DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election of figures 7a-7e, 8 (claims 16-35) in the reply filed on 06/22/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 08/18/25, 03/24/25, 09/26/24, 06/11/24, 02/22/24, 02/22/24 were has been considered by the examiner.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 16-26, 28-29, 33-35 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Kopelman et al. (2005/0233276).
Regarding claim 16 Kopelman discloses a set of overlays (e.g. dental trays) each configured/capable for limiting movements of at least one dental cutting tool and thereby for limiting the removal of predetermined tooth structure from a tooth to be treated, the set of overlays comprising the following:
a first overlay (e.g. tray 100 fig. 1) including a first slot (e.g. window 50) configured/capable for contacting and thereby limiting movements of the at least one cutting tool to the removal of a first portion of the predetermined tooth structure from the tooth to be treated; and
a second overlay (e.g. tray 100 fig. 5-7) including a first slot (e.g. 58’, 50”) configured/capable for contacting and thereby limiting movements of the at least one cutting tool to the removal of a second portion of the predetermined tooth structure from the tooth to be treated.
With regard the statement of intended use and other functional statements (i.e. “configured to” limitations), they do not impose any structural limitations on the claims distinguishable over the prior art which is capable of being used as claimed if one so desires to do so. 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.
Regarding claim 17, at least one of the first and the second overlays/trays has an inner surface having a shape and dimensions configured/capable for releasably fixing the at least one of the first and the second overlays to one or more teeth and thereby over the tooth to be treated (col. 9, lines 1-3).
Regarding claim 18 wherein at least one of the first and the second overlays/trays has an inner surface having a shape and dimensions configured for releasably fixing the at least one of the first and the second overlays to the tooth to be treated or to at least a part of a neighboring tooth of the tooth to be treated (col. 9, lines 1-3).
Regarding claim 19, wherein the set of overlays are standardized and thereby configured/capable for use by a plurality of patients (e.g. the trays can be reused on multiple patients if one desires to do so).
Regarding claim 20 wherein the first slot of at least one of the first and the second overlays is configured/capable for alignment with at least a buccal or a lingual portion of the tooth to be treated (e.g. the tray fits on teeth of a patient).
Regarding claim 21 wherein the first slot of at least one of the first and the second overlays is configured/capable for alignment with at least a medial or a distal portion of the tooth to be treated as addressed above.
Regarding claim 22 wherein at least one of the first and the second overlays includes a second slot (e.g. 50) spaced apart from the first slot (fig. 1)
Regarding claim 23 The set of overlays of claim 22, wherein the first slot and the second slot are configured/capable for alignment with a buccal portion and a lingual portion, respectively, of the tooth to be treated.
Regarding claim 24 wherein the first slot and the second slot are configured for alignment with a medial portion and a distal portion, respectively, of the tooth to be treated (fig. 1).
Regarding claim 25 wherein at least one of the first and the second overlays is configured/capable to extend to locations adjacent to a gingiva of a patient (fig. 1).
Regarding claim 26 wherein at least one of the first and the second overlays includes a second slot intersecting the first slot (66 , 50” fig. 7).
Regarding claim 28 the first slot of at least one of the first and the second overlays comprises: a first guiding edge (the edges of the slots) extending through a thickness of the overlay and having a contour configured for contacting the at least one dental cutting tool, the contour of the first guiding edge corresponding to directions to be followed by the at least one dental cutting tool when the dental cutting tool is in contact with and moved along the contour of the first guiding edge; and a second guiding edge (of the second slot) extending through a thickness of the overlay and having a contour configured for contacting the at least one dental cutting tool, the contour of the second guiding edge corresponding to directions to be followed by the at least one dental cutting tool when the dental cutting tool is in contact with and moved along the contour of the second guiding edge.
Regarding claim 29 the first and the second guiding edges are spaced apart a fixed distance for contacting the at least one dental cutting tool at corresponding contacting points of the first and the second guiding edges as seen in the figures.
Regarding claim 33 Kopelman discloses a set of overlays as addressed above each configured/capable for limiting movements of at least one dental cutting tool and thereby for limiting the removal of predetermined tooth structure from a tooth to be treated, the set of overlays comprising the following:
a first overlay (fig. 1) having a first surface configured/capable for contacting at least one dental cutting tool to limit movements of the at least one dental cutting tool and thereby the removal of the predetermined tooth structure from the tooth to be treated to a first portion of the tooth to be treated; and a second overlay (fig. 5-7) having a second surface configured/capable for contacting the at least one dental cutting tool to limit movements of the at least one dental cutting tool and thereby the removal of the predetermined tooth structure from the tooth to be treated to a second portion of the tooth to be treated.
Regarding claim 34 Kopelman discloses a set of overlays in figures 1, 5-7 each configured/capable for limiting movements of at least one dental cutting tool and thereby for limiting the removal of predetermined tooth structure from a tooth to be treated, the set of overlays comprising the following:
a first overlay including a first slot 50 configured for contacting and thereby limiting movements of the at least one cutting tool to the removal of a first portion of the predetermined tooth structure from the tooth to be treated; and a second overlay (fig. 5-7) including a first slot (e.g. 90, 58’, 50”) configured/capable for contacting and thereby limiting movements of the at least one cutting tool to the removal of a second portion of the predetermined tooth structure from the tooth to be treated, wherein each of the first and the second overlays has an inner surface having a shape and dimensions configured for releasably fixing the first and the second overlays, respectively, to the tooth to be treated or to at least part of a neighboring tooth of the tooth to be treated, and wherein each of the first slots of the first and the second overlays comprises first and second guiding edges (e.g. edges of the slots) each extending through a thickness of the overlay and having a contour configured for simultaneously contacting the at least one dental cutting tool, the contours of the first and the second guiding edges corresponding to directions to be followed by the at least one dental cutting tool when the dental cutting tool is in contact with and moved along the contours of the first and the second guiding edges.
Regarding claim 35 wherein the first slot of the first overlay is configured/capable for alignment with a buccal or a lingual portion of the tooth to be treated, and wherein the first slot of the second overlay is configured for alignment with a medial or a distal portion of the tooth to be treated.
Claim Rejections - 35 USC § 103
Claims 16, 27, 28, 30-32 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over by Sers (2008/0287953).
Sers discloses an overlay (e.g. 1) configured/capable for limiting movements of at least one dental cutting tool and thereby for limiting the removal of predetermined tooth structure from a tooth to be treated including
a first overlay (e.g. fig. 1) including a first slot (e.g.10) configured/capable for contacting and thereby limiting movements of the at least one cutting tool to the removal of a first portion of the predetermined tooth structure from the tooth to be treated. Sers silent about second overlay; however, it would have been obvious to one having ordinary skills in the art at the time the invention was made to modify Sers overlay/guides to make more than one overlay since it has been held that mere duplication of the essential working parts of a device involves only routing skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
With regard the statement of intended use and other functional statements (i.e. “configured to” limitations), they do not impose any structural limitations on the claims distinguishable over the prior art which is capable of being used as claimed if one so desires to do so. 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.
Regarding claim 27 at least a portion of the first slot (e.g. 10) extends through an occlusal/top side of the overlay that includes the first slot and at least a portion of the second slot (e.g. the side of the guide) extends through either a buccal side or a lingual side of the overlay that includes the second slot.
Regarding claim 28, Sers discloses the first slot (fig. 1) of at least one of the first and the second overlays comprises: a first guiding edge (the edges of the slots) extending through a thickness of the overlay and having a contour configured for contacting the at least one dental cutting tool, the contour of the first guiding edge corresponding to directions to be followed by the at least one dental cutting tool when the dental cutting tool is in contact with and moved along the contour of the first guiding edge; and a second guiding edge (of the second slot) extending through a thickness of the overlay and having a contour configured for contacting the at least one dental cutting tool, the contour of the second guiding edge corresponding to directions to be followed by the at least one dental cutting tool when the dental cutting tool is in contact with and moved along the contour of the second guiding edge.
Regarding claim 30 Sees discloses a system capable for use by a dentist to remove predetermined tooth structure from a tooth to be treated, the system comprising: the set of overlays of claim 28 as addressed above; and a dental cutting tool (e.g. 4) configured for insertion between the first and the second guiding edges, wherein the first and the second guiding edges are simultaneously in contact with the dental cutting tool when the dental cutting tool is inserted between the first and the second guiding edges.
Regarding claim 31 Sers disclose system for use by a dentist to remove predetermined tooth structure from a tooth to be treated, the system further includes dental cutting tool (e.g. 4) configured for insertion between the first and the second guiding edges, wherein the first and the second guiding edges are spaced apart sufficiently such that the dental cutting tool is spaced apart from one of the first and the second guiding edges when the dental cutting tool is inserted between the first and the second guiding edges and in contact with the other one of the first and the second guiding edges.
Regarding claim 32 Sers discloses a system for use by a dentist to remove predetermined tooth structure from a tooth to be treated, the system comprising: a dental cutting tool (e.g. 4); and the set of overlays as addressed above, the first slot of each of the first and the second overlays being configured to receive the dental cutting tool through the slot as seen in figure 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Patel Yogesh whose telephone number is (571) 270-3646. The examiner can normally be reached between 9 AM – 5:30 PM on Monday, Thursday and Friday.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, SPE Bosques Edelmira, at (571) 270-5614.
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/YOGESH P PATEL/Primary Examiner, Art Unit 3772
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