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 .
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.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-3, 6-10 and 12 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 1 positively recites elastic force acts on the teeth, the orthodontic element partially covers the abnormal teeth and the orthodontic element does not cover normal teeth. Therefore, the scope of the claim encompasses a human organism. Claims 2-3, 6-10 and 12 are dependent on claim 1 and therefore also encompass a human organism.
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 1-3, 6-10 and 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.
Regarding claim 1, the subject matter not described or shown in the application as originally filed includes: “the orthodontic element does not cover normal teeth between… the abnormal teeth”.
There are two parts of the specification that applicant may believe provides support for this limitation.
First (emphasis added):
Of course, there may be multiple fixing elements 1 provided. For example, if the abnormal teeth 3 are not adjacent to each other, in order to avoid burdening the normal teeth 3 and causing discomfort to the patient, the multiple fixing elements 1 are spaced apart, or the orthodontic element 2 can cross some of the fixing elements 1 without being connected to them. That is, the fixing element 1 is only attached to the abnormal tooth 3, and the orthodontic element 2 is connected to the abnormal tooth 3 through the fixing element 1 to achieve an orthodontic
This only sets forth that fixing elements can be spaced and the orthodontic element can be connected only to abnormal teeth. This does not disclose a single orthodontic element that partially covers abnormal teeth and does not cover a normal tooth between the abnormal teeth.
Second (emphasis added):
When the multiple abnormal teeth 3 are not adjacent to each other, the dental braces do not need to cover normal teeth 3 between the multiple abnormal teeth 3, greatly improving the accuracy of correction and patient comfort.
This is a broad statement but does not disclose a single orthodontic element that partially covers abnormal teeth and does not cover a normal tooth between the abnormal teeth. Later in the specification, there is disclosure for how this can occur (emphasis added):
Similarly, one or more orthodontic elements 2 can be provided for replacement. For example, if there are two parts requiring correction in the oral cavity, one with two abnormal teeth and the other with three abnormal teeth, two sets of dental braces can be provided, greatly improving the patient's experience.
This makes it clear that the adjacent tooth can be uncovered by using more than one orthodontic element. This does not disclose a single orthodontic element that partially covers abnormal teeth and does not cover a normal tooth between the abnormal teeth
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 1-3, 6-10 and 12 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, lines 7-9 recites “the first connector”. However, each of the plurality of fixing elements is claimed as having a first connector”, thereby requiring a plurality of first connectors. It is unclear if “the first connector” is referring to only one of the first connectors or all of them. If only one is being referred to, it is unclear if the same one is referred to with each recitation of “the first connector”.
Regarding claim 1, it is unclear what is meant by “the each fixing element”. It is unclear if this is meant to read “each of the fixing elements” or something else. This is made more unclear since the first connector is previously claimed as only adapted to “the first connector” which may be interpreted as only a single first connector of a single fixing element.
Claim 1 is indefinite since portions of the claim contradict each other, thereby making the scope of the claim unclear. Claim 1 recites that each fixing element has a first connector.
Regarding claim 1, the terms “normal” and “abnormal” are indefinite in that they are subjective terms and it is unclear what is considered “normal”.
Claim Rejections - 35 USC § 103
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 1-3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Shivapuja et al. (US 20190388189, hereinafter Shivapuja) in view of Huang (US 20180325626).
Regarding Claim 1, Shivapuja discloses dental braces (figures 1-7), comprising:
a plurality of fixing elements (B; figures 42 and 44-45)¸ wherein each fixing elements is configured to attach to a surface of a respective of abnormal tooth (figure 42) and provided with a first connector (the outer surface of B; figures 42 and 44), wherein the first connector is a groove (figure 42 depicts a groove within B), and a wall of the groove (figure 42); and
an orthodontic element (portion of C that at least partially covers a given tooth; alternatively, entire element C; figure 44-45) provided with a second connector (the space in which C goes around B when placed on the tooth; figure 44) adapted to the first connector (figure 44-45; paragraph [0237]), wherein the second connector is a protrusion (see illustrated figure 44) adapted to the groove of the first connector and engages with the first connector to form an interference fit (figure 44; paragraph [0237]-[0238]),
wherein the orthodontic element is detachably connected to the each fixing element (paragraph [0014], [0239]);
an elastic force of the orthodontic element acts on the plurality of abnormal teeth to control movement of the plurality of abnormal teeth (paragraph [0014], [0238]-[0239]);
the orthodontic element partially covers the plurality of abnormal teeth to control movement (as seen by dotted line representing “C” in figures 44 and 45, element C ends near bottom edge of “B” and partially covers the teeth); and
the orthodontic element does not cover normal teeth between or adjacent to the abnormal teeth (the teeth of the patient are not positively claimed as part of the claimed invention and this is an intended use of the device; the device may be used on teeth of a patient where no teeth are considered “normal” either because they all require movement to a “normal” position, or all have another type of abnormality, such as color, size, shape, texture).
PNG
media_image1.png
524
528
media_image1.png
Greyscale
Shivapuja discloses a cross-sectional width of the groove adjacent to a bottom of the groove is greater than a cross-sectional width of the groove adjacent to an opening of the groove (see annotated portion if figure 14 below).
PNG
media_image2.png
710
684
media_image2.png
Greyscale
Shivapuja does not disclose a wall of the groove is provided with a rough surface or multiple corrugations.
Huang discloses an orthodontic bracket (figure 6), a groove (figure 6) and a wall (figure 6) of the groove is provided with a rough surface (paragraph [0032]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the wall of Shivapuja to have a rough surface as taught by Huang in order to grip the aligner easier.
Regarding Claim 2, Shivapuja discloses the orthodontic element is further provided with an accommodating chamber (see illustrated figure 44), wherein the accommodating chamber covers at least part of the respective abnormal tooth (figure 44), and at least partially covers each fixing element (figure 44), and the shape of the side of the accommodating chamber facing the abnormal tooth corresponds to the shape of the outer surface of the abnormal tooth (figure 44); and wherein the second connector is located in the accommodating chamber (figure 44).
Regarding Claim 3, Shivapuja discloses wherein the accommodating chamber completely covers the at least one fixing element (see illustrated figure 44).
Regarding Claim 10, Shivapuja discloses the orthodontic element provided with the second connector is integrally formed by three-dimensional (3D) printing (abstract; figures 42 and 44-45). The claimed phrase “integrally formed by three-dimensional (3D) printing” is being treated as a product by process limitation, that is, that the orthodontic element integrally formed. As set forth in MPEP 2113, product by process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113.
Claims 6-9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Shivapuja et al. (US 20190388189, hereinafter Shivapuja) in view of Huang (US 20180325626) and further in view of Lai et al. (US 20230380939, hereinafter Lai).
Regarding Claim 6, Shivapuja as modified discloses the bracket of claim 1. Shivapuja does disclose the groove of the first connector (figure 42 depicts a groove which is the slot D fits into) that is located at the top of the orthodontic appliance/bracket (figures 42 and 44), however, Shivapuja does not disclose the groove is provided with at least two recesses.
Lai, in another embodiment discloses the first connector comprises a groove (150a and the groove on 101a; figure 6) the groove is provided at least two recesses (figures 5-8).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the groove of the first connector with one recess of Shivapuja to have two recesses as taught by Lai in order to apply the desired forces on the teeth. Therefore, the projection of Shivapuja would be modified by Nicholson to interact with the grooves and provide the different forces on the teeth.
Regarding Claim 7, Shivapuja as modified discloses the bracket of claim 6. Shivapuja does not disclose the at least two recesses intersect.
Lai discloses the at least two recesses intersect (figure 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the first connector of Shivapuja to have two recesses that intersect as taught by Lai in order to apply the desired forces on the teeth.
Regarding Claim 8, Shivapuja as modified discloses the bracket of claim 6. Shivapuja does not disclose a first one of the at least two recesses has a depth greater than a depth a second one of the at least two recesses.
Lai discloses a first one (150a; Figures 5-6) of the at least two recesses has a depth greater than a depth a second one (the indentation on 101a; figures 5-8) of the at least two recesses (figure 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the first connector of Shivapuja to have two recesses that intersect as different depths as taught by Lai in order apply the desired forces on the teeth.
Regarding Claim 9, Shivapuja as modified discloses the bracket of claim 1. Shivapuja does not disclose the groove of the first connector is at least partially curved.
Lai discloses the groove of the first connector is at least partially curved (Figure 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the groove of Shivapuja to be partially curved as taught by Lai in order to hold the archwire or connector/appliance in place more securely.
Regarding Claim 12, Shivapuja as modified discloses the bracket of claim 1. Shivapuja discloses the groove of the first connector is provided with one longitudinal recess (figures 42-44).
Shivapuja does not disclose the groove of the first connector is provided with at least one transverse recess and at least two longitudinal recesses and the at least two longitudinal recesses intersect the at least one transverse recess.
Lai discloses the groove of the first connector (figure 6) is provided with at least one transverse recess (151a, Figure 6) and at least two longitudinal recesses (upper and lower recesses along axis “A” in Figure 6) and the at least two longitudinal recesses intersect the at least one transverse recess (figure 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the groove of Shivapuja to have the first connector is provided with at least one transverse recess and at least two longitudinal recesses and the at least two longitudinal recesses intersect the at least one transverse recess as taught by Lai in order to hold the aligner in place more securely and/or provide desired forces.
Response to Arguments
Applicant's arguments filed 6/11/2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art does not disclose the device not covering normal teeth between abnormal teeth. The teeth of the patient are not positively claimed as part of the claimed invention and this is an intended use of the device; the device may be used on teeth of a patient where no teeth are considered “normal” either because they all require movement to a “normal” position, or all have another type of abnormality, such as color, size, shape, texture).
Applicant argues that the device does not partially cover abnormal teeth. The Examiner respectfully disagrees. This is seen by dotted line representing “C” in figures 44 and 45, element C ends near bottom edge of “B” and partially covers the teeth. Furthermore, the claim does not require “only” partially covers.
Applicant argues that Huang discloses roughening attachment to increase frictional interaction with an aligner and not roughening groove. However, in Shivapuja, the groove is what engages the aligner and one of ordinary skill in the art would therefore be motivated to roughen this surface.
Applicant argues the modification in view of Lai. These arguments are moot given that the rejection above sets forth that Shivapuja teaches the groove cross-sectional shape as claimed.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, both the groove of Shivapuja and the groove of Lai are for securely receiving an attachment. Even though one is an archwire and the other is a projection, both elements need to be securely attached to the bracket. One of ordinary skill in the art would find it obvious to use the teaching of Lai to modify Shivapuja.
Shivapuja discloses that the divot anchors may include a depression, channel, groove, or notch providing an attachment point for the aligner (paragraph 0010) and modifying the shape as set forth in the previous rejection or the current rejection would destroy Shivapuja for its intended purpose.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC J ROSEN whose telephone number is (571)270-7855. The examiner can normally be reached Monday-Friday 930am-6pm.
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, Marivelisse Santiago-Cordero can be reached at (571) 272-7839. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC J ROSEN/Supervisory Patent Examiner, Art Unit 3772
Prosecution Insights