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
Applicant’s election without traverse of Group I, directed to claims 1-9 in the reply filed on 06/04/2026 is acknowledged.
Newly submitted claims 22-31 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The newly submitted claims are directed to a distinct sub-combination from that of elected original claims 1-9 and would have bee properly restricted had they been presented originally.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 22-31 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added 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.
Response to Arguments
Applicant's arguments filed 06/04/2026 have been fully considered but they are not persuasive.
Applicant has argued that the claims are not directly to an abstract idea by asserting that the rejection is an overgeneralization, however this is not persuasive as the actual method steps recited are comparing widths which is only mentally comparing width data that would be reference by a person’s observations, determining/judging if a width data passes some other mentally held measurement data, and instructing a person to do some action which does not require actually performing the bonding. Applicant has argued that the claimed limitation are “utilized in a hands-on clinical procedure” however there are no claim limitations of any physical actions in any procedure being performed and the steps including comparisons of widths are only observations.
Applicant has argued that claim 1 provides for an improvement in a technology of technical field, however there is not improvement that could reasonably be asserted beyond the organizing of a person’s method thoughts which is not an improvement in a technology or field itself.
Applicant argues that the use of clinical judgement is a technically specific determination, however this is not persuasive as a judgement is a mental process tied to a person’s mind.
Applicant argues that the instruction is directing physical bonding, however the claims do not require any actual physical bonding only an instruction which is a mental process.
As such, and as expanded upon in the following 101 section, the rejected claims 1, 4, 5, 7-9 and 21 are only directed to an abstract idea.
Applicant has argued that Piekarsky discloses other method steps and directions however this is does not remove the cited portions which teach the particular claim limitations.
Applicant asserts that Piekarsky does not compare a width reference to a first and second exposed surface and determine if those exposed surfaces provide adequate surface to successfully directly bond an orthodontic wire, however this is not persuasive as Piekarsky is cited for the comparison of a width reference for at least a first and second exposed lingual tooth surface that is determined to provide adequate surface for successfully direct orthodontic wire bonding with adhesive as Piekarsky does disclose that after the width of the lingual surfaces is measured the wire is cut to length and then directly bonded to the lingual surfaces by an adhesive, if they had not be determined to provide adequate surface for a successful direct bonding then the wire would not have been bonded to those surfaces and as Piekarsky does show the method including the practitioner performing the steps of directly bonding the wire to the measured first and second lingual surfaces it thus requires the were determined to have such adequate surface for the disclosed direct bonding.
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, and 21 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 using a human observations alone, performing mental evaluations and judgments, and mentally making opinion based decisions 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, making a mental determination of a personal opinioned judgement based of information and then making a mental determination to continue with a process that is all capable of being performed in the mind. 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 similar to those examples of 2106.04(a)(2)III(a), (a claim to identifying head shape and applying hair designs, which is a process that can be practically performed in the human mind, In re Brown, 645 Fed. App'x 1014, 1016-17 (Fed. Cir. 2016)).
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, and claim 21 only reciting a judgement “determining an estimate” which is a mental process; none of which are significantly more than an abstract idea of a mental process,
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 1-9 and 21 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.
The term “adequate” in claim 1 is a relative term which renders the claim indefinite. The term “adequate” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what amount of surface would be considered to be “adequate” surface which would result what would be considered “successfully bonded” orthodontic wire. For purposes of examination any prior art the provide for actually bonding a wire directly will be deemed to provide for the claim limitation.
Any claim depending from an indefinite claim is itself indefinite as including the same indefinite limitation of its parent claim.
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);
determining if one of the first exposed surface and the second exposed surface provide adequate surface area to successfully bond an orthodontic wire to one of the first exposed surface and the second exposed surface during a direct bonding technique (Figs. 9-12 showing an orthodontic wire being directly bonded to the exposed lingual side of a first and second tooth, thus by being actually performing the placement and direct bonding the surfaces where determined to be adequate to successfully bond the wire because the dentist actually performed the direct bonding to the surfaces),
and instructing a dental professional to directly bond an orthodontic wire to one of the exposed first surface and the second exposed surface of first and second teeth with an adhesive to modify alignment of the first tooth relative to the second tooth ( Figs. 2/3 showing the wire being directly bonded to the teeth by adhesive 40, column 3 lines 43-46 the dental professional having been instructed by their decision to perform the bonding including 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.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Piekarsky et al. (US 4,533,320) in view of Sporbert et al. (US 2005/0271996 A1).
Regarding claim 8, Piekarsky discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose determining an estimate of an amount of time the patient is going to be under treatment with the direct orthodontic wire bonding treatment.
However Sporbert discloses a methods for evaluation of orthodontic care (title and abstract) including providing a step of evaluating treatment methods for an estimated time duration for the treatment (paragraph [0019], [0022] disclosing the determining of a treatments estimated duration time).
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 a step of determining an estimate of an amount of time the patient is going to be under a given treatment as taught by Sporbert into the method of direct orthodontic wire bonding treatment as taught by Piekarsky for the purpose of providing for quality improvement of treatment planning and improvements in benchmarks for care as taught by Sporbert (paragraph [0016] all).
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 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 MATTHEW P SAUNDERS whose telephone number is (571)270-3250. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edelmira Bosques can be reached at (571) 270-5614. 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 08/18/2026
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772
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