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 .
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 1-8 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.
With regard to Claim 1, the newly amended limitation requiring “positioning surfaces connected to the adhesion zone by at least one arm” and that the “positioning surfaces being labial or lingual positioning surfaces” is not disclosed in the specification or shown in the drawings. The feature of “at least one arm” (23) is only seen in Figures 1-4 in which a labial positioning surface (22) is disclosed (see [0024-27]). The embodiment of Figures 5-7, which discloses the lingual positioning surface (24) does not include an arm (see [0029-0030]). Therefore, the arm feature with the lingual positioning surface is not disclosed. Additionally, the limitation “unique positioning guide defining a single, unambiguous placement of the retainer” is not disclosed in the specification.
All claims not specifically addressed above are rejected based on their dependency on Claim 1.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 and 8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kurz (US 4,413,978).
Regarding Claim 1, Kurz discloses a dental retainer (Figures 1-2, 10) configured to be applied on the lingual surface of a predetermined number of teeth of a dental arch (abstract), comprising an adhesion zone (area of 10 that contacts the lingual surface of the teeth) anatomically configured to adhere to the lingual surface (as seen in Figure 1). The dental retainer of Kurz is provided with an integrated positioner (see annotated Figure 2 below) comprising positioning surfaces (see annotated Figure 2 below) connected to the adhesion zone by at least one arm (see annotated Figure 2 below) and positioned at a distance from the adhesion zone (as seen in Figure 2, the arm is adjacent but distanced from the adhesion zone), the positioning surfaces being anatomically configured to come into contact with the respective teeth of the dental arch outside the adhesion zone (positioning surfaces contact most posterior tooth as seen in Figure 1 which is outside of the adhesion zone as seen in annotated Figure 2 below), and the positioning surfaces are labial or lingual (one surface is labial and one is lingual) positioning surfaces that form a unique positioning guide defining a single, unambiguous placement of the retainer (as the positioner can only be positioned in one position it would be considered unique) modeled on the anatomical conformation of the affected dental arch (as seen in Figure 1). Please note: as no structure has been assigned to the arm, the examiner has interpreted this element broadly as the portion of the retainer extending between the adhesion zone and reaching to the lingual positioning surface.
Regarding Claim 2, Kurz discloses the dental retainer according to claim 1 and further discloses that the adhesion zone is formed by surfaces connected to each other by connecting bridges (see annotated Figure 2 below) also anatomically configured to adhere to the surface of the teeth on which the dental retainer is intended to be applied (see Figure 1).
Regarding Claim 3, Kurz discloses the dental retainer according to claim 1 and further discloses that the adhesion zone is formed by surfaces connected to each other by connecting bridges (see annotated Figure 2 below) also anatomically configured to adhere to the surface of the teeth on which the dental retainer is intended to be applied (see Figure 1) and that it consists of a single element (as seen in Figure 2), in which the surfaces that define the adhesion zone and the connecting bridges are made of the same material (as described in Column 1, lines 40-42).
Regarding Claim 4, Kurz discloses the dental retainer according to claim 1 and further discloses that the adhesion zone has a plurality of openings (as the retainer 10 is inserted into the mouth and over the teeth, the teeth would sit in the plurality of openings formed in the adhesion zone).
Regarding Claim 5, Kurz discloses a dental retainer according to claim 1 and further discloses that the positioning surfaces are labial positioning surfaces (as seen in annotated Figure 2 below) connected to the adhesion zone by means of respective arms (as seen in annotated Figure 2 below).
Regarding Claim 6, Kurz discloses a dental retainer according to claim 1, where the positioning surfaces are labial positioning surfaces (as seen in annotated Figure 2 below) connected to the adhesion zone by means of respective arms (as seen in annotated Figure 2 below) and the arms are capable of being removed from the retainer (the arms and positioners of the present invention are capable of being cut and removed in the same manner as that of the present invention).
Regarding Claim 8, Kurz discloses a dental retainer according to claim 1 and further discloses that the positioning surfaces are surfaces defined by lingual appendages (lingual side of the positioner forming the lingual positioning surface as seen below) formed on the sides of the adhesion zone.
PNG
media_image1.png
360
504
media_image1.png
Greyscale
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kurz in view of Chana et al. (US 2019/0167383 A1, hereinafter “Chana”).
Regarding Claim 7, Kurz discloses the retainer of Claim 1 substantially as described above, but does not disclose that the arms are provided with an eyelet. In the same art of intra-oral appliances, Chana teaches an arm (Figure 3, 16) attached to a retainer (10) with an eyelet (18). It would have been obvious to one having ordinary skill in the art to provide an eyelet on the arm of the retainer of Kurz as is taught by Chana in order to grip the retainer structure with a dental instrument when needed.
Response to Arguments
Amendments to the Claims submitted on March 9, 2026 are sufficient to overcome the Claim objections and 35 U.S.C. 112(b) rejections.
Applicant's arguments filed March 9 have been fully considered but they are not persuasive. The prior art of Kurz is found to read on amended claims 1-6 and 8 as described above. Amended Claim 7 is rejected as an obviousness rejection in view of Kurz as modified by Chana.
Regarding the applicant’s argument that Kurz fails to show an integrated positioner, the examiner respectfully disagrees. The parts of Kurz are integrated with one another (i.e. linked or coordinated) as they work together to form the retainer. As no special definition of the term “integrated” is provided by the applicant in the specification, the prior art of Kurz is found to meet this limitation.
Regarding the applicant’s argument that Kurz lacks “anatomically shaped positioning surfaces” the examiner respectfully disagrees and finds that as the retainer of Kurz is shaped to fit the lingual side of the teeth, it would be anatomically shaped. Please note: the applicant argues that the claims require “positioning surfaces anatomically shaped to specific teeth” where the claim actually requires that the positioning surfaces are “anatomically configured to come into contact with the respective teeth of the dental arch”.
Regarding the applicant’s argument that the arms of Kurz do not connect to the adhesion zone as is now required, the examiner respectfully disagrees as the interpretation of Kurz as provided above meets this limitation.
Regarding the applicant’s argument that lingual appendages shaped to engage anatomical undercuts are not shown in Kurz, the examiner does not find this as a claimed limitation in the present set of claims.
Regarding the applicant’s argument that the claimed invention solves a different problem and operates differently than the cited invention, the applicant is reminded a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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.
/CHRISTINE L NELSON/Examiner, Art Unit 3772 /EDWARD MORAN/Primary Examiner, Art Unit 3772
Prosecution Insights