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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/10/2026 has been entered.
Response to Arguments
Applicant's arguments filed 03/04/2026 have been fully considered but they are not persuasive.
Applicant has argued that the amendment to the claims would overcome the cited prior art, however upon further consideration the prior art of Hultgren is found to provide basis for the new limitation of claim 2 and for a basis or rejection claims 13-16, 18-31.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 factual inquiries 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.
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 2-4, 6, 9, 10, 13-15, 18-25, and 27-31 are rejected under 35 U.S.C. 103 as being unpatentable over Manemann et al. (US 2003/0027098 A1) in view of Hultgren et al. (US 2005/0010450 A1).
Regarding claims 2, 6, 13, 18, 23, and 27, Manemann discloses a system and method for comparative orthodontic treatment planning (Fig. 1 showing system, Title and abstract), comprising:
a computer coupled to a server (paragraph [0103] lines 4-7, disclosing the system includes a computer and network used by the practitioner for the method is connected by a modem to a server), the computer comprising a processor with a memory and a computer readable medium comprising instructions which, if executed, cause the system to (paragraph [0050] all disclosing the system operating by reading by a computer and thus processor of the computer readable medium that reads from a memory):
receiving at a client device an initial tooth data set comprising an initial tooth arrangement of a three-dimensional model (Fig. 1 elements 31,34,35,);
transmit the initial tooth data set to a server device (Fig. 1 element 35);
generate and receiving a plurality of different treatment plan for a patient based to move the teeth from the initial tooth arrangement toward a target arrangement based on an initial tooth data set received by the computer with the plurality of treatment plans comprising a plurality of planned successive tooth arrangements for moving teeth along a treatment path from an initial arrangement toward a selected final/target arrangement for a patient based on the initial tooth data (Fig. 1 element 38-41 first plan, Fig. 1 element 42-47 second different plan both using the initial data set and having different tooth paths/routes and thus one having first tooth path and the other having a second tooth path, paragraph [0028]-[0030] disclosing the different treatment plans correspond do different appliances and attachments, paragraph [0086] lines 1-7 disclosing a first treatment plan with at least two teeth arrangement of the initial and final, paragraph [0088] lines 8-11 disclosing the plan can include intermediate stage of tooth positions, paragraph [0100] disclosing the second plan for element 42-47 occurs in the same manner as for 38-41 and thus has several treatment stages with a plurality of successive planned tooth arrangements)
the treatment plans each comprising a series of treatment stages to move teeth along the treatment path corresponding to a plurality of respective dental appliances (paragraph [0030] disclosing the at least two different treatments having different corresponding appliances for the prescription of treatment stages, paragraph [0088] lines 9-11 disclosing the different plans having a series of stages to move to each tooth position);
after the different plans are generated, outputting, and displaying, the target arrangements of the at least two different plans to display tooth arrangements for each of the one or more treatment stages (Fig. 1 element 50);
allow a user to compare tooth arrangements for at least two different treatment stages (Fig. 1 element 50 allows for a user to compare the arrangement for the different stages on the display; and
and receiving from a client device a user selection of a treatment plan after comparing the tooth arrangements based on the displayed target arrangements (Fig. 1 element 52), and cause manufacturing of the one or more of the plurality of respective dental appliances associated with the desired treatment plan (Fig. 1 element 54 which places an order that would cause the appliance to be manufactured if the inventory of the appliance was low, paragraph [0103] all),
and administering to a patient one or more of the plurality of respective dental appliances associated with the desired treatment plan (paragraph [0192] all disclosing that custom planned and designed appliances are used in treatment and thus administered in order to be used).
Further regarding claims 2, 13, and 23, Manemann discloses structure and methods substantially identical to the instant application as discussed above but fails to explicitly disclose wherein the plurality of different treatment plans are generated before any of the plurality of different treatment plans are transmitted to a client device as per claims 2 and 13 nor where the number of treatment stages in the first and second treatment plans are different as per claims 2 and 13.
However, Hultgren further discloses wherein each treatment plan comprises a plurality of treatment stages that includes an initial, a final and a plurality of intermediate treatment stages (Fig. 8 and Fig. 9 are two intermediate steps of a one treatment plan from the initial stage of Fig. 6 to the intermediate stage of the removal and then movement of teeth, thus multiple intermediate stages, Fig. 10 and 11 showing s different treatment plan and showing different removal and movement of teeth thus intermediate steps, paragraphs [0056] and [0057] making clear they are different intermediate steps to be compared by the patient, Fig. 19 vs Fig. 20 are different treatment plans with various stages, paragraph [0063] lines 1-6 disclosing they are different treatment plans, lines 6-10 disclosing the generation of plans having “various steps in a treatment plan”), and discloses where the plurality of different treatment plans are generated before any of the plurality of different treatment plans are transmitted to a client device (Fig. 24 elements 2412-2415 shown in the flow chart disclose that the different treatment plans are generated before any of them are transmitted to the client device which only occurs at element 2516 as paragraph [0070] teaches that in element 2516 “All of the proposed treatment plans are compared by the dental professionals and presented to the patient in module 2516” and thus the presenting to the patient occurs after all the plans are generated, claims 23 and 34 disclosing the client device that stored the initial electronic model from which the system would receive the initial tooth data set would be a patient’s home computing device).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the plurality of different treatment plans are generated before any of the plurality of different treatment plans are transmitted to a client device and where the provision of the number of stages being different as taught by Hultgren into the system and method of orthodontic treatment as taught by Manemann for the purpose of allowing a patient to have different treatment plan options that had been compared by different professionals before being presented to the patient and for providing to a practitioner as well as a client that cost and ability to obtain a treatment in relation to what result that treatment would as an essential factor in peoples deciding to have procedures performed based of their budgets and resources and taught by Hultgren (paragraph [0070] lines 1-6 and [0063] lines 6-10).
Regarding claims 3, 14, and 24, Manemann/Hultgren as combined further discloses where the computer allows the user to compare tooth arrangements by superimposing a first tooth target arrangement for a first treatment stage over a second tooth target arrangement from a second treatment stage (Manemann Fig. 1 element 50 showing the simultaneously displaying of the two different tooth positions from two different treatments, Figs. 3 and 4 showing that the two different positions are superimposed over each other, paragraph [0093] all).
Regarding claim 4, Manemann/Hultgren as combined further discloses where the first tooth arrangement is displayed in a first color (Manemann Figs. 3/4 element 66a being white/clear and the second tooth arrangement is displayed in a second color Figs. 3/4 element 66b being a stippled gray, paragraph [0093] lines 14-17 explicitly disclosing the use of different colors).
Regarding claims 9, Manemann/Hultgren as combined further discloses where the first and second treatment plans include prescriptions for treatment using aligners/trays with different material between the first and second aligners and that the aligners have different geometries shaped to receive and reposition teeth to a successive position (Manemann paragraph [0011] all and [0084]-[0085] disclosing orthodontic aligners/tray that move through successive positions with different material stiffness’s).
Regarding claims 10, 15, and 25, Manemann/Hultgren as combined above discloses structure and methods substantially identical to the instant application as discussed above but fails to explicitly disclose a step of providing and displaying a relative pricing of the treatment plans compared by the user, though Manemann does disclose the issue of purchasing orthodontic appliances based on the different treatment plans (paragraph [0103] lines 1-4).
However, Hultgren further discloses a method of orthodontic treatment planning (title and abstract) with a comparative orthodontic treatment planning tool being a processor and memory (Fig. 2 element 200 showing processors and memory storage and ram) the method comprising:
receiving at the treatment planning tool an initial tooth data set comprising an initial tooth arrangement of a three-dimensional model (Fig. 3 elements 102 and 103 are 3d scanned models paragraph [0037] all disclosing plaster models being scanned and thus being 3d models, paragraph [0038] lines 1-5 disclosing the digital model is made of a collection of polygons with vertices at particular locations in space and thus is a 3-D model, Fig. 6 showing the receive data set of the pre-treatment tooth arrangement);
generating by the treatment planning tool a plurality of treatment plans each having different routes, a first and second, to tooth movement ( Figs. 8/9 vs Fig. 10/11 and Fig. 19 elements 1902 vs 1903 are different treatment plans, Fig. 24 element 2412 is the generation of the first plan and element 2415 is the generation of a second plan) to move teeth from the initial treatment arrangement stage to a final treatment stage based on the initial tooth data set and a final (Fig. 24 element 2411 is the receiving of the initial positions, element 2418 the implementation of the chosen plan to the final step in the plan being based of the initial conditions and goal conditions), and the providing of relative cost of the different treatment plans to be available for comparison by the patient (paragraph [0063] lines 8-16 disclosing what costs and sharing the cost with the user).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the provision for displaying alongside of relative pricing/cost of treatments for comparison by the user as taught by Hultgren into the system and method of orthodontic treatment including selecting and purchasing appliances for the selected treatment as taught by Manemann/Hultgren for the purpose of providing to a practitioner as well as a client that cost of a treatment in relation to what result that treatment would be able to provide as cost of orthodontic treatments are an essential factor in peoples deciding to have procedures performed based of their budgets and resources.
Regarding claims 19 and 28, Manemann further discloses wherein the at least two different treatment plans comprise a first treatment plan having a first sequence of tooth movement, and a second treatment plan having a second sequence of tooth movement, wherein the first and second sequences are different (Fig. 1 elements 38 and 44 disclosing two different tooth positions and thus have a different sequences of movement that would result in two different positions).
Regarding claim 20 and 29, Manemann further discloses wherein the at least two different treatment plans comprise a first treatment plan providing alignment of a first portion of an arch of a patient, and a second treatment plan providing alignment of a second portion of the arch of the patient, wherein the first and second portions are different (Fig. 1 elements 38 and 44 disclosing two different tooth positions and thus two different portions being aligned).
Regarding claims 21 and 30, Manemann further discloses wherein the at least two different treatment plans comprise a first treatment plan prescribing treatment using dental appliances formed of a first material, and a second treatment plan prescribing treatment using dental appliances formed of a second material, wherein the first and second materials are different, and wherein the dental appliances formed of the first material and the dental appliances formed of the second material each comprise a geometry shaped to receive and reposition teeth from a position to a successive position (paragraph [0085] all disclosing the different treatment plans can have different appliances with recesses made of different materials) .
Regarding claims 22 and 31, further comprising manufacturing one or more dental appliances corresponding to one or more of the plurality of treatment stages of the selected treatment plan (paragraphs [0103] and [0192] all disclosing that custom planned and designed appliances are ordered and are used in treatment and thus manufactured after they are ordered to be used).
Claims 16 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Manemann et al. (US 2003/0027098 A1) in view of Hultgren et al. (US 2005/0010450 A1) as applied to claim 13 above and further in view of Kuo et al. (US 2007/0128574 A1).
Regarding claims 16 and 26, Manemann/Hultgren discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose where the displaying further includes displaying treatment duration information for each treatment plan.
However, Kuo discloses a method of treatment planning based on received information based on dentition information (title and abstract) and determining a treatment plan (Fig. 44 showing general method) including a step of proving the dental practitioners an anticipated treatment time duration (paragraph [0265] lines 1-12 disclosing visual aided interface system that would provide the user with the duration of the treatment).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the displaying of an anticipated treatment duration as taught by Kuo into the displaying as taught by Manemann/Hultgren for the purpose of determining if the presented treatment would meet a user’s desired treatment goals as taught by Kuo (paragraph [0264] lines 14-17).
Double Patenting
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 2, 13, and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 11,850,111 is a species to claims 2, 13 and 17.
Claims 3, 14, and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of U.S. Patent No. 11,850,111 is a species to claims 3, 14, and 24.
Claims 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,850,111 in view of Manemann et al. (US 2003/0027098 A1). Although the claims at issue are not identical as claim 7 fails to provide for the superimposed images to have different color, Manemann discloses a where the first tooth arrangement is displayed in a first color (Manemann Figs. 3/4 element 66a being white/clear and the second tooth arrangement is displayed in a second color Figs. 3/4 element 66b being a stippled gray, paragraph [0093] lines 14-17 explicitly disclosing the use of different colors) and therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the different color from Manemann into the superimposed image of claim 7 to provide for ready comparison as taught by Manemann ( paragraph [0089] all).
Claims 6, 18, and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of U.S. Patent No. 11,850,111 is a species to claims 6, 18, and 27.
Claims 9, 21 , and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of U.S. Patent No. 11,850,111 is a species to claims 9, 21, and 30.
Claims 19 and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of U.S. Patent No. 11,850,111 is a species to claims 19 and 28.
Claims 20 and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of U.S. Patent No. 11,850,111 is a species to claims 20 and 29.
Claims 10, 15, and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of U.S. Patent No. 11,850,111 is a species to claims 10 ,15, and 25.
Claims 16 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of U.S. Patent No. 11,850,111 is a species to claims 16 and 26.
Claims 22 and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of U.S. Patent No. 11,850,111 is a species to claims 22 and 31
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20070128573 A1 should also be reviewed by applicant as having a basis for the limitation of generating a plurality of different treatment plans before displaying any of those plans in at least in Figure 30 element 3030 disclosing the receiving of “treatment plan(s)” as well as paragraph [0282] disclosing “ one or more treatment plans are generated. The generated one or more treatment plans are output to the user”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P SAUNDERS whose telephone number is (571)270-3250. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edelmira Bosques can be reached at (571) 270-5614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.P.S/Examiner, Art Unit 3772 06/22/2026
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772
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