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 .
Response to Amendment
This action is in response to Applicant’s amendments filed 10/22/25.
The amendments to the Drawings and Specification filed 10/22/25 have been entered, but are objected to, as explained below.
Response to Arguments
Applicant's arguments filed 10/22/25 have been fully considered but they are not persuasive and additionally do not address the new grounds of rejection and/or interpretation below necessitated by Applicant’s amendments.
Applicant argues that Domrachev does not teach a handheld orthodontic ligation instrument comprising a conical shaped handle and a thermoactivated wire, configured to perform the functions as presently claimed, however the Examiner disagrees. First the Examiner notes that the portion of the tool of Domrachev identified below is interpreted as a wire, as it is a slender, stringlike piece or filament of relatively rigid or flexible metal (see citations below), which meets the broadest reasonable interpretation of the term “wire” (see dictionary.com). Next, regarding the newly added “configured to” language in the claim, the Examiner notes that such language does not require any additional structural features other than the material and shape of the wire as claimed in order for the wire to perform said function. Additionally, such functionality further depends on the size and/or shape of the bracket, archwire and ligature the claimed tool is intended to be used therewith. Therefore, the Examiner maintains that the Domrachev device (either with the wire of Fig. 1-2 or 3), comprises the tool with a conical handle (see below) and thermoactivated wire (see below), configured to be used as such; for example the device can be inserted into an appropriately sized and shaped archwire slot to accomplish the claimed functional language. Additionally, Applicant has not provided any evidence as to why the prior art does not read on the claimed structure or why it is not configured to be used as recited with an appropriately sized and shaped bracket, archwire and ligature. The arguments appear to be based on opinion, which the Examiner respectfully disagrees with. Finally, the Examiner notes that a system or method claim could be recited in a divisional application and could explicitly require the claimed functional steps and/or the respective bracket (however inclusion in the instant application would result in election by original presentation). Therefore, Applicant’s arguments have been fully considered but are not persuasive and additionally do not address the new grounds of rejection and/or interpretation below necessitated by Applicant’s amendments.
Drawings
Figures 2-5 in the drawings filed 10/22/25 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: In the specification filed 10/22/25, the first paragraph recites the priority data to the parent PCT application. However, an incorporation by reference of said PCT application is improper at this time as it incorporates new matter into the specification. Accordingly, the recitation of incorporation by reference should be removed.
Appropriate correction is required.
Claim Objections
Claim 6 is objected to because of the following informalities: the term “a rectangular” should read “a rectangle”. Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 3-5, the claims depend from claim 1, which has been amended to be directed to “a handheld orthodontic ligation instrument”, however, the preamble of claims 3-5 are directed to a “low friction ligation orthodontic instrument”. The claims are indefinite as the preambles do not match that of the base claim and additionally are unclear if the recited preamble intends to attempt to recite additional structure regarding the limitation of “low friction”. As best understood by the Examiner the term “low friction” is not intended to impart any additional structure to the claims as they already recite the low friction material. Clarification is required.
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.
Claim(s) 1, 3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Domrachev (BE1007359 A3).
Regarding the above claims, Domrachev discloses a handheld orthodontic ligation instrument (see Figs. 1-2 or Fig. 3; instrument configured to be used as explained below in a ligation procedure) comprising of a conical shaped handle (A, below; conical at least in part at part C) adapted to be grasped by a user to facilitate both insertion and removal of the instrument from an orthodontic bracket (adapted to be used as such in a ligating procedure as explained below); and a thermoactivated wire (B; portion B meets the broadest reasonable interpretation of the term “wire” as explained above) attached and extending longitudinally from the handle, the thermoactivated wire being formed of a copper-nickel-titanium metal alloy with modified memory characteristics (e.g. a shape memory alloy of the above composition; see Machine Translation, page 1, paragraphs 7, 8, 10-12; page 2, pars. 7-8, 13; page 3, par. 1, 2 and 7); wherein the thermoactivated wire is configured to cooperate with an orthodontic ligature wire and a main orthodontic archwire to provide simultaneous ligation and reduced friction in the orthodontic bracket b generating a free space gap upon activation and subsequent withdrawal of the thermoactivated wire from the orthodontic bracket (configured to be used as such as Domrachev discloses a thin, flexible wire, which can be activated/deactivated to different shapes; accordingly, the device of Domrachev is configured to be used as such with an appropriately sized and shaped, bracket, wire and ligature (not positively recited, required nor a part of the claimed instrument) such that the wire (of either Figs. 1-2 or 3) is configured to be held by the handle and inserted in said bracket while said bracket is ligated, in a first state, then have the state change to generate a free space gap upon the state change and withdrawal therefrom via the handle; the Examiner notes Domrachev teaches all requisite structure to be configured to be used as claimed).
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Domrachev further discloses wherein the thermoactivated wire is flexible (see citations above; super elastic shape memory material; per claim 3); and wherein a cross section of the thermoactivated wire is selected from the group consisting of a circle, a square, a rectangle, a triangle, an oval or a trapezoid (e.g. a circle; per claim 5).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The 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.
Claim(s) 5 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Domrachev.
Regarding claim 5, should Applicant traverse the Examiner’s position above, namely that the thermoactivated wire has a cross section that is circular, the Examiner alternatively notes that such modification would merely involve a change of shape of a known component of the device, which has been held to be within the skill of the ordinary artisan. Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify cross sectional shape of the wire of Domrachev to be a circle, square, rectangular, triangle, oval or trapezoid, as such modification would merely involve a change of shape of a known component of the device, which has been held to be within the skill of the ordinary artisan (see MPEP 2144.04(I) and (IV)(B)).
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Domrachev in view of Dietrich (US 6776615 B2).
Regarding claim 4, Domrachev does not explicitly teach that the thermoactivated wire is polished for reduced surface friction as required.
Dietrich, however, teaches a dental tool with working portions having polished surfaces (compared to roughened surfaces) with decreased friction (see col 2, lines 40-44 and col 4, lines 16-22). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the device of Domrachev to include a polished, low friction surface on a working portion/wire, as taught by Dietrich, as such modification would protect the teeth by reducing the risk of scratching and damage thereto while using the device (see Dietrich, citations above).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD MORAN whose telephone number is (571)270-5349. The examiner can normally be reached Monday-Friday 7 AM-4 PM EST.
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/EDWARD MORAN/Primary Examiner, Art Unit 3772