Status under America Invents Act
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.
Acknowledgment of Request for Continued Examination (RCE)
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 18, 2026 has been entered.
Rejections based on Prior Art
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.
Claims 1, 9 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Khan (EP 3335665).
In regard to claim 1, Khan discloses a dental aligner comprised of a hollow shell 2 having buccal, lingual and occlusal walls and defining a plurality of cavities for receiving a patient’s teeth (noteFigure 7). One of the Khan aligner sidewalls includes an integral protrusion 3 having internal and external surfaces spaced from the gingival edge and shaped to space the internal surface from the patient’s tooth (note annotated Figure 9A below). The space is formed in part of a tooth receiving cavity. Khan further discloses an add-on hook 4 having a projection (annotated Figure 9A) that defines a recess and is capable of receiving an elastic member (e.g. a rubber band).
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In regard to claim 9, the Khan integral protrusion is capable of engaging with a dental attachment on the patient’s tooth. In regard to claim 20, the Khan projection extends gingivally as in the annotated Figure.
Claims 1, 9, 11, 12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hilliard (US 2006/0188834).
In regard to claim 1, Hilliard discloses a dental aligner comprised of a hollow shell 20 with lingual, occlusal and buccal walls that defines a plurality for receiving a patient’s teeth 10 (note Figure 1). At least one of the sidewalls includes an integral protrusion 23 having internal and external surfaces wherein the internal surface is shaped to provide a space apart from the patient’s teeth (note annotated Figures 9 and 10 below). The space at least partially defines one of the tooth receiving cavities. Hilliard further discloses an add-on hook 52 on the external surface of the protrusion having a projection that is spaced apart from the sidewall defining a recess as indicated below in the annotated Figures.
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In regard to claim 9, the Hilliard integral protrusion is capable of engaging with a dental attachment on the patient’s tooth. In regard to claims 12 and 14, Hilliard in the last sentence of paragraph [0046] indicates that the hook 52 is used to secure an elastic member. In regard to claim 20, the Hilliard projection is curved concavely relative to the sidewall as in the annotated Figure.
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.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hilliard (US 2006/0188834).
Hilliard indicates that the add-on hook member 52 is a separate member that is secured to the aligner, but does not disclose the claimed adhesive or welded attachment. One of ordinary skill in the art, however, would have readily found it obvious to have used a conventional prior art adhesive or weld to secure the add-on hook member 52 in order to ensure that it does not separate from the aligner during use.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hilliard (US 2006/0188834) in view of Zhuang et al (US 2022/0202533).
Zhuang et al for an add-on hook member 1 that is attached to a dental aligner 3 similar to that of Hilliard et al teach that it is desirable to form the hook member with a bulbous end member that forms a retention bump that helps to secure the member that is attached to the hook. To have formed the Hilliard et al add-on hook member with a bulbous end that acts as a retention member to help secure the attached elastic member would have been obvious to one of ordinary skill in the art in view of the teaching by Zhuang et al before the effective filing date of the claimed invention.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Hilliard (US 2006/0188834) in view of Hanson (US 5,120,218).
Hanson teaches that it is old and well known in the prior art to provide orthodontic elastic tension members with a hook 34 for attachment to the orthodontic appliance. To have provided the Hilliard elastic member referred to in the last sentence of paragraph [0046] with a common prior art hook as taught by example by Hanson would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Response to Applicant’s Arguments/Remarks
The examiner is in general agreement with applicant’s amendment and remarks presented 3/18/2026 in overcoming the rejections based on Hilliard (US 6,702,575) and Hanson (US 5,120,218), but note that the claims are of such breadth that they do not distinguish the claimed invention from other prior references as those applied above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ralph Lewis whose telephone number is (571)272-4712. The examiner can normally be reached Monday-Friday from 9AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Edelmira Bosques 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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/RALPH A LEWIS/Primary Examiner, Art Unit 3772 (571) 272-4712