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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8, 10-11, 29, 31, 34, 35, and 47-42 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.
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 Doudney (US 2017/0119111) in view of Brinkman (US 2003/0211324).
Regarding claim 1, Doudney teaches a method of applying an aesthetic alteration on a tooth surface comprising applying a first layer of dental adhesive to the tooth surface as an initial applied layer of dental adhesive [0006] – [0007]; placing a decal on the first layer of dental adhesive after applying the first layer of dental adhesive to the tooth surface [0008], wherein the decal is placed on the first layer of dental adhesive before the first layer of dental adhesive is cured [0062].
Doudney does not specifically disclose applying at least one additional layer of dental adhesive on top of the decal; and curing the at least one additional layer of dental adhesive. However, Brinkman teaches applying at least one additional layer of dental adhesive on top of the decal; and curing the at least one additional layer of dental adhesive [0055] – [0056], figure 13, element 130. It would have been obvious to one having ordinary skill in the art at the time of filing to modify Doudney with Brinkman in order to protect the decal from damage from foreign objects striking the tooth or biting particles that could possibly dislodge or damage the decal.
Regarding claim 2, Doudney teaches: the step of curing the first layer of dental adhesive after applying the first layer of dental adhesive [0062].
Regarding claim 5, Doudney teaches a resin bond material [0047]; however it does not teach each layer of dental adhesive being a tooth resin bonding material. Brinkman teaches: each layer of dental adhesive is a resin tooth bonding agent [0055] – [0056]. It would have been obvious to one having ordinary skill in the art at the time of filing to modify Doudney with Brinkman in order to provide a decal that is non-invasive and easily removable when desired.
Regarding claim 10, Doudney teaches a method of applying an aesthetic alteration. However, Doudney does not teach: the step of removing, by a dental professional, user, or a third party, the esthetic alteration. 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. It would have been obvious to one having ordinary skill in the art at the time of filing to modify Doudney with Brinkman in order to protect the decal from damage from foreign objects striking the tooth or biting particles that could possibly dislodge or damage the decal.
Regarding claim 29, while Doudney teaches a method of applying an aesthetic alteration, it does not teach multiple layers of resin overcoat. Brinkman teaches: the step of applying a resin overcoat on the at least one additional layer of dental adhesive (figure 13, element 130). It would have been obvious to one having ordinary skill in the art at the time of filing to modify Doudney with Brinkman in order to protect the decal from damage from foreign objects striking the tooth or biting particles that could possibly dislodge or damage the decal.
Regarding claim 34, Doudney teaches: applying the esthetic alteration is performed by a dentist, a user, or a third party [0066]. 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, Doudney teaches: the method is performed with an esthetic alteration kit comprising the dental adhesive and decal [0033] - [0035].
Claims 3, 4, 38, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Doudney (US 2017/0119111) and Brinkman (US 2003/0211324), and further in view of Leslie-Martin (US 2013/0078594).
Regarding claim 3, Doudney teaches a cosmetic enhancement containing a pigment [0038] and 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 Doudney and Brinkman with the pigment-colored light-curable adhesive of Leslie-Martin in order to provide a strong and durable product with a variety of customization options.
Regarding claim 4, Doudney teaches a cosmetic enhancement containing a pigment [0038] and Brinkman teaches the first layer of dental adhesive is colored adhesive [0055]; however, it does not specifically 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 Doudney and Brinkman with the pigment-colored light-curable adhesive taught by Leslie-Martin in order to provide a strong and durable product with a variety of Doudney teaches a cosmetic enhancement containing a pigment [0038] and Brinkman teaches the first layer of dental adhesive is colored adhesive [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 Doudney and Brinkman with the pigment-colored light-curable adhesive of Leslie-Martin in order to provide a strong and durable product with a variety of customization options.
Regarding claim 39, Doudney teaches a cosmetic enhancement containing a pigment, Brinkman teaches a colored dental adhesive [0055], and Leslie-Martin discloses a dental adhesive including a pigment [0035] – [0037]. While the references do not specifically teach 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 Doudney (US 2017/0119111) and Brinkman (US 2003/0211324), and further in view of Killian (US 4101545).
Regarding claim 6, Doudney teaches etching a tooth using phosphoric acid [0063]; however, it does not specifically teach etching the tooth surface using a 35% 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 Doudney and 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 Doudney and 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.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Doudney (US 2017/0119111) and Brinkman (US 2003/0211324), and further 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 Doudney and 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 Doudney (US 2017/0119111) and Brinkman (US 2003/0211324), and further in view of Knutson (US 5803734)
Regarding claim 42, Doudney discloses an esthetic alteration kit with an applicator and an adhesive curing light [0045] – [0049]; 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 Doudney and Brinkman with tooth isolator taught by Knutson in order to provide an economical means for isolating a tooth surface.
Allowable Subject Matter
Claims 7, 8, 31, and 37, and 40 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Prior art does not teach a decal comprising a paper substrate and a design, wherein the design is visible after placing the decal on the first layer of dental adhesive, and the paper substrate is not visible after placing the decal on the first layer of dental adhesive.
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 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 SWEENEY/Supervisory Patent Examiner, Art Unit 2855
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