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 April 15, 2026. Claims 1, 3-6, 8-13, 16, 19-25, 27 and 42-62 are currently pending and have been considered below. Applicant’s cancellation of claims 2, 7, 14-15, 17-18, 26 and 28-41 acknowledged. Claim 19 withdrawn from consideration. New grounds of rejection are shown based on newly found arts. This Office action is made non-final.
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.
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.
Claims 1, 3, 6, 16, 20-25, 27, 42-44, 47-50 and 53-62 and rejected under 35 U.S.C. 103 as being obvious over Leslie-Martin et al. (U.S. PGPub. No. 20080118883), hereinafter “Leslie-Martin”, in view of Hanswirth et al. (U.S. PGPub. No. 20150327955), hereinafter “Hanswirth”. --Claim 1, 3, 6, 20, 21, 22, 24, 25, 56: 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]). It is noted that energy is applied while applying the pressure to the dental brace. Leslie-Martin fails to teach the claimed feature “the dental appliance comprises a plurality of layers, and wherein each layer of the plurality of layers is associated with a color” and “directing an etching
device, heat, or other energy to at least the portion of the dental appliance to remove a portion of at least one layer from the dental appliance to reveal the color associated with an underlying layer of the dental appliance” Hanswirth, also directed to a method of making a dental brace (abstract, Fig. 1), teaches that the dental brace may be made by thermally laminating a plurality of sheets together ([0039]), then trimming a portion of the dental brace to reveal the underlying layers ([0047]). Although Hanswirth is silent about the color of each sheet, since Fig. 1 clearly show distinct layers; 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 layers having different colors, such as different shade of grey, as shown in the figure, in the invention of Leslie-Martin. It is noted that for a utility patent, non-functional decorative features, such as color, have little patentable weight. --Claim 16: It is noted that each layer has a thickness, thus adds depth to a design.
--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.--Claims 27, 47, 53, 57, 58, 61, 62: Hanswirth further teaches that “(e)xtending upwardly from the top surface of planar part 12 at each of the mesiobuccal aspects at the end of the straight leg parts 13 and the beginning of the curved part 11, there is a wing piece 20. Each of the wings 20 has the general shape part of a circle and they are designed to engage the inner upper lip of the user in the area of the nasolabial fold lines that run from the lower corner of each nostril to the corner of the lip. The wings 20 provide support to the upper lip. “ ([0029]) and “The appliance can also be fabricated by a vacuum-forming or pressure-forming process whereby the necessary laminar sheets of the appropriate EVA materials are heat adapted to a mold. The number and type of lamina used and the thickness at any point is determined by the shapes and sizes of the planar piece 12, wings 20, flaps 18 and the bite pads 24 and 26” ([0039]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to form a design in a sheet prior to laminating them together in the invention of Leslie-Martin modified by Hanswirth.--Claims 42, 43, 44, 48, 49, 50, 54, 55, 59, 60, : Hanswirth teaches that the dental brace is a mouth guard ([0036]). It is noted that it may be used as a retainer or aligner, and that it is made by additive manufacturing, i.e. laminating sheets together.
Claim 4 rejected under 35 U.S.C. 103 as being obvious over Leslie-Martin as applied to claim 1 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 8-10 rejected under 35 U.S.C. 103 as being obvious over Leslie-Martin in view of Stockinger and Hanswirth 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: Leslie-Martin modified by Stockinger and Hanswirth 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.
Claims 11-13 rejected under 35 U.S.C. 103 as being obvious over Leslie-Martin in view of Stockinger, Hanswirth and Whaite as applied to claim 8 above, and further in view of Bergman (U.S. Pat. No. 5838820), hereinafter “Bergman”:--Claims 11, 12, 13: Leslie-Martin modified by Stockinger, Hanswirth and Whaite teaches the invention as in claim 8. Leslie-Martin, Stockinger, Hanswirth and Whaite fail to teach the claimed feature of scanning or drawing the image by using computer. Bergman teaches that images may be drawn by user and scanned into a computer, or drawn directly on the device (Col. 1, Lines 45 through Col. 2, Line 40; Claims 7, 12). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention for a user to draw image directly into a computer or draw the image then scan into the computer in the invention of Leslie-Martin modified by Hanswirth and Stockinger because Bergman teaches that this would be effective.
Claim 45 and 51 rejected under 35 U.S.C. 103 as being obvious over Leslie-Martin modified by Hanswirth, Whaite, Bergman and Irwin et al. (U.S. PGPub. No. 20070106584), hereinafter “Irwin”:--Claim 45, 51: Leslie-Martin modified by Hanswirth, Whaite, Bergman teaches the invention as in claim 11, wherein the image is scanned or drawn directly into a computer. Irwin teaches that cathode ray tube ("CRT") televisions, projection televisions, projectors, plasma televisions, liquid crystal display ("LCD") televisions, digital light projection ("DLP") televisions, computer monitors, and the like may be substituted therefor ([0036]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to use a DLP as an equivalent substitution for the computer monitor in the invention of Leslie-Martin modified by Hanswirth, Whaite, Bergman because Irwin teaches that this would be effective.
Claims 1, 3, 6, 16, 20-25, 27, 42-44, 47-50 and 53-62 rejected under 35 U.S.C. 103 as being obvious over Vreese et al. (U.S. PGPub. No. 20080233541), hereinafter “Vreese”, in view of Hanswirth, Stockinger (AT 008106 U1), hereinafter “Stockinger”, and Crowley (U.S. Pat. No. 1713267), hereinafter “Crowley”:--Claims 1, 25, 56: 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]). It is noted that energy is applied while engraving the dental brace. 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. Vreese fails to teach the claimed feature “directing an etching device, heat, or other energy to at least the portion of the dental appliance to remove a portion of at least one layer from the dental appliance to reveal the color associated with an underlying layer of the dental appliance” Hanswirth, also directed to a method of making a dental brace (abstract, Fig. 1), teaches that the dental brace may be made by thermally laminating a plurality of sheets together ([0039]), then trimming a portion of the dental brace to reveal the underlying layers ([0047]). Although Hanswirth is silent about the color of each sheet, since Fig. 1 clearly show distinct layers; 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 layers having different colors, such as different shade of grey, as shown in the figure, in the invention of Vreese. It is noted that for a utility patent, non-functional decorative features, such as color, have little patentable weight. --Claims 3, 6, 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.--Claim 16: It is noted that each layer has a thickness, thus adds depth to a design.--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.--Claims 27, 47, 53, 57, 58, 61, 62: Hanswirth further teaches that “(e)xtending upwardly from the top surface of planar part 12 at each of the mesiobuccal aspects at the end of the straight leg parts 13 and the beginning of the curved part 11, there is a wing piece 20. Each of the wings 20 has the general shape part of a circle and they are designed to engage the inner upper lip of the user in the area of the nasolabial fold lines that run from the lower corner of each nostril to the corner of the lip. The wings 20 provide support to the upper lip. “ ([0029]) and “The appliance can also be fabricated by a vacuum-forming or pressure-forming process whereby the necessary laminar sheets of the appropriate EVA materials are heat adapted to a mold. The number and type of lamina used and the thickness at any point is determined by the shapes and sizes of the planar piece 12, wings 20, flaps 18 and the bite pads 24 and 26” ([0039]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to form a design in a sheet prior to laminating them together in the invention of Leslie-Martin modified by Hanswirth.--Claims 42, 43, 44, 48, 49, 50, 54, 55, 59, 60 : Hanswirth teaches that the dental brace is a mouth guard ([0036]). It is noted that it may be used as a retainer or aligner, and that it is made by additive manufacturing, i.e. laminating sheets together.
Claim 4-5 rejected under 35 U.S.C. 103 as being obvious over Vreese in view of Hanswirth , Stockinger and Crowley as applied to claim 1 above, and further in view of Muhlemann:--Claim 4: Vreese modified by Hanswirth, Stockinger and Crowley teaches the invention as in claim 1 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 rejected under 35 U.S.C. 103 as being obvious over Vreese in view of Hanswirth , Stockinger and Crowley as applied to claim 1 above, and further in view of Whaite:--Claims 8, 9, 10: Vreese modified by Hanswirth , 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 11-13 rejected under 35 U.S.C. 103 as being obvious over Vreese in view of Hanswirth , Stockinger, Crowley and Whaite as applied to claim 8 above, and further in view of Bergman:--Claims 11, 12, 13: Vreese modified by Hanswirth , Stockinger, Crowley and Whaite teaches the invention as in claim 8. Vreese, Hanswirth, Stockinger, Crowley and Whaite fail to teach the claimed feature of scanning or drawing the image by using computer. Bergman teaches that images may be drawn by user and scanned into a computer, or drawn directly on the device (Col. 1, Lines 45 through Col. 2, Line 40; Claims 7, 12). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention for a user to draw image directly into a computer or draw the image then scan into the computer in the invention of Vreese modified by Hanswirth , Stockinger, Crowley and Whaite because Bergman teaches that this would be effective.
Claim 45 and 51 rejected under 35 U.S.C. 103 as being obvious over Vreese in view of Hanswirth, Stockinger, Crowley, Whaite, Bergman and Irwin et al. (U.S. PGPub. No 20070106584), hereinafter “Irwin”:--Claim 45, 51: Vreese modified by Hanswirth , Stockinger, Crowley, Whaite and Bergman teaches the invention as in claim 11, wherein the image is scanned or drawn directly into a computer. Irwin teaches that cathode ray tube ("CRT") televisions, projection televisions, projectors, plasma televisions, liquid crystal display ("LCD") televisions, digital light projection ("DLP") televisions, computer monitors, and the like may be substituted therefor ([0036]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to use a DLP as an equivalent substitution for the computer monitor in the invention of Vreese modified by Hanswirth , Stockinger, Crowley, Whaite and Bergman because Irwin teaches that this would be effective.
Allowable Subject Matter
Claims 46 and 52 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 46, none of the cited prior arts teaches the claimed feature “the plurality of layers comprises a plurality of layers of a photopolymerized resin” in the context of claim 46; With respect to claim 52, none of the cited prior arts teaches the claimed feature “the plurality of layers comprises a plurality of layers of a photopolymerized resin” in the context of claim 52.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached on (571) 270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS T PHAM/Primary Examiner, Art Unit 1713
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