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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) and 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application Nos. 62/648,229; 62/522,847; and 15725430, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The applications fail to provide support for the limitation of sending a dental impression kit with different sized trays, and as such the earliest priority date provided to the instant claims is 04/27/2018.
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 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kitching et al. (US 2008/0305454 A1) in view of Tchouangang et al. (US 2011/0183293 A1).
Regarding claim 18, Kitching discloses a method comprising of sending a dental impression kit to a patient(paragraph [0040] all, disclosing taking molds/impressions of a patient’s teeth and thus the molds/impressions inherently being present would have been sent to the location of where they exist for use),
providing by an application server to a provider computing device associated with a provider treatment plan data indicative of a treatment plan for moving one or more teeth of the patient (Fig. 4 element 304-308 are treatment plans that have been made and element 312 they are sent to a clinician for interaction and review, paragraph [0008] lines 1-20 disclosing the steps are performed on servers and sent to computers),
wherein at least some of the treatment plan data is provided in an editable field of a user interface (paragraph [0044] disclosing the plan has editable fields for the clinician to change the final position of the teeth);
receiving, by the application server from the provider computing device, a communication approving the treatment plan (Fig. 3c element 266 the revieing and receiving of an acceptance/approval for treatment) ; and
manufacturing a plurality of dental aligners based on the treatment plan and the communication, the plurality of dental aligners being specific to the patient and being configured to reposition one or more teeth of the patient (Fig. 3c element 268 aligners have been manufactured and sent to the patient, paragraph [0096] lines 11-16).
Kitching discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose where the dental impression kit including a plurality of dental trays of different sizes.
However, Tchouangang discloses a dental impression supply kit (title and abstract disclosing the kit is for use by a patient without visiting a dentist), the kit providing a set of upper and lower dental trays (Fig. 1 elements 5 and 6) and acknowledges and discloses that different patients were known required different size dental trays in order to take proper at impressions (Paragraph [0075] lines 4-6 disclosing providing a "number sufficient to accommodate size differences” ).
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 kit having trays of different sizes as taught by Tchouangang into the impression trays/molds as taught by Kitching for the purpose of ensuring the kit has the sufficient sizes and trays based on need as taught by Tchouangang (paragraph [0075] lines 4-6).
Regarding claim 19, Kitching further discloses wherein the treatment plan data includes a characteristic associated with one or more dental impressions, and wherein the characteristic is provided in the editable field (paragraph [0044] disclosing the plan has editable fields for the clinician to change the final position of the teeth which is a plan associated with the initial position of the teeth in the dental impression).
Regarding claim 20, Kitching further discloses receiving, by the application server, images of a mouth of the patient captured by a user device of the patient and uploaded to the application server which are provided to the computing device (Fig. 9 element 600 uploaded images of the teeth, , paragraph [0038] lines 28-30, a use’s device that is made to be used by the patient takes images of the patient’s teeth, Fig. 9 showing images 600 are provided to the computing device by being loaded into the computer in 600-606);
wherein the communication is indicative of the patient being considered fit for treatment(Fig. 3c element 266 the revieing and receiving of an acceptance/approval of fitness for treatment).
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 1, 7, 11-13, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,992,388. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 11,992,388 is a species to claims 1, 7, 11-13, and 18-20 of the instant application.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,992,388. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of U.S. Patent No. 11,992,388 is a species to claim 2 of the instant application.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,992,388. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of U.S. Patent No. 11,992,388 is a species to claim 3 of the instant application.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,992,388. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of U.S. Patent No. 11,992,388 is a species to claim 4 of the instant application.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,992,388. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of U.S. Patent No. 11,992,388 is a species to claim 5 of the instant application.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,992,388. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of U.S. Patent No. 11,992,388 is a species to claim 6 of the instant application.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 11,992,388. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of U.S. Patent No. 11,992,388 is a species to claim 8 of the instant application.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 11,992,388. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of U.S. Patent No. 11,992,388 is a species to claim 9 of the instant application.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,992,388. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of U.S. Patent No. 11,992,388 is a species to claim 14 of the instant application.
Claims 15 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,992,388. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of U.S. Patent No. 11,992,388 is a species to claim 15 and 16 of the instant application.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,992,388. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 11,992,388 is a species to claim 17 of the instant application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form PTO-892.
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/M.P.S/Examiner, Art Unit 3772 12/30/2025
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772