DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/26/2025 has been entered.
Drawings
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: reference characters “28” (in Figs. 3A-3B).
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: “protrusions 26” (on page 7 line 23).
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(a)
3. 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.
4. Claims 1-12, 21-22, and 24-29, 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 21 recites “the opening provides clearance for insertion of a tool or instrument when the at least one appliance receptacle is in contact with at least one tooth of the dental arch” (lines 1-3), which does not have support from the original disclosure and therefore is considered to be new matter.
Note that neither the drawings nor the written description has support for “insertion of a tool or instrument”.
Claim 27 recites “the channel has a width that is substantially equal to a mesial-distal width of the at least one appliance receptacle” (lines 1-3) which does not have support from the original disclosure and therefore is considered to be new matter.
Note that the written description describes: “the width "W" is no greater than the mesial distal width of the appliance, as this tends to prevent the bracket from slipping out of its corresponding receptacle in the transfer apparatus and can provide visual feedback during the process of loading the appliance in the transfer apparatus” (page 8 lines 3-6, emphasis added). Therefore, the original disclosure teaches the channel’s width being smaller (not equal as claimed) than the appliance’s width.
Claim 28 recites “the opening at the gingival edge has a width that allows for insertion of the orthodontic bracket or bracket analog into the at least one appliance receptacle via the channel” (lines 1-3), which does not have support from the original disclosure and therefore is considered to be new matter.
There is no support from the written description for such features. Furthermore, note that Figs. 11-12 shows the opening 334 being smaller than the bracket 320, and therefore cannot allow for insertion of the bracket.
Claim 29 recites “a positioning layer forming an interior surface, the exterior surface and the interior surface together defining a gingival edge of the body, … a channel in the positioning layer” (lines 3-7). Accordingly, as shown in Fig. 11, the interior surface at the gingival edge 316 is the facial wall 331 of channel 330.
Therefore,
Claims 1 and 29 each recites: “a positioning layer forming an interior surface,… the exterior surface and the interior surface together defining a gingival edge of the body, … a channel in the positioning layer” (claim 1 lines 3-9; claim 29 lines 3-7).
Accordingly, Fig. 11 shows the interior surface forming gingival edge 316, and therefore the facial wall 331 is the same as the interior surface at gingival edge 316 (see Fig. 11; Specification page 23 lines 23-26 “gingival edge 316… The facial wall 331…”).
Claims 26 and 29 then recites “wherein the channel comprises a facial wall spaced in a buccolabial direction from the interior surface of the body” (claim 26 lines 1-2; claim 29 lines 9-10).
It is unclear how the facial wall can be spaced from the interior surface since the facial wall is the interior surface at gingival edge 316. Therefore, the specification does not commensurate in scope with these claims.
All dependent claims are rejected herein based on dependency.
Claim Rejections - 35 USC § 112(b)
5. 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.
6. Claim 24 is 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 24 recites “the gingival edge of the interior surface and the exterior surface” which lacks antecedent basis in the claim(s). Note that the base claim 1 defines antecedent basis for “a gingival edge of the body” (claim 1 lines 5-6); there is no antecedent basis for “the gingival edge of the interior surface…”
Response to Arguments
7. Applicant’s arguments with respect to the claim amendments have been fully considered and are persuasive. The grounds of rejection under Cinader et al. have been withdrawn.
Claims 1-12, 21-22, and 24-29, are rejected under 35 U.S.C. 112 as detailed above. No ground(s) of rejection under prior art.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner HAO D. MAI whose telephone number is (571)270-3002. The examiner can normally be reached on Mon-Fri 8:00-4:30. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached on (571) 270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAO D MAI/
Examiner, Art Unit 3772
Prosecution Insights