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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Claim 16: Transitional phrases such as "having" must be interpreted in light of the specification to determine whether open or closed claim language is intended. See, e.g., Lampi Corp. v. American Power Products Inc., 228 F.3d 1365, 1376, 56 USPQ2d 1445, 1453 (Fed. Cir. 2000) (interpreting the term "having" as open terminology, allowing the inclusion of other components in addition to those recited) [see MPEP 2111.03].
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 11-12 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 11: it is unclear what “PA” is, therefore claim 11 is indefinite. For the purpose of examination, PA will be interpreted as polyamide.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation less than 1.5, and the claim also recites less than 1 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1-4 and 8-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Albrecht et al. (US 10,575,840) when taken with Material Selector [IDS 3/27/23].
Regarding claims 1-4 and 8: Albrecht et al. (US ‘840) discloses a retractor comprising a flexible outer ring 102, an inner ring 104 and a flexible sheath 106 extending between the rings [abstract; 2:10-11; 3:26-35; Fig. 1]. Albrecht et al. (US ‘840) discloses the sheath 106 is coupled to the rings [4:11-15]. Albrecht et al. (US ‘840) discloses the sheath 106 is made of polypropylene [see MPEP 2131.02] (modulus of elasticity 1450 MPa {1.45 KN/mm2}) [4:16-53].
Albrecht et al. (US ‘840) does not disclose the retractor is for dental applications [instant claim 1]; designed as a tensioning dam or as a coffer dam and is intended for use in the mouth of a patient [instant claim 8], however, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Material Selector provides evidence polypropylene has a modulus of elasticity 1450 MPa (1.45 KN/mm2) [§157; polypropylene].
Regarding claim 9: Albrecht et al. (US ‘840) discloses the basic clamed element [as set forth above with respect to claim 1].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Claim(s) 6-7 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Albrecht et al. (US 10,575,840) when taken with Material Selector [IDS 3/27/23] as applied to claim 1 above, when taken with Typical Engineering Properties of Polypropylene.
Regarding claims 6-7: Albrecht et al. (US ‘840) discloses the basic clamed element [as set forth above with respect to claim 1]; wherein Albrecht et al. (US ‘840) discloses the sheath 106 is made of polypropylene having a coefficient of static friction of 0.30 and coefficient of dynamic friction of 0.28 (corresponding to a difference of 0.02) [4:16-53].
Typical Engineering Properties of Polypropylene provides evidence for polypropylene having a coefficient of static friction of 0.30 and coefficient of dynamic friction of 0.28 [§Mechanical Properties].
Regarding claim 10: Albrecht et al. (US ‘840) discloses the basic clamed element [as set forth above with respect to claim 1]; wherein Albrecht et al. (US ‘840) discloses the sheath 106 is made of polypropylene (hydrophobic) [4:16-53].
Typical Engineering Properties of Polypropylene provides evidence for polypropylene being hydrophobic (water absorption <0.01%) [§General Properties].
Claim(s) 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horvath (WO 2020/193398). Horvath (US 12,376,942) as English language equivalent.
Regarding claim 13: Horvath (US ‘942) discloses a clamping element [abstract; 10:65-11:22], which allows for scanning processes by introducing a scan head to scan molars [8:60-67].
Horvath (US ‘942) does not disclose the clamping element is designed as a tensioning dam or as a coffer dam [instant claim 13], however, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Claim(s) 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horvath (WO 2020/193398). Horvath (US 12,376,942) as English language equivalent.
Regarding claim 14: Horvath (US ‘942) discloses a clamping element [abstract; 10:65-11:22], which allows for scanning processes by introducing a scan head from the side to scan the vestibular region of molars [8:60-67].
Claim(s) 16-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saueressig (DE 10 2007 030 307). An English machine translation used for citation
Regarding claims 16-17: Saueressig (DE ‘307) discloses a method of producing a three-dimensional structured surface [abstract; 0035-0036; Figs. 2-3], wherein a structured film 10 is feed into an injection mold 50, 52. Thermoforming frame 54 closes and holds the film 10 on the die 50 of the injection mold. The die 52 of the injection mold is lowered towards the male die (patrix) 50. A vacuum channel 56 ensures that there is no air or lubricant between the die 50 and the film 10. The space defined by the matrix 52 [0035-0036; Figs. 2-3] is filled with injection molding compound 22. The product is demolded, by opening the injection mold and peeling the film 10 off [0035-0036; Figs. 2-3].
Saueressig (DE ‘307) does not specifically disclose a film tensioning element [instant claim 16], however, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
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) 1-2 and 5-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mueller et al. (US 2020/0188060).
Regarding claims 1-2 and 5: Mueller et al. (US ‘060) discloses a film clamping element having a film 12 extended between rings 14, 16 [abstract; 0060; 0067; Fig. 1], wherein the film 12 and rings 14, 16 are elastically deformable [0067]. Mueller et al. (US ‘060) discloses the film is made from an elastomer or soft silicone [0014]. Mueller et al. (US ‘060) discloses elastic bands 20, 22 [abstract; 0022; 0060; 0067; Fig. 1] which extend circularly around the film [0017] and are produced from the same material as the film by forming a film of several layers with one layer forming the elastic band in the shape of a ring [0042; 0044; 0073].
Mueller et al. (US ‘060) discloses the pressure exerted on the lips of the patient and the resulting wearing comfort depends on the materials used [0006-0007; 0010-0012; 0020]. Mueller et al. (US ‘060) does not specifically disclose the film having a modulus of elasticity of less than 2 KN/mm2 [instant claim 1]; a modulus of elasticity of more than 1 KN/mm2 [instant claim 2]. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claims 6-7: Mueller et al. (US ‘060) discloses the film is drawn towards the inside such that the ring is more prominent in the mouth which facilitates insertion of the film clamping element [0020].
Mueller et al. (US ‘060) does not specifically disclose the film has a coefficient of static friction µH < 0.4 and a coefficient of gliding friction µG ≤ 0.35 [instant claim 6]; the coefficient of static friction µH of the film and the coefficient of gliding friction µG of the film differ by less than 0.05 [instant claim 7]. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claim 8: Mueller et al. (US ‘060) discloses the film clamping element is configured for use in the mouth of a patient [0002-0003; 0017-0018].
Regarding claim 9: Mueller et al. (US ‘060) discloses the basic claimed film tensioning element [as set forth above with respect to claim 1].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Regarding claim 10: Mueller et al. (US ‘060) does not disclose a coating; i.e. the film clamping element is free of a coating [abstract; 0067].
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Albrecht et al. (US 10,575,840) when taken with Material Selector [IDS 3/27/23] as applied to claim 1 above.
Regarding claim 11: Albrecht et al. (US ‘840) discloses the basic clamed element [as set forth above with respect to claim 1]; wherein Albrecht et al. (US ‘840) discloses the sheath 106 can be a fabric comprising polypropylene [4:16-53].
Albrecht et al. (US ‘840) does not specifically disclose the sheath 106 is a fabric comprising polypropylene. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have prepared a sheath made of a fabric comprising polypropylene based on the invention of Albrecht et al. (US ‘840), and would have been motivated to do so since Albrecht et al. (US ‘840) discloses the sheath 106 can be a fabric comprising polypropylene [4:16-53]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horvath (WO 2020/193398) (Horvath (US 12,376,942) as English equivalent) as applied to claim 14 above.
Regarding claim 15: Horvath (US ‘942) discloses the basic clamed method [as set forth above with respect to claim 14]; wherein scanning processes are performed by introducing a scan head from the side to scan the vestibular region of molars [8:60-67].
Horvath (US ‘942) does not specifically disclose a contact pressure between 0 N and 10 N. However, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horvath (WO 2020/193398) (Horvath (US 12,376,942) as English language equivalent) in view of Kopelman et al. (US 2020/0315434).
Regarding claim 12: Horvath (US ‘942) discloses a covering device [abstract; 10:65-11:22], which allows for scanning processes by introducing a scan head to scan molars [8:60-67]. Horvath (US ‘942) discloses the covering device comprises a film 130 connecting clamping elements 110, 120 [2:8-40; 11:44-53; Fig. 2]. Horvath (US ‘942) discloses the covering device is made of plastic [7:6-12].
Horvath (US ‘942) does not disclose specifically disclose the scan head comprises a housing made of thermoplastic or thermoset. However, Kopelman et al. (US ‘434) discloses intraoral scanning systems containing sleeves [abstract], wherein the sleeve 109 is placed over the hand-held wand 103 [0070-0071; Fig. 2]. Kopelman et al. (US ‘434) discloses the sleeve can be made of a clear plastic (ex. polycarbonate, polymethyl methacrylate) [0052-0053]. Horvath (US ‘942) and Kopelman et al. (US ‘434) are analogous art because they are concerned with a similar technical difficulty, namely intraoral scanning. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined intraoral scanning systems containing sleeves placed over the hand-held wand, as taught by Kopelman et al. (US ‘434) in the invention of Horvath (US ‘942), and would have been motivated to do so since Kopelman et al. (US ‘434) suggests intraoral scanning systems containing sleeves placed over the hand-held wand ensures the scan quality of the scanner remains high, and ensures clinical safety, preventing contamination between patients [0062].
The claimed effects and physical properties, i.e. a contact pressure between the film and the scan head of between 1 and 10 N, has a coefficient of sliding friction µG of less than 1.5 or less than 1, with respect to the scan head, would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saueressig (DE 10 2007 030 307)as applied to claim 16 above.
Regarding claims 18: Saueressig (DE ‘307) discloses the basic clamed method [as set forth above with respect to claim 16]; wherein the ends of the film that protrude beyond the injection molding compound are removed [0045; Figs 5, 5a].
Saueressig (DE ‘307) does not specifically disclose cutting the film that protrudes beyond the injection molding compound. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have cut the film to remove the ends of the film that protrude beyond the injection molding compound based on the invention of Saueressig (DE ‘307), and would have been motivated to do so since Saueressig (DE ‘307) discloses the ends of the film that protrude beyond the injection molding compound are removed [0045; Figs 5, 5a].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17-19 of copending Application No. 17/933738 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the system comprising an intraoral scanner comprising a housing made of plastic, and a lip/cheek retainer comprising a film held taut between rings and having a coefficient of sliding friction µG of less than 1.5 relative to the shaft of the scanner of Application No. 17/933738 anticipates the claimed film tensioning element and scan head combination.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767