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 .
Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1 and 11-13 objected to because of the following informalities:
Claim 1, line 8 change “the concave tooth contacting portion” to “the concave tooth contacting portions”.
Claim 11, lines 2 change “a transparent orthodontic device” to “the transparent orthodontic device”.
Claim 12, remove “,in step S10”.
Claim 13 remove “, in step S10” and “a step S20”.
Appropriate correction is required.
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 9 and 10 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. Claim 9 recites “the tooth side contacting portion comprises a tooth inner side contacting portion but does not comprise a tooth outer side contacting portion” and claim 10 recites ““the tooth side contacting portion comprises a tooth outer side contacting portion but does not comprise a tooth inner side contacting portion”, wherein both claims 9 and 10 depend from claim 1 which recites “a tooth side contacting portion having a tooth inner side contacting portion, and a tooth outer side contacting portion disposed to face the tooth inner side contacting portion with a certain distance of separation”. The original disclosure fails to disclose a device with both of the tooth inner and outer side contacting portion with no tooth inner side contacting portion or tooth outer side contacting portion as recited in claims 9 or 10.
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 4 and 9-10 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 4 recites “the tooth inner side contacting portion and the tooth outer side contacting portion respectively comprise a convex tooth contacting portion and a convex tooth non-contacting portion” it is unclear if applicant is stating that each of the tooth inner and outer side contacting portions each have a convex tooth contacting portion and a convex tooth non-contacting portion or if the tooth inner side contacting portion has a convex tooth contacting portion and the tooth outer side contacting portion has a convex tooth non-contacting portion. For the purpose of examination, the limitation is interpreted as the tooth inner side contacting portion has a convex tooth contacting portion and the tooth outer side contacting portion has a convex tooth non-contacting portion
Claims 9 recites “the tooth side contacting portion comprises a tooth inner side contacting portion but does not comprise a tooth outer side contacting portion.”, it is unclear how the previous claim 1 recites the tooth side contacting portion comprises a tooth inner side contacting portion and the tooth outer side contacting portion and claim 9 discloses there is no tooth outer side contacting portion, is this an additional contacting portion or is the tooth outer side contacting portion optional in claim 1. For the purpose of examination, claim 9 is interpreted as not including an optional tooth inner side contacting portion of claim 1.
Claim 10 recites “the tooth side contacting portion comprises a tooth outer side contacting portion but does not comprise a tooth inner side contacting portion”, it is unclear how the previous claim 1 recites the tooth side contacting portion comprises a tooth inner side contacting portion and the tooth outer side contacting portion and claim 10 discloses there is no tooth inner side contacting portion, is this an additional contacting portion or is the tooth inner side contacting portion optional in claim 1. For the purpose of examination, claim 10 is interpreted as not including optional tooth outer side contacting portion of claim 1,
Claim 9 and 10 recite “a tooth inner side contacting portion” and “a tooth outer side contacting portion”, it is unclear if these are in addition to the tooth inner and outer side contacting portions disclosed in claim 1 or the same. For the purpose of examination, the limitations are interpreted as the same tooth inner and outer side contacting portions than recited in claim 1.
Claim Rejections - 35 USC § 102
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.
(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, 4 and 8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yue et al (US 2022/0192790)
Regarding claim 1, Yue discloses a transparent orthodontic device (par 41 discloses the orthodontic device being made of a polymer material that is in a transparent state), comprising:
a tooth side contacting portion (lateral surface 12 and medial surface 11) having a tooth inner side contacting portion (medial surface 11, see figure 5), and a tooth outer side contacting portion (lateral surface 12) disposed to face the tooth inner side contacting portion with a certain distance of separation (see figure 5 ),
wherein:
each of the tooth inner side contacting portion and the tooth outer side contacting portion(11 and 12) comprises a concave tooth contacting portion (surface facing the teeth of 11 and 12, see annotated figure 5a) , and a tooth non-contacting portion disposed opposite the concave tooth contacting portion (opposite side facing away from the surface in contact with the tooth, see annotated figure 5a), wherein the concave tooth contacting portion is provided with a shape that compliments the side of a natural tooth to allow for close contact with the entirety of the side of the natural tooth (see figure 5)
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Annotated figure 5(a)
each of the tooth inner side contacting portion and the tooth outer side contacting portion comprises a respective lower edge positioned inward of a perpendicular reference line extending through a respective upper edge (see annotated figure 5 (b).
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Annotated figure 5(b)
Regarding claim 4, Yue discloses the tooth inner side contacting portion and the tooth outer side contacting portion respectively comprise a convex tooth contacting portion and a convex tooth non-contacting portion (see annotated figure 5 (a) which shows the convex tooth contacting portion in the inner tooth 11 and figure 5 which shows the outer side tooth contacting portion 12 having a convex non-contacting portion).
Regarding claim 8, Yue discloses the transparent orthodontic device does not comprise a tooth top face contacting portion (see figure 1-2).
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.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yue et al as applied to claim 4 above, and further in view of Coles et al (US 4,253,828).
Regarding claim 5, Yue fails to disclose one of the tooth inner side contacting portions and the tooth outer side contacting portion is provided to serve as an action member that moves a tooth, and the other is provided to serve as a stationary member that holds the tooth in place.
However, Coles teaches any one of the tooth inner side contacting portions and the tooth outer side contacting portion (inner section 12) is provided to serve as an action member that moves a tooth, and the other is provided to serve as a stationary member that holds the tooth in place (col 4, lines 60-68 discloses the use of a displacement force by the surface 22 onto the tooth, wherein the outer section is spaced apart but still used to retain the tooth once it meets the surface of the outer section 11).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Yue to have one of the tooth inner side contacting portions and the tooth outer side contacting portion is provided to serve as an action member that moves a tooth, and the other is provided to serve as a stationary member that holds the tooth in place as taught by Coles for the purpose of displacing the tooth in the desired direction to fix malocclusions.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yue et al as applied to claim 1 above, and further in view of Raby et al (US 2017/0367791).
Regarding claim 6, Yue fails to disclose a tooth top face contacting portion.
However, Raby teaches an orthodontic appliance (100) which is open faced (par 62) and a tooth top face contacting portion (anchors 120 include bands which cover/contact the top face of the tooth, see figures 5A-B) for the purpose of supporting the appliance while engaging and applying force (par 64).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yue to include a tooth top face contacting portion as taught by Raby for the purpose of supporting the appliance while engaging and applying force.
Regarding claim 7, Raby further teaches the tooth top face (120) contacting portion comprises at least one top opening (band 122) for the reasons set forth above.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Yue et al as applied to claim 8 above, and further in view of Kurz (US 4,413,978).
Regarding claim 9, Yue fails to disclose the tooth side contacting portion comprises a tooth inner side contacting portion but does not comprise a tooth outer side contacting portion.
Kurz teaches a tooth inner side contacting portion (arcuate lingual band 10) that is separable and operable without a tooth outer side contacting portion (labial band 14, col 2, lines 7-10 disclose the removal of the labial band to continued use of the lingual band).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify Yue to have Kurz teach a tooth inner side contacting portion (arcuate lingual band 10) that is separable and operable without a tooth outer side contacting portion (labial band 14, col 2, lines 7-10 disclose the removal of the labial band to continued use of the lingual band).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify Yue to have Kurz teaches a tooth inner side contacting portion (arcuate lingual band 10) that is separable and operable without a tooth outer side contacting portion (labial band 14, col 2, lines 7-10 disclose the removal of the labial band to continued use of the lingual band).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify Yue to have the tooth side contacting portion comprises a tooth inner side contacting portion but does not comprise a tooth outer side contacting portion as taught by Kurz for the purpose of providing a retaining the teeth in the desired position.
Regarding claim 10, Yue fails to disclose the tooth side contacting portion comprises a tooth outer side contacting portion but does not comprise a tooth inner side contacting portion.
However, Kurz teaches a tooth outer side contacting portion (14) being separable from the tooth inner side contacting portion (10, see figures 1-2).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify Yue to have the tooth outer side contacting portion being separable from the tooth inner side contacting portion, and therefore can comprise only the tooth outer side contacting portion as taught by Kurz for the purpose of providing a retaining the teeth in the desired position.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Raby et al in view of Yue et al.
Regarding claim 11, Raby discloses a method for preparing a transparent orthodontic device (appliance body 102, par 5 discloses a method of designing and fabricating the dental appliance), the method comprising a step of printing a transparent orthodontic device using a 3D printer (par 33 discloses the printing of the appliance using a 3D printer par 68 discloses the plastic material is clear) wherein the transparent orthodontic device comprises a tooth side contacting portion (lingual portion 104/facial portion 106), the tooth side contacting portion comprising a tooth inner side contacting portion (104) and a tooth outer side contacting portion (106) disposed to face the tooth inner side contacting portion with a certain distance of separation (see figure 4A) , wherein:
each of the tooth inner side contacting portion and the tooth outer side contacting portion comprises a respective lower edge positioned inward of a perpendicular reference line extending through a respective upper edge (see figure 11b, where the occlusal ends are inward from the gingival end).
Raby fails to disclose explicitly each of the tooth inner side contacting portion and the tooth outer side contacting portion comprises a concave tooth contacting portion, and a tooth non-contacting portion disposed opposite the concave tooth contacting portion, wherein the concave tooth contacting portion is provided with a shape that compliments the side of a natural tooth to allow for close contact with the entirety of the side of the natural tooth.
However, Yue teaches a tooth side contacting portion (lateral surface 12 and medial surface 11) having a tooth inner side contacting portion and a tooth outer side contacting portion(11 and 12) each comprises a concave tooth contacting portion (see annotated figure 5a) , and a tooth non-contacting portion disposed opposite the concave tooth contacting portion (opposite side facing away from the surface in contact with the tooth), wherein the concave tooth contacting portion is provided with a shape that compliments the side of a natural tooth to allow for close contact with the entirety of the side of the natural tooth (see figure 5) for the purpose of enabling stable occlusal relationships while adjusting the teeth during the orthodontic cycle, to minimize saliva, bubbles and other food/liquid from building up inside the orthodontic device and improve the aesthetics and comfort of the device (par 24).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify Richter to have each of the tooth inner side contacting portion and the tooth outer side contacting portion comprises a concave tooth contacting portion, and a tooth non-contacting portion disposed opposite the concave tooth contacting portion, wherein the concave tooth contacting portion is provided with a shape that compliments the side of a natural tooth to allow for close contact with the entirety of the side of the natural tooth as taught by Yue for the purpose of enabling stable occlusal relationships while adjusting the teeth during the orthodontic cycle, to minimize saliva, bubbles and other food/liquid from building up inside the orthodontic device and improve the aesthetics and comfort of the device.
Claim 12, Raby discloses where, in step S10, the transparent orthodontic device whose top is at least partially open is printed (see figure 4B).
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Richter (US 2019/0159869) in view of Yue et al.
Regarding claim 11, Richter discloses a method for preparing an orthodontic device (par 3 discloses the invention is drawn to making a dental retainer 1); the method comprising a step of printing the orthodontic device using a 3D printer (par 36 discloses the dental retainer can be directly rendered in tangible form by operation of the three-dimension material deposition apparatus 61 or material printer), wherein the orthodontic device (1) comprising a tooth side contacting portion comprising a tooth inner side contacting portion (lingual surface 9) and a tooth outer side contacting portion (labial surface 8 ) disposed to face the tooth inner side contacting portion with a certain distance of separation (see figure 9).
Richter fails to explicitly disclose the orthodontic device being transparent and each of the tooth inner side contacting portion and the tooth outer side contacting portion comprises a concave tooth contacting portion, and a tooth non-contacting portion disposed opposite the concave tooth contacting portion, wherein the concave tooth contacting portion is provided with a shape that compliments the side of a natural tooth to allow for close contact with the entirety of the side of the natural tooth; and each of the tooth inner side contacting portion and the tooth outer side contacting portion comprises a respective lower edge positioned inward of a perpendicular reference line extending through a respective upper edge.
However, Yue teaches a transparent orthodontic device (par 41 discloses the orthodontic device being made of a polymer material that is in a transparent state), comprising:
a tooth side contacting portion (lateral surface 12 and medial surface 11) having a tooth inner side contacting portion and a tooth outer side contacting portion(11 and 12) each comprises a concave tooth contacting portion (see annotated figure 5a) , and a tooth non-contacting portion disposed opposite the concave tooth contacting portion (opposite side facing away from the surface in contact with the tooth), wherein the concave tooth contacting portion is provided with a shape that compliments the side of a natural tooth to allow for close contact with the entirety of the side of the natural tooth (see figure 5) each of the tooth inner side contacting portion and the tooth outer side contacting portion comprises a respective lower edge positioned inward of a perpendicular reference line extending through a respective upper edge (see annotated figure 5 (b) for the purpose of enabling stable occlusal relationships while adjusting the teeth during the orthodontic cycle, to minimize saliva, bubbles and other food/liquid from building up inside the orthodontic device and improve the aesthetics and comfort of the device (par 24).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify Richter to have the orthodontic device being transparent and each of the tooth inner side contacting portion and the tooth outer side contacting portion comprises a concave tooth contacting portion, and a tooth non-contacting portion disposed opposite the concave tooth contacting portion, wherein the concave tooth contacting portion is provided with a shape that compliments the side of a natural tooth to allow for close contact with the entirety of the side of the natural tooth; and each of the tooth inner side contacting portion and the tooth outer side contacting portion comprises a respective lower edge positioned inward of a perpendicular reference line extending through a respective upper edge as taught by Yue for the purpose of enabling stable occlusal relationships while adjusting the teeth during the orthodontic cycle, to minimize saliva, bubbles and other food/liquid from building up inside the orthodontic device and improve the aesthetics and comfort of the device.
Regarding claim 12, Richter further discloses in step S10, the orthodontic device whose top is at least partially open is printed (par 36 discloses the dental retainer can be directly rendered in tangible form by operation of the three-dimension material deposition apparatus 61 or material printer and figure 4 and par 43 disclose a rendering of the dental retainer with an at least partly open top) and Yue modifies the orthodontic device to be transparent as set forth above.
Regarding claim 13, Richter further discloses n step S10, the orthodontic device whose top is entirely closed is printed (par 36 discloses the dental retainer can be directly rendered in tangible form by operation of the three-dimension material deposition apparatus 61 or material printer and claims 2/3 disclose the retainer body being a single material/one piece retainer), in which case the method further comprises a step S20 of at least partially opening up the top of the transparent orthodontic device (par 22 discloses further including an incising step to remove a coronal top(s) at least partially opening the top of the retainer) and Yue modifies the orthodontic device to be transparent as set forth above.
Response to Arguments
Applicant’s arguments with respect to claim 1 and 11 have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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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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/S.N.B./Examiner, Art Unit 3772
/HEIDI M EIDE/Primary Examiner, Art Unit 3772
5/18/2026
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