DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
2. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
3. Claims 2-8, 11, and 22-23, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-7, and 9-10, of U.S. Patent No. 11,806,208 in view of Phan et al. (US 2002/0187451).
The application claims and the patent claims are compared in Table 1 below. Emphasis/markings are added for comparison mapping: alphabetical identifier in brackets for reference mapping of limitations, bolding for limitations that differ, underlining for additional limitations, italicizing for extraneous or similar wordings of equivalent features.
Table 1:
Instant Application
U.S. Patent 11,806,208
2. An orthodontic appliance comprising:
[A] an appliance shell configured to reposition a patient's teeth from a first arrangement toward a second arrangement, the appliance shell comprising:
[B] a plurality of shell segments, wherein each shell segment of the plurality of shell segments comprises a first elastic modulus, and
[C] wherein each shell segment of the plurality of shell segments comprises one or more tooth-receiving cavities, and
[D] a plurality of elastic segments, wherein each elastic segment of the plurality of elastic segments comprises a second elastic modulus less than the first elastic modulus,
[E] wherein each elastic segment is coupled to a respective pair of adjacent shell segments,
[G] such that when the appliance shell is worn on the patient's teeth, each elastic segment is stretched to increase a spacing between the respective pair of adjacent shell segments, and
[H] each elastic segment resists the stretching to apply a repositioning force to teeth received by the respective pair of adjacent shell segments, and
[I] wherein the plurality of elastic segments are part of a material layer that surrounds the plurality of shell segments such that the plurality of shell segments are embedded in the material layer.
An orthodontic appliance comprising:
[A] an appliance shell configured to reposition a patient's teeth from a first arrangement toward a second arrangement, the appliance shell comprising:
[B] a plurality of shell segments, wherein each shell segment comprises a first material having a first elastic modulus, and
[C] wherein each shell segment comprises one or more tooth-receiving cavities, and
[D] a plurality of elastic segments, wherein each elastic segment comprises a second material having a second elastic modulus less than the first elastic modulus,
[E] wherein each elastic segment is coupled to a respective adjacent pair of shell segments,
[F] wherein each elastic segment is located at an interproximal region of the appliance shell and continuously spans an occlusal, buccal, and lingual surface of the interproximal region, and
[G] wherein, when the appliance shell is worn on the patient's teeth, each elastic segment is stretched to increase an interproximal spacing between the respective pair of adjacent shell segments, and
[H] the second material resists the stretching to apply a repositioning force to teeth received by the respective pair of adjacent shell segments.
3. The orthodontic appliance of claim 2, wherein
[F] each elastic segment is located at an interproximal region of the appliance shell and continuously spans an occlusal, buccal, and lingual surface of the interproximal region.
See [F] in patent claim 1.
4. The orthodontic appliance of claim 2, wherein
[G] the stretching of each elastic segment increases an interproximal spacing between the respective pair of adjacent shell segments.
Patent claim 1 recites:
“interproximal” in [G].
5. The orthodontic appliance of claim 2, wherein
[B] each shell segment comprises a first material having the first elastic modulus, and
[D] each elastic segment comprises a second material having the second elastic modulus
Patent claim 1 recites
“a first material” in [B], and
“a second material” in [D].
6. The orthodontic appliance of claim 5, wherein the first material is different from the second material.
3. The orthodontic appliance of claim 1, wherein a stiffness of the plurality of shell segments is greater than a stiffness of the plurality of elastic segments.
7. The orthodontic appliance of claim 2, wherein at least some of the plurality of shell segments are configured to receive a single tooth.
4. The orthodontic appliance of claim 1, wherein at least some of the plurality of shell segments are configured to receive and reposition a single tooth.
8. The orthodontic appliance of claim 2, wherein each elastic segment is directly coupled to the respective pair of adjacent shell segments.
6. The orthodontic appliance of claim 1, wherein each elastic segment is directly coupled to the respective adjacent pair of shell segments.
11. The orthodontic appliance of claim 2, wherein at least some of the plurality of elastic segments include a pre-loading force before the appliance shell is placed on the patient's teeth.
10. The orthodontic appliance of claim 1, wherein at least some of the plurality of elastic segments include a pre-loading force before the appliance shell is placed on the patient's teeth.
22. The orthodontic appliance of claim 2, wherein at least some of the plurality of shell segments are configured to receive a plurality of teeth.
5. The orthodontic appliance of claim 1, wherein at least some of the plurality of shell segments are configured to receive a plurality of teeth.
23. The orthodontic appliance of claim 8, wherein each elastic segment is bonded to the respective pair of adjacent shell segments.
7. The orthodontic appliance of claim 1, wherein each elastic segment is coupled to the respective adjacent pair of shell segments using an adhesive.
4. As shown in the mapping above:
Application claims 2-5 correspond to Patent claim 1.
Application claims 6-8 and 11 correspond to Patent claims 3-4, 6, and 10, respectively.
Application new claim 22 corresponds to Patent claim 5.
Application new claim 23 corresponds to Patent claim 7.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding the limitations [A]-[H] in application claims 2-5, the difference between the application claims and the patent claims lies in the fact that the patent claims include more element(s) and are thus much specific. Therefore, the limitations [A]-[H] as recited in the application claims are broader than and generic to the corresponding limitations [A]-[H] as recited in the patent claims.
Regarding the newly recited limitation [I] in application claim 2, the patent claims lack such limitation(s) “wherein the plurality of elastic segments are part of a material layer that surrounds the plurality of shell segments such that the plurality of shell segments are embedded in the material layer”.
Phan et al. discloses an appliance shell 500 (Figs. 17-18) comprising: a plurality of shell segments 506 (as part of inner layer 502), and a plurality of elastic segments as parts/portions of outer material layer 508 which is surrounding and embedding the shell segments 506, forming a single continuous appliance shell 500 (see Figs. 17-18; ¶0063]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the elastic segments as part of a material outer layer surrounding and embedding the shell segments as taught by Phan et al. in order to form an encompassing continuous outer layer and smooth outer surface for easy cleaning of the appliance.
Regarding application claim 6 reciting “the first material is different from the second material”, note that patent claim 1 recites in [B] “wherein each shell segment comprises a first material having a first elastic modulus”, in [D] “a plurality of elastic segments, wherein each elastic segment comprises a second material having a second elastic modulus less than the first elastic modulus”, and in patent claim 3 “a stiffness of the plurality of shell segments is greater than a stiffness of the plurality of elastic segments”, thereby effectively indicates that the first material of the shell segment is different (in elastic modulus and in stiffness) from the second material.
The application claims 7,8, and 11, are the same as and therefore obvious over patent claims 4, 6, and 10, respectively. Likewise, Application new claim 22 is the same as Patent claim 5. Application new claim 23 corresponds to Patent claim 7 in that the feature “bonded” (as recited in application claim 23) is considered to be equivalent to “coupled… using an adhesive” (as recited in patent claim 7).
5. Claims 24-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-7, and 9-10, of U.S. Patent No. 11,806,208 in view of Phan et al. (US 2012/0015314).
The application claims and the patent claims are compared in Table 2 below. Emphasis/markings are added for comparison mapping: alphabetical identifier in brackets for reference mapping of limitations, bolding for limitations that differ, underlining for additional limitations, italicizing for extraneous or similar wordings of equivalent features.
Table 2:
Claims 24-33 of Instant Application
Claims 1, 4-7, 9-10, of U.S. Patent 11,806,208
24. An appliance comprising:
[A] an appliance shell configured to reposition a patient's teeth from a first arrangement toward a second arrangement, the appliance shell comprising:
[B] a plurality of shell segments, wherein each shell segment of the plurality of shell segments comprises a first elastic modulus, and
[C] wherein each shell segment of the plurality of shell segments comprises one or more tooth-receiving cavities, and
[D] a plurality of elastic segments, wherein each elastic segment of the plurality of elastic segments comprises a second elastic modulus less than the first elastic modulus, and
[G] wherein each elastic segment spans an occlusal, buccal, and lingual surface of an interproximal region of the appliance shell,
[E] wherein each elastic segment is coupled to a respective pair of adjacent shell segments to form a single continuous appliance shell,
[H] such that when the appliance shell is worn on the patient's teeth, each elastic segment is stretched to increase a spacing between the respective pair of adjacent shell segments, and each elastic segment resists the stretching to apply a repositioning force to teeth received by the respective pair of adjacent shell segments,
[I] wherein the plurality of elastic segments are part of a material layer that surrounds the plurality of shell segments such that the plurality of shell segments are embedded in the material layer.
An orthodontic appliance comprising:
[A] an appliance shell configured to reposition a patient's teeth from a first arrangement toward a second arrangement, the appliance shell comprising:
[B] a plurality of shell segments, wherein each shell segment comprises a first material having a first elastic modulus, and
[C] wherein each shell segment comprises one or more tooth-receiving cavities, and
[D] a plurality of elastic segments, wherein each elastic segment comprises a second material having a second elastic modulus less than the first elastic modulus,
[E] wherein each elastic segment is coupled to a respective adjacent pair of shell segments,
[F] wherein each elastic segment is located at an interproximal region of the appliance shell and
[G] continuously spans an occlusal, buccal, and lingual surface of the interproximal region, and
[H] wherein, when the appliance shell is worn on the patient's teeth, each elastic segment is stretched to increase an interproximal spacing between the respective pair of adjacent shell segments, and
the second material resists the stretching to apply a repositioning force to teeth received by the respective pair of adjacent shell segments.
25. The appliance of claim 24, wherein each elastic segment continuously spans the occlusal, buccal, and lingual surface of the interproximal region.
See [E] in patent claim 1.
26. The appliance of claim 24, wherein the stretching of each elastic segment increases an interproximal spacing between the respective pair of adjacent shell segments.
See [G] in patent claim 1.
27. The appliance of claim 24, wherein each shell segment comprises a first material having the first elastic modulus, and each elastic segment comprises a second material having the second elastic modulus.
See [B] and [D] in claim 1.
28. The appliance of claim 27, wherein the first material is different from the second material.
See [B] and [D] in claim 1 = different elastic moduli indicate different materials.
29. The appliance of claim 24, wherein at least some of the plurality of shell segments are configured to receive a single tooth.
4. The orthodontic appliance of claim 1, wherein at least some of the plurality of shell segments are configured to receive and reposition a single tooth.
30. The appliance shell of claim 24, wherein at least some of the plurality of shell segments are configured to receive a plurality of teeth.
5. The orthodontic appliance of claim 1, wherein at least some of the plurality of shell segments are configured to receive a plurality of teeth.
31. The appliance of claim 24, wherein each elastic segment is directly coupled to the respective pair of adjacent shell segments.
6. The orthodontic appliance of claim 1, wherein each elastic segment is directly coupled to the respective adjacent pair of shell segments.
32. The appliance of claim 24, wherein each elastic segment is bonded to the respective pair of adjacent shell segments.
7. The orthodontic appliance of claim 1, wherein each elastic segment is coupled to the respective adjacent pair of shell segments using an adhesive.
33. The appliance of claim 24, wherein at least some of the plurality of elastic segments include a pre-loading force before the appliance shell is placed on the patient's teeth.
10. The orthodontic appliance of claim 1, wherein at least some of the plurality of elastic segments include a pre-loading force before the appliance shell is placed on the patient's teeth.
6. As shown in Table 2 above:
Application claims 24-28 correspond to Patent claim 1.
Application claims 29-33 correspond to Patent claims 4-7 and 10, respectively.
Although the claims at issue are not identical, they are not patentably distinct from each other because: the application claims are obvious over the patent claims as detailed in Table 2 and in the rationales set forth above with respect to the application claims 2-8, 11, and 22-23.
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 2-8, 11, and 22-33, are rejected under 35 U.S.C. 103 as being unpatentable over Phan et al. (US 2002/0187451) in view of Martz (US 2015/0157421).
Regarding claim 2, Phan et al. discloses an appliance 500 (Figs. 17-18) comprising: an appliance shell 500 configured to reposition a patient's teeth from a first arrangement toward a second arrangement (abstract), the appliance shell 500 comprising:
a plurality of shell segments 506 (as part of inner layer 502), wherein each shell segment of the plurality of shell segments comprises a first elastic modulus, and wherein each shell segment of the plurality of shell segments comprises one or more tooth-receiving cavities (¶0063] “sections 506 each of which conform to and receive an individual tooth or group of teeth”), and
a plurality of elastic segments (as parts/portions of outer layer 508 covering gaps 504), wherein each elastic segment of the plurality of elastic segments comprises a second elastic modulus less than the first elastic modulus (¶0064] “inner layer 502 having a higher stiffness… an outer layer 508 which is less stiff or more compliant”) and wherein each elastic segment (portion of layer 508 that covers gap 504) spans an occlusal, buccal, and lingual surface of an interproximal region 504 of the appliance shell, wherein each elastic segment 508 is coupled to a respective pair of adjacent shell segments 506 to form a single continuous appliance shell 500 (¶0064] “outer layer 508 is continuous in the mesial-distal axis and covers all the segments 506 of the inner layer 502”).
Phan et al. discloses the plurality of elastic segments (parts/portions of 508) are part of a material layer 508 that surrounds the plurality of shell segments 506 such that the plurality of shell segments 506 are embedded in the material layer 508 (see Figs. 17-18 which show the shell segments 506 being embedded in the material layer 508; ¶0064] “an outer layer 508 is continuous in the mesial-distal axis and covers all the segments 506 of the inner layer 502”).
Phan et al. discloses that when the appliance shell 500 is worn on the patient's teeth (¶0017] “the appliance may be worn…”), each elastic segment 508 is deformed and resists the such deformation to apply a repositioning force to teeth (see ¶0009] “Elastic modulus may be used to express or describe the stiffness of a material or a material's resistance to elastic deformation”; ¶0010] “when a material is deformed within the elastic limit, the bonds between adjacent atoms are stretched but not broken”; ¶0064] “the elasticity of the outer layer can be selected to provide an appropriate tooth movement force… the compliance of the outer layer 508 could be varied along the mesial-distal axis in order to provide for differing forces on the teeth).
As such, Phan et al. discloses the elastic material 508 goes through deformation, wherein the atomic bonds is non-permanently stretched, where the elastic material resists its deformation to apply a resilient force to teeth. However, Phan et al. is not explicit that each elastic segment is stretched to increase a spacing between the respective pair of adjacent shell segments, as claimed.
Martz et al. discloses an appliance shell 15/17 comprising shell segments 15 and elastic segments with less elastic modulus coupled to pair of adjacent shell segments 15, wherein the elastic segment 17 is stretched (due to the flexible properties of the interconnecting elements) to increase a spacing (the curve or loop 17 stretches open) between the respective pair of adjacent shell segments, and each elastic segment resists the stretching to apply a repositioning force to teeth received by the respective pair of adjacent shell segments (see paragraph [0019] “The flexible properties of the interconnecting elements are controlled by the… materials,… cross-section, and… shape”; paragraph [0083] “the loop is stretch open, it tends to move the roots closer together”). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Phan et al. by having the elastic segment stretches to increase a spacing therein in order for the elastic segment to resist such stretching and thereby applying repositioning force, e.g. to move the teeth closer together, as explicitly taught by Martz et al.
As to claims 3-4, Phan et al. shows each elastic segment (as part of layer 508) is located at an interproximal region 504 of the appliance shell and continuously spans an occlusal, buccal, and lingual surface of the interproximal region (see Phan et al. Figs. 17-18). Both Phan et al. and Martz et al. disclose elastic segment located at an interproximal region, and as modified by Martz et al. as provided in the rationales with respect to claim 2 above, any stretching of the elastic segment would increase an interproximal spacing between the inner shell segments.
As to claims 5-6, Phan et al. discloses each shell segment 506/502 comprises a first material having the first elastic modulus/higher stiffness, and each elastic segment (as part of outer layer 508) comprises a second material having the second elastic modulus/less stiff (¶0064] “inner layer 502 having a higher stiffness… an outer layer 508 which is less stiff or more compliant”). Different elastic moduli indicate the first and second materials are different from each other.
As to claim 7, Phan et al. discloses wherein at least some of the plurality of shell segments 506 are configured to receive a single tooth (¶0064] “individual sections 506, each of which conform to and receive an individual tooth or group of teeth”)
As to claim 8, Phan et al. discloses each elastic segment is directly coupled to the respective pair of adjacent shell segments (¶0021] “thermoforming and/or lamination”; ¶0064] “laminated appliance structure 500 … outer layer 508 is continuous in the mesial-distal axis and covers all the segments 506 of the inner layer 502”).
As to claim 11, Phan et al. discloses at least some of the plurality of elastic segments include a pre-loading force before the appliance shell is placed on the patient's teeth (paragraph [0018] “elastic modulus of a given appliance may be chosen to be most suitable for a specific type of tooth movement… For example, translation may require 70-120 gm of force, whereas rotation may only require 35-60 gm of force”).
As to claim 22, Phan et al. discloses at least some of the plurality of shell segments are configured to receive a plurality of teeth (¶0064] “individual sections 506, each of which conform to and receive an individual tooth or group of teeth”).
As to claim 23, Phan et al. discloses each elastic segment is bonded to the respective pair of adjacent shell segments via layering or lamination or thermoforming or coating, to the respective pair of adjacent shell segments (paragraphs [0021]-[0022], [0061]-[0064]).
Regarding claims 24-33, Phan et al. in view of Martz et al. disclose the invention and the elements as claimed as detailed above with respect to claims 2-8, 11, and 22-23. Particularly to claim 24, Phan et al. discloses that each elastic segment (portion of layer 508 that covers gap 504) spans an occlusal, buccal, and lingual surface of an interproximal region 504 of the appliance shell, wherein each elastic segment 508 is coupled to a respective pair of adjacent shell segments 506 to form a single continuous appliance shell 500 (¶0063] “outer layer 508 is continuous in the mesial-distal axis and covers all the segments 506 of the inner layer 502”).
Response to Arguments
9. Applicant’s arguments with respect to the amended claims have been fully considered and are persuasive as having overcome the previous grounds of 35 U.S.C. 102 rejection under Martz, and 35 U.S.C. 103 under Phan et al. (embodiment of Fig. 3) in view of Martz.
However, upon further consideration, the amended claims and new claims are rejected under new 35 U.S.C. 103 grounds of rejection as being unpatentable over embodiment of Figs. 17-18 of Phan et al. in view of Martz.
Regarding the newly recited limitation “wherein the plurality of elastic segments are part of a material layer that surrounds the plurality of shell segments such that the plurality of shell segments are embedded in the material layer”, Phan et al. discloses an appliance shell 500 (Figs. 17-18) comprising: a plurality of shell segments 506 (as part of inner layer 502), and a plurality of elastic segments 508 (as parts/portions of outer material layer 508) which surrounds and embeds the shell segments 506 and covers gaps 504, forming a single continuous appliance shell 500 (see Phan et al. Figs. 17-18; ¶0063]).
Conclusion
10. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/HAO D MAI/
Examiner, Art Unit 3772
/ERIC J ROSEN/Supervisory Patent Examiner, Art Unit 3772
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