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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on November 7, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group 1 (claims 1-8, 10, 11, 29, 31, 34, and 35) in the reply filed on November 3, 2025 is acknowledged.
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 1-8, 10, 11, 29, 31, 34, and 37-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/759,456 (reference application) in view of Brinkman (US 2003/0211324).
Co-pending application 18/759,456 teaches the claim limitations except for applying multiple layers of dental adhesive. This is taught by Brinkman [0055]. It would have been obvious to one having ordinary skill in the art at the time of filing to modify 18/759,456 with Brinkman in order to provide a to high quality and durable esthetic alteration.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1, 2, 5, 10, 29, 34, and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Brinkman (US 2003/0211324).
Regarding claim 1, Brinkman teaches: a method of applying an esthetic alteration on a tooth surface comprising the steps of: applying a first layer of dental adhesive to the tooth surface (figure 13, element 110); placing a decal on the first layer of dental adhesive (figure 13, element 121); applying at least one additional layer of dental adhesive on top of the decal (figure 13, element 121 is embedded into element 120); and curing the at least one additional layer of dental adhesive [0055]. While Brinkman’s second layer (element 120) is not specifically shown in figure 13 as being applied on top of the decal, it would have been obvious to one having ordinary skill in the art at the time of filing that, as Brinkman teaches the decal (element 121) embedded into the second layer (element 120), a part of the second layer would be on top of (covering) the decal (element 121).
Regarding claim 2, Brinkman teaches: the step of curing the first layer of dental adhesive after applying the first layer of dental adhesive [0054].
Regarding claim 5, Brinkman teaches: each layer of dental adhesive isa resin tooth bonding agent [0055] – [0056].
Regarding claim 10, Brinkman teaches: the step of removing, by a dental professional, user, or a third party, the esthetic alteration [0006]. Additionally, it would have been obvious to one having ordinary skill in the art at the time of filing that “a dentist, a user or a third party” is broad enough that it encompasses any individual removing an esthetic alteration.
Regarding claim 29, Brinkman teaches: the step of applying a resin overcoat on the at least one additional layer of dental adhesive (figure 13, element 130).
Regarding claim 34, Brinkman teaches: applying the esthetic alteration is performed by a dentist, a user, or a third party [0057]. Additionally, it would have been obvious to one having ordinary skill in the art at the time of filing that “a dentist, a user or a third party” is broad enough that it encompasses any individual applying an esthetic alteration.
Regarding claim 41, Brinkman teaches: the method is performed with an esthetic alteration kit comprising the dental adhesive and decal [0055].
Claims 3, 4, 38, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Brinkman (US 2003/0211324) in view of Leslie-Martin (US 2013/0078594).
Regarding claim 3, Brinkman teaches the first layer of dental adhesive is colored adhesive [0055]; however, it does not specifically teach a light-curable adhesive comprising a pigment and/or a color additive. Leslie-Martin teaches a layer comprising a pigment [0037]. It would have been obvious to one having ordinary skill in the art at the time of filing to modify the teachings of Brinkman with the pigment-colored light-curable adhesive in order to provide a strong and durable product with a variety of customization options.
Regarding claim 4, Brinkman teaches the first layer of dental adhesive is colored adhesive [0055]; however, it does not teach a pigment comprising at least one of pearlescent mica, matte mica, titanium dioxide, zinc oxide, iron oxide, aluminum oxide, or chromium-cobalt-aluminum oxide, and wherein the color additive comprises Food, Drugs, and Cosmetics (FD&C) and/or Drugs & Cosmetics (D&C) color additives. Leslie-Martin teaches a pigment comprising at least one of pearlescent mica, matte mica, titanium dioxide, zinc oxide, iron oxide, aluminum oxide, or chromium-cobalt-aluminum oxide, and wherein the color additive comprises Food, Drugs, and Cosmetics (FD&C) and/or Drugs & Cosmetics (D&C) color additives [0037] (suncroma meets FD&C and D&C standards). It would have been obvious to one having ordinary skill in the art at the time of filing to modify the teachings of Brinkman with the pigment-colored light-curable adhesive in order to provide a strong and durable product with a variety of customization options.
Regarding claim 38, Brinkman teaches a dental adhesive that is colored [0055]; however, it does not specifically teach a dental adhesive being combined with the pigment and/or color additive to form a colored dental adhesive. Leslie-Martin teaches a dental adhesive being combined with the pigment and/or color additive to form a colored dental adhesive [0035] - [0037]. It would have been obvious to one having ordinary skill in the art at the time of filing to modify the teachings of Brinkman with the pigment-colored light-curable adhesive in order to provide a strong and durable product with a variety of customization options.
Regarding claim 39, Brinkman teaches a colored dental adhesive [0055], and Leslie-Martin discloses a dental adhesive including a pigment [0035] – [0037]. While neither reference specifically who is mixing the pigment/color additive, it would have been obvious to one having ordinary skill in the art at the time of filing that someone would be a part of the mixing process. The limitation, “a dentist, a user, or a third-party,” would encompass any person.
Claims 6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Brinkman (US 2003/0211324) in view of Killian (US 4101545).
Regarding claim 6, Brinkman discloses: etching a tooth [0057]; however, it does not specifically teach etching the tooth surface using a phosphoric acid compound. Killian discloses etching tooth enamel using 35% phosphoric acid (claim 4). It would have been obvious to one having ordinary skill in the art at the time of filing to modify the teachings of Brinkman with the teachings using a phosphoric acid compound to etch tooth enamel, as taught by Killian, in order to ensure the attachment is firmly secured to the tooth surface.
Regarding claim 11, Brinkman discloses the esthetic alteration is removable; however, it does not specifically teach that the alteration is removable with a high-speed dental handpiece and/or a low-speed dental handpiece. Killian teaches the alteration is removable with a high-speed dental handpiece and/or a low-speed dental handpiece (column 7, lines 27-35 – adhesive removed with dental scaler). It would have been obvious to one having ordinary skill in the art at the time of filing to modify the teachings of Brinkman with using a dental handpiece, as taught by Killian, in order to ensure that there is no need of grinding or damaging the tooth.
Claims 7, 8, 31, and 37, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Brinkman (US 2003/0211324) in view of Yarovesky (US 2010/0297585).
Regarding claim 7, Brinkman discloses a decal comprising a design (decal, element 121) printed on anything that can go into one’s mouth [0038]. However, Brinkman does not disclose a design printed on a paper substrate. Yarovesky discloses an image printed on a paper substrate [0008]. It would have been obvious to one having ordinary skill in the art at the time of filing to modify the teachings of Brinkman with the paper substrate of Yarovesky in order to create desired color and characteristics for dental work or restorations.
Regarding claim 8, Brinkman discloses a decal (decal, element 121). However, Brinkman does not disclose the paper substrate comprises rice paper or tissue paper. Yarovesky discloses an image printed on a paper substrate [0008]. Brinkman further teaches that the decal can be printed on anything that can go into one’s mouth [0038]. It would have been obvious to one having ordinary skill in the art at the time of filing to modify the teachings of Brinkman with the paper substrate of Yarovesky in order to create desired color and characteristics for dental work or restorations. Based on the combination of Brinkman in view of Yarovesky, it would have been obvious to one having ordinary skill in the art at the time of filing that both rice paper and tissue paper could go into one’s mouth; thus, this limitation is taught by the combination of Brinkman in view of Yarovesky.
Regarding claim 31, Brinkman discloses a decal (element 121); however, it does not teach the decal having a pigment based ink or a dye based ink. Yarovesky discloses a decal having a pigment based in or a dye based ink [0033]. It would have been obvious to one having ordinary skill in the art at the time of filing to modify the teachings of Brinkman with the paper substrate of Yarovesky in order to create desired color and characteristics for dental work or restorations.
Regarding claim 37, Brinkman discloses a decal on any substrate that can be put into the mouth (element 121); however, it does not specifically disclose a paper substrate comprising a thickness between 8 microns and 10 microns. Yarovesky discloses an image printed on a paper substrate [0008]. Brinkman further teaches that the decal can be printed on anything that can go into one’s mouth [0038]. It would have been obvious to one having ordinary skill in the art at the time of filing to modify the teachings of Brinkman with the paper substrate of Yarovesky in order to create desired color and characteristics for dental work or restorations. Based on the combination of Brinkman in view of Yarovesky, it would have been obvious to one having ordinary skill in the art at the time of filing that both rice paper and tissue paper could go into one’s mouth; thus, this limitation is taught by the combination of Brinkman in view of Yarovesky. Furthermore, it would have been obvious to one having ordinary skill in the art at the time of the invention to use a substrate comprising a thickness between 8 microns and 10 microns, as where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 40, Brinkman and Yarovesky teach a decal comprising a design; however, they do not specifically disclose the design comprising a minimum resolution of 4800x1200 dots per inch. It would have been obvious to one having ordinary skill in the art at the time of the invention to use a minimum resolution of 4800x1200, as where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device [here, the image on the decal] and a device having the claimed relative dimensions [in this case, specific a resolution] would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Brinkman (US 2003/0211324) in view of Kunstadter (US 5916653).
Regarding claim 35, Brinkman discloses removing an esthetic alteration; however, it does not specifically disclose a user removing an esthetic alteration with a fingernail, toothpick, or a hard surface that will not damage the surface of the tooth. Kunstadter discloses a user removing an esthetic alteration with a fingernail, toothpick, or a hard surface that will not damage the surface of the tooth (the person wearing the dental decal can be peeled off – column 2, line 65 – column 3, line 8). It would have been obvious to one having ordinary skill in the art at the time of filing to modify the teachings of Brinkman with the peeling off using one’s hands (fingernails) taught by Kunstadter to allow for different designs to be placed on the tooth.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Brinkman (US 2003/0211324) in view of Knutson (US 5803734)
Regarding claim 42, Brinkman discloses an esthetic alteration kit with an applicator and an adhesive curing light [0055], figures 11 and 12 (the adhesive resin would be applied via some applicator); however, it does not specifically disclose a tooth isolator. Knutson discloses a tooth isolator (figure 6). It would have been obvious to one having ordinary skill in the art at the time of filing to modify the teachings of Brinkman with tooth isolator taught by Knutson in order to provide an economical means for isolating a tooth surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura Martin whose telephone number is (571)272-2160. The examiner can normally be reached Monday - Friday, 7:30am - 3:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrea Wellington can be reached at 571-272-4483. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA MARTIN/ SPE, Art Unit 2855