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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-9, drawn to a method of assessing a patient for wire bonding, classified in A61C7/00.
II. Claims 10-16, drawn to an assessment tool for whether a orthodontic wire could be bonded to a tooth, classified in A61C7/02.
III. Claims 17-20, drawn to a measurement tool to measure distances between adjacent teeth, classified in A61C19/04.
The inventions are independent or distinct, each from the other because:
Inventions I and II/III are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the process as claimed can be by hand.
Inventions II and III are directed to related distinct products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed The inventions have different modes of operation as one is for assessing whether a lingual side of a tooth can bond a wire and the other is for measuring distances between teeth. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one invention would not likely be applicable to another invention; and/or the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Dennis Butler on 12/22/2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-9. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 4, 5, 7, 8, 9 are rejected under 35 U.S.C. 101 because the claimed inventions are directed to the judicial exception of an abstract idea without significantly more. The claim(s) recite(s) gathering information and making a decision based on the gathered information. This judicial exception is not integrated into a practical application because it only recites mental process limitations of comparing information of an observation of a first lingual side of a tooth to a width reference which can just being a mental width reference and an observation of a second lingual side of a tooth to the same mental width reference and then making a mental determination to continue with a process, there is no recitation of the method actually doing any direct bonding but only the idea of determining and instructing based on a mental decision. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are only recited mental processes.
The dependent claims also fail to recite additional elements that are sufficient to amount to significantly more than the judicial exception because claim 4 only recites the source of the information being an image with a reference mark which is a generic image of a patient, claim 5 further only recites the mental process of comparing a mental distance reference to an observation, claims 7 and 8, are only reciting a mental processes of determining whether a reference is flat, and claim 9 only recites the mental process of measuring and doing mental addition, none of which are significantly more than an abstract idea of a mental process.
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 2, 5, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Piekarsky et al. (US 4,533,320).
Regarding claim 1, Piekarsky discloses method for assessing whether a patient is eligible for a direct orthodontic wire bonding treatment to align the patient’s teeth including a first tooth and a second tooth (Fig. 1-3 showing the wire is direct bonded to the teeth), wherein the first tooth is adjacent to the second tooth (title, column 1 lines 4- disclosing a method of positioning a retainer and thus assessed as eligible), the method comprising:
comparing a width reference to a first exposed surface on a lingual side of the first tooth(Column 3 lines 38-44 one of the multiple front teeth being a first tooth that is referenced by the brass wire being laid across it) ;
comparing the width reference to a second exposed surface on a lingual side of the second tooth (Column 3 lines 38-44 one of the multiple front teeth being a first tooth that is referenced by the brass wire being laid across it thus making a reference of the length of the teeth to be treated);
and instructing a dental professional to bond an orthodontic wire to the first and second teeth to modify alignment of the first tooth relative to the second tooth (column 3 lines 43-46 the dental professional having been instructed by the reference length taken forms the orthodontic wire, column 4 lines 15-43 disclosing the bonding of the wire which by being bonded directly to the teeth will modify the alignment of teeth that would move away from their retained position).
Regarding claim 2, Piekarsky further discloses wherein the width reference is comprised of a first evaluation paddle having a first width, the first width being positioned against the first exposed surface of the first tooth when comparing the width reference to the first exposed surface (Column 3 lines 38-44 disclosing a reference piece of a brass wire that is placed against the tooth and the end of the wire against the tooth would read on a paddle).
Regarding claim 5, Piekarsky further discloses comparing a distance reference to a tooth gap measured between a distal edge of the first tooth and a mesial edge of the second tooth (Column 3 lines 38-44 the distant reference of the brass wire laid across multiple front teeth and thus across the tooth gap).
Regarding claim 9, Piekarsky further discloses measuring a distance between adjacent edges of six front teeth of the patient’s teeth and adding the measured distances (column 3 lines 38-41 disclosing the length is added to the brass wire that is used to measure adjacent edges and widths from the canine or canine thus being 6 teeth).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Piekarsky et al. (US 4,533,320) in view of Adriana et al. (Br 102020018768 A2).
Regarding claim 3, Piekarsky discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose wherein the evaluation paddle is a portion of an assessment tool that have a first let and a second leg and the first evaluation paddle extending from a distal end of the first leg.
However Adrianna discloses an assessment tool for measuring tooth widths (title and abstract) including two legs (fig. 4 leg 5 vs leg 7) and a first evaluation paddle extending from the first leg (Fig. 5 element 12).
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 use of an evaluation paddle and assessment tool as taught by Adrianna into the method of measuring as taught by Piekarsky for the purpose of providing a measurement tool that would provide dimension measurements with ease and to provide greater acuity at taught by Adrianna (paragraph [51] lines 1-4).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Piekarsky et al. (US 4,533,320) in view of Park et al. (KR 20050122303 A).
Regarding claim 4, Piekarsky discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose wherein the width reference is comprised of a reference mark on an image of the first exposed surface.
However Park discloses a method of using a scanning system to measure lingual surface for orthodontic treatments (title and page 2 lines 10-13), with a step of taking images of lingual surface of teeth (page 14 lines 27-29 disclosing scanning of lingual surfaces, page 1 lines 5-7 disclosing extracting images).
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 use of a scanner to make an image of a lingual surface as taught by Park into the method of measuring and comparing as taught by Piekarsky for the purpose of increasing accuracy of the measuring at taught by Park (page 2 lines 28-31).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Piekarsky et al. (US 4,533,320) in view of Womack et al. (US 6,413,086).
Regarding claim 4, Piekarsky discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose wherein the distance reference is comprised of a spike with a pair of points, the points positioned on the distal edge of the first tooth and the mesial edge of the second tooth during use.
However Womack discloses a method of interdental space detection (title and abstract) for use in orthodontic treatment (column 1 lines 11-16) where an interproximal distant reference is comprised of a spike with a pair of points (fig. 3 spike 48 with points at 46) that are positioned on the distal edge of a first tooth and a mesial edge of a second tooth during use (Fig. 4)
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 use of a distance reference comprised of a spike with a pair of points, the points positioned on the distal edge of the first tooth and the mesial edge of the second tooth during use as taught by Womack into the method of measuring and comparing as taught by Piekarsky for the purpose of providing accurate measuring of interproximal gaps or spaces for orthodontic practice at taught by Womack (column 1 lines 13-20).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Piekarsky et al. (US 4,533,320).
Regarding claim 7, Piekarsky discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose where if the width reference did not sit flat again the tooth then determining the first tooth is blocked out.
However it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have determining the first tooth was blocked out if the width reference when placed against the teeth would not have laid flat against one of the teeth as if the wire was not in contact it would have been blocked out from the reference wire and thus Piekarsky discloses that the wire would need to be bent to reach such teeth (column 3 lines 41-43) and such determining a tooth would be blocked out would depend on the patients anatomy. Thus these parameters are deemed matters of design choice, well within the skill of the ordinary artisan, obtained through routine experimentation in determining optimum results of placing a bonding wire on patient’s teeth.
Further as the language of this claim is a contingent limitation by reciting “if the width does not sit flat” which, if the condition is not satisfied the recited determining, would not need to be carried out for the prior art to satisfy the claim . See MPEP 2111.04 II.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Piekarsky et al. (US 4,533,320) in view of Raslambekov et al. (US 11,166,787 B1).
Regarding claim 8, Piekarsky discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose determining the first tooth is blocked out if the width reference is greater than the first exposed surface when the width reference is a reference mark on an image of the first exposed surface.
However Raslambekov discloses a method determining if a 3d image of a digital tooth surface has a width reference mark that is wide enough to allow bond (title and abstract) and determines a tooth is blocked out or excluded from use if a bracket that would be attempted to be bonded thereto would contact adjacent teeth including on lingual surfaces (column 2 lines 28-40, and lines 55-60).
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 determining the first tooth is blocked out if the width reference is greater than the first exposed surface when the width reference is a reference mark on an image of the first exposed surface as taught by Raslambekov into the method of measuring and comparing as taught by Piekarsky for the purpose of providing accurate orthodontic treatment planning taught by Raslambekov (column 2 lines 16-20).
Further as the language of this claim is a contingent limitation by reciting “if the width reference is greater” and as such, if the condition is not satisfied the recited determining, would not need to be carried out for the prior art to satisfy the claim. See MPEP 2111.04 II.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form PTO-892.
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.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached at (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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/M.P.S/Examiner, Art Unit 3772 02/21/2026
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772