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 .
Clams 1 and 6-12 have been presented for examination.
Claim Rejections - 35 USC § 112
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.
Claims 6-8 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.
Specifically, the specification does not explicitly teach creating the image data for both the mandibular and maxilla portions together. Rather, it appears that the specification simply supports that the same process used to generate the object for the mandibular can also be used for the maxilla [specification 0047]. This suggests that a separate process to generate the maxilla would be performed and that doing such is not dependent on first generating the mandibular. Applicants originally filed claims also support this viewpoint since claims 1-2 were originally filed as a generic image data creating method which then was applied to the mandibular (original claim 4) and maxilla (original claim 6) separately.
For examination purposes, the “method for creating image data of a dental shaped object” is interpreted as generating the image shaped data for one dental shaped object which is defined in claim 1 as being for the mandibular.
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.
Claims 1 and 6-12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Specifically, claims 1 and 11-12 recite that the support member is placed where “a portion which deformation of the side-wall portion is greatest at the time of shaping”. This implies that deformation has already occurred which then dictates where the rod-shaped member should be placed. Such would be unsupported by applicants’ specification.
For examination purposes, the examiner is interpreting claims 1 and 11-12 as the rod-shaped member being placed in a position that is “most easily deformed”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6-8 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 1 recites the rod-shaped member for use in a dental shaped object for a mandibular. Claim 6, changes the dental shaped object and the rod-shaped member to instead be used for a maxilla. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 and 6-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hasan1 in view of Van Espen [Espen] PGPUB 2018/0086004.
Referring to claim 1, Hasan teaches the method substantially comprising:
acquiring image data of a dental shaped object having a side-wall portion forming a horseshoe-shaped concave portion [0066].
having a reinforcing member that reinforces the side-wall portion in CAD wherein the reinforcing member has rod shaped members connecting front surfaces of left and right portions of an inner side-wall portion in a dental shaped object for a mandibular, wherein the rod-shaped member is linear and the rod-shaped member connects back side end portions of the left and right portions of the inner side-wall portion in an oral cavity [300 Figs. 3E, 0006, 0024, 0066]
image data of the dental shaped object is connected to image data of a reinforcing member [0066].
In summary, Hasan teaches acquiring a 3D model of a dental shaped object (i.e. denture base) which includes a reinforcing support structure [abstract]. Hasan receives the model so that the dental shaped object can be 3D printed. Since the support structure is part of the 3D model, it necessarily was generated via CAD which is used to create 3D models. While Hasan teaches acquiring such a model, the acquisition is not explicitly directed to the creation of the model but rather reception of the completed 3D model. That said, the received 3D model inherently must have been generated at some point prior to Hasan receiving it. Because the dental shaped object is “custom” and “patient specific” [0007] the actual shape of dental shaped object would need to be established before any reinforcing support structure(s) could be introduced. Specifically, if the patient had a smaller sized mouth, the support structure would be shorter as opposed to a patient with a larger mouth. In other words, the support structure could not be a “one size fits all” proposition since a support structure too small would not properly span the sides of the dental object while a support structure too large would encroach upon the void which contacts the patient’s jaw. In addition, some variants include multiple attachment points which would require knowledge of the size and shape of the dental object in order to determine the proper connection points. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to create and connect the support structures after receiving the specific 3D digital model of the patient specific denture base because then it would be possible to know the appropriate size and position of where to place the support structure(s) on the dental shaped object for 3D printing.
Lastly, even if it is possible to create and position/connect the support structure before receiving the 3D model of the dental shaped object or during generation of the dental shaped object, it would have been at least obvious to try connecting the support after acquiring the dental shaped object model because there are only a limited number of known possibilities with how the 3D model of the dental object and support structure could be connected and a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.
While Hasan teaches the invention substantially as claimed above, it is not explicitly taught 1) the reinforcing member has only one rod-shaped member; and 2) the rod-shaped member connects the lower ends of the left and right portions of the inner side-wall portion. In other words, Hasan teaches using two reinforcement members [300 and 310 Fig. 3E] instead of a single reinforcement member and also does not explicitly teach where the reinforcement members connect to the side-wall portion with respect to the vertical direction.
With respect to point 1), the examiner is taking official notice that it is well known in the art that a design and complexity of a reinforcement member and the number of reinforcement members dictate the rigidity of the object being supported2. It would have been obvious by design choice to one of ordinary skill in the art before the effective filing date to modify Hasan to only use reinforcement member (300) in Fig. 3E because doing so would simplify the structure used to reinforce the denture arch at the cost of less rigidity3.
With respect to point 2) we see that Hasan connects the inner side-wall portion of the dental shaped object with rod-shaped member (300) but does not explicitly teach where the rod-shaped member connects to the side-walls with respect to the vertical direction. In other words, it is unclear if the rod-shaped member connects the side-walls at the upper ends (closer to the tooth sockets), the lower ends (furthest from the tooth sockets), or somewhere between the upper and lower ends. It would have been obvious to one of ordinary skill in the art to try connecting the rod-shaped member (300) to the lower ends of the left and right portions of the inner side-wall portion because there is only a limited amount of known possible mounting points as indicated above and there is a reasonable expectation of success that connecting the rod-shaped member at the lower ends would provide reinforcement to the dental shaped object to keep it stable as intended by Hasan [0050].
While Hasan teaches the invention substantially as claimed above, it is not explicitly taught that the bracing is to brace the inner sidewall portion is a portion where the dental shaped object is most easily deformed at the time of shaping. Rather, Hasan teaches providing support to areas that are more susceptible due to mechanical stress caused by thermal stresses during a secondary photo curing process (i.e., after shaping the dental object) [0061, 0070]. Espen teaches that thermal stress on a 3D printed object can also be experienced during manufacturing of the 3D object [0032]. It would have been obvious to one of ordinary skill in the art before the effective filing date that the placement of the reinforcing member for reducing distortion/deformation would apply to both manufacture and post-manufacture. This is because both Hasan and Espen are directed the same type of 3D printing such as laser SLA [Hasan 0065; Espen: 0026]. By incorporating the reinforcement member in the area most susceptible to deformation due to thermal stress, the printed object would be able to resist such deformation that occurs during thermal stress during creation (i.e., during shaping). The Hasan-Espen combination is interpreted as placing the reinforcement member in the area most susceptible to deformation due to thermal stress to minimize the effects of the deformation as is intended in Hasan.
Referring to claims 6-7, Hasan further teaches support structures for a dental shaped object for a maxilla [Figs. 4A-F, 0025, 0050]. While the support structures are explicitly shown to bridge the left and right portions of the inner side-walls this appears to be because the palate portion of the denture obstructs the direct path between the outer buccal side-walls. The examiner is taking official notice that there are palate-less/roofless and even partial dentures that would not include the palate portion and in such a situation, it would have been obvious to one of ordinary skill in the art before the effective filing date to try bracing the dental shaped object between the outer side-walls (left and right portions of the outer side-walls) because a person has good reason to pursue the known options within his or her technical grasp especially when there is a reasonable expectation of success. Since the support structure adds rigidity to the denture by providing cross bracing to the inner side-walls, attaching cross bracing to the outer side-walls would provide substantially the same rigidity thus expectation of success would be plausible.
Referring to claim 8, Hasan teaches including multiple support structures which can be connected to various points of the dentures. In fact, Hasan implies that the structural support design is a matter of design choice due to the different variations presented in Fig. 3A-H. In addition, Hasan teaches that the variations presented in Figs. 3A-H can also be applied to maxillary denture bases as well as mandibular. Fig. 3E in Hasan shows that support structures can exist at both the front and back of the denture wherein the front support is connected to the inner side-walls. It would have been obvious to one of ordinary skill in the art before the effective filing date to include a second support structure like that of 310 Fig. 3E to the modified palate-less denture because it would provide further rigidity to the dental shaped object when curing. It should be underscored that while Hasan includes multiple variations in how the support structure is implemented, the goal is to prevent distortion in the areas that are most susceptible to distortion.
Referring to claim 9, Hasan teaches the dental shaped object being a denture base which is custom and patient-specific to ensure a proper fit [0006-0007]. We can see in the cross section of the denture base [Fig. 5] that the fit of the denture base would include proper fit to the alveolar ridge. Specifically, we see the example in Fig. 5B where the alveolar ridge has regressed compared to that in Fig. 5A.
Referring to claim 10, this is rejected on the same basis as set forth hereinabove. Inherently the 3D model taught in Hasan would have had to be generated. In addition, Hasan teaches the 3D model is provided for a 3D printer to manufacture the dental shaped object [0066].
Referring to claim 11, Hasan teaches the support structures are removable. The examiner is taking official notice that when removing support structures in 3D printed objects, a mark is left behind where the support attached to the 3D printed object4. Therefore, it is obvious if not inherent that the dental shaped object that is 3D printed in Hasan would have connection marks once the support structure is removed.
Referring to claim 12, this is rejected on the same basis as set forth hereinabove. Hasan teaches the method and therefore teaches the apparatus for performing the method.
Response to Arguments
Applicants’ arguments filed 5/19/26 have been fully considered but they are not persuasive.
In the REMARKS, applicants argue in substance that the claimed configuration is not design choice due to 1) the claims are constrained to a single reinforcing member; 2) inventors analyzed deformation behavior during shaping and discovered that the back side and portions and the lower ends of the sidewall are the regions of maximum deflection; 3) Hasan uses multiple reinforcing members; 4) there’s no reason to combine to limit the reinforcing structure to a single member and to place the reinforcement member at the point of greatest deflection.
Referring to applicants first argument, the examiner maintains his position that the number of support members used is a design choice. The examiner presented alternatives in the above footnote comparing collar ties to a truss structure. A collar tie is a single reinforcement member (similar to applicant’s single support structure) while a truss is more complex and consists of multiple support members (closer to that taught in Hasan). It was explained that a truss provides more support than a single collar tie and selection between the two is based on design choice. This was presented in the previous office action and applicant did not rebut let alone address this example. In addition, regarding placement, applicants provide many alternatives to where the rod-shaped member can be attached [Figs. 9A-F]. Hasan also provides different alternatives, and it is the examiner’s position that back side lower ends are an obvious variant as will be discussed further below.
Referring to applicants’ second argument, while applicants may have observed that the back side lower ends of the sidewall are the regions of maximum deflection, this is predictable. Specifically, the shape of the dental object is in essence the shape of a U. The tips of the U represent the back side where the molars would be located. The trough of the U (where the front teeth would be located) represents a supported joint while the tips of the U are unsupported. The tips are structurally less supported than the trough. In addition, any deviation that could be experienced closer to the trough is exaggerated at the tips. Think of a hinged door. The hinge represents the trough of the U. If the door is opened at a predetermined the distance covered near the hinge is much less than that covered near the door handle. This simple example illustrates how and why the back side of the dental appliance is most susceptible to deformation.
We see that Hasan anticipates this phenomenon by ensuring the back sides (i.e., tips) of the dental objects are reinforced. While applicant may argue that brace 300 in Fig. 3E of Hasan still is not at the absolute back side, the examiner would argue that any deformation would be at best negligible. If Hasan instead only included a reinforcement member at 300 in Fig. 3E, then the examiner might give more consideration to applicant’s argument; but clearly Hasan understands that the back of the dental object is the priority as we can see in Fig. 3B where only the back of the dental object is reinforced.
The same concept applies to the lower ends as we see at 18 in Fig. 1 and 19 in Fig. 7 in applicants’ drawings. Where the top portion (12) bends and transitions to the inner sidewall (i.e., lingual side) of the dental object, we see another supported joint in that transitional corner. Similar to that above, any deviations will be more exaggerated at the connection points where support member (18) is located. One of ordinary skill in the art would understand that placing the support member at the lower ends would provide the greatest amount of reinforcement.
The examiner would also like to highlight that the positioning of the support member is also believed to be a design choice as applicants’ own drawings support this position by showing placement of the support member at both the lower and upper ends [Figs. 9A-F].
Referring to applicants third argument, this argument is moot as the examiner did not take the position that Hasan taught a singular support member. Instead, the examiner indicated that a singular support was an obvious modification to Hasan.
Referring to applicant’s forth argument, that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the examiner has explained the tradeoffs between multi-support structures versus single support structures and selection between the two is a matter of design choice that is dependent on how much support is desired. In addition, the examiner also described how deformation is exaggerated as distance from a supported joint is increased. This common knowledge provides both teaching and motivation to locate support members in the areas furthest from any supported joint which happens to be in the back side lower ends of the dental object in Hasan due to that area being most susceptible to deformation.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK A CONNOLLY whose telephone number is (571)272-3666. The examiner can normally be reached Monday-Friday 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kamini Shah can be reached at 571-272-2279. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK A CONNOLLY/Primary Examiner, Art Unit 2115 7/20/26
1 Cited in the previous office action
2 As an example, one could refer to a roof structure found in a residential home and compare collar ties with trusses. Both provide structural support, but a truss is more complex compared to a simple collar tie and provides significantly more support and stiffness.
3 Further rationale can be found below in the Response to Arguments section.
4 This is consistent with applicants’ own disclosure which indicates that “connection marks 19 of the reinforcing member 18 are formed… after the reinforcing member 18 is removed.” [0063]. Also [0093] in corresponding PGPUB 2023/0301759
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