DETAILED ACTION
This is the Office action based on the 18476215 application filed September 27, 2023, and in response to applicant’s argument/remark filed on September 19, 2025. Claims 1-41 are currently pending and have been considered below.
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 .
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 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.
Election/Restrictions
Applicant’s election, without traverse, of the invention of Group I, claims 1-18 and 20-41 in the reply filed on September 19, 2025 is acknowledged. Claim 19 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
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.
Claims 11-13 and 32-34 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Regarding claims 11, 12, 13, 32, 33 and 34, the phrase "can be" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 14 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 14 recites the limitation “the design dictates layers used to build the appliance near the design”. One of skill in the art would not be clear how to create a design that dictates the layers used to build the appliance near the design, and the specification does not provide any instruction. The phrase “the layers used to build the appliance” also lacks antecedent basis since no layers used to build the appliance is recited previously. For the purpose of examining any design is capable of dictating the layers used to build the appliance near the design, and the phrase “the layers used to build the appliance” is assumed to be “layers used to build the appliance”.
Claim 16 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Regarding claim 16, the term “each layer” is not clear because no layer is recited previously. For the purpose of examining this term is assumed to be “a layer”.
Claim 15 rejected under 35 U.S.C. 112(b) because they are directly or indirectly dependent on claim 14.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention..
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 20-22 and 24 rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as anticipated by Leslie-Martin et al. (U.S. PGPub. No. 20080118883), hereinafter “Leslie-Martin”. --Claim 1: Leslie-Martin teaches a method for providing a dental brace, comprisingapplying a pressure on the dental brace to form a decorative recess by using an impression tool ([0024-0034], Fig. 4, 6-7), wherein the recess may be in a specialized shapes, complex shapes, symbols, alphanumeric characters, punctuation characters, logos, signs, likenesses, etc., and wherein the recess may have a flat surface, curved surfaces or multiple surfaces ([0025, 0040]), and may partially penetrate or passes fully through the wall of the dental brace ([0042]);applying a decorative item, such as paints, films, appliques, filler materials, gemstones, jewelry, charms, etc. into the recess, wherein the item are at least partially fill the recess, and may be bonded or otherwise affixed to the dental brace ([0025, 0040]).--Claims 2, 3, 20, 21, 22, 24: It is noted that energy is applied while applying the pressure to the dental brace.
Claim 1 rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as anticipated by Vreese et al. (U.S. PGPub. No. 20080233541), hereinafter “Vreese”.
--Claim 1: Vreese teaches a method for providing a dental brace for the treatment of teeth and gum (Fig. 1, abstract), comprisingmaking the dental brace that is shaped for attachment to a tooth or for the immersion of teeth ([0036]);photographically etching, embossing, or engraving an identification or a style on the dental brace ([0228]).
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 23 rejected under 35 U.S.C. 103 as being obvious over Leslie-Martin:--Claim 23: Leslie-Martin teaches the invention as above, wherein Leslie-Martin teaches that the decorative item may be paints, films, appliques, filler materials, gemstones, jewelry, charms, etc. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a decorative item that has at least one color in the invention of Leslie-Martin.
Claim 4 rejected under 35 U.S.C. 103 as being obvious over Leslie-Martin as applied to claim 3 above, and further in view of Muhlemann et al. (U.S. Pat. No 4208795), hereinafter “Muhlemann”:--Claim 4: Leslie-Martin teaches the invention as in claim 3, wherein Leslie-Martin teaches to form a recess on a dental brace by applying a pressure. Leslie-Martin fail to teach etching the dental brace.Muhlemann teaches that a recess may be formed on a dental crown by drilling.Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to form the recess by drilling instead of pressing in the invention of Leslie-Martin because Muhlemann teaches that such technique would be effective. It is noted that for a dental brace that is made of a brittle material, pressing may create a crack or fracture in the brace.
Claim 5 rejected under 35 U.S.C. 103 as being obvious over Leslie-Martin as applied to claim 3 above, and further in view of Leslie-Martin (U.S. PGPub. No. 20080003541), hereinafter “Leslie-Martin’541”:--Claim 5: Leslie-Martin teaches the invention as in claim 3, wherein Leslie-Martin teaches to fill the recess with paints. Leslie-Martin’541, also directed to attaching a decorative item to a dental brace, teaches that the decorative item may be a colored paint and a sealer that protects the underlying colored paint ([0012, 0033, 0037, 0053]). It is noted that paint may be inherently considered ink. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to use the colored paint as the decorative item in the invention of Leslie-Martin because Leslie-Martin’541 teaches that such color paint would be suitable as a decorative item on a dental brace..
Claims 6-7 rejected under 35 U.S.C. 103 as being obvious over Leslie-Martin as applied to claim 2 above, and further in view of Stockinger (AT 008106 U1), hereinafter “Stockinger”:--Claims 6, 7: Leslie-Martin teaches the invention as in claim 3, wherein Leslie-Martin teaches to applying items, such as paints, films, appliques, filler materials, gemstones, jewelry, charms, etc. into the recess, wherein the items are at least partially fill the recess, and may be bonded or otherwise affixed to the dental brace ([0025, 0040]). Leslie-Martin fails to teach that the item may be a print. Stockinger, also directed to applying a decorative item intraorally upon a tooth, teach that the item may be “one or more color images, logos and the like are printed according to a feature of the invention by means of pad printing. The pad printing method has the advantage that it has a much higher resolution than, for example, the screen printing method, thereby more complex, multicolor images can be applied especially on the small-sized metal plate. Possible examples of patterns and images are various logos of clubs, famous brands, national flags or various symbols such. As smilies, hearts or the like. Furthermore, identification marks such as bar codes can also be printed on the wafer. By means of other etching or printing processes further chips can be applied as identification medium on the platelets.” (paragraph 6). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to use one or more color images, logos and the like that are printed on a plate as the item to be attached to the recess in the invention of Leslie-Martin. Although Leslie-Martin and Stockinger are silent about removing the item from the dental brace, removing items from braces are well known in the art.
Claims 8-10, 14-15, 28-31 and 39-41 rejected under 35 U.S.C. 103 as being obvious over Leslie-Martin in view of Stockinger as applied to claim 8 above, and further in view of Whaite et al. (U.S. PGPub. No. 20040136002), hereinafter “Whaite”:--Claim 8, 9, 10, 14, 15, 28, 29, 30, 31, 39, 40, 41: Leslie-Martin modified by Stockinger teaches the invention as in claim 6. Leslie-Martin and Stockinger fail to teach the claimed feature of uploading an image to a website.Whaite, also directed to a method of a treatment to improve a tooth crown (abstract), teaches that images of the crown may be uploaded to be stored at a central server of a website for easy access and analysis during a treatment ([0039, 0048, 0050-0051]), wherein the method would ensure the appearance and quality of the crown ([0003-0010]) Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to set up a website for user to upload images to be used for the decorative item in the invention of Leslie-Martin modified by Stockinger because Whaite teaches that this would ensure the appearance and quality of the dental brace or crown.
Claim 17 rejected under 35 U.S.C. 103 as being obvious over Leslie-Martin as applied to claim 2 above, and further in view of Machida et al. (U.S. Pat. No 6426149), hereinafter “Machida”:--Claim 17: Leslie-Martin teaches the invention as in claim 2. Machida discloses an ornament that is suitable for applying on an artificial tooth (abstract), the ornament comprises a gold foil or platinum foil sandwiched between a first ceramic layer fused at a medium temperature and a second ceramic layer fused at a low temperature then a fritting glass material layer (abstract, claim 5). It is noted that the gold foil or platinum foil, the ceramic layers and the fritting glass layer have different colors Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use the ornament that have different layers having different colors as taught by Machida as the decorative item in the invention of Leslie-Martin because Machida teaches that it is suitable for the purpose.
Claims 2-3, 6-7, 17-18 and 20-24 rejected under 35 U.S.C. 103 as being obvious over Vreese as applied to claim 1 above, and further in view of Stockinger (AT 008106 U1), hereinafter “Stockinger”, and Crowley (U.S. Pat. No. 1713267), hereinafter “Crowley”--Claims 2, 3, 6, 7, 20, 21, 22, 24: Vreese teaches the dental brace as above, wherein Vreese teaches to photographically etching, embossing, or engraving identifications or styles on the dental brace. Stockinger teaches that a decorative element, such as a pattern or an image, may be attached to a tooth or a crown, wherein the image may be a bar code identification, a flag, a heart, a club logo, and wherein the pattern or image may be formed by etching or printing. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to etch a decorative element, such as an image or identification bar code, on the dental device as the identification in the invention of Vreese because Vreese teaches to etching an identification, and Stockinger teaches that such decorative element may be used as an identification. It is noted that Vreese further teaches that children may be reluctant to wear a dental device due to the unsightly appearance of the dental device, and teaches to provide a distraction, such as LED light on the dental device, to encourage children to wear it, and one of skill in the art would use such decorative element as the distraction. Crowley teaches that embossing or raised item that is present on a crown tooth may cause irritation (Page 1, Lines 12-15, 41-44), and teaches to form a recess on the crown then place the item into the recess so that its top surface is flushed with the adjacent surface of the crown (Page 2, Lines 59-73). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to apply the decorative element by etching a recess on the dental appliance then attaching the decorative element into the recess so that its top surface is flushed with the adjacent surface of the dental appliance in the invention of Vreese modified by Stockinger because Crowley teaches that raised element that is present on such dental appliance may cause irritation.--Claims 17, 18: Vreese further teaches that the dental brace may comprise many layers, including an insulator layer and a phosphor layer ([0139-0140, 0145]). It is obvious that these layers comprise different colors.--Claim 23: It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a decorative item that has at least one color in the invention of Vreese modified by Stockinger and Crowley.
Claim 4-5 rejected under 35 U.S.C. 103 as being obvious over Vreese in view of Stockinger and Crowley as applied to claim 3 above, and further in view of Muhlemann:--Claim 4: Vreese modified by Stockinger and Crowley teaches the invention as in claim 3 above, wherein Vreese teaches to etch, emboss, or engrave an identification or a style on the dental brace, and Crowley teaches that a recess may be form on a dental crown to accommodate a decorative item. Vreese and Crowley are silent about a technique for the etching for the forming the recess. Muhlemann, also directed to a method of attaching an item to a dental crown, teaches that a recess may be drilled into the crown to accommodate the item. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to form the recess by drilling in the invention of Vreese modified by Stockinger and Crowley because Vreese and Crowley are silent about a technique for the etching for the forming the recess, and Muhlemann teaches that such technique would be effective.--Claim 5: Stockinger further teaches that the item may be “one or more color images, logos and the like are printed according to a feature of the invention by means of pad printing. The pad printing method has the advantage that it has a much higher resolution than, for example, the screen printing method, thereby more complex, multicolor images can be applied especially on the small-sized metal plate. Possible examples of patterns and images are various logos of clubs, famous brands, national flags or various symbols such. As smilies, hearts or the like. Furthermore, identification marks such as bar codes can also be printed on the wafer. By means of other etching or printing processes further chips can be applied as identification medium on the platelets.” (paragraph 6). It is well known in the art that pad printing uses ink to impress an image on a surface. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention that the recess is filled with the multicolor image containing colored ink in the invention of Vreese modified by Stockinger and Crowley.
Claims 8-10, 14-15, 28-31, 35-41 rejected under 35 U.S.C. 103 as being obvious over Vreese in view of Stockinger and Crowley as applied to claim 2 above, and further in view of Whaite:--Claims 8, 9, 10, 14, 15, 28, 29, 30, 31, 39, 40, 41: Vreese modified by Stockinger and Crowley teaches the invention as in claim 2. Vreese, Stockinger and Crowley fail to teach the claimed feature of uploading an image to a website.Whaite, also directed to a method of a treatment to improve a tooth crown (abstract), teaches that images of the crown may be uploaded to be stored at a central server of a website for easy access and analysis during a treatment ([0039, 0048, 0050-0051]), wherein the method would ensure the appearance and quality of the crown ([0003-0010]) Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to set up a website for user to upload images to be used for the decorative item in the invention of Leslie-Martin modified by Stockinger because Whaite teaches that this would ensure the appearance and quality of the dental brace or crown. --Claims 35, 36, 37, 38: Vreese further teaches that the dental brace may comprise many layers, including an insulator layer and a phosphor layer ([0139-0140, 0145]). It is obvious that these layers comprise different colors.
Claim 17 rejected under 35 U.S.C. 103 as being obvious over Vreese in view of Stockinger and Crowley as applied to claim 2 above, and further in view of Machida:--Claim 17: Vreese modified by Stockinger and Crowley teaches the invention as in claim 2. Machida discloses an ornament that is suitable for applying on an artificial tooth (abstract), the ornament comprises a gold foil or platinum foil sandwiched between a first ceramic layer fused at a medium temperature and a second ceramic layer fused at a low temperature then a fritting glass material layer (abstract, claim 5). It is noted that the gold foil or platinum foil, the ceramic layers and the fritting glass layer have different colors Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use the ornament that have different layers having different colors as taught by Machida as the decorative item in the invention of Vreese modified by Stockinger and Crowley because Machida teaches that it is suitable for the purpose.
Allowable Subject Matter
Claims 25-27 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten to include all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: With respect to claim 25, none of the cited prior arts teaches the feature “forming the appliance from a sheet comprising a plurality of layers; and directing an etching device, heat, or other energy to at least a portion of the appliance to remove at least one layer of material from the appliance to reveal a portion of a layer of the appliance.” in the context of claim 25.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submission should be clearly labeled “Comments on Statement of Reasons for Allowance”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS PHAM whose telephone number is (571) 270-7670 and fax number is (571) 270-8670. The examiner can normally be reached on MTWThF9to6 PST.
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/THOMAS T PHAM/Primary Examiner, Art Unit 1713