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 Arguments
Applicant’s arguments, see Remarks filed on 05/18/2026, with respect to claims 1-12 have been fully considered. Applicant’s arguments against the rejections in view of the prior art of record have been fully considered, but are not persuasive.
Upon careful consideration the Examiner respectfully disagrees with Applicant’s assessments that the combination of Connell (US 20210177549 A1), primary reference, and Lv Peijun (US 20160367336 A1) does not disclose the claimed invention.
The Examiner notes that Connell discloses a microstructure that is intended for cleaning, and antibacterial purposes on the surface of a dental article/appliance (Abstract), which could be a permanent dental article, such as periodontal implants, dentures, dental crowns ([0024]). Connel discloses the claimed microstructures formed by laser processing steps ([0036]). Additionally, the Examiner notes that the process encompasses whitening said dental article since it may provide aesthetic appeal by providing color (e.g. whitening) ([0025]). Additionally the cleaning of said article via laser ablation would whiten the article by eliminating any stain.
On the other hand, Lv Peijun discloses a laser processing method for a tooth (see targeted tooth in Figure 2 and [0076]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Connell’s a laser processing method in order to make it a laser processing method for a tooth, since such modification would create the same advantageous results, such as having a surface with increased microorganism (e.g., bacteria) removal when cleaned [0031], in the surface of a tooth.
Connell and Lv Peijun, as combined, discloses a laser processed structure on the surface of the tooth configured to provide a whitening effect detectable by a change in diffusion, hydrophobicity, or a combination thereof (since the laser processed structure taught by the combination has the same parameter/characteristics and structures/patterns as the claimed invention; therefore, it would be capable of being configured to provide a whitening effect detectable by a change in diffusion, hydrophobicity, or a combination thereof). The Examiner further notes that the disclosed ablation of the surface of the tooth would create a pattern that provides a detectable change in reflection, refraction, diffraction, and scattering of an incident light.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the “configured to provide a whitening effect detectable by a change in diffusion, hydrophobicity, or a combination thereof”. There is no disclosed embodiment of the claimed invention, where the laser processed structure on the surface of the tooth is configured to provide a whitening effect detectable by a change in diffusion. e.g. the embodiment disclosed in paragraphs [0006], [00], or [00] discloses “the laser processed structure formed by the laser processing steps can uniformly reflect, refract, diffract, and scatter the incident light … increase the hydrophobicity of the surface of the tooth and relatively enhance the anti-stain effect”. It is clear that the specifications support “configured to provide a whitening effect detectable by a change in hydrophobicity”, but it fails to support “configured to provide a whitening effect detectable by a change in diffusion”.
Claims 2-12 are rejected by virtue of their dependency on claim 1.
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.
Claim(s) 1–12 is/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.
Claim 1 recites “configured to provide a whitening effect detectable by a change in diffusion, hydrophobicity, or a combination thereof”; it is unclear what is meant by a change in diffusion in the context of the other limitations in the claim. It is unclear if said change in diffusion refers to thermal diffusion, light diffusion or molecular/mass diffusion. A review of the Specification appears to indicate that the laser processing steps can uniformly reflect, refract, diffract, and scatter the incident light. For the purpose of examination these limitations are interpreted to require the laser processing steps to formed surfaces that are configured to provide a whitening effect detectable by a change in reflection, refraction, diffraction, and scattering the incident light.
Claims 2-12 are rejected by virtue of their dependency on claim 1.
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 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.
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) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Connell (US 20210177549 A1) in view of Lv Peijun (US 20160367336 A1).
Regarding claim 1, Connell discloses a laser processing method for whitening a dental article (see cleaning of dental article in Abstract and Figure 9). The Examiner notes that the dental article could be a permanent article, such as periodontal implants, dentures, dental crowns (0024) and that the process encompasses whitening said dental article since it may provide aesthetic appeal by providing color (e.g. whitening) ([0025]). Additionally the cleaning of said article via laser ablation would whiten the article by eliminating any stain.
Comprising: a laser processing system, performing the laser processing steps on the surface of the dental article to form a laser processed structure on the surface of the dental article (since the processing could be performed using laser ablation [0036]), wherein the laser processed structure includes a plurality of micro grooves and a plurality of micro bumps between the micro grooves (Figure 4B and [0070]). However, Connell discloses that the dental article could be aligner or retainer), a night guard, a mouth guard, a treatment tray, complete or partial dentures, a tooth cap, or the like ([0025]), but fails to specifically disclose that the dental article is a tooth. Also, it fails to disclose “performing a preliminary inspection on the tooth to obtain dental information and determine whether the tooth is suitable for laser processing steps; selecting a laser processing system according to the dental information, and selecting and loading a laser parameter according to position and degree of processing required on a surface of the tooth” and “performing the laser processing steps directly on the surface of the tooth to form a laser processed structure on the surface of the tooth configured to provide a whitening effect detectable by a change in diffusion, hydrophobicity, or a combination thereof”.
Lv Peijun discloses a laser processing method for a tooth (Abstract), comprising: performing a preliminary inspection on the tooth to obtain dental information and determine whether the tooth is suitable for laser processing steps (since a 3D scan of the target tooth is performed [0009] and automatically generating parameters [0011]); selecting a laser processing system according to the dental information ([0011]), and selecting and loading a laser parameter according to position and degree of processing required on a surface of the tooth (since the parameters include a focal spot diameter and a spot motion path [0011]; additionally, the system is laser tooth preparation CAM software [0013]); and by using the laser processing system, performing the laser processing steps directly on the surface of the tooth to form a laser processed structure on the surface of the tooth (see targeted tooth in Figure 2 and [0076]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Connell’s a laser processing method in order to make it a laser processing method for a tooth, since such modification would create the same advantageous results, such as having a surface with increased microorganism (e.g., bacteria) removal when cleaned [0031], in the surface of a tooth. Also, it would have been obvious to modify Connell’s a laser processing method in order to incorporate the steps of “performing a preliminary inspection on the tooth to obtain dental information and determine whether the tooth is suitable for laser processing steps; selecting a laser processing system according to the dental information, and selecting and loading a laser parameter according to position and degree of processing required on a surface of the tooth”, as taught by Lv Peijun, since such modification would take advantage of a Cam system, which reduces material waste and simulation capabilities to eliminate errors before cutting.
Connell and Lv Peijun, as directly combined above, discloses a laser processed structure on the surface of the tooth configured to provide a whitening effect detectable by a change in diffusion, hydrophobicity, or a combination thereof (since the laser processed structure taught by the combination has the same parameter/characteristics and structures/patterns as the claimed invention; therefore, it would be capable of being configured to provide a whitening effect detectable by a change in diffusion, hydrophobicity, or a combination thereof). The Examiner further notes that the disclosed ablation of the surface of the tooth would create a pattern that provides a detectable change in reflection, refraction, diffraction, and scattering of an incident light.
Regarding claim 2, Connell and Lv Peijun, as combined above, discloses the invention substantially as claimed. Connell discloses wherein the tooth includes an artificial denture ([0024]).
Regarding claim 3, Connell and Lv Peijun, as combined above, discloses the invention substantially as claimed. Lv Peijun discloses wherein the surface of the tooth includes a tooth crown surface (Figure 2 and [0012]).
Regarding claim 4, Connell and Lv Peijun, as combined above, discloses wherein the laser processed structure is formed a top side surface (Connell: Figure 4B and [0070]), but fail to specifically disclose “wherein the laser processed structure is formed on an outer side surface and an inner side surface of the surface of the tooth”.
On the other hand, Lv Peijun further discloses wherein the laser processed structure is formed on an outer side surface, a top side surface and an inner side surface of the surface of the tooth (Figure 2 and [0111]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to further modify Connell’s a laser processing method in order to incorporate the laser processed structure formed on an outer side surface an inner side surface of the surface of the tooth, since such modification would add the advantageous results to the entire tooth, such as having surfaces with increased microorganism removal when cleaned.
Regarding claim 5, Connell and Lv Peijun, as combined above, discloses the invention substantially as claimed. Connell discloses wherein the micro grooves are formed by using a laser beam of the laser processing system (since the processing could be performed using laser ablation [0036]); the micro grooves comprise a plurality of first micro grooves and a plurality of second micro grooves formed on the surface of the tooth, and the first micro grooves interlace with the second micro grooves ([0070]).
Regarding claim 6, Connell and Lv Peijun, as combined above, discloses the invention substantially as claimed. Connell discloses wherein the micro grooves have a pitch between 0.5 μm and 500 μm (see dimensions in table 1).
Regarding claim 7, Connell and Lv Peijun, as combined above, discloses the invention substantially as claimed. Connell discloses wherein the micro grooves have a groove width between 0.5 μm and 500 μm (see dimensions in table 1).
Regarding claim 8, Connell and Lv Peijun, as combined above, discloses the invention substantially as claimed. Connell discloses wherein the micro grooves have a groove depth between 0.5 μm and 500 μm (see dimensions in table 1).
Regarding claim 9, Connell and Lv Peijun, as combined above, discloses the invention substantially as claimed. Connell discloses wherein the micro grooves have a side wall inclined angle between 1° and 80° (see sidewall angles in table 1 and [0051]).
Regarding claim 10, Connell and Lv Peijun, as combined above, discloses the invention substantially as claimed. Connell discloses further comprising forming a micro-nano processed structure on the micro grooves and the micro bumps (since Connell discloses that its microstructured may further comprise nanostructures provided on the microstructured surface [0056]). Even though Connell does not specifically disclose “wherein the micro-nano processed structure includes a plurality of micro-nano grooves and a plurality of micro-nano bumps between the micro-nano grooves”. The Examiner notes that it would have been obvious to one of ordinary skills in the art, to modify Connell/Lv Peijun’s laser processed micro-nano structure to make it comprising a plurality of micro-nano grooves and a plurality of micro-nano bumps between the micro-nano grooves, since such modification would merely require a duplication of parts, which has no patentable significance unless a new and unexpected result is produced (MPEP 2144).
Regarding claim 11, Connell and Lv Peijun, as combined above, discloses the invention substantially as claimed. Connell discloses wherein a groove width of the micro-nano groove is smaller than a groove width of the micro groove (since dimensions of the nanostructures do not exceed 1 micron or are less than 1 micro [0055]).
Regarding claim 12, Connell and Lv Peijun, as combined above, discloses the invention substantially as claimed. Connell discloses wherein the laser processing steps include a combined step for simultaneously forming the laser processed structure and the micro-nano processed structure (since the laser processing step can be done by laser ablation [0036] or laser itching [0121] and the microstructures may further comprise nanostructures provided on the microstructured surface [0055]-[0056]).
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUIS RUIZ whose telephone number is (571)270-0839. The examiner can normally be reached on M-F 8 Am - 5 PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached on (571) 270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Luis Ruiz Martin/
Patent Examiner
Art Unit 3772
/ERIC J ROSEN/Supervisory Patent Examiner, Art Unit 3772
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