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/Restrictions
Newly submitted claim 36 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Group 1: Claims 1, 3-8 directed to an attachment and attachment holder assembly
Group 2: Claims 18-19, 21-25, 35 directed to an attachment mounting template assembly.
Group 3: Claim 36, directed to a method for fabricating an attachment mounting template assembly.
Inventions I and (I, II) are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the process as claimed can be used to make another materially different product, such as an attachment mounting template assembly where the attachment holder .
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 36 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added 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 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Claim 35 is objected to because of the following informalities:
Claim 35, lines 1-2 should be amended to state, "the attachment mounting template".
Appropriate correction is required.
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.
Claim(s) 1, 3, 5-7, 18-19, 21-22, 24, and 35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Teasdale (US 20130029285 A1).
Regarding claim 1, Teasdale discloses an attachment (400) and attachment holder assembly (300) (refer to Paragraph [0121]; the system (102) comprises a preformed attachment (400) and gasket (300)), comprising:
an attachment (400) which is to be adhered onto a tooth's surface (150) to form a protrusion and to interact with a shell-shaped tooth repositioner to provide an auxiliary force system for an orthodontic treatment (refer to Paragraphs [0136]-[0137]; the preformed attachment device (400) is coupled to the teeth (150) to generate a desired force by engaging the dental appliance) ; and
an attachment holder (300) configured to retain and correctly position the attachment (400) in an attachment holder receiving portion (210) of an attachment mounting template (1200) to mount the attachment (400) (refer to Paragraphs [0142], [0146]; the gasket (300) encircles the preformed attachment device (400) forming a perimeter (209) for containing and placing the attachment (400) with adhesive (174)),
where , where the attachment (400) and the attachment holder (300) are fabricated separately (refer to Paragraph [0121]; the attachment (400) is preformed, meaning the attachment (400) is fabricated separately from the gasket (300)), and the attachment (400) and attachment holder assembly (300) is obtained by assembling the attachment (400) and the attachment holder (300) before the attachment (400) and attachment holder assembly (300) is mounted in the attachment holder receiving portion (210) (refer to Paragraph [0153]; the gasket aperture is operable to frictionally engage the preformed attachment (400) to form the assembly, the order of the components in the assembly does not change the structure of the holder assembly).
Further, even 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). MPEP § 2113-I.
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Regarding claim 3, Teasdale discloses the attachment and attachment holder assembly of claim 1, wherein the attachment (400) and the attachment holder (300) are fixed to each other by an adhesive or a retaining structure (refer to Paragraphs [0146], [0153]; an adhesive layer is disposed on the inner gasket wall (308) for engaging the preformed attachment device (400)).
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Regarding claim 5, Teasdale discloses the attachment and attachment holder assembly of claim 1, wherein the attachment holder (300) comprises a closed sidewall that surrounds the attachment (400) (refer to figure below).
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Regarding claim 6, Teasdale discloses the attachment and attachment holder assembly of claim 1, wherein the attachment holder (300) forms an error-proofing structure capable of preventing the attachment holder (300) from being mounted in the holder receiving portion (210) in a wrong direction (refer to Paragraphs [0142],[0144]; the attachment receiving cavity (1224) defines a unique shape to restrict the use to a particular preformed attachment device, as the attachment holder receiving portion (210) corresponds to the unique shape of the attachment receiving cavity (1224), both the attachment holder (300) and attachment holder receiving portion (210) would also be required to have a unique error proofing structure based on their complementary shape to the attachment receiving cavity (1224)).
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Regarding claim 7, Teasdale discloses the attachment and attachment holder assembly of claim 1, wherein an adhesion layer (174) is provided on a surface of the attachment (400) on a side adjacent to the tooth (150), to adhere the attachment onto the tooth's surface (154) (refer to Paragraph [0122] and figure below; bonding material (174) secures the attachment (400) to the tooth surface (154)).
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Regarding claim 18, Teasdale discloses an attachment mounting template assembly (102) for adhering an attachment (400) at a selected position on a surface of a selected tooth (154) (refer to Paragraph [0121]; the system (102) accurately places and bonds a preformed attachment device (400) on a tooth surface (154)), comprising:
an attachment (400), an attachment mounting template (1200) and an attachment holder (300),
wheretooth's surface (154), to form a protrusion and to interact with a shell-shaped tooth repositioner to provide an auxiliary force system for an orthodontic treatment (refer to Paragraphs [0136]-[0137]; the preformed attachment device (400) coupled to the teeth (150) to generate a desired force by engaging the dental appliance),
the attachment mounting template (1200) is a one-piece shell (refer to figure below), and forms a tooth-receiving cavity (202) and the attachment holder receiving portion (210) at a selected position (refer to Paragraph [0141]; a corresponding gasket receiving cavity (210) receives the gasket (300) at predetermined locations),
the attachment holder (300) is received in the attachment holder receiving portion (210), and retains and correctly positions the attachment within the attachment holder receiving portion (210) (refer to Paragraphs [0142], [0146]; the gasket (300) encircles the preformed attachment device (400) forming a perimeter for containing and placing the attachment (400) with adhesive (174))
the attachment holder (300) is located between the attachment holder receiving portion (210) and the attachment (400), when the attachment mounting template assembly (102) is put on a patient's teeth (150), the attachment (400) is located at a selected position on a surface of a selected tooth (154) (refer to Paragraphs [0121], [0143]; the system (102) comprised of the template (1200), preformed attachment (400), and gasket (300) is for accurate placement and bonding of the preformed attachment (400) on a tooth’s surface (154)),
the attachment (400) and attachment holder assembly (300) is obtained by assembling the attachment (400) and the attachment holder (300) before the attachment (400) and attachment holder assembly (300) is mounted in the attachment holder receiving portion (210) (refer to Paragraph [0153]; the gasket aperture is operable to frictionally engage the preformed attachment (400) to form the assembly, the order of the components in the assembly does not change the structure of the holder assembly).
Further, even 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). MPEP § 2113-I.
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Regarding claim 19, Teasdale discloses the attachment mounting template assembly of claim 18, wherein the attachment holder (300) is fixed in the attachment holder receiving portion (210) by an adhesive or a retaining structure (refer to Paragraph [0151]; the gasket (300) is retained in the gasket cavity (210) with adhesive).
Regarding claim 21, Teasdale discloses the attachment mounting template assembly of claim 18, wherein the attachment (400) and the attachment holder (300) are fixed to each other by an adhesive or a retaining structure (refer to Paragraphs [0146], [0153]; an adhesive layer is disposed on the inner gasket wall (308) for engaging the preformed attachment device (400)).
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Regarding claim 22, Teasdale discloses the attachment mounting template assembly of claim 18, wherein the attachment holder (300) forms an error-proofing structure capable of preventing the attachment holder (300) from being mounted in the holder receiving portion (210) in a wrong direction (refer to Paragraphs [0142],[0144]; the attachment receiving cavity (1224) defines a unique shape to restrict the use to a particular preformed attachment device, as the attachment holder receiving portion (210) corresponds to the unique shape of the attachment receiving cavity (1224), both the attachment holder (300) and attachment holder receiving portion (210) would also be required to have a unique error proofing structure based on their complementary shape to the attachment receiving cavity (1224)).
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Regarding claim 24, Teasdale discloses the attachment mounting template assembly of claim 18, wherein an adhesion layer (174) is provided on a surface of the attachment (400) on a side adjacent to the tooth (150), to adhere the attachment onto the tooth's surface (154) (refer to Paragraph [0122] and figure below; bonding material (174) secures the attachment (400) to the tooth surface (154)).
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Regarding claim 35, Teasdale discloses the attachment mounting template assembly of claim 18, wherein the attachment mounting template (1200) forms a plurality of same attachment holder receiving portions (210), and the attachment mounting template assembly (102) comprises a plurality of same attachment (400) and attachment holder assemblies (300) which are received in the plurality of attachment holder receiving portions (210) respectively (refer to Paragraph [0014]; the template (1200) further comprises an attachment receiving element and a gasket cavity at one or more predetermined locations).
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) 4 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Teasdale (US 20130029285 A1) in view of Boronkay (US 20170007368 A1).
Regarding claims 4 and 23, as noted above, Teasdale discloses the assemblies of claims 1 and 18, but is silent to the attachment holder (300) comprising a plurality of fins.
Boronkay discloses appliances comprising coupling structures (1704) for holding one or more attachments (1702) in the same field of endeavor (refer to Paragraph [0011]). The coupling structures (1704) as disclosed by Boronkay extend from an attachment holder (1703) acting as plurality of fins distributed around the attachment holder (1703; refer to figure below), to correctly position an attachment (1702) (refer to Paragraph [0217] and figure below; the coupling structure (1704) is configured to hold the attachment (1702) within the support (1703) until the attachment (1702) is affixed to the patient’s tooth). The fins (1704) facilitate improved placement of the attachments (1702) on the patient’s teeth (refer to Paragraph [0011]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the attachment holder assembly of Teasdale with a plurality of fins as taught by Boronkay in order to facilitate improved placement of the attachments.
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Claim(s) 8 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Teasdale (US 20130029285 A1) in view of Fernie (US 20180168788 A1).
Regarding claims 8 and 25, Teasdale discloses the assemblies of claims 7 and 24, but is silent to an isolation film being formed on an edge of the attachment holder.
Fernie discloses a dental etch template (416) in the same field of endeavor (refer to Paragraph [0018]). The dental etch template (416) comprises an attachment holder portion (420) adjacent to a tooth (418), wherein the attachment (422) is arranged to contact the tooth (418) (refer to Paragraph [0079]). The attachment (22) and attachment holder assembly (420) further comprises an isolation film (417) fixed at an edge of a bottom side of the attachment holder (420), to isolate the attachment (refer to Paragraph [0094] and figure below). The isolation film (417) reduces the possibility of contamination or leakage of the material in the attachment holder (420) (refer to Paragraph [0065]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the attachment holder as taught by Teasdale with an isolation film as taught by Fernie in order to reduce the possibility of contamination or leakage of the adhesive in the attachment holder.
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Response to Arguments
The outstanding drawing, abstract and specification objections of Fig. 2A -101a, Fig. 4F-203f, Fig. 9A-711’ are withdrawn in view of the amended disclosure materials.
The outstanding claim objections are withdrawn in view of the amended claims.
The outstanding 112(b) rejections of claims 8-9 are withdrawn in view of the amended and canceled claims.
Applicant's arguments filed 09/23/2025 have been fully considered but they are not persuasive.
Applicant argues that the process by which the product is made in claim 1 differentiates Applicant’s product from the prior art. As highlighted in the rejection above, even 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). MPEP § 2113-I.
Further, claim 36 is withdrawn from consideration, as this method claim is drawn to an invention that is independent or distinct from the invention originally claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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 Adriena J Webb Lyttle whose telephone number is (571)270-7639. The examiner can normally be reached Mon - Fri 8:00-5:00 EST.
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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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/ADRIENA J WEBB LYTTLE/Examiner, Art Unit 3772
/THOMAS C BARRETT/SPE, Art Unit 3799