. (U.S. Pub 2017/0112592) teaches that after placing a temporary prosthesis in the mouth of a patient the dentist may utilize an intraoral scanner with the prosthesis in place within the patient’s mouth in order to inform a digital model with the installed implants positions and angulations (¶ 0011) in the alternative to taking physical impressions (¶ 0012).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John P Robitaille whose telephone number is (571)270-7006. The examiner can normally be reached Monday-Friday 8:30AM-6:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached on (571) 270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JPR/Examiner, Art Unit 1743 /GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743
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