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 30 October 2025. Claims 1-8, 10, & 11 are pending. Claims 10 and 11 are withdrawn as nonelected. Claims 1 is amended. No claims have been added. No Claims have been cancelled.
Response to Amendment
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. Independent claim 1, from which claims 2-8 depend, has been amended to include that the previously claimed occlusal registration tool includes “. . .a maxilla component and a mandible component fixedly connected by a connecting element. . .” (claim 1, lines 6-8). While the specification as originally filed does support the claimed maxilla component and mandible component, there is not support for the limitation that these elements are fixedly connected by a connecting element. The original disclosure sets out that the claimed maxillar and mandibular registration tools can be “fixedly connected by an encryption element” and that the occlusal registration tool of the maxilla and mandible can be inserted into a patient’s mouth via a ‘connection element’ (see paragraph 0033 of original disclosure). It is not clear from this description that the connection element connects the maxillar and mandibular in a fixed relation.
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 2013/0275107 to Alpern et al (‘107 hereafter) in view of U.S. Patent 4,856,993 to Maness et al. (‘993 hereafter).
Regarding claim 1, ‘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). ‘107 does not teach an occlusal registration tool.
In the same field of endeavor, dental restoration, ‘993 teaches the step of creating an occlusal registration tool with teeth already in occlusion that is inserted into the patients mouth to take a digital impression, the occlusal registration tool comprising a maxilla component and a mandible component fixedly connected by a connecting element, each component comprising predefined dental arches (Fig.1 items 54 and 64, Fig 2 item 87) for the benefit accurately recording occlusion thus of improving the fitment of a dental restoration. 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 ‘107 with those of ‘110 for the benefit of improving the fitment of a dental restoration.
Regarding claim 2, ‘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).
Regarding claim 3, ‘107 teaches the method comprising the situation-related position is predefined (paragraph 0042).
Regarding claim 4, ‘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).
Regarding claim 5, ‘107 teaches the method wherein generating the denture comprises adapting individual teeth from the dental arch database individually (paragraph 0043).
Regarding claim 6, ‘107 teaches the method the denture is generated using subtractive and/or additive production methods (paragraph 0044).
Regarding claim 7, ‘107 teaches the method comprising one or more implant connecting 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 (paragraph 0053).
Regarding claim 8, ‘107 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 0022).
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. Examiner agrees. Accordingly, an updated search was conducted and a new grounds of rejection is presented above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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