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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The attachment body including the mesial, distal, occlusal, and gingival side surfaces extending between a facial surface of the attachment body and the bonding surface is recited in Claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 5-8, 10 and 11are rejected under 35 U.S.C. 102(a)(1) as being anticipated by George (DE2022730A1, translation provided).
Regarding Claim 1, George discloses an orthodontic attachment device ([0001]) comprising an attachment body (Figures 1-4), a bonding surface underlying the attachment body (10), and an at least partially enclosed archwire passage extending across the attachment body (26). George further discloses that the attachment body has a general shape of an inverted frustum (Figure 2). George further discloses that the bonding surface is an underside of the attachment body (as see in Figures 1-4), and the attachment body includes at least three tapered side surfaces selected from mesial, distal, occlusal, and gingival side surfaces (surfaces of 12 on each of the distal, occlusal, mesial and gingival sides), each tapered side surface extending between a facial surface (14/16/18/20) of the attachment body and the bonding surface to form a continuous undercut (as seen in the Figures, neck 12 tapers down from facial surface 14, 16, 18 and 20 to bonding surface 10), and where the attachment body has a generally trapezoidal cross-sectional shape along at least one of a mesial-distal axis or an occlusal-gingival axis (as seen in Figures 1-4).
Regarding Claims 5 and 6, George discloses that the attachment body includes the mesial, distal, occlusal, and gingival side surfaces extending between a facial surface of the attachment body and the bonding surface and that the side surfaces (sides of 12) form a continuous undercut (as seen in Figures 1-3).
Regarding Claims 7 and 8, George discloses that a transition surface between any two side surfaces is arcuate (as seen in Figures 1-4) and that at least two side surfaces have a decreasing taper between a facial surface (14/16/18/20) of the attachment body and the bonding surface (10).
Regarding Claim 10, George discloses that the bonding surface is shaped to bond at a facial axis of the clinical crown of the tooth (as seen in Figures 1-4).
Regarding Claim 11, George discloses that the attachment body is dimensioned according to a prescription, the prescription including at least two of in/out, torque, and angulation (as described in [0002]).
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 13, 16, 21, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2021/0393376 A1) in view of George.
Regarding Claims 13, 16, and 21, Wu discloses a set of orthodontic attachment devices (abstract and [0002]) and a method for combination of orthodontic treatment (abstract) comprising a first attachment having a first attachment body (Figures 2A-2E, 30) and a first bonding surface (32), where the first attachment body has a first prescription that represents particular characteristics of the attachment device including at least two defined prescription elements selected from in/out, torque and angulation ([0008] describes multiple attachments which have individual prescriptions as further described in [0009-0012] which would form a set) and a second attachment having a second attachment body and a second bonding surface, wherein the second attachment body has a second prescription that represents particular characteristics of the attachment device including at least two defined prescription elements selected from in/out, torque and angulation, where the first prescription is different from the second prescription ([0008] describes multiple attachments which have individual prescriptions as further described in [0009-0012] which would form a set).
Wu discloses the invention substantially as claimed, but does not disclose that each of the first attachment body and the second attachment body has a general shape of an inverted frustum and the bonding surface is an underside of the first attachment body or the second attachment body, where the bonding surface is shaped to correspond to a contour of a portion of a tooth, where each attachment body, of the first attachment body and the second attachment body, includes mesial, distal, occlusal, and gingival side surfaces extending between a facial surface of each body and the bonding surface, and where each one of the side surfaces has a continuous, decreasing taper between the facial surface and the bonding surface so that each attachment body has a generally trapezoidal cross-sectional shape along both a mesial-distal axis and an occlusal-gingival axis.
In the same art of orthodontic attachment devices, George teaches attachment bodies ([0002] discloses the use of multiple brackets) with a general shape of an inverted frustum (Figures 1-3), with a bonding surface that is an underside (10) of the first attachment body or the second attachment body, where the bonding surface is shaped to correspond to a contour of a portion of a tooth, and where each attachment body includes mesial, distal, occlusal, and gingival side surfaces (surfaces of 12 on each of the distal, occlusal, mesial and gingival sides) extending between a facial surface (14, 16, 18, and 20) of each body and the bonding surface (as seen in Figures 1-3), and where each one of the side surfaces has a continuous, decreasing taper between the facial surface and the bonding surface so that each attachment body has a generally trapezoidal cross-sectional shape along both a mesial-distal axis and an occlusal-gingival axis (see Figures 1-3). Wu further discloses multiple attachments used concurrently for correction that would form a set, and thus comprise a first appliance having a first attachment body, a second appliance having a second attachment body, a third attachment having a third attachment body and a third bonding surface, an a fourth appliance having a fourth attachment body where the attachment bodies have a prescription including at least two defined prescription elements selected from in/out, torque and angulation, and where the fist prescription is different than the second and third prescriptions ([0008] describes multiple attachments which have individual prescriptions as further described in [0009-0012] which would form a set).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the device of Wu with the shaping of George in order to provide an attachment device that is stable and yet not obtrusive in an inserted orientation.
Regarding Claim 24, Wu in view of George discloses the invention of Claim 14 as described above and Wu further discloses that the set of orthodontic devices would lack a base extending laterally outward from the first attachment body (Figure 2A). As modified by George, Wu would have an undercut and trapezoidal shape that is not extending laterally.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over George in view of Zakhem et al. (US 2008/0020338 hereinafter Zakhem).
Regarding Claim 12, George discloses the device of Claim 1 as described above, but does not disclose the attachment body includes an occlusal slot guard with a semi-circular shape projecting over a portion of the archwire slot and an archwire must be bent to be seated in the archwire slot.
Zakhem, in another embodiment, discloses an orthodontic attachment device (Figures 3a-3c) comprising: an attachment body (Figures 3a-3c), a bonding surface (16; Figure 3c) underlying the body, and an at least partially enclosed archwire passage (18; Figures 3a-3C; see Figure 3a where 42 overlaps on the archwire slot; paragraph [0061] discloses the convex (semi-circular) portions 42 create frictional engagement between the archwire and the archwire slot walls and base; additionally, the Examiner notes that the archwire slot 18 is partially enclosed in Figure 3c as three walls enclose the archwire) extending across the body (Figures 3A-3c), an occlusal slot guard (26 and 60; Figure 3a) projecting over a portion of the archwire slot (Figure 3a), such that an archwire must be bent to be seated in the archwire slot (paragraph [0066] disclose the saddles 60 are beneficial for retaining an undersized wire, therefore if the wire was to be larger, it would bend around to be inserted into the slot).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the archwire slot of George to cause the archwire to be bent to be seated in the slot as taught by Zakhem to ensure that the archwire is secured in the archwire slot and decrease the risk of the archwire being released.
Claims 14, 15, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of George in further view of Zakhem et al. (US 2008/0020338 hereinafter Zakhem).
Regarding Claims 14, 15, and 25, Wu in view of George discloses the device of Claims 13 and 21 as described above, but does not disclose the attachment body includes an occlusal slot guard with a semi-circular shape projecting over a portion of the archwire slot and an archwire must be bent to be seated in the archwire slot.
Zakhem, in another embodiment, discloses an orthodontic attachment device (Figures 3a-3c) comprising: an attachment body (Figures 3a-3c), a bonding surface (16; Figure 3c) underlying the body, and an at least partially enclosed archwire passage (18; Figures 3a-3C; see Figure 3a where 42 overlaps on the archwire slot; paragraph [0061] discloses the convex (semi-circular) portions 42 create frictional engagement between the archwire and the archwire slot walls and base; additionally, the Examiner notes that the archwire slot 18 is partially enclosed in Figure 3c as three walls enclose the archwire) extending across the body (Figures 3A-3c), an occlusal slot guard (26 and 60; Figure 3a) projecting over a portion of the archwire slot (Figure 3a), such that an archwire must be bent to be seated in the archwire slot (paragraph [0066] disclose the saddles 60 are beneficial for retaining an undersized wire, therefore if the wire was to be larger, it would bend around to be inserted into the slot).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the archwire slot of Wu in view of George to cause the archwire to be bent to be seated in the slot as taught by Zakhem to ensure that the archwire is secured in the archwire slot and decrease the risk of the archwire being released.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of George in further view of Lai et al. (US 2006/0099544 A1, hereinafter “Lai”).
Regarding Claim 18, Wu in view of George discloses the attachment device of Claim 14 as described above, but does not specifically disclose that the underside of each of the first attachment and the second attachment has a contour approximating an expected convex curvature of a dedicated tooth of a dental arch. In the same art of dental attachments, Lai teaches that the bonding surface of an attachment (Figure 9, 30) has a “compound concave contour that precisely matches the convex compound contour of a particular tooth” in [0800]. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to construct the bonding surface of the attachment device of Wu in view of George with a precisely matching contour as is taught by Lai that would approximate the buccal radii of the tooth in order to provide a more precise and stable connection between the attachment and the tooth.
Regarding Claims 19 and 20, Wu in view of George discloses an orthodontic set of attachments of Claim 14 as described above but does not specifically disclose an archwire and a polymer band configured to couple to and extend over a facial surface of each of the first attachment and the second attachment such that when viewed from a direction perpendicular to the occlusal plane, includes an arch including a non- undulating facial surface.
In the same art of orthodontic attachments, Lai teaches an archwire (Figure 11, 40) and a polymer band (Figure 7, 22 where polymeric material is disclosed in [0087]) that is configured to couple to and extend over a facial surface of each of the appliances that when viewed from a direction perpendicular to the occlusal plane, includes an arch including a non- undulating facial surface (see Figure 7). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to utilize a polymer band as taught by Lai with the attachments of Wu in view of George in order to further retain and secure the attachment devices.
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.
Claims 1, 5-8, 10, 11, 13, 16, and 18-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/266,881 (reference application) in view of George (DE2022730A1). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of the present application is anticipated by Claim 1 of the copending application in view of George. Claim 1 of the present application claims the additional limitation of an archwire that is not recited in Claim 1 in the copending application. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the ‘881 application with an archwire as taught by George (Figure 4, 22) in order to further maintain position of the device during the alignment procedure.
Claim 5 of the present application is anticipated by Claim 1 of the copending application.
Claim 6 of the present application is anticipated by Claim 5 of the copending application.
Claim 7 of the present application is anticipated by Claim 7 of the copending application.
Claim 8 of the present application is anticipated by Claim 7 of the copending application.
Claim 10 of the present application is anticipated by Claim 12 of the copending application.
Claim 11 of the present application is anticipated by Claim 13 of the copending application.
Claim 13 of the present application is anticipated by Claims 14, and 20 of the copending application.
Claim 16 of the present application is anticipated by Claim 14 of the copending application.
Claim 18 of the present application is anticipated by Claim 21 of the copending application.
Claim 19 of the present application is anticipated by Claim 22 of the copending application.
Claim 20 of the present application is anticipated by Claim 23 of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to claims 1, 5-8, 10-16, 18-21, 24, and 25 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.
In order to overcome the present prior art rejection, the examiner suggest wording for the independent claims such as “wherein the attachment body includes at least three tapered side surfaces selected from mesial, distal, occlusal, and gingival side surfaces and each tapered side surface has a continuous, decreasing taper from a perimeter edge of a facial surface of the attachment body to a corresponding edge of the bonding surface.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE L NELSON whose telephone number is (571)270-5368. The examiner can normally be reached M - F 9-5 ET.
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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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/CHRISTINE L NELSON/Examiner, Art Unit 3772 /EDWARD MORAN/Primary Examiner, Art Unit 3772
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