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 § 102
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 1,4-6,8 and 9 are rejected under 35 U.S.C. 102(a1) as being anticipated by Lozada (US 10,639,132).
Lozada discloses a dental prosthesis comprising: a crown (13a) having a top face and a bottom; and a partial root portion (13b) capable of being sized to approximately match a root of the tooth to be replaced (Figs. 1b, 5) and capable of being of having a root portion shorter than the root of the tooth to be replaced and where in the partial root portion (13b) is adapted to fit into a space left from the removal of the tooth to be replaced (Figs. 1b, 5); wherein the dental prosthesis is formed as a fixed prosthesis (Fig. 6); a channel (14) that extends from the top surface of the crown (13a) through the partial root portion (13b) (Figs. 4,5); wherein the channel receives a screw (16) that enters into the bone of patient (Figs. 4,5); wherein the channel comprises one or more threads (Figs. 4,5 – the implant is screwed into the channel); wherein the partial root portion includes an abutment that’s capable of extending above the gumline (column 3, lines 30-35 discuses an embodiment that includes an abutment); wherein the partial root portion is capable of having a length that is 50% or less of the root (since the root is functionally claimed); and wherein the prosthesis is a full replacement for a fully removed tooth (Fig. 5).
Claim Rejections - 35 USC § 103
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1,4-14,16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Rubbert et al. in view of Lozada (US 10,639,132).
Rubbert discloses a dental prosthesis (31) comprising: a crown (top, non shaded portion of 31, Fig. 11) having a top face and a bottom (Fig. 11); and a partial root portion (see bottom shaded portion of 31, Fig. 11), the partial root portion is root-shaped and is sized to have a cross-section to approximately match a root of a tooth being replaced[0157] (Fig. 6); and the partial root portion being shorter than the root of the tooth being replaced, such that the partial root portion may fit into a space left from the removed tooth being replaced; and wherein the dental prosthesis is formed as a fixed dental prosthesis (Fig. 6 – lower portion of 31 being shorter than the actual tooth 33); wherein the partial root portion comprises an abutment (171)(Fig. 28) [0216] extending above the gumline area when placed, the crown attached to the abutment (Fig. 28); wherein the root portion has a length that is approximately 50% or less of the length of the root of the tooth being replaced (Fig. 6); wherein the crown is removable from the partial root portion (Fig. 40) and wherein the prosthesis is a full replacement for a fully removed tooth. Rubbert further discloses a method of forming a fixed dental prosthesis having a crown portion and a partial root portion comprising the steps of: performing an imaging procedure on a patient to identify size and shape of a tooth to be replaced with the fixed dental prosthesis[0033]; extracting the tooth [0026]; forming the fixed dental prosthesis based on the imaging procedure to match the extracted tooth [0034], wherein the partial root portion is formed to have a cross section approximately the same as the extracted tooth, and formed to be shorter than the root portion of the extracted tooth (Fig. 6) [0070]; wherein the forming step is performed by 3-D printing [0308] and wherein the partial root portion ( bottom portion of 31) has a length that is approximately 50% or less than the length of the root tooth being replaced (bottom portion of 33) (Fig. 6).
Rubbert discloses the invention including the method of placing substantially as claimed except for wherein the prosthesis includes a channel extending the partial root portion that is sized to receive a screw that extends from the partial root portion; wherein the channel extends through the top face of the crown; wherein the channel comprises one or more threads and a shoulder; the method step of placing the implant screw through the channel, through the opening left from the extracted tooth and into the bone of a patient.
Lozada teaches a dental prosthesis 13 having a channel (14) that extends from the top surface of the crown (13a) through the partial root portion (13b) (Figs. 4,5); wherein the channel receives a screw (16) that enters into the bone of patient (Figs. 4,5); wherein the channel comprises one or more threads (Figs. 4,5 – the implant is screwed into the channel) and a shoulder (taper portion of channel creates the shoulder); wherein the positioning of the screw causes the partial root portion to closely fit into the bone of the patient (Figs. 4,5). It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Rubbert to disclose the channel and screw mechanism, as taught by Lozado, in order to better affix the dental prosthesis into the patient’s jawbone that is well known in the art.
Rubbert/Lozado is silent to the channel being comprised of a TI-base. However, It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Rubbert/Lozado’s channel to be made of a titanium base material, 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.
Response to Arguments
Applicant's arguments filed on 11/13/2025 have been fully considered but they are not persuasive. Applicant argues that Rubbert teaches away from being modified by Lozada as Rubbert discusses the shortcomings and downsides of using conventional screw type implants as they are invasive. However, after further review of Rubbert’s patent, Rubbert’s invention is directed towards customization of dental implants and prosthetic interfaces using patient specific imaging data. Rubbert discusses that conventional root form (screw-type) implants are mass produced in standard shapes and sizes which often leads to poor fit and clinical complications. Rubbert addresses the need for a system that can customize the implant and its interfaces. While the main focus is on fully custom-shaped implants, Rubbert explicitly states that its design and manufacturing concepts can be applied to traditional root-form implants, including those of the screw type. This means the inventive customization process (for abutments, joints, and crowns) is not limited to non-threaded or non-screw designs, but can be incorporated with conventional threaded (screw) implants as well (see [0197] - “…It has not been recognized until now by the inventors, however, that the occlusually-facing surface 101 of the actual implant body 91 can be optimally individualized prior to clinical insertion. This can be even of advantage when the rest of the shape of the implant body 91 is of generic shape, e.g. a traditional screw type dental implant.”). Therefore, it’s the examiner’s position that Rubbert teaches that custom prosthetic interfaces and crowns described in the invention can be adapted for use with conventional screw-type (threaded) dental implants and therefore does not teach a way from using conventional screw type implants.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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 SUNIL K SINGH whose telephone number is (571)272-3460. The examiner can normally be reached M-F 9:00AM - 5:00PM.
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/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722