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/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-11, drawn to a dental appliance, classified in class A61C7/18.
II. Claims 12-20, drawn to a method of using/forming the appliance, classified in class A61C7/146.
The inventions are distinct, each from the other because of the following reasons:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h).
In the instant case the product as claimed can be used in a materially different process of using that product such as for a spacer or hanging an article on a wall.
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process such as molding or 3D printing.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required the search for each group requires different search queries.
Furthermore, execution of a comprehensive search of all method and system claims in the instant application would not only constitute an undue burden on the Examiner, but consideration of the findings of such a search for patentability determination would be unduly onerous. It is further noted that a comprehensive search for the presently claimed subject matter is not solely limited to a search of the classes and subclasses in which they are classified. For instance, searching different classes/subclasses or electronic resources, or employing different search strategies or search queries constitute undue burden on the Examiner.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these 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(a) of the other invention.
A telephone call was made to attorney of record Zachary P Piccolomini on 04/01/2026 to request an oral election to the above restriction requirement, and elected claims 1-11 without traverse.
The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product, and the product claims are subsequently found allowable, withdrawn process claims that depend from or otherwise require all the limitations of the allowable product claim will be considered for rejoinder. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04(b). Additionally, in order to retain the right to rejoinder in accordance with the above policy, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in a loss of the right to rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Radmall et al. (2016/0000531A1).
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Regarding claim 1, Radmall discloses a dental appliance (fig.1A-5A), comprising: a bar (102/502) comprising a first end and a second end (shown above), wherein the first end is configured/capable to engage with a first tooth; and a coupling portion (shown above) at the second end of the bar configured/capable to engage with an orthodontic bracket bonded to a second tooth, wherein the coupling portion is configured to rotate about an axis due to its structure as in figure 1A .
Regarding claim 2 the first end is configured/capable to engage with the first tooth by engaging with a second bracket bonded to the first tooth.
Regarding claim 3 the coupling portion comprises a flexible portion (the loop) configured to rotate about the axis.
Regarding claims 4, 5 the coupling portion comprises a mating connection (e.g. 132) configured/capable to connect to a bracket attachment that engages with the orthodontic bracket bonded to the second tooth, the orthodontic bracket is a tube with an inlet configured to receive an end of an arch wire; and the bracket attachment can comprise a protrusion that fits within the inlet to engage the bracket attachment with the orthodontic bracket.
Regarding claims 6, 7 the bar is a distalizer for dental application/corrections, the second tooth can include a molar; and the bar is configured to distalize the molar.
Regarding claims 8, 9 the first end of the bar comprises an engagement feature (e.g. 132) configured/capable to engage with an elastic element; and the elastic element applies a distal force on the bar, a first end of the elastic element is configured to engage with the engagement feature and a second end of the engagement feature is configured to engage with a third orthodontic bracket attached to a mandibular tooth.
Regarding claim 10 the coupling portion is configured to rotate about the occluso-gingival axis as it has loop similar to the applicant’s invention.
Regarding claim 11 the first tooth capable of being one of a canine and a premolar.
With regard the statement of intended use and other functional statements (“configured to”, they do not impose any structural limitations on the claims distinguishable over the prior art which is capable of being used as claimed if one so desires to do so. 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Patel Yogesh whose telephone number is (571) 270-3646. The examiner can normally be reached between 9 AM – 5:30 PM on Monday, Thursday and Friday.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, SPE Bosques Edelmira, at (571) 270-5614.
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/YOGESH P PATEL/ Primary Examiner, Art Unit 3772