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.
Claim Objections
2. Claims 1, 10, and 19, are objected to because of the following informalities:
Claims 1, 10, and 19, each recites “successively-adjoined” (e.g. claim 1 line 3; claim 10 line 5; claim 19 line 3; note there is a dash) and “successively adjoined” (e.g. claim 1 line 6; claim 10 line 7; claim 9 lines 5-6, without the dash) which is inconsistent. Correction is required to ensure consistency of the limitations throughout the claims.
Claim 10 recites “surface” in singular form (line 8), which should be in plural form “surfaces”.
In claim 10, the phrase “wherein” should be inserted before “when” in line 14.
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 10-24 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.
Claims 10 and 19 each newly recites “a portion of the guiding surface is disposed opposite each force-applying surface, transition between the portion of the guiding surface disposed opposite each force-applying surface and the surface of the tooth is gentler than transition between any of the force applying surfaces and the surface of the tooth” (claim 10 lines 10-12; claim 19 lines 8-12).
Note that in the original drawings Fig. 1 shows guiding surface 107 has a portion (area at reference numeral 107a) that is opposite from force-applying surface 105a, but is not opposite from force-applying surface 103a.
Accordingly, the written specification paragraph [00036], describes:
“… a part of the guiding surface 107a opposite to the force-applying surface 105a is a cambered surface, a part of the guiding surface 107a opposite to the force-applying surface 103a is also a cambered surface, and a part of the guiding surface 107a opposite to the bottom surface 101a is a plane.”
That is, the original disclosure discloses a part/portion of 107 is opposite force-applying surface 105a, and another part/portion of 107 is opposite another force-applying surface 103a. The original disclosure does not have support for one portion of the guiding surface being opposite from each, i.e. every or all, force-applying surfaces. Therefore, such limitation(s) is considered to be new matter.
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. Claims 1-2, 5-6, 8, and 10-24, are 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 pre-AIA the applicant regards as the invention.
Claim 1 recites limitation “the second force-applying surface” (line 10), which lacks antecedent basis.
Claim 1 recites limitations “one guide surface” (line 11), “one bottom surface” (lines 11-12), “two force-applying surfaces” (line 12), without referencing a respective antecedent basis. Therefore, it is unclear whether these limitations are the same, different from, or part of “a guiding surface”, “a bottom surface”, and “two… force-applying surfaces”, previously defined in the claim (lines 3-4).
Claim 6 recites two instances of “a part of the guiding surface that adjoins the bottom surface” (lines 1-2, and lines 2-3); it is unclear whether such two “a part” are the same or different element(s) of the invention.
Claim 8 recites “two adjoined force-applying surfaces” (line 2) without reference to an antecedent basis. Therefore, it is unclear these are the same as, different from, or part of “two successively-adjoined force applying surfaces” previously defined in claim 1.
Claims 10 and 19 each recites two instances of “each force-applying surface” (claim 10 lines 10 and 11; claim 19 lines 9 and 10) without referencing to an antecedent basis. Therefore, it is unclear whether these limitations are the same, different from, or part of the previously defined elements “N successively adjoined force-applying surfaces” (claim 10 line 5) and/or “each of the successively adjoined force-applying surface[s]” (claim 10 lines 7-8).
Claims 10 and 19 each recites “an angle between a first force-applying surface and the Nth force-applying surface is greater than or equal to 60° and less than or equal to 120°” (claim 10 lines 17-18; claim 19 lines 7-8). It is unclear whether or not the first force-applying applying is adjoined to the Nth force-applying surface forming the angle therebetween. If not adjoined, it is unclear the angle is between a first force-applying surface and which Nth force-applying surface.
Claims 13 and 22-23, each recites limitations “one guide surface”, “one bottom surface”, and “two force-applying surfaces” (lines 2-4), without referencing a respective antecedent basis. Therefore, it is unclear whether these limitations are the same, different from, or part of “a guiding surface”, “a bottom surface”, and “two force-applying surfaces”, previously defined in the base claims.
Claim 13 recites “such that there are only two force-applying surfaces” (line 2); it is unclear whether these are the same as, different from, or part of “at least two of the N force-applying surfaces” previously defined in the base claim 10 lines 15-16.
Claim 15 recites “…the portions of the guiding surface” (plural form), which lacks antecedent basis. Note that the base claim 10 defines antecedent bases for “a portion of the guiding surface” (singular form).
Claim 15 recites “one of the portions of the guiding surface” (line 2); such plural form of limitation “the portions” lacks antecedent basis. Note that the base claim defines antecedent basis for singular “a portion of the guiding surface” (claim 10 lines 9-10).
Claim 16 recites “a single guiding surface”; it is unclear whether such limitation is the same or different from “a guiding surface” previously defined in the base claim 10.
Claim 17 recites “two adjoined force-applying surfaces” (lines 2-3) without reference to an antecedent basis. Therefore, it is unclear whether these are the same as, different from, or part of the “at least two of the N force-applying surfaces” defined in the base claim 10 lines 15-16.
Claim 18 recites “a first force-applying surface” (line 2), and “a second force applying surface” (line 3); it is unclear whether these are the same as, different from, or part of the previously defined “a first force-applying surface” (claim 10 line 17), “the N successively-adjoined force-applying surfaces” (claim 10 line 5), or “two force-applying surfaces” (claim 13).
Claims 18 and 20 each recites “approximately” (line 3) which is a relative term, rendering the claim indefinite. The term “approximately” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 18 and 20 each recites “configured to face downward” (lines 2-3) and “configured to face upward” (line 4), without reciting a relative reference point, i.e. downward or upward from where? Furthermore, note that as the claimed accessory is a stand-alone 3D body configured to be fixed on a tooth, the terms “downward” and “upward” are indefinite because their directional meanings vary depending on whether the accessory is fixed on an upper tooth or a lower tooth, and on which surface, e.g. occlusal, buccal, or lingual surface of the tooth.
Claim 18 recites “one of the portions of the guiding surface” (line 4); such plural form of limitation “the portions” lacks antecedent basis. Note that the base claim defines antecedent basis for singular “a portion of the guiding surface” (claim 10 lines 9-10).
Claim 20 recites “the second force-applying surface” (line 2), which lacks antecedent basis.
Claim 22 recites “both of the portions…” (line 2), which lacks antecedent basis.
Claim 23 recites “substantially” (line 3) which is a relative term, rendering the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 24 recites “each force-applying surface” without referencing to an antecedent basis. Therefore, it is unclear this limitation is the same as, different from, or part of the previously defined limitation(s) “N successively adjoined force-applying surfaces” (claim 19 lines 3-4).
Claim 24 recites “wherein the force-applying surfaces are perpendicular to each other”. It is unclear how the force-applying surfaces (e.g. more than 2 surfaces) are perpendicular to each other, i.e. which surface is perpendicular to which surface? It is also unclear whether or not two of the force-applying surfaces are adjoined in order to form a perpendicular angle therebetween.
All dependent claims are rejected herein based on dependency.
Claim Rejections - 35 USC § 102
7. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 1-2, 5-6, 8, and 10-24, are rejected under 35 U.S.C. 103 as being unpatentable by Wu et al. (US 2021/0393376).
Regarding claim 1, Wu et al. discloses an accessory 28 for being fixed on a tooth and enabling a shell-shaped tooth repositioner 26 (Fig. 1C) to apply forces to the tooth through the accessory 28 (Figs. 1C-1D; abstract; paragraph [0054]-[0055]).
Wu et al. Figs. 5A-5F discloses: the accessory is a 3D body enclosed by a bottom surface 62, a guiding surface 66 and two successively-adjoined force-applying surfaces (i.e. active surfaces 64). The accessory is to be fixed on the tooth by bonding the bottom surface 62 and a surface of the tooth C, both of the bottom surface 62 and the guiding surface 66 adjoin each of the two successively adjoined force-applying surface 6 (Fig. 5A; paragraph [0070]).
Wu et al. discloses a transition between the guidance surface 66 and the surface of the tooth is gentler (due to the tapering of guiding surface 66) than a transition between any of the two force-applying surfaces 64 and the surface of the tooth (Figs. 5A-5B; paragraph [0070] “orthogonal active surface 64… passive or non-active surface 66 that tapers into the crown for ease of removal”).
Regarding the newly recited limitation(s), note that Wu et al. discloses the 3D body is defined by only one guiding surface 66, one bottom surface 62, and two force-applying surfaces 64 (Figs. 5A-5B; paragraph [0070]).
As to claim 5, Wu et al. discloses the invention substantially as claimed including the force-applying surfaces 64 are planes (Fig. 5A; page 8 lines 1-2 “active surface defines a planar surface”). However, per claims 1 and 5, Wu et al. fails to disclose an angle between the first and second force-applying surfaces being greater than or equal to 60 and less than or equal to 120 degrees (as recited in claim 1); and that the two adjoined force-applying surfaces are perpendicular to each other (as recited in claim 5). Nonetheless, note that that Wu et al. discloses that an angle 68 between two adjoined force-applying surface 64 may be 59 degrees (Fig. 5D paragraph [0070]), indicating that such angle is of optimizable variable. Therefore, such claimed ranges of greater than or equal to 60 and less than or equal to 120 degrees and perpendicular angle would have been obvious to one having ordinary skill in art at the time the invention was made since it has been held that discovering an optimum or workable ranges is well within the skill of an artisan via routine experimentation in order to improve upon what is already generally known. See MPEP §§ 2144.05.
As to claim 6, Wu et al. shows a part of the guiding surface 66 that adjoins the bottom surface is a cambered surface or a curved surface, or wherein a part of the guiding surface that adjoins the bottom surface forms a slope (Figs. 5B and 5F show curved surface 66 that is curved and forms a slope/taper; paragraph [0070] “passive or non-active surface 66 that tapers into the crown for ease of removal”).
As to claim 8, Wu et al. disclose a sub-surface (beveled surface at top of 66 adjoining fillet 68) of the guiding surface 66 that adjoins two adjoined force applying force-applying surfaces forms a slope to avoid forming a convex corner between the guiding surface and the two adjoined force applying force- applying surfaces (Figs. 5D-5E; paragraph [0070] “non-active surface 66 may have drafted sides and filleted edges for ease of aligner removal and the relatively large fillet 68”). Such filleted edge forms a slope as claimed.
Regarding claim 10, Wu et al. discloses an assembly (see Figs. 1C-1D) of an accessory 28 and a shell-shaped tooth repositioner 26, wherein the accessory 28 is to be fixed on a tooth C, the shell-shaped tooth repositioner is to be worn on teeth C, on one of which the accessory 28 is fixed, to re-position the teeth from a first tooth arrangement to a second tooth arrangement (Figs. 1C-1D; abstract; paragraph [0054]-[0055]).
Regarding the accessory, Wu et al.’s embodiments of Figs. 6A-6F and Figs. 7A-7E are similar to the embodiment of Figs. 5A-5F as detailed above with respect to claim 1. Particularly to claim 10, Figs. 6A-6F shows an accessory is a 3D body enclosed by a bottom surface 72, a guiding surface 76, and N successively-adjoined force-applying surfaces 74, wherein both the bottom surface 72 and the guiding surface 72 adjoin each of the force-applying surfaces 74. Figs. 6A-6F shows three (3) force-applying surfaces 74; therefore N equals 3, which is a natural number greater than 2, as claimed.
Figs. 7A-7E shows an accessory being a 3D body enclosed by a bottom surface 82, a guiding surface 86, and N successively-adjoined force applying surfaces 84, wherein N equals 2; both the bottom surface 82 and the guiding surface 86 adjoin each of the N successively adjoined force-applying surfaces 84. There is a portion of guiding surface 86 disposed opposite each force-applying surface 84. A transition between said portion 86 and the surface of the tooth is gentler (due to the low slope/tapering of guiding surface 86) than transition between any of the force-applying surfaces 84 and the surface of the tooth (Fig. 7A-7C; paragraph [0076] “active surface 84 may be orthogonal”).
Wu et al. discloses the shell-shaped tooth repositioner 26 is a one piece shell which forms a first cavity 26 for receiving the teeth and a second cavity 28’ for receiving the accessory 28 (Figs. 1C-1D). When the shell-shaped tooth repositioner is worn on the teeth C, walls of the second cavity 28’ abut against and apply forces on at least two of the N force- applying surfaces (Figs. 5-7).
Per claims 10, 14, and 18, regarding the recited ranges of angle between the force-applying surfaces, Wu et al. discloses the invention substantially as claimed including the force-applying surfaces 84 are planes (Fig. 7A; page 8 lines 1-2 “active surface defines a planar surface”). However, Wu et al. fails to explicitly disclose an angle between the first and second force-applying surfaces being greater than or equal to 60° and less than or equal to 120° (as recited in claims 10); that the two adjoined force-applying surfaces are perpendicular to each other (as recited in claims 14), and that a second force-applying surface is perpendicular to a first force-applying surface (as recited in claim 18). Nonetheless, note that that Wu et al. Figs. 7A-7C show the adjacent orthogonal force-applying surfaces 84 being approximately perpendicular to each other (Fig. 7A-7C; “active surface 84 may be orthogonal”), indicating that such angle is of optimizable variable. Therefore, such claimed ranges of greater than or equal to 60 and less than or equal to 120 degrees and perpendicular angle would have been obvious to one having ordinary skill in art at the time the invention was made since it has been held that discovering an optimum or workable ranges is well within the skill of an artisan via routine experimentation in order to improve upon what is already generally known. See MPEP §§ 2144.05.
As to claim 11, Wu et al. discloses the force-applying surfaces 84 are planes (Figs. 7A-7C; page 8 lines 1-2 “active surface defines a planar surface”).
As to claim 12, Wu et al. fails to explicitly disclose the force-applying surfaces are parallel to a normal direction of the bottom surface. Nonetheless, note that Wu et al. discloses the force-applying surfaces 84 are orthogonal surfaces (Fig. 7A-7C; paragraph [0076] “active surface 84 may be orthogonal”). And in the embodiment of Fig. 2A-2E, Wu et al. discloses “normal active surface 34 may be used for simple orthogonal movements” (paragraph [0060]). Such normal (i.e. orthogonal or perpendicular) active surface is approximately parallel to a normal direction of the bottom surface. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make Wu et al.’s force-applying surfaces parallel to a normal direction of the bottom surface in order to apply most effective simple orthogonal forces/movements to the teeth depending on the requirements of the orthodontic treatment. Note that such modification would have been obvious to one having ordinary skill in art at the time the invention was made since it has been held that discovering an optimum or workable ranges is well within the skill of an artisan via routine experimentation in order to improve upon what is already generally known. See MPEP §§ 2144.05.
As to claim 13, the embodiment of Figs. 7A-7E shows N equals 2 such that there are only two force applying surfaces 64, 84 (Figs. 5, 7 respectively) and the 3D body is defined by only one guiding surface, one bottom surface, and two force- applying surfaces.
As to claim 15, the embodiment of Figs. 7A-7E shows at least one of the portions 86 of the guiding surface 86 disposed opposite each force-applying surface that adjoins the bottom surface 82 is a cambered surface or a curved surface.
As to claim 16, the embodiment of Figs. 7A-7E shows a single guiding surface 86 spans both sides opposite the force-applying surfaces 84.
As to claim 17, the embodiment of Figs. 7A-7E shows a sub-surface of the guiding surface 86 that adjoins two adjoined force applying force-applying surfaces 84 forms a slope to avoid forming a convex corner between the guiding surface and the two adjoined force applying force-applying surfaces (paragraph [0076] “Fillets and beveled passive or non-active surfaces 86 may allow for ease of aligner removal”). At least one of those fillets and beveled surfaces forms a slope as claimed.
As to claim 18, Fig. 7A shows a first force-applying surface (planar surface 84 facing the occlusal direction) is configured to face downward, a second force-applying surface 84 is oriented approximately perpendicular to the first force-applying surface, and one of the portions of the guiding surface 86 is configured to face upward (see Fig. 7A).
Regarding claims 19-24, the accessory and all its recited limitations are disclosed and/or would have been obvious by Wu et al. as detailed above with respect to claims 10-18. Particularly to claim 23, note that Wu et al.’s embodiments of Figs. 4A-4E, 5A-5F, and 7A-7E, each 3D body is shown to defined by only one guiding surface, one bottom surface, and two force-applying surfaces, wherein the bottom surface has a contour that is substantially triangular, and the singular guiding surface is cambered, as claimed.
Response to Arguments
10. Applicant’s arguments regarding the amendments made to the claims have been fully considered and are persuasive as having overcome Phan et al. in view of Knopp et al. The ground(s) of rejection under Phan et al. in view of Knopp et al. have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Wu et al. as detailed above.
Regarding the newly recited limitation(s) “the 3D body is defined by only one guiding surface, one bottom surface, and two force-applying surfaces” as recited in claims 1, 13, and 22-23, Wu et al.’s embodiment of Figs. 5A-5F discloses the 3D body is defined by only one guiding surface 66, one bottom surface 62, and two force-applying surfaces 64 (Figs. 5A-5B; paragraph [0070]). Wu et al.’s embodiments of Figs. 7A-7E also show the accessory 3D body is defined by only one guiding surface 86, one bottom surface 82, and two force-applying surfaces 84 (see Figs. 7A-7E). Note that the accessory as shown in Wu et al.’s Figs. 4A-4E is defined by only one guiding surface 56, one bottom surface 52, and two force-applying surfaces 54 (see Figs. 4A-4E).
Regarding the newly recited limitation(s) “a portion of guiding surface disposed opposite each force-applying surface, transition between the portion of the guiding surface disposed opposite each force-applying surface and the surface of the tooth is gentler than transition between any of the force-applying surfaces and the surface of the tooth” as recited in claims 10 and 19, note that Wu et al. Figs. 7A-7E shows the guiding surface 86 has a portion disposed opposite each force applying surface 84, wherein a transition between said portion 86 and the surface of the tooth is gentler (due to the low slope/tapering of guiding surface 86) than transition between any of the force-applying surfaces 84 and the surface of the tooth (Fig. 7A-7C; paragraph [0076] “active surface 84 may be orthogonal”).
Conclusion
11. 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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAO D MAI/
Examiner, Art Unit 3772
/ERIC J ROSEN/Supervisory Patent Examiner, Art Unit 3772