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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on June 21, 2024 and November 25, 2024. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 7-8, and 12 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.
With respect to claim 7, the claimed “a plurality of locating members” are unclear in view of the claimed “one or more locating members”. It is unclear if the claimed plurality of claim 7 are in addition to the claimed one or more of the independent claim, or if the applicant is trying to further limit the claimed one or more to be a plurality. It is noted that for examination purposes, the limitation is being interpreted as further limiting the claimed one or more locating member of the independent claim to be a plurality. For example the claim would be read as -wherein the one or more locating members comprises a plurality of locating members-, however, the applicant should amend the claim to clarify.
With respect to claim 8, it is unclear how the single claimed positioning device can be both a vacuum formed retainer and molded. It is noted that for examination purposes, the limitations are being interested using the “or” limitation and NOT the “and”, however, the applicant should amend the claim to clarify what is being claimed.
With respect to claim 12, the limitations are unclear in the situation that the “and” limitation is used to meet the claim limitations and not “or”. Such as it is unclear how the limitation of both at least one tooth and at least five teeth can be meet. If the claim required at least one tooth, then only a single tooth needs to be exposed, however, if the claim requires at least 5 teeth, the at least 5 would need to be exposed. It is noted that for examination purposes, the limitations are being interrupted as “or”, however, the applicant should amend the claim to clarify what is being claimed. In the situation that the claim is interpreted with the “and” limitation, it is noted that a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation at least one tooth, and the claim also recites at least five teeth which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The same issue applies to the claimed area exposed. It is noted that as discussed above, the limitations of the claim 12 are being interpreted under the “or” limitation, however, the applicant should amend the claim to clarify what is being claimed.
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.
Claim(s) 1-2, 4-5, 7, and 12-15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Chun (2018/0214252).
Chun discloses an orthodontic retainer positioning device 450 arranged to locate a retainer wire 410 on a row of teeth (see figs. 11-15c, such that the wire is capable of being a retainer wire) comprising a locator arranged to fit over at least a portion of the row of teeth (see figs. 11-15c, annotated figure below), wherein the locator comprises an open section that is arranged to expose an area of the row of teeth (see figs. 11-15c, annotated figure below, the open section between the legs with slots 453, such that a portion of the tooth is exposed which is an area of the row of teeth); and one or more locating members connected to the locator (see annotated figure, such that the locating members are the legs extending from the locator), the one or more locating members being arranged to support the retainer wire 410 so that, in use, the one or more locating members hold the retainer wire in position relative to the area of the row of teeth so as to aid a fitting of the retainer wire to the row of teeth (see specifically fig. 13, pars.157-159).
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Chun further discloses with respect to claim 2, wherein the one or more locating members are detachable from the locator. Such that it is noted that the limitation is functional and the locating members are capable of being detached from the locator by means of cutting. It is noted that no structure is claimed regarding how the locating members are detachable and the applicant is not claiming the method of use. The limitation of the locating members being detachable are functional and therefore, the prior art only has to teach the structure is capable of functioning as claimed in order to meet the functional limitation. Since the locating members are capable of being detachable, for example by cutting, then the claimed limitation is met.
Chung further discloses with respect to claim 4, wherein the one or more locating members are arranged to hold the retainer wire in position such that the retainer wire may be adjusted via the open section of the locator (see figs. 11-15c). It is noted that the limitation “such that the retainer wire may be adjusted via the open section of the locator” is functional and therefore, the prior art only has to teach the claimed structure is capable of functioning as claimed. It is noted that the structure of Chung is capable of functioning as claimed, such that when in use, the wire is exposed through the open section and therefore, the user is capable of accessing the wire and adjusting it. Therefore, since the prior art of Chung teaches the structure that is capable of functioning as claimed, the claimed limitation are met by the prior art of Chung.
Chung further discloses with respect to claim 5, wherein the one or more locating members are arranged to be releasable from the retainer wire once the retainer wire has been fitted such that, once the retainer wire has been fitted, the locator can be removed from the row of teeth (see pars. 165, 171).
Chung further discloses with respect to claim 7, comprising a plurality of locating members connected to the locator (see annotated figure above, such that Chung teaches 2 locating members).
Chung further discloses with respect to claim 12, wherein: the open section is arranged to expose a lingual side (see fig. 12) and/or a buccal side of at least one tooth, at least three teeth, and/or at least five teeth; and/or the open section is arranged to expose at least 30%, at least 50%, and/or at least 75% of the lingual side and/or the buccal side of one or more teeth. It is noted that all of the limitations of the claim are claimed in the alternative due to the limitation “or”, therefore, only one of the limitations needs to be taught by the prior art in order to meet the claimed limitations. Therefore, it is noted that Chung teaches the open section exposes the lingual side of at least one tooth, therefore, Chung teaches the required claim limitations of claim 12.
Chung further discloses with respect to claim 13, wherein the locator is arranged to support the retainer wire in a predetermined position on a lingual side of the row of teeth, wherein the one or more locating members are attached to the lingual side of the locator (see figs. 12-15c, annotated figures above).
Chung further discloses with respect to claim 14, wherein the one or more locating members comprise locating arms (see annotated figure above), wherein each locating arm is attached to the locator at a first end of the locating arm, and wherein each of the one or more locating members is arranged to support the retainer wire at or near a second end of the locating arm (see annotated figure above).
Chung further discloses with respect to claim 15 wherein the one or more locating members are arranged to support the retainer wire by holding the retainer wire between the one or more locating members and a row of teeth onto which the locator is placed (see specifically figs. 12-13, annotated figures above); and/or the one or more locating members each comprise a notch, hook, slot 453 or slit formed in the one or more locating members so as to support the retainer wire in the position; and/or the one or more locating members are arranged to apply a biasing force to hold the retainer wire in position. It is noted that all of the limitations of the claim are claimed in the alternative due to the limitation “or”, therefore, only one of the limitations needs to be taught by the prior art in order to meet the claimed limitations. Therefore, it is noted that Chung teaches the claimed limitations in bold above and, therefore, Chung teaches the required claim limitations of claim 15.
Claim(s) 1-2, 4-5, 7, 10-13, 15 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoon (KR 102109847).
Yoon discloses with respect to claim 1 an orthodontic retainer positioning device 300a arranged to locate a retainer wire 210 on a row of teeth (see fig. 15, 68 of translation) comprising: a locator arranged to fit over at least a portion of the row of teeth (see figs. 41c-15, annotated figure below, the locator being the highlighted portion of the shell comprising the u-shaped cavity to fit over the teeth), wherein the locator comprises an open section 300O that is arranged to expose an area of the row of teeth (par. 69 of translation, figs. 14c-15, such that the opening, when placed on the teeth, exposes an area of a tooth, which is an area of the row of teeth); and one or more locating members 310s connected to the locator, the one or more locating members being arranged to support the retainer wire so that, in use, the one or more locating members hold the retainer wire in position relative to the area of the row of teeth so as to aid a fitting of the retainer wire to the row of teeth (see par. 68 of translation, figs. 14b-15).
Yoon further discloses with respect to claim 2, wherein the one or more locating members are detachable from the locator. Such that it is noted that the limitation is functional and the locating members are capable of being detached from the locator by means of cutting. It is noted that no structure is claimed regarding how the locating members are detachable and the applicant is not claiming the method of use. The limitation of the locating members being detachable are functional and therefore, the prior art only has to teach the structure is capable of functioning as claimed in order to meet the functional limitation. Since the locating members are capable of being detachable, for example by cutting, then the claimed limitation is met.
Yoon further discloses with respect to claim 4, wherein the one or more locating members are arranged to hold the retainer wire in position such that the retainer wire may be adjusted via the open section of the locator. It is noted that the limitation “such that the retainer wire may be adjusted via the open section of the locator” is functional and therefore, the prior art only has to teach the claimed structure is capable of functioning as claimed. It is noted that the structure of Yoon is capable of functioning as claimed, such that when in use, the wire is exposed through the open section and therefore, the user is capable of accessing the wire and adjusting it. Therefore, since the prior art of Yoon teaches the structure that is capable of functioning as claimed, the claimed limitation are met by the prior art of Yoon.
Yoon further discloses with respect to claim 5, wherein the one or more locating members are arranged to be releasable from the retainer wire once the retainer wire has been fitted such that, once the retainer wire has been fitted, the locator can be removed from the row of teeth (see par. 70 of translation).
Yoon further discloses with respect to claim 7, the positioning device comprising a plurality of locating members connected to the locator (see fig. 14b, such that there is are two locators, one on either side of space 330s, see annotated figure below).
Yoon further discloses with respect to claim 10, wherein the locator comprises a u-shaped wall that defines a channel, wherein the locator is arranged to be placed over the row of teeth such that the teeth are located in the channel (see annaoted figure, figs. 14c-15).
Yoon further discloses with respect to claim 11, wherein the open section comprises a cut-out that extends along the u-shaped wall of the locator (see fig. 14c, annotated figure below, such that the opening 300O, is a cut-out, such that it is a portion that is removed, i.e. cutout, out the u-shaped wall).
Yoon further discloses with respect to claim 12, wherein the open section is arranged to expose a lingual side and/or a buccal side of at least one tooth, at least three teeth, and/or at least five teeth; and/or the open section is arranged to expose at least 30%, at least 50%, and/or at least 75% of the lingual side and/or the buccal side of one or more teeth (see figs. 16c-15, such that the opening 300O is located on a lingual side of a tooth when in use. It is noted that all of the limitations of the claim are claimed in the alternative due to the limitation “or”, therefore, only one of the limitations needs to be taught by the prior art in order to meet the claimed limitations. Therefore, it is noted that Yoon teaches the open section exposes the lingual side of at least one tooth, therefore, Yoon teaches the required claim limitations of claim 12.
Yoon further discloses with respect to claim 13, wherein the locator is arranged to support the retainer wire in a predetermined position on a lingual side of the row of teeth, wherein the one or more locating members are attached to the lingual side of the locator (see annotated figures below, fig. 15 which shows the locating members on the lingual side in use, par. 68 of translation).
Yoon further discloses with respect to claim 15, wherein the one or more locating members are arranged to support the retainer wire by holding the retainer wire between the one or more locating members and a row of teeth onto which the locator is placed; and/or the one or more locating members each comprise a notch, hook, slot or slit formed in the one or more locating members so as to support the retainer wire in the position; and/or the one or more locating members are arranged to apply a biasing force to hold the retainer wire in position (pars. 5 and 68 of translation). It is noted that all of the limitations of the claim are claimed in the alternative due to the limitation “or”, therefore, only one of the limitations needs to be taught by the prior art in order to meet the claimed limitations. Therefore, it is noted that Yoon teaches the claimed limitations in bold above and, therefore, Yoon teaches the required claim limitations of claim 15.
Yoon further discloses with respect to claim 20, a method of applying an orthodontic retainer wire to a row of teeth, the method comprising: providing an orthodontic retainer positioning device according to claim 1 (see detailed rejection above, fig. 15); placing the locator over the row of teeth (see fig. 15, par. 68, “is coupled to the patient’s orthodontic teeth”), so that the area of the row of teeth to which the retainer wire is to be fitted is exposed via the open section (see fig. 15, such that the area the wire is to be fixed is exposed via the open section so that the adhesive can be placed in the opening to fix the wire to the teeth); placing the orthodontic retainer wire adjacent the locator (par. 68, such that it is placed within the wire receiving portion), so that the locating members support the retainer wire in a predetermined position relative to the exposed area of the row of teeth (par. 68, such that the locating members hold the wire in the predetermined position relative to the exposed area which receives the adhesive); applying adhesive to adhere the retainer wire to at least two teeth in the row of teeth (par. 69); and removing the locator from the row of teeth (par. 70).
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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.
Claim(s) 3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoon (KR 102109847) as applied to claim 1 above, and further in view of Kopelman et al. (2005/0233276).
Yoon teaches the invention as substantially claimed and discussed above, including with respect to claim 3, wherein the one or more locating members are detachable form the locator (see detailed rejection of claim 2 above), however, with respect to claim 3 is silent as to if the locator is usable as a removable retainer one the one or more locating members have been detached and with respect to claim 6, wherein the locator is usable as a removable retainer.
Kopelman teaches a positioning device made of a sheet of thermal forming dental material (par 74) and that aligners, which are also capable of functioning as retainers, such that the hold the teeth in the final position are made of a sheet of thermal forming material (par. 24). Therefore, it is noted that the positioning device of Kopelman made of the sheet of thermoforming material is capable of functioning as a retainer. It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the material of the positioning device taught by Yoon with the material taught by Kopelman since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (see MPEP 2144.07). It is noted that the modification of positioning device of Yoon made of the material taught by Kopelman would result in the device being capable of being useable as a removable retainer as claimed since the material is known to have the desired properties to retain teeth along with other advantages, such as easily thermoformed to a model of teeth. Such that since Yoon is silent as to the material of the positioning device, it is unclear if the material would have the properties to retain the teeth.
Claim(s) 8 is/are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chun (2018/0214252).
Chung teaches the claimed invention as substantially claimed and discussed above, but is silent as to the method of making the locator. The claimed phrase “is molded” is being treated as a product by process limitation; that is, that the locator is made by molding. 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 35 U.S.C. 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113. Thus, even though Chung is silent as to the process used to make the locator, it appears that the locator taught by Chun would be the same or similar as that claimed; especially since both applicant’s product and the prior art product is formed to match a contour of the teeth to fit on the teeth. Further it is noted that the limitations are claimed in the alternative due to the limitation “or”, therefore the prior art only needs to teach one of the listed limitations.
Claim(s) 8 is/are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yoon (KR 102109847).
Yoon teaches the claimed invention as substantially claimed and discussed above, but is silent as to the method of making the locator. The claimed phrase “is molded” is being treated as a product by process limitation; that is, that the locator is made by molding. 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 35 U.S.C. 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113. Thus, even though Yoon is silent as to the process used to make the locator, it appears that the locator taught by Yoon would be the same or similar as that claimed; especially since both applicant’s product and the prior art product is formed to match a contour of the teeth to fit on the teeth. Further it is noted that the limitations are claimed in the alternative due to the limitation “or”, therefore the prior art only needs to teach one of the listed limitations.
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chun (2018/0214252) as applied to claim 1 above, and further in view of Marshall et al. (2018/0161126).
With respect to claim 9, Chun teaches the invention as substantially claimed and discussed above, however, does not specifically teach, wherein the one or more locating members are arranged to protrude into the open section.
Marshall teaches an orthodontic positioning device comprising a locator arranged to fit over at least a portion of the row of teeth, wherein the locator comprises an open section 62 (see figs. 5-6) and one or more locating members 64 connected to the locator (such that the locator is the shell-like body).
Marshall further teaches with respect to claim 9, wherein the one or more locating members are arranged to protrude into the open section (see fig. 5). It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify Chun with the arrangement of the opening and locating members in order to provide more support from the locator on the teeth by increasing its surface area to help ensure proper positioning on the teeth.
With respect to claim 10, Chun/Marshall teaches the invention as substantially claimed and discussed above including Marshall further teaching the locator comprises a u-shaped wall that defines a channel, wherein the locator is arranged to be placed over the row of teeth such that the teeth hare located in the channel (see figs. 5-6). It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify Chun with the u-shaped body taught by Marshall in order to provide a more secure connection between the teeth and positioning device. Such that by providing the u-shaped device, the teeth are completely received in the channel reducing the risk of the device slipping off the teeth.
With respect to claim 11, Chun/Marshall teaches the invention as substantially claimed and discussed above including Marshal further teaching wherein the open section comprises a cut-out that extends along the u-shaped wall of the locator (see fig. 5). It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify Chun with the u-shaped body taught by Marshall in order to provide a more secure connection between the teeth and positioning device. Such that by providing the u-shaped device, the teeth are completely received in the channel reducing the risk of the device slipping off the teeth.
Claim(s) 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoon (KR 102109847) as applied to claim 1 above, and further in view of Krenkel (5,087,202).
With respect to claim 16, Yoon teaches an orthodontic retainer kit comprising an orthodontic retainer positioning device according to claim 1 (see detailed rejection of claim 1 above with respect to Yoon) and an orthodontic retainer wire 210. It is noted that the kit is the two elements together, which Yoon teaches. Yoon teaches the invention as substantially claimed and discussed above, however, does not specifically teach the orthodontic retainer wire comprises a plurality of adhesive carriers arranged to receive a quantity of adhesive wherein the plurality of adhesive carriers are fixed in position relative to the retainer wire.
Krenkel teaches an orthodontic retainer wire comprising a plurality of adhesive carriers 2 arranged to receive a quantity of adhesive wherein the plurality of adhesive carriers 2 are fixed in position relative to the retainer wire 3 (col. 3, ll. 8-16). It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the orthodontic retainer wire taught by Yoon with the adhesive carriers taught by Krenkel in order to assist in preventing overflow of the adhesive. Such that the carriers help retain the adhesive within the desired area and would prevent the adhesive from leaking out of the receiving space of the positioner of Yoon.
With respect to claim 17, Yoon/Krenkel teaches the invention as substantially claimed and discussed above, including Krenkel further teaching the plurality of adhesive carriers 2 are annular in shape (see fig 2) and comprise apertures through the retainer wire (see fig. 2, such that 4 is the aperture).
With respect to claim 18, Yoon/Krenkel teaches the invention as substantially claimed and discussed above, including Krenkel further teaching the plurality of adhesive carriers are formed by loops of wire formed integrally with the retainer wire (see fig. 2), the apertures being formed in the loops of wire (see fig. 2, such that apertures 4 are within the loops 2).
With respect to claim 19, Yoon/Krenkel teaches the claimed invention as substantially claimed and discussed above, but is silent as to the manufacturing of the retainer wire. The claimed phrase “is manufactured based on measurements taken from the row of teeth, and the plurality of adhesive carriers are positioned on the retainer wire to correspond to a spacing of the row of teeth”” is being treated as a product by process limitation; that is, that the retainer wire is manufactured based on the claimed measurements. 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. Thus, even though Krenkel is silent as to the process used to manufacture the retainer wire and position the adhesive carriers, it appears that the retainer wire taught by Krenkel would be the same or similar as that claimed; especially since both applicant’s product and the prior art product is formed position the adhesive carriers on the teeth. See col. 2, ll. 7-10 of Krenkel which teaches the retainer wire is premanufactured taking into consideration the spacing of teeth.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The prior art of Khan has been cited to teach the specific material is capable of functioning as a retainer.
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/HEIDI M EIDE/Primary Examiner, Art Unit 3772 11/13/2025