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 .
Election/Restriction
2. Restriction to one of the following inventions is required under 35 U.S.C. 121:
Group I: claims 1-13, drawn to a method of applying dental cement, classified in CPC A61C 5/62.
Group II: claims 14-20, drawn to a dental system for designing the digital model of the dental mounting structure and the cement applicator, classified in CPC A61B 2034/102.
3. The inventions are distinct, each from the other because of the following reasons:
4. Inventions of Groups I and II are related but distinct. Group I is directed to a process of using a cement applicator; Group II is directed to a dental computer system for designing and manufacturing the cement applicator.
The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have different mode of operation, i.e. Group I is directed to a process of using cement applicator, while Group II is directed to a system for designing and manufacturing the cement applicator. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
5. Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because at least the following reason(s) apply:
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries);
the inventions have acquired a separate status in the art in view of their different classification;
the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
the prior art applicable to one invention would not likely be applicable to another invention;
the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
6. Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention. The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
7. Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
8. The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined. In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
9. During a telephone conversation with Attorney Kathy Wojtalewicz on 09/19/2025, a provisional election was made without traverse to prosecute the invention of Group I, claims 1-14. Affirmation of this election must be made by applicant in replying to this Office action. Claims 15-20 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Objections
10. Claims 5 and 7-13 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). Claim 6 is also objected herein based on dependency on objected claim 5.
Accordingly, claims 5-13 have not been further treated on the merits.
Claim Rejections - 35 USC § 102
11. 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.
12. Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schulter et al. (2015/0320520).
Regarding claim 1, Schulter et al. discloses a method of applying dental cement to a concave surface of a dental restoration element, wherein the concave surface of the dental restoration element is configured to mate with a first convex surface of a dental mounting structure such that there is a dental cement gap between the concave surface and the first convex surface, wherein the dental cement gap 314 is configured to receive the dental cement to cement the dental restoration element to the dental mounting structure, wherein the method comprises: receiving the dental restoration element (Figs. 14A-14B); receiving a cement applicator (prep tooth form PTF 310), wherein the cement applicator PTF 310 comprises a second convex surface (Figs. 15C-15D), wherein the second convex surface is a transformation of the first convex surface such that it is shrunk by a reduction factor (paragraph [0088] “reducing the height of the support posts 164 or reducing a facial/buccal/lingual contour”); applying the dental cement to the concave surface; inserting the second convex surface of the cement applicator into the concave surface of the dental restoration element (Figs. 15C-15D: paragraph [0103] “appropriate cement gap 314 also has to be designed into the crown model 312 to provide the necessary space for dental cement that will allow for the crown to be fixated to the framework.; and removing the cement applicator from the dental restoration element to provide the dental restoration element with the applied dental cement.
As to claim 2, Schulter et al. discloses inserting the first convex surface of the dental mounting structure into the concave surface of the dental restoration element after removing the cement applicator to attach the dental restoration element to the dental mounting structure (paragraph [0089] “Finally the dentist is ready to deliver the duplicate framework with the gingival mask and cement the crowns 170 onto the framework in the patient's mouth”).
As to claims 3-4, the method further comprises manufacturing the cement applicator using the second convex surface, wherein the method further comprises manufacturing the cement applicator using a rapid prototyping machine (paragraphs [0019], [0087]-[0089]).
Conclusion
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAO D MAI whose telephone number is (571)270-3002. The examiner can normally be reached 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 at (571) 270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hao D Mai/Examiner, Art Unit 3772
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