Status under America Invents Act
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.
Rejections based on Prior Art
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.
Claims 2-10 are rejected under 35 U.S.C. 103 as being unpatentable over Portalupi (US 10,383,706) in view of Phan et al (US 6,309,215).
Portalupi discloses a method/system for placing orthodontic attachments on patient’s teeth that includes a separate preparation tray having an opening corresponding to a tooth preparation tray/etching stencil (Fig 1, step 110; “the etching stencil is fabricated in form of a tray, which is similar in shape to convention teeth aligners” (column 14, lines 54-56) wherein the etching stencil includes multiple openings to facilitate accurate etchant application to a patient’s teeth (column 14, lines 60-62)). The Portalupi etching/preparation stencil/tray further includes a molded dam (equivalent to applicant’s claimed “gasket”) to facilitate tight adherence of the etching stencil to teeth during etching (column 14, line 56). Portalupi further discloses an attachment delivery tray 106 for the delivery of prefabricated attachments to the prepared teeth 120. The Portalupi system/method differs from applicant’s claimed invention in that prefabricated attachments are delivered in a tray, rather than formed directly on the patient’s teeth. Phan et al, however, for a similar system/method teaches that an alternative to delivering prefabricated attachments to the teeth (Figures 1-13) that the attachments 400 may be formed directly on the patient’s teeth with an attachment forming tray 105 wherein the attachment is cured with a light source 402 (note particularly Figure 14D). Merely substituting an attachment forming tray/method for the prefabricated attachment delivery tray disclosed in Portalupi as taught by Phan et al to be an alternative method for forming attachments would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. Additionally, it is noted that Phan et al teach the use of a series of multiple alignment trays/appliances for successively repositioning the patient’s teeth with the attachment (column 2, lines 14-16; column 3, lines 21-25).
Double Patenting Rejection Withdrawn
The nonstatutory double patenting rejection of claims 1-11 is withdrawn in view of the terminal disclaimer filed August 21, 2025.
Response to Applicant’s Remarks
In the response of August 21, 2025 applicant argues that claims 2-10 depend from claim 1 and consequently should be allowed based on the allowability of claim 1. The examiner notes that claims 2 and 6 are independent claims and that claims 3-5 and 7-10 are dependent on claims 2 and 6. The claims do not depend from claim 1 as asserted. Claims 2-10 have been rejected under 35 U.S.C. 103 and applicant has not addressed the rejection. Accordingly, the rejection is maintained.
Allowable Subject Matter
Claims 1 and 11 are allowed.
Action Made Final
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 Ralph Lewis whose telephone number is (571)272-4712. The examiner can normally be reached Monday-Friday from 9AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Cris Rodriguez, at (571) 272-4964. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/RALPH A LEWIS/Primary Examiner, Art Unit 3772 (571) 272-4712