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 .
Response to Arguments
Applicant’s arguments, see Remarks filed on 05/21/2025, with respect to claims 1-22 have been fully considered. The newly added claims 21 and 22 are entered. The Examiner withdraws the 112(b) rejections presented in the previous Office Action, in light of Applicant’s amendments. However, upon careful consideration the Examiner finds that the claims are not patentable over the prior art of record. Applicant’s arguments against the rejections in view of the prior art of record have been fully considered, but are not persuasive as they do not address the new grounds of rejection and/or interpretation below necessitated by Applicant’s amendments.
The Examiner relies on the broadest reasonable interpretation of the terms “distal and mesial side”. Therefore; the mesial surface is interpreted as the lateral surface of the clip close to the midline of the teeth; in other words, it is located towards the front of the mouth; and the distal surface is interpreted as the lateral surface of the clip furthest from the midline and toward the back of the mouth. The Examiner notes that said directions would arbitrarily change depending on what tooth the bracket containing the clip is placed. For instance, if the bracket is placed in left lateral incisor, of the upper maxillary, the free end of the labial arm of the clip would be pointing up, the distal side of the clip would be to the left side and the mesial side of the clip would be to the right.
The Examiner further notes that Figure 3A of the Application shows that the mesial direction is to the left side and the distal direction is to the right, when rotating the Figure so that the bracket is facing up, i.e. the free end of the labial arm of the clip would be pointing up; being this the correct positioning of the bracket when placed on a tooth’s surface.
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 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.
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.
Claims 1-8, 11-12, 17-18 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Falcone (US 20140212828 A1) in view Hirsch (US 20170245963 A1).
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[AltContent: textbox (Figure 1. Falcone’s Annotated Figure 11C #1.)]
Regarding claim 1, Falcone discloses a ligating clip (1026) for a self-ligating orthodontic bracket (1010), comprising: - a labial arm having a free end and a further end (Falcone’s Annotated Figure 11C #1, above); - a lingual arm having a free end and a further end (Falcone’s Annotated Figure 11C #1); - a connecting arm connected to the further ends of the labial arm and the lingual arm (Falcone’s Annotated Figure 11C #1).
The ligating clip having a distal side and a mesial side (since for instance, if the bracket is placed in left lateral incisor, of the upper maxillary, the free end of the labial arm of the clip would be pointing up, the distal side of the clip would be to the left side and the mesial side of the clip would be to the right), the labial arm and the lingual arm (4) extending generally in a gingival-occlusal direction (since these arms are one on top of the other in the vertical direction and they would be in the gingival-occlusal direction once the clip is placed in an orthodontic bracket) and the connecting arm extending generally in a lingual-labial direction (since the connecting arm is in-between the labial arm and the lingual arm forming a curve in-between the two structures, the connecting arm extends towards the lingual-labial direction); and - a locking element in a form of a hook (1066k) arranged at the free end of the lingual arm (Figure 11C #1), the hook (1066K) protruding in a lingual-labial direction (as shown in Figure 11C #1); wherein at least one cutout is arranged at the free end of the lingual arm, the at least one cutout being open at either the distal or the mesial side of the ligating clip (Falcone’s Annotated Figure 11C #1).
However, Falcone fails to specifically disclose “the hook protruding in a lingual-labial direction away from the labial arm”.
Hirsch discloses a ligating clip (Figure 4) for a self-ligating orthodontic bracket, comprising a locking element in a form of a hook (28) arranged at the free end of the lingual arm (25), the hook (28) protruding in a lingual-labial direction away from the labial arm (as shown in Figure 4). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Falcone’s ligating clip to make the hook protruding in a lingual-labial direction away from the labial arm, since such modification would make the hook a locking tab so that clip will not separate from the an appropriately shaped bracket after being connected ([0032]). The Examiner furthers notes that it would have been obvious for one of ordinary skills in the art to additionally modify Falcone’s bracket so that it corresponds to the structures of the clip, as modified above and taught by the secured fit mechanism of Hirsch’s self-ligating bracket.
Regarding claim 2, Falcone and Hirsch, as combined above discloses the invention substantially as claimed. Falcone discloses wherein the at least one cutout has at least one mesial-distal border and at least one gingival-occlusal border (Annotated Figure 11C #2, below).
[AltContent: textbox (Figure 2. Annotated Figure 11C #2.)]
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Regarding claim 3, Falcone and Hirsch, as combined above discloses the invention substantially as claimed. Falcone discloses wherein the hook (1066k), in a view along the lingual- labial direction, has a length (L) and is distanced from at least one mesial- distal border and from at least one gingival-occlusal border by at least half of its length (L) (Annotated Figure 11C #3, below).
[AltContent: textbox (Figure 3. Annotated Figure 11C #3, below. )]
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Regarding claim 4, Falcone and Hirsch, as combined above discloses the invention substantially as claimed. Falcone discloses wherein the at least one cutout, in a view along the lingual-labial direction, is generally L-shaped (Falcone’s Annotated Figure 11C #1).
Regarding claim 5, Falcone and Hirsch, as combined above discloses the invention substantially as claimed. Falcone discloses wherein a shape of the lingual arm due to the cutout is given by a gingival section, a protrusion connected to the gingival section, the protrusion running in the gingival-occlusal direction and having a smaller width along the mesial-distal direction than the gingival section. Please see Falcone’s Annotated Figure 11C #2, below.
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[AltContent: textbox (Figure 4. Falcone’s Annotated Figure 11C #2.)]
Regarding claim 6, Falcone and Hirsch, as combined above, fails to disclose “wherein the labial arm is provided with a mesial finger and a distal finger”. However, Falcone further disclose an additional embodiment according to Figure 4A and [0049], wherein the labial arm is provided with a mesial finger and a distal finger (1031C). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Falcone/Hirsch’s ligating clip to make it comprising a mesial finger and a distal finger in the labial arm, since such modification would allow the hook to securely engage with an appropriately sized and shaped self-ligating orthodontic bracket ([0049]).
Regarding claim 7, Falcone and Hirsch, as combined above discloses the invention substantially as claimed. Falcone discloses wherein the hook (1066k) protrudes from a lingual surface of the lingual arm (protrudes laterally, see Figure 11C).
Regarding claim 8, Falcone and Hirsch, as combined above discloses the invention substantially as claimed. Falcone discloses wherein the clip is provided with only one cutout such that, in a view along the lingual-labial direction, the clip is of asymmetric design due to the presence of the cutout (since the structures of the labial arm are different than the structures of the lingual arm; therefore in the lingual labial direction the clip is asymmetrical; see Annotated Figure 11C).
Regarding claim 11, Falcone and Hirsch, as combined above, discloses the clip according to claim 1. Please see the rejection of claim 1 above. Falcone also discloses a self-ligating orthodontic bracket (1010) comprising the clip. Therefore, it would have been obvious to one of ordinary skills in the art, to modify Falcone’s orthodontic bracket to incorporate the appropriately sized and shape structures that would make the bracket cooperate with the structures of the clip, as modified above in claim 1, i.e. a bracket that receives the clip having the hook protruding in a lingual-labial direction away from the labial arm; since such modification would be a case of a simple matter of design choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed hook was significant (MPEP 2144.04).
Regarding claim 12, Falcone and Hirsch, as combined above discloses the invention substantially as claimed. Falcone discloses wherein the bracket (1010) is provided with an occlusal-gingival channel (1068; please see Figures 15A-C and [0074]) which has two sections of different clearance and which are separated from each other by a step (steps created by side walls 1072) such that, in a position in which an archwire slot (1020, shown in Figure 3) is open, the hook (1062) acts together with step (steps created by side walls 1072) to prevent a separation of the clip (1026) from the bracket (1010) ([0074]).
Regarding claim 17, Falcone and Hirsch, as combined above, discloses the invention substantially as claimed. Falcone discloses wherein the clip is made of a Ni-Ti alloy ([0181]).
Regarding claim 18, Falcone and Hirsch, as combined above, discloses the invention substantially as claimed. Falcone discloses wherein the clip is coated with silver nanoparticles ([0183]), but fails to specifically disclose wherein the clip is coated with a material selection from the group consisting of Au/Rh, with Rh being an outermost layer.
However Hirsch further discloses wherein the clip is coated with a material selection from the group consisting of Au/Rh, with Rh being an outermost layer ([0016]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Falcone’s solver coating to make it instead of Au/Rh, with Rh being an outermost layer, as taught by Hirsch, since such modification minimizes the amount of Ni that leaches from the clip, and improves the aesthetics of the bracket when used in conjunction with a ceramic bracket body ([0016]).
Regarding claim 20, Falcone and Hirsch, as combined above, discloses the invention substantially as claimed. Falcone discloses further comprising an aperture (1060) in the clip for receiving a tool to slide the clip between an open and a closed position (Figure 15C). Please note that said aperture is described in ([0047]) for all of Falcone’s embodiments.
Regarding claim 21, Falcone and Hirsch, as combined above, discloses the invention substantially as claimed. Falcone discloses wherein the shape of the lingual arm due to the cutout is further defined by a transversal part running in the mesial-distal direction, the transversal part being connected on one end to the protrusion and on a further end to the hook (Annotated Figure 11C #2).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Falcone in view Hirsch, further in view of Orikasa (US 20030039938 A1).
Regarding claim 9, Falcone and Hirsch, as combined above, fails to disclose “wherein the clip has, at its labial arm only a mesial finger and a distal finger between which there is arranged a wall running in the mesial-distal direction which is free of protrusions or fingers and together with the fingers which run in a gingival-occlusal direction borders an indentation arranged on the end of the labial arm”.
Falcone’s embodiment according to figure 6D discloses a clip having at its labial arm only a mesial finger and a distal finger between which there is arranged a wall running in the mesial-distal direction which is free of protrusions or fingers (see Figure 6D: fingers 1031e and the wall running in the mesial- distal direction, which runs straight). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to further modify the clip to make it comprising the structures shown in the labial arm of Falcone’s Figure 6D, since such modification would be a case of a simple matter of design choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed hook was significant (MPEP 2144.04).
Falcone and Hirsch, as immediately combined above, fails to disclose “and together with the fingers which run in a gingival-occlusal direction borders an indentation arranged on the end of the labial arm”.
Orikasa discloses a ligating clip (20, Figure 1) for a self-ligating orthodontic bracket (10), wherein the clip has, at its labial arm only a mesial finger and a distal finger (Fingers 21) between which there is arranged a wall running in the mesial-distal direction which is free of protrusions or fingers and which together with the fingers (21) which run in a gingival-occlusal direction borders an indentation arranged on the end of the labial arm (Orikasa’s Annotated Figure 1, below). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Falcone/Hirsch’s ligating clip to make it comprising indentations arranged on the end of the labial arm, as disclosed by Orikasa, since such modification would allow the hook to securely engage with an appropriately sized and shaped self-ligating orthodontic bracket; being this a case of a simple matter of design choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed hook was significant (MPEP 2144.04).
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[AltContent: textbox (Figure 5. Orikasa’s Annotated Figure 1, #3.)]
Regarding claim 22, Falcone, Hirsch and Orikasa, as combined above, discloses the invention substantially as claimed. Falcone discloses wherein the wall running in the mesial- distal direction runs straight (Figure 6D).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Falcone in view Hirsch, further in view of Bathen (US 7621743 B2).
Regarding claim 10, Falcone and Hirsch, as combined above, fails to disclose “wherein the labial arm is provided with a mesial finger and a distal finger”. However, Falcone further disclose an additional embodiment according to Figure 4A and [0049], wherein the labial arm is provided with a mesial finger and a distal finger (1031C). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Falcone/Hirsch’s ligating clip to make it comprising a mesial finger and a distal finger in the labial arm, since such modification would allow the hook to securely engage with an appropriately sized and shaped self-ligating orthodontic bracket ([0049]).
Falcone and Hirsch, as combined above, fails to disclose additionally disclose “and two central fingers wherein the two central fingers are arranged adjacent to each other”.
Bathen discloses a self-ligating orthodontic bracket (Abstract) and a clip 600 (Figure 6). Wherein the clip (600) has, at its labial arm a mesial finger and a distal finger (fingers at both sides of the clip, Figure 6), and two central fingers (610 and 605) wherein the two central fingers are arranged adjacent to each other (Figure 6, col 7, lines 33-56). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Falcone/Hirsch’s labial arm to make it with two central fingers arranged adjacent to each other, as taught by Bathen, since such modification would provide the clip with additional locking/retaining mechanisms to keep the clip in a closed position in the dental bracket (col 7, lines 33-56).
Allowable Subject Matter
Claims 13-16 and 19 are allowed.
The following is an Examiner’s statement of reasons for allowance: the prior art of record either alone or in proper combination does not disclose or teach the subject matter of the independent claim(s) 13. The subject matters of independent claim 13 not found or disclosed are a bracket having: “the wall portion having three indentations in a line parallel to the mesiodistal direction, forming outer indentations and a central indentation, the wall portion having two side walls separating the indentations from one another, each of the side walls having free ends configured with flanges that extend into the central and outer indentations parallel to a mesiodistal direction” and a clip having: “a first end with two protrusions shaped to fit within the two outer indentations of the wall portion, and two central fingers shaped to fit within the central indentation of the wall portion”, “a second end in the shape of a J and having a locking element at a tip thereof”; in combination with the other limitations in the claims.
The closest prior arts of record is Falcone (US 20140212828 A1); however, this reference do not disclose the allowable subject matter as explained 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 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 LUIS RUIZ whose telephone number is (571)270-0839. The examiner can normally be reached on M-F 8 Am - 5 PM (EST). 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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/Luis Ruiz Martin/
Patent Examiner
Art Unit 3772
/ERIC J ROSEN/Supervisory Patent Examiner, Art Unit 3772