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 .
Claim Objections
Claim 1, 8-9, 11, 18, 21 and 24 objected to because of the following informalities:
Claim 1, line 8 change “wherein the second mounting surface” to “wherein when the dental appliance is worn, the second mounting surface”.
Claim 8 change “wherein the first mounting surface” to “wherein when the dental appliance is worn, the first mounting surface”.
Claim 9, change “wherein the surface” to “wherein when the dental appliance is worn, the surface”.
Claim 11, line 10 change “wherein the second mounting surface” to “wherein when the second mounting surface”.
Claim 18 change “wherein the first mounting surface” to “wherein when the dental appliance is worn, the first mounting surface”
Claim 19 change “wherein the surface” to “wherein when the dental appliance is worn, the surface”.
Claim 21, line 11 change “wherein the second mounting surface” to “wherein when the second mounting surface”.
Claim 24, line 10 change “wherein the second mounting surface” to “wherein when the second mounting surface”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 24-31 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 in line 9-11 “wherein the body forms an outward protruding structure surrounding the first mounting surface and a space is formed between a surface opposite to the first mounting surface and a tooth/teeth beneath”, it is unclear if this space formed by the protruding structure between the first mounting surface and a tooth is an active step of fabrication as set forth in the claim and if so how as there is no step of putting the appliance on the teeth or in the mouth of the patient. For the purpose of examination, the limitation is interpreted as defining how the dental appliance fits the mouth of a patient. Claims 25-31 are rejected based on claim dependency on claim 24.
Claim 30 recites “the surface opposite to the first mounting surface is in contact with the tooth/teeth beneath it on at least one point”, this limitation is unclear as the claims are drawn to a method of fabrication and does not disclose a step of placing the dental appliance on the teeth of the patient. For the purpose of examination, the limitation is interpreted as the design being functionally capable of placement on the teeth or tooth on at least one point.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-2, 4-12, and 14-23 rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 1 recites “a space formed between a surface opposite to the first mounting surface and a tooth/teeth beneath it”, which requires a tooth or teeth of a human organism to create the structural limitation of the space. Claims 2 and 4-10 are rejected based on claim dependency.
Claim 11 recites “a space is formed between a surface opposite to the first mounting surface and a tooth/teeth beneath it”, which requires a tooth or teeth of a human organism to create the structural limitation of the space. Claims 12, and 14-20 are rejected based on claim dependency.
Claim 21 recites “a space is formed between a surface opposite to the first mounting surface and a tooth/teeth beneath it”, which requires a tooth or teeth of a human organism to create the structural limitation of the space. Claims 22-23 are rejected based on claim dependency.
For the purpose of examination, the limitation is interpreted as wherein the appliance is being worn, a space is formed between a surface opposite the first mounting surface and a tooth/teeth beneath.
Claim Rejections - 35 USC § 102
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.
Claims 1-2 and 4-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Graham et al (US 2006/0019213).
Regarding claim 1, Graham discloses a body of a dental appliance (1), the body being a one-piece shell (par 18 and figure 1) which forms a cavity for receiving a plurality of teeth (see figure 1) and a first mounting surface (outer surface of countersink 12 which is in contact with a button hook 54) for mounting a first accessory by bonding the first mounting surface and a second mounting surface of the first accessory (this limitation is interpreted as a functional limitation achieved by the prior art in view of figures 5-7 disclose the countersink 12 having an outer surface which mounts a button hook 54 which is mounted by a locking shaft 52 of a pedestal back 511, creating contact between the outer surface of the button hook and the locking shaft that can be bonded if so desired), where the first mounting surface has artificially designed geometry and edge contour which is compatible with that of the second mounting surface (see figure 5, where the surfaces of the countersink and the button hook 54 are flush to one another and therefore are compatible geometrically and through edge contour),
wherein the body forms an outward protruding structure (countersink 12) surrounding the first mounting surface (see figure 5), and a space is formed between a surface opposite to the first mounting surface and a tooth/teeth beneath it (where the countersink extends outward as seen in figure 5-7, there is a created space between the interior surface of the countersink and the surface of the teeth which would be in contact with the non-protruding portions of the appliance 1), wherein when the second mounting surface of the first accessory is bonded to the first mounting surface, wherein the first accessory does not enter the space (see figure 5-6, where the first accessory which is the button hook is only positioned exterior the appliance 1 and therefore does not enter the space and the first mounting surface is bonded to the first accessory via the pedestal).
Regarding claim 2, Graham discloses the first mounting surface is one of a plane and a revolved surface (see figure 6-7, the mounting surface is revolved around center axis).
Regarding claim 4, Graham discloses the first accessory is one of the following: occlusal pad, button, bracket, bite stop and twin-block (the first accessory is not positively recited and is a functional limitation as set forth above, which can be performed by the prior art see par 18 discloses single button hook 54).
Regarding claim 5, Graham discloses the first mounting surface is for mounting the first accessory by adhesion (wherein the limitation is interpreted as a functional limitation, and the prior art discloses a first mounting surface that is exposed and capable of attachment to an accessory by adhesion).
Regarding claim 6, Graham discloses the first mounting surface is larger than the second mounting surface (see figure 4-6).
Regarding claim 7, Graham discloses the first mounting surface constitutes a part of the outer surface of the body (see figure 5-7).
Regarding claim 8, Graham discloses the first mounting surface is formed between adjacent teeth of the plurality of teeth (see figure 1).
Regarding claim 9, Graham discloses the surface opposite to the first mounting surface is in contact with the tooth/teeth beneath it on at least one point (where the walls of the countersink pointed out as retainer material 61are adjacent to the teeth in contact with the retainer, see figure 1 and 5)
Regarding claim 10, Graham discloses the first mounting surface is part of the outer surface of the body, and the outer surface of the body generally conforms to the teeth the cavity receives except the first mounting surface (see figure 1).
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.
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 11-12, 14-20, and 24-31 are rejected under 35 U.S.C. 103 as being unpatentable over Graham et al in view of Hilliard et al (US 2003/0190575).
Regarding claim 11 and 16, Graham discloses a dental appliance (1), comprising:
a body, which is a one-piece shell and forms a cavity for receiving a plurality of teeth and a first mounting surface (see figure 1); and a first accessory having a second mounting surface (the surface of the button 54 which is adjacent to the countersink outer surface);
wherein the first mounting surface has artificially designed geometry and edge contour which is compatible with that of the second mounting surface is compatible with that of the second mounting surface (see figure 5, where the surfaces of the countersink and the button hook 54 are flush to one another and therefore are compatible geometrically and through edge contour), and the first accessory is mounted on the body of the first mounting surface and the second mounting surface (figures 5-7 disclose the countersink 12 having an outer surface which is in contact with a second surface of the button hook 54 and is bonded by a locking shaft 52 of a pedestal back 51)
wherein the body forms an outward protruding structure (countersink 12) surrounding the first mounting surface (see figure 5), and a space is formed between a surface opposite to the first mounting surface and a tooth/teeth beneath it (where the countersink extends outward as seen in figure 5-7, there is a created space between the interior surface of the countersink and the surface of the teeth which would be in contact with the non-protruding portions of the appliance 1), wherein the second mounting surface of the first accessory is bonded to the first mounting surface, wherein the first accessory does not enter the space (see figure 5-6, where the first accessory which is the button hook is only positioned exterior the appliance 1 and therefore does not enter the space and the first mounting surface is bonded to the first accessory via the pedestal).
Graham fails to disclose the first accessory is mounted on the body by bonding the first mounting surface and the second mounting surface and the first accessory is mounted on the first mounting surface by adhesion.
However, Hilliard teaches multiple techniques of mounting an exterior surface on the body of a dental appliance (exterior side of recessed land 28 of aligner 20) and a first accessory (aligner auxiliary 30), one of the example being bonding by adhesive (par 53).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply the adhesive bonding of the first accessory mounting surface attach to the first accessory of Hilliard to the dental appliance with the dental appliance having a first mounting surface that is bonded of the first accessory to achieve the predictable and improved result of a first accessory that is non-rotatably attached to the dental appliance with resistance to non-intentional removal forces.
Regarding claim 12, Graham discloses the first mounting surface is one of a plane and a revolved surface (see figure 6-7, the mounting surface is revolved around center axis).
Regarding claim 14, Graham discloses the first accessory is one of the following: occlusal pad, button, bracket, bite stop and twin-block (par 18 discloses single button hook 54).
Regarding claim 15, Graham discloses the first mounting surface constitutes a part of the outer surface of the body (see figure 5-7).
Regarding claim 17, Graham discloses the first mounting surface is larger than the second mounting surface (see figure 4-6).
Regarding claim 18, Graham discloses the first mounting surface is formed between adjacent teeth of the plurality of teeth (see figure 1).
Regarding claim 19, Graham discloses the surface opposite to the first mounting surface is in contact with the tooth/teeth beneath it on at least one point (where the walls of the countersink pointed out as retainer material 61are adjacent to the teeth in contact with the retainer, see figure 1 and 5).
Regarding claim 20, Graham discloses the first mounting surface is part of the outer surface of the body (see figures 5-7), and the outer surface of the body generally conforms to the teeth the cavity receives except the first mounting surface (see figures 1-5).
Regarding claims 24 and 28, Graham discloses a method for fabricating a dental appliance (par 19-20 discloses a method of preparing an appliance 1), comprising:
obtaining a body (1), which is a one-piece shell (see figure 1 and par 18) and forms a cavity for receiving a plurality of teeth (see figure 1) and a first mounting surface (outer surface of countersink 12 which is in contact with a button hook 54);
obtaining a preformed first accessory (button hook 54) having a second mounting surface (surface of button hook 54 adjacent to the outer surface of the countersink); and
mounting the first accessory on the body by mounting the first mounting surface to the second mounting surface (figures 5-7 disclose the countersink 12 having an outer surface which mounts a button hook 54 which is bonded by a locking shaft 52 of a pedestal back 51), wherein the first mounting surface has artificially designed geometry and edge contour which is compatible with that of the second mounting surface (see figure 5, where the surfaces of the countersink and the button hook 54 are flush to one another and therefore are compatible geometrically and through edge contour),
wherein, as best understood by the examiner when the appliance is worn by the patient, the body forms an outward protruding structure (countersink 12) surrounding the first mounting surface (see figure 5), and a space is formed between a surface opposite to the first mounting surface and a tooth/teeth beneath it (where the countersink extends outward as seen in figure 5-7, there is a created space between the interior surface of the countersink and the surface of the teeth which would be in contact with the non-protruding portions of the appliance 1), wherein the second mounting surface of the first accessory is mounted to the first mounting surface, wherein the first accessory does not enter the space (see figure 5-6, where the first accessory which is the button hook is only positioned exterior the appliance 1 and therefore does not enter the space and the first mounting surface is bonded to the first accessory via the pedestal).
Graham fails to disclose mounting the first accessory on the body to the first mounting surface and the second mounting surface by bonding, he first accessory is mounted on the first mounting surface by adhesion.
However, Hilliard teaches multiple techniques of mounting an exterior surface on the body of a dental appliance (exterior side of recessed land 28 of aligner 20) and a first accessory (aligner auxiliary 30), one of the example being bonding by adhesive (par 53).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply the adhesive bonding of the first accessory mounting surface attach to the first accessory of Hilliard to the dental appliance with the dental appliance having a first mounting surface that is bonded of the first accessory to achieve the predictable and improved result of a first accessory that is non-rotatably attached to the dental appliance with resistance to non-intentional removal forces.
Regarding claim 25, Graham discloses the first mounting surface is one of a plane and a revolved surface (see figure 6-7, the mounting surface is revolved around center axis).
Regarding claim 26, Graham discloses the first accessory is one of the following: occlusal pad, button, bracket, bite stop and twin-block (par 18 discloses single button hook 54).
Regarding claim 27, Graham discloses the first mounting surface constitutes a part of the outer surface of the body (see figure 5-7).
Regarding claim 29, Graham discloses the first mounting surface is larger than the second mounting surface (see figure 4-6).
Regarding claim 30, as best understood by the examiner, Graham discloses when worn by the patient, the surface opposite to the first mounting surface is in contact with the tooth/teeth beneath it on at least one point (where the walls of the countersink pointed out as retainer material 61 are adjacent to the teeth in contact with the retainer, see figure 1 and 5).
Regarding claim 31, Graham discloses the first mounting surface is part of the outer surface of the body, and the outer surface of the body generally conforms to the teeth the cavity receives except the first mounting surface (figure 1).
` Claim 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Graham in view of Cam et al (US 2018/0000564).
Regarding claim 21, Graham discloses a system for aligning teeth of a patient having a dental appliance comprising a body (1, see abstract) which is a one-piece shell (par 18 and figure 1) and forms a cavity for receiving the teeth of the patient (figure 1) and a first mounting surface on a predetermined position (outer surface of countersink 12 which is in contact with a button hook 54) for mounting a first accessory by bonding the first mounting surface and a second mounting surface of the first accessory (this limitation is interpreted as a functional limitation achieved by the prior art in view of figures 5-7 disclose the countersink 12 having an outer surface which mounts a button hook 54 which is mounted by a locking shaft 52 of a pedestal back 511, creating contact between the outer surface of the button hook and the locking shaft that can be bonded if so desired), wherein the first mounting surface has artificially designed geometry and edge contour (see figure 5, where the surfaces of the countersink and the button hook 54 are flush to one another and therefore are compatible geometrically and through edge contour), wherein the body forms an outward protruding structure (countersink 12) surrounding the first mounting surface (see figure 5), and a space is formed between a surface opposite to the first mounting surface and a tooth/teeth beneath it (where the countersink extends outward as seen in figure 5-7, there is a created space between the interior surface of the countersink and the surface of the teeth which would be in contact with the non-protruding portions of the appliance 1), wherein the second mounting surface of the first accessory is bonded to the first mounting surface, wherein the first accessory does not enter the space (see figure 5-6, where the first accessory which is the button hook is only positioned exterior the appliance 1 and therefore does not enter the space and the first mounting surface is bonded to the first accessory via the pedestal).
Graham fails to disclose system comprising at least two dental appliances for incrementally aligning teeth of a patient from a first tooth arrangement to a second tooth arrangement, the first mounting surfaces of the bodies of the at least two dental appliances are same.
However, Cam teaches a system for aligning teeth of a patient, wherein it comprises at least two dental appliances for incrementally aligning teeth of a patient from a first tooth arrangement to a second tooth arrangement, each of the at least two dental appliances (par 88 discloses the incremental repositioning of teeth using sequential orthodontic aligners to move from an initial arrangement to a target arrangement, so at least two dental appliances), comprises a body (aligner 110), which is a one-piece shell (see figure 1) and forms a cavity for receiving the teeth of the patient (see figure 1B and par 43) and a first mounting surface on a predetermined position (hollow feature 110, see figure 1B), wherein the first mounting surface has artificially designed geometry and edge contour (see figure 1B where the feature 110 is different from the remainder of the aligner and shaped to a desired geometry and contour), wherein the first mounting surfaces of the bodies of the at least two dental appliances are same (par 35 discloses one or more of the aligners can include the hollow feature which is described in par 43) for the purpose of enabling over correction in an incremental manner that compensates for inaccuracies or limitations of the orthodontic aligner (par 89).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify Graham to have at least two dental appliances in a system for aligning teeth of a patient, the at least two dental appliances for incrementally aligning teeth of a patient from a first tooth arrangement to a second tooth arrangement, each of the at least two dental appliances comprises the body and the first mounting surfaces of the bodies of the at least two dental appliances are same as taught by Cam for the purpose of enabling over correction in an incremental manner that compensates for inaccuracies or limitations of the orthodontic aligner.
Regarding claim 22, Graham discloses the first mounting surface has artificially designed geometry and edge contour which is compatible with that of the second mounting surface (see figure 5, where the surfaces of the countersink and the button hook 54 are flush to one another).
Regarding claim 23, Graham discloses the first mounting surface is part of the outer surface of the body, and the outer surface of the body generally conforms to a corresponding tooth arrangement except the first mounting surface (see figure 5).
Response to Arguments
Applicant’s arguments with respect to claims 1, 11, 21, and 24 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edelmira Bosques can be reached at (571) 270-5614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.N.B./Examiner, Art Unit 3772
/HEIDI M EIDE/Primary Examiner, Art Unit 3772
3/19/2026