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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/15/2026 has been entered.
Drawings
The drawings were received on 05/15/2026. These drawings are acceptable.
Specification
The amendment to the specification filed 05/15/2026 have been entered.
Response to Arguments
Applicant's arguments filed 05/15/2026 have been fully considered but they are not persuasive.
Applicant has argued that both Wiele et al. (US 2021/0353451) and Hung et al. (US 2016/0310237 A1) fail to provide for the new limitation of “the upper arch corresponds to the first side and the lower arch corresponds to the second side” and the disocclusion of the posterior teeth due to the interaction between the upper and lower arch, however upon further review and consideration these limitations are provided for by both Wiele et al. (US 2021/0353451) and Hung et al. (US 2016/0310237 A1) as cited in the following action.
Applicant has argued that the cited prior art fail to provide for the resulting changes a patient may experience such as a change in the proprioception by the nerve receptors, however these effects appear to be argued in relation to the claimed limitations of the disocclusion of the posterior teeth, which the cited prior art provide for.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the aligner being “completely flat” or “one arch with only one guide” from page 13, “a plate” inside the aligner from page 14, ) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the prior art of Wiele and Hung can be used to treat other conditions and applicant intends for the mandible to be moved during use, 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.
Claim Objections
Claim 6 is objected to because of the following informalities: Claim 6 recites the limitation of “wherein contacts with antagonist teeth are made with tip of cusp” which should read “wherein contacts with antagonist teeth are made with a tip of a cusp” or similar language. Appropriate correction is required.
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.
Claims 5-9 are 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 6 recites the limitation of “contacts with antagonistic teeth are made with tip of cusp on the flat surface”, however claim 1 discloses that the aligner has both an upper arch and a lower arch and thus the actual cusp of teeth on a patient’s upper arch or lower arch could not contact the flat surfaces as they would be inside either the upper or lower arch of the appliance itself and only the occlusal surfaces of the arches of the appliance would contact. For purposes of examination any prior art where one of the upper or lower arch alone would contact teeth cusp tips or where cusp tips of an appliance would contact the flat surface of the other appliance arch will be deemed to provide for the claim limitation.
Claim 7 recites the limitation of “wherein the contacts causes… dememorization”, however this renders the claim indefinite as depending on some physiological response to happen upon only even a momentary contact and would also have the affect some undefined patient’s specific anatomy. For purposes of examination any prior art which would have contact that would in any way have the occlusal contact be different than those contacts a patient would have without any appliance applied to their arches will be deemed to provide for such limitations.
Claim 8 recite the limitation of “wherein when the flat surface is in an upper arch” contacts occur with buccal cusp tips of the lower arch, however claim 1 recites the aligner includes an upper and lower arch and thus no cusps of teeth themselves will be able to be contacted. For purposes of examination any prior art that provides for contacts when only on of an upper or lower arch aligner is worn will be deemed to provide for the claim limitations or where cusp tips of an appliance would contact the flat surface of the other appliance arch will be deemed to provide for the claim limitation.
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 1-2, 5, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wiele et al. (US 2021/0353451 A1).
Regarding claims 1 and 10, Wiele discloses providing an orthodontic aligner (title and abstract) having an aligner (Fig. 7a/8a element 110/114) with one side that is flat (Fig. 7a/8a element 120/123) and the second side opposite the first side comprises an arch that has a shape of teeth (Fig. 7a element showing the surface of 16 having the shape of teeth 144, further Fig. 8a element 170 is tooth shaped, Fig. 8a elements 160 being tooth shaped which is a broad term), in which there is a ramp in a canine region, canine, guide, to direct laterality and anterior guidance movements when possible (Fig. 7a/8a element 112/132/136, paragraph [0071] lines 1-3 disclosing “cuspid guidance (canine lateral or anterior guidance)”), wherein in both an upper arch and a lower arch of the aligner, the upper arch corresponds to the first side (Fig. 7a/8a element 120/123) and the lower arch corresponds to the second side (Fig. 7a element showing the surface of 16 having the shape of teeth 144, further Fig. 8a element 170 is tooth shaped, Fig. 8a elements 160 being tooth shaped which is a broad term),and the flat surface of the first side forms an occlusal surface that includes canine guidance in the canine region (Fig. 7c elements 123/160), thereby causing disocclusion of posterior teeth of a user wearing the orthodontic aligner due to an interaction between the upper and lower arch (Fig. 7a/8a the posterior teeth are disoccluded by the upper and lower arches being in between the teeth and thus the are disoccluded form their normal contact when the mouth would be closed without such appliance present).
Regarding claim 2, Wiele further discloses wherein each occlusal surface of the upper and lower arches is flat (Fig. 7c elements 160 and 123 are flat) and wherein the occlusal surface in the canine region includes a canine guide and anterior guide (Fig. 7a occlusal feature elements 152 and 116 provide canine and anterior guidance).
Regarding claim 5, Wiele further discloses where the orthodontic aligner is configured to move teeth with inclination, proclination, or lingualization (paragraph [0023] lines 31-33 disclosing patients could have overbites which is a proclination, further the appliances are configured to move teeth by their guides and are formed from patients teeth, thus should a patient have inclined teeth, proclined teeth, or lingualized teeth the would be moved the guides moving the jaws).
Claims 1, 5-8, 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hung et al. (US 2016/0310237 A1).
Regarding claims 1 and 10, Hung discloses providing an orthodontic aligner (title and abstract) having an aligner (Fig. 1 element 1) with one side that is flat (Fig. 1 element 100 having planer/flat surfaces, paragraph [0022] lines 1-3 disclosing a plane on one side) and
a second side opposite the first side comprises an arch that has a shape of teeth (Fig. 4 element 200 having occlusal surface that have the same of teeth, paragraph [0022] lines 1-3 disclosing the second part forming a plurality of protrusions), in which there is
a ramp in a canine region, canine, guide, to direct laterality and anterior guidance movements when possible (Fig. 4 element 110a),
wherein in both an upper arch and a lower arch of the aligner, the upper arch corresponds to the first side (Fig. 1 element 100 having planer/flat surfaces) and the lower arch corresponds to the second side (Fig. 4 element 200 having occlusal surface that have the same of teeth), and the flat of the fist side forms an occlusal surface that includes canine guidance in the canine region (Fig. 2a plane P1 forms the occlusal surface that includes the canine guidance area at canine 12c ), thereby causing disocclusion of posterior teeth of a user wearing the orthodontic aligner due to an interaction between the upper arch and the lower arch (Fig. 2a the posterior teeth are disoccluded by the upper and lower arches being in between the teeth and thus the are disoccluded form their normal contact when the mouth would be closed without such appliance present).
Regarding claim 5, Hung further discloses where the orthodontic aligner is configured to move teeth with inclination, proclination, or lingualization (Fig. 2b showing the moving of a tooth with improper inclination).
Regarding claim 6, Hung further discloses wherein contacts with antagonistic teeth would be made with a tip cusp on the flat surface (Fig. 2a showing protrusions/tips P2 contacting planer/flat P1).
Regarding claim 7, Hung discloses where the contacts cause a dememorization of occlusal contacts associated with the posterior teeth of the user when wearing the orthodontic aligner (Fig. 2a element 100a, paragraph [0026] disclosing the limiting parts would guide the lower jaw and limiting movement during mastication which would dememorize the muscle when worn, Fig. 2a the posterior teeth are disoccluded by the upper and lower arches being in between the teeth and thus the are disoccluded form their normal contact when the mouth would be closed without such appliance present)
Regarding claim 8, Hung further discloses due to the flat surface being in the upper arch and contacts occur with a buccal cusp tip of the lower arch (Fig. 2a showing the plane/flat surface on the upper arch and the contact would be with the occlusal buccal side of the lower arch).
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 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Wiele et al. (US 2021/0353451 A1).
Regarding claims 3 and 4, Wiele discloses the claimed invention except for the material of the aligner being acetate or polyurethane. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have chosen the material of Wiele to be either acetate or polyurethane as Wiele discloses the aligner can be any orthodontic acrylic or other suitable material (paragraph [0104] all), since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Hung et al. (US 2016/0310237 A1).
Regarding claims 3 and 4, Hung discloses the claimed invention except for the material of the aligner being acetate or polyurethane. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have chosen the material of Hung to be either acetate or polyurethane as Hung discloses the aligner can be any orthodontic resin or other suitable material for use in oral appliances (paragraph [0040] all), since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P SAUNDERS whose telephone number is (571)270-3250. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edelmira Bosques can be reached at (571) 270-5614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.P.S/Examiner, Art Unit 3772 08/20/2026
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772
