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
Applicant’s election without traverse of Group I, claims 1-9 in the reply filed on March 2, 2026 is acknowledged.
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 2, 2026.
Priority
It is noted that the current application claims priority to several applications. It is noted that the support for the claimed pigment including mica is provided in all of the priority applications, however, support for any of the other pigments is not provided. Therefore, it is noted that the claimed pigments of claims 7 and 31-32, other than mica, are being given the filling date of the current application (6/28/2024).
It is noted that claims 1-2, 9, 21-25, 27, and 29 are entitled to the priority date of 63/363898 which is 4/29/2022
Claims 5-6, 8, 26, 28, and 30 are entitled to the priority date of 63/373270 which is 8/23/2022
Claims 3-4 are entitled to the priory date of application 18/307348 which is 4/26/2023. It is noted that in the alternative that the removal is done by the dental professional, the claims would get the date of provisional 63/363898 which is 4/29/2022, but in the alternative in which the removal is done by a user or third party the claims are entitled to the date of application 18/307343 which is 4/26/2023.
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) 1-4, 7-9, 21, 26-29 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doudney (WO 2017/091087).
Doudney teaches a method of applying a decal on a tooth surface comprising the steps of applying an initial layer of colored dental adhesive to the tooth surface as a first applied layer (see pg. 2, ll. 3-9, pg. 5, ll. 22-31, such that the colored adhesive is the binder which includes the white filler, therefore the binder is a colored adhesive since it is white, pg. 7, ll. 1-11, claim 1, such that the binder is the first layer applied to the tooth), placing the decal on the layer of colored dental adhesive after applying the colored dental adhesive to the tooth surface, wherein the decal is placed on the colored dental adhesive before the colored dental adhesive is cured (see pg. 2, ll. 3-7, pg. 5, ll. 14-17, pg. 6, ll. 13-19, col. 7, ll. 10-11, such that the binder, i.e. colored adhesive is placed on the tooth as a first layer in the embodiment in which a temporary bond is desired, then the cosmetic enhancer, i.e. decal and then the adhesive is cured). Doudney further teaches the use of a pigment including strontium aluminate (see pg. 5, ll. 8-9) as a cosmetic enhancer and that a cosmetic enhancer can be combined with the colored dental adhesive (see pg. 2, ll. 15, pg. 6, ll. 14-17, claims 5, 9) and further teaches the method can include applying more than one cosmetic enhancer (pg. 2, ll. 3-7, specifically “applying at least one cosmetic enhancer” such that it is not limited to a single cosmetic enhancer, claim 1). Such that the method taught by Doudney teaches the binder can include a pigment (the cosmetic enhancer including strontium aluminate) and therefore teaches a colored adhesive including a pigment as claimed. Therefore it would have been obvious to one having ordinary skill in the art that Doudney teaches the method including the steps of applying a colored adhesive including a pigment to the tooth (see above regarding the binder being mixed with the cosmetic enhancer including a pigment including strontium aluminate and further placing the decal on the colored adhesive, such that more than one cosmetic enhancer can be applied to the tooth (see above, specifically pg. 2, ll. 3-4, claims 1, 9, and 11). It is noted that Doudney does not specifically teach the application of both the binder with the pigment and the decal, however, Doudney does teach that more than one cosmetic enhancer can be applied to the tooth, therefore, it would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the embodiment of Doudney which teaches the cosmetic enhancer is mixed with the binder with the embodiment of applying the decal to the binder in order to achieve the desired cosmetic enhancement to the tooth.
With respect to claim 2, Doudney further teaches the method further including the step of curing the layer of colored dental adhesive after applying the layer of colored dental adhesive (see pg. 5, ll. 22-31, pg. 6, ll. 18-19, such that the binder is the colored dental adhesive).
With respect to claim 3, Doudney further teaches the decal being temporary (see pg. 7, ll. 10-11, 20-22) and the method being carried out by a dental professional, a user or a third party (pg. 7, ll. 20-21), however, does not specifically teach the step of removing the decal by the dental professional, user, or third party. However, it would have been obvious to one having ordinary skill in the art before the effective filling date of the invention that since Doudney teaches the decal being temporary, it is removed by one of the dental professional, user, or third party. Such that in order for it to be temporary, it must be removed by someone.
With respect to claim 4, Doudney teaches the invention as substantially claimed and discussed including teaching the decal is removable with a high-speed dental handpiece and/or low-speed dental handpiece. It is noted that the claimed limitation is functional, such that the applicant has claimed “is removable” and has NOT positively claimed the method requiring the step of removing the decal with a dental handpiece. Therefore, it is noted that the prior art teaches the invention as claimed, such that the decal is capable of being removed with a handpiece, such that it can be ground away and therefore, the claimed limitations are met.
With respect to claim 7, Doudney further teaches the pigment is a phosphorescent (pg. 2, ll. 24, pg. 3, ll. 10, pg. 5, ll. 8-9).
With respect to claim 8, Doudney further teaching the layer of colored dental adhesive is a resin tooth bonding agent (see pg. 2, ll. 5-9, pg. 5, ll. 22-31).
With respect to claim 9, Doudney further teaching the tooth is etched with a phosphoric acid compound (see pg. 6, ll. 25-27).
With respect to claim 21, Doudney further teaching the step of curing the layer of colored dental adhesive is performed with a curing light (pg. 4, ll. 1-2, pg. 5, ll. 33-34, pg. 6, ll. 1-3).
With respect to claim 26, Doudney further teaching the layer of colored dental adhesive comprise a unit does of resin tooth bonding agent (see pg. 5, ll. 22-31, such that it is a resin adhesive and single dose is applied to the tooth, therefore the adhesive comprises a unit dose as claimed).
With respect to claim 29, Doudney further teaching the method is performed with an esthetic alteration kit comprising the colored dental adhesive and the decal (see pg. 3, ll. 19-34, pg. 4, ll. 1-7).
With respect to claim 27, Doudney teaches the step of combining a dental adhesive with a pigment (i.e. the cosmetic enhancer) to form the colored dental adhesive (see pg. 2, ll. 15, pg. 6, ll. 14-15).
With respect to claim 28, Doudney teaches wherein combining the dental adhesive with the pigment is performed by a dentist, user, or third party (pg. 6, ll. 14-16, such that it is premixed before application by either a third party or the user/dentist, see further pg. 7, ll. 20-21 regarding users carrying out the method).
With respect to claim 31, Doudney teaches wherein the pigment comprises at least one of strontium aluminate or luminescent zinc sulphide (pg. 2, ll. 24, pg. 5, ll. 8-9).
Claim(s) 1-9, 21, 26-29, and 31-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doudney (WO 2017/091087) in view of Cohen (6,036,494).
Doudney teaches a method of applying a decal on a tooth surface comprising the steps of applying an initial layer of colored dental adhesive to the tooth surface as a first applied layer (see pg. 2, ll. 3-9, pg. 5, ll. 22-31, such that the colored adhesive is the binder which includes the white filler, therefore the binder is a colored adhesive since it is white, pg. 7, ll. 1-11, claim 1, such that the binder is the first layer applied to the tooth), placing the decal on the layer of colored dental adhesive after applying the colored dental adhesive to the tooth surface, wherein the decal is placed on the colored dental adhesive before the colored dental adhesive is cured (see pg. 2, ll. 3-7, pg. 5, ll. 14-17, pg. 6, ll. 13-19, col. 7, ll. 10-11, such that the binder, i.e. colored adhesive is placed on the tooth as a first layer in the embodiment in which a temporary bond is desired, then the cosmetic enhancer, i.e. decal and then the adhesive is cured). Doudney teaches the invention as substantially claimed and discussed above, however, does not specifically teach the colored dental adhesive comprises a pigment (it teaches it having a filler which is white as discussed above),
Cohen teaches a method for cosmetically altering the appearance of a tooth, the method comprising the steps of applying an initial layer of a colored dental adhesive to the tooth surface as a first layer of dental adhesive and wherein the colored dental adhesive comprises a pigment (see abstract, col. 5, ll. 25-33, col. 6, ll. 42-63, col. 7, ll. 43-44, 52-57). It would have been obvious to one having ordinary skill in the art to modify the colored adhesive (i.e. the binder with the white filler) taught by Doudney with the colored pigment taught by Cohen in order to allow the user to pick a desired color and appearance for their tooth (see col. 3, ll. 39-47)
With respect to claim 2, Doudney/Cohen teaches the invention as substantially claimed and discussed above, Doudney further teaches the method further including the step of curing the layer of colored dental adhesive after applying the layer of colored dental adhesive (see pg. 5, ll. 22-31, pg. 6, ll. 18-19, such that the binder is the colored dental adhesive). Cohen further teaches curing the colored adhesive after application (see col. 10, ll. 66-67, col. 11, ll. 1-5)
With respect to claim 3, Doudney/Cohen teaches the invention as substantially claimed and discussed above, Doudney further teaches the decal being temporary (see pg. 7, ll. 10-11, 20-22) and the method being carried out by a dental professional, a user or a third party (pg. 7, ll. 20-21), however, does not specifically teach the step of removing the decal by the dental professional, user, or third party. However, it would have been obvious to one having ordinary skill in the art before the effective filling date of the invention that since Doudney teaches the decal being temporary, it is removed by one of the dental professional, user, or third party. Such that in order for it to be temporary, it must be removed by someone.
With respect to claim 4, Doudney/Cohen teaches the invention as substantially claimed and discussed above, including Doudney teaching the decal is removable with a high-speed dental handpiece and/or low-speed dental handpiece. It is noted that the claimed limitation is functional, such that the applicant has claimed “is removable” and has NOT positively claimed the method requiring the step of removing the decal with a dental handpiece. Therefore, it is noted that the prior art teaches the invention as claimed, such that the decal is capable of being removed with a handpiece, such that it can be ground away and therefore, the claimed limitations are met.
With respect to claim 5, Doudney/Cohen teaches the invention as substantially claimed and discussed above, including Cohen further teaches the colored dental adhesive further comprises a color additive comprising Food, Drugs and Cosmetics (FD&C) and/or Drugs & Cosmetics (D&C) color additives (see col. 5, ll. 21-33, col. 6, ll. 1-7, 49-62, col. 1, ll. 5-9, such that “pigments” are used such that it includes a pigment as required for claim 1 and an additional color additive).
With respect to claim 6, Doudney/Cohen teaches the invention as substantially claimed and discussed above, including Doudney teaching the decal is removable (see pg. 7, ll. 10-11, 20-22, such that it is temporary), however, does not specifically teach the method further including the step of removing, by a user, the decal with a fingernail, a toothpick, or a hard object that will not damage the tooth surface. Cohen further teaches removing the adhesive with hard object (see col. 8, ll. 1-10). It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the removal step taught by Doudney to include the user of a tool as taught by Cohen in order to allow for easier removal as desired.
With respect to claim 7, Doudney/Cohen teaches the invention as substantially claimed and discussed above. It is noted that Doudney teaches a different embodiment in which the pigment is a phosphorescent and mixed with the adhesive (see pg. 2, ll. 15, 24, pg. 6, ll. 13-15). It is noted that Cohen further teaches additional elements and multiple pigments added to the adhesive (see col. 5, ll. 21-33, col. 6, ll. 1-7, 49-62, col. 1, ll. 5-9, such that “pigments” are used, col. 6, ll. 7-11 such that glitter is added). Therefore, it is noted that it would have been obvious to modify Doudney/Cohen as discussed above in detail with the embodiment of Doudney to include a phosphorescent pigment in the colored adhesive taught by Cohen in order to allow for the user to have a glow in the dark effect on the teeth as desired.
With respect to claim 8, Doudney/Cohen teaches the invention as substantially claimed and discussed above, including Doudney further teaching the layer of colored dental adhesive is a resin tooth bonding agent (see pg. 2, ll. 5-9, pg. 5, ll. 22-31).
With respect to claim 9, Doudney/Cohen teaches the invention as substantially claimed and discussed above, including Doudney further teaching the tooth is etched with a phosphoric acid compound (see pg. 6, ll. 25-27).
With respect to claim 21, Doudney/Cohen teaches the invention as substantially claimed and discussed above, including Doudney further teaching the step of curing the layer of colored dental adhesive is performed with a curing light (pg. 4, ll. 1-2, pg. 5, ll. 33-34, pg. 6, ll. 1-3).
With respect to claim 26, Doudney/Cohen teaches the invention as substantially claimed and discussed above, including Doudney further teaching the layer of colored dental adhesive comprise a unit does of resin tooth bonding agent (see pg. 5, ll. 22-31, such that it is a resin adhesive and single dose is applied to the tooth, therefore the adhesive comprises a unit dose as claimed).
With respect to claim 27, Doudney/Cohen teaches the invention as substantially claimed and discussed above, including Cohen teaches the step of combining a dental adhesive with a pigment to form the colored dental adhesive (col. 5, ll. 21-33, claim 2-3, col. 6, ll. 1-7).
With respect to claim 28, Doudney/Cohen teaches the invention as substantially claimed and discussed above, including Cohen teaches wherein combining the dental adhesive with the pigment is performed by a dentist, user, or third-party col. 5, ll. 54-57, col. 6, ll. 1-7, such that the mixing is done by the user).
With respect to claim 29, Doudney/Cohen teaches the invention as substantially claimed and discussed above, including Doudney further teaching the method is performed with an esthetic alteration kit comprising the colored dental adhesive and the decal (see pg. 3, ll. 19-34, pg. 4, ll. 1-7, such that the colored adhesive includes the white filler as discussed above in detail).
With respect to claim 31, Doudney/Cohen teaches the invention as substantially claimed and discussed above. It is noted that Doudney teaches a different embodiment in which the pigment is a phosphorescent, specifically strontium aluminate or luminescent zinc sulphide, and mixed with the adhesive (see pg. 2, ll. 15, 24, pg. 5, ll. 8-9, pg. 6, ll. 13-15). It is noted that Cohen further teaches additional elements and multiple pigments added to the adhesive (see col. 5, ll. 21-33, col. 6, ll. 1-7, 49-62, col. 1, ll. 5-9, such that “pigments” are used, col. 6, ll. 7-11 such that glitter is added). Therefore, it is noted that it would have been obvious to modify Doudney/Cohen as discussed above in detail with the embodiment of Doudney to include a phosphorescent pigment of strontium aluminate or luminescent zinc sulphide in the colored adhesive taught by Cohen in order to allow for the user to have a glow in the dark effect on the teeth as desired.
With respect to claim 32, Doudney/Cohen teaches the invention as substantially claimed and discussed above, including Cohen teaching the pigment comprises at least one of mica, tin dioxide, fluorphlogopite, silica, polyurethane 11, chromium oxide green, chromium hydroxide green, ultramarines, manganese violet, bismuth oxychloride, bronze powder, caramel, carmine, p-carotene, copper powder, or guanine (see col. 7, l. 14, caramel color).
Claim(s) 6 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doudney (WO 2017/091087) as applied to claim 1 above, and further in view of Collodoro (2007/0298381).
Doudney teaches the invention as substantially claimed and discussed above including Doudney teaching the decal being temporary (see pg. 7, ll. 10-11, 21-23), however, does not specifically teach the method including the step of removing, by a user, the decal with a fingernail, a toothpick, or a hard object that will not damage the tooth surface.
Collodoro teaches a method of applying an esthetic alteration on a tooth surface comprising the steps of applying a layer of colored dental adhesive 70 to the tooth surface (such that it is applied at the time the decal 36 is applied to the tooth, see pars. 34-35) and placing a decal 36 on the tooth (such that it is an esthetic alteration).
With respect to claim 6, Collodoro further teaches the method further including the step of removing, by a user, the decal with a fingernail that will not damage the tooth surface (see pars. 2, 10, 14, 16, 25, 39, such that the user uses their fingertips which would include a fingernail, further as seen in pars. 2, 25, the tooth is not permanently altered, i.e. it is not damaged). It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the method of Doudney to include the step of removing the decal with a fingernail without damaging the tooth as taught by Collodoro in order to allow for easy remove, such that no additional tools are required to remove the decal.
With respect to claim 30, Doudney teaches the invention as substantially claimed and discussed above including Doudney teaching the kit further comprises an adhesive curing light and a tooth isolator (see pg. 3, ll. 19-34, pg. 4, ll. 1-4, such that the cotton rolls are the claimed tooth isolators as they can be placed in the mouth to isolate an area), however, does not specifically teach the kit further comprises an applicator.
Collodoro teaches the invention as substantially claimed and discussed above including carrying out the method using the kit wherein the kit comprises the dental adhesive, the decal and an applicator, and a curing light (see par. 16). It would have been obvious to one having ordinary skill in in the art before the effective filling date of the invention to modify the kit taught by Doudney to include an applicator as taught by Collodoro in order to easily control the application of the dental adhesive.
Claim(s) 7 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over 1 as applied to claim Doudney (WO 2017/091087) in view of Cohen (6,036,494) above, and further in view of Stemmer at el. (2018/0243051).
In an alternative, Doudney/Cohen teaches the invention as substantially claimed and discussed above, including Cohen teaching more than one pigment (see col. 5, ll. 21-33, col. 6, ll. 1-7, 49-62, col. 1, ll. 5-9, such that “pigments” are used), however, does not specifically teach the pigment is phosphorescent.
Stemmer teaches a method of cosmetically altering a tooth and with respect to claim 7, Stemmer further teach including the use of a phosphorescent in an adhesive (see pars. 49, 143, such that the paint is an adhesive in that it adheres to the surface of the tooth). It would have been obvious to one having ordinary skill in the art to modify the adhesive of Doudney/Cohen to includes a phosphorescent pigment in order to allow the user to decorate their teeth as they desire.
In an alternative, with respect to claim 31, Doudney/Cohen/Stemmer teaches the invention as substantially claimed and discussed above, however, Stemmer does not specifically teach the phosphorescent pigment is one of strontium aluminate or luminescent zinc sulphide. Doudney teaches an embodiment wherein a pigment can be added to the adhesive (i.e. the cosmetic enhancer, a phosphorescent is added to the binder) wherein the pigment comprises at least one of strontium aluminate or luminescent zinc sulphide (pg. 2, ll. 15, 24, pg. 5, ll. 8-9). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the phosphorescent taught by Stemmer to be one of strontium aluminate or luminescent zinc as taught by Doudney 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).
Claim(s) 22 and 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doudney (WO 2017/091087) as applied to claim 1 above, and further in view of Kunstadter et al. (5,759,039).
Doudney teaches the invention as substantially claimed and discussed above including Doudney teaching the decal being made of any suitable material (see pg. 5, ll. 15-17, col. 6, ll. 7-8) and of any desired thickness (see pg. 7, ll. 14-16), however, does not specifically teach the decal comprises a deign printed on a paper substrate, the paper substrate comprises a thickness between 8-10 microns and the design comprises a minimum resolution of 4800x1200 dots per inch.
Kunstadter teaches a method of applying an esthetic alteration on a tooth surface comprising the steps of applying a dental adhesive to the tooth surface (such that it is applied to the tooth with the decal, see abstract) and placing a decal on the tooth surface with the dental adhesive (see abstract).
With respect to claim 22, Kunstadter further teaches the decal comprises a design printed on a paper substrate (see abstract, col. 1, ll. 6-9, 24-31, col. 2, ll. 12-13). 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 decal taught by Doudney to be a decal printed on paper as taught by Kunstadter in order to easily create customized designs in a quick, easy and cost-effective manner. Furthermore, 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 decal to be paper as taught by Kunstadter 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).
With respect to claim 24, Doudney/Kunstadter teaches the invention as substantially claimed and discussed above including Doudney teaching the user selecting the desired thickness of the decal (see pg. 7, ll. 14-16), however, does not specifically teach the paper substrate comprises a thickness between 8-10 microns. It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the paper substrate of Kunstadter to be within the claimed thickness range as a matter of obvious design choice. Where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see MPEP 214404, IV, A). Such that Doudney teaches the thickness is a design choice as desired by the user (see pg. 7, ll. 14-16) and it would have been obvious to one having ordinary skill in the art to provide the decal to be relatively thin so as not to feel uncomfortable to the user. It is further noted that Doudney and Kunstadter teaches the decal is used in the same manner, i.e. on a tooth, and for the same reasons, such as applying a design to the tooth, and further the applicant does not disclose that the claimed thickness provides an advantage or any unexpected results, further teaches a wider thickness range (see par. 41).
With respect to claim 25, Doudney/Kunstadter teaches the invention as substantially claimed and discussed above including Kunstadter teaching the decal is printed on paper, however, does not specifically teach the design comprises a minimum resolution of 4800x1200 dots per inch. It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the printed design taught by Doudney/Kunstadter to have the claimed resolution in order to ensure that the design is of a high quality so that it can be easily recognized. Further it is noted that the printed decal of the prior art would not perform differently than the printed decal of the claimed invention.
Claim(s) 22 and 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doudney (WO 2017/091087) in view of Cohen (6,036,494) as applied to claim 1 above, and further in view of Kunstadter et al. (5,759,039).
Doudney/Cohen teaches the invention as substantially claimed and discussed above including Doudney teaching the decal being made of any suitable material (see pg. 5, ll. 15-17, col. 6, ll. 7-8) and of any desired thickness (see pg. 7, ll. 14-16), however, does not specifically teach the decal comprises a deign printed on a paper substrate, the paper substrate comprises a thickness between 8-10 microns and the design comprises a minimum resolution of 4800x1200 dots per inch.
Kunstadter teaches a method of applying an esthetic alteration on a tooth surface comprising the steps of applying a dental adhesive to the tooth surface (such that it is applied to the tooth with the decal, see abstract) and placing a decal on the tooth surface with the dental adhesive (see abstract).
With respect to claim 22, Kunstadter further teaches the decal comprises a design printed on a paper substrate (see abstract, col. 1, ll. 6-9, 24-31, col. 2, ll. 12-13). 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 decal taught by Doudney/Cohen to be a decal printed on paper as taught by Kunstadter in order to easily create customized designs in a quick, easy and cost-effective manner. Furthermore, 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 decal to be paper as taught by Kunstadter 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).
With respect to claim 24, Doudney/Cohen/Kunstadter teaches the invention as substantially claimed and discussed above including Doudney teaching the user selecting the desired thickness of the decal (see pg. 7, ll. 14-16), however, does not specifically teach the paper substrate comprises a thickness between 8-10 microns. It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the paper substrate of Kunstadter to be within the claimed thickness range as a matter of obvious design choice. Where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see MPEP 214404, IV, A). Such that Doudney teaches the thickness is a design choice as desired by the user (see pg. 7, ll. 14-16) and it would have been obvious to one having ordinary skill in the art to provide the decal to be relatively thin so as not to feel uncomfortable to the user. It is further noted that Doudney and Kunstadter teaches the decal is used in the same manner, i.e. on a tooth, and for the same reasons, such as applying a design to the tooth, and further the applicant does not disclose that the claimed thickness provides an advantage or any unexpected results, further teaches a wider thickness range (see par. 41).
With respect to claim 25, Doudney/Cohen/Kunstadter teaches the invention as substantially claimed and discussed above including Kunstadter teaching the decal is printed on paper, however, does not specifically teach the design comprises a minimum resolution of 4800x1200 dots per inch. It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the printed design taught by Doudney/Cohen/Kunstadter to have the claimed resolution in order to ensure that the design is of a high quality so that it can be easily recognized. Further it is noted that the printed decal of the prior art would not perform differently than the printed decal of the claimed invention.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doudney (WO 2017/091087) in view of Kunstadter et al. (5,759,039) as applied to claim 22 above, and further in view of Chu (2004/0071836)
Doudney/Kunstadter teaches the invention as substantially claimed and discussed above, however, does not specifically teach the paper is rice paper or tissue paper.
Chu teaches printing an image on rice paper or tissue paper (see pars. 21-22). It would have been obvious to one having ordinary skill in the art modify the paper that the printed design as taught by Doudney/Kunstadter is on to be rice paper as taught by Chu in order to provide as dissolvable backing for transferring the image (see abstract, par. 5).
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doudney (WO 2017/091087) in view of Cohen (6,036,494) in view of Kunstadter et al. (5,759,039) as applied to claim 22 above, and further in view of Chu (2004/0071836)
Doudney/Cohen/Kunstadter teaches the invention as substantially claimed and discussed above, however, does not specifically teach the paper is rice paper or tissue paper.
Chu teaches printing an image on rice paper or tissue paper (see pars. 21-22). It would have been obvious to one having ordinary skill in the art modify the paper that the printed design as taught by Doudney/Cohen/Kunstadter is on to be rice paper as taught by Chu in order to provide as dissolvable backing for transferring the image (see abstract, par. 5).
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doudney (WO 2017/091087) in view of Cohen (6,036,494) as applied to claim 1 above, and further in view of Collodoro (2007/0298381).
Doudney/Cohen teaches the invention as substantially claimed and discussed above including Doudney teaching the kit further comprises an adhesive curing light and a tooth isolator (see pg. 3, ll. 19-34, pg. 4, ll. 1-4, such that the cotton rolls are the claimed tooth isolators as they can be placed in the mouth to isolate an area), however, does not specifically teach the kit further comprises an applicator.
Collodoro teaches the invention as substantially claimed and discussed above including carrying out the method using the kit wherein the kit comprises the dental adhesive, the decal and an applicator, and a curing light (see par. 16). It would have been obvious to one having ordinary skill in in the art before the effective filling date of the invention to modify the kit taught by Doudney/Cohen to include an applicator as taught by Collodoro in order to easily control the application of the dental adhesive.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 27-28 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 and 38-39 of copending Application No. 18/307348 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The claims 1 and 3 of ‘348 teaches the limitations of claim 1 of the current application including a method of applying a decal on a tooth surface comprising the steps of: applying an initial layer of colored dental adhesive to the tooth surface as a first applied layer of dental adhesive (see lines 1-4 of claim 1 of ‘348 for the application of the adhesive and decal and claim 3 of ‘348 for the adhesive being colored and including a pigment); and placing the decal on the layer of colored dental adhesive after applying the colored dental adhesive to the tooth surface (see lines 5-6 of claim 1 of 18/307348), wherein the decal is placed on the colored dental adhesive before the colored dental adhesive is cured (see lines 6-7 of claim 1 of ‘348), wherein the colored dental adhesive comprises a pigment (see claim 3 of application 18/307348).
With respect to claim 27 of the current application, claim 38 in application 18/307348 claims further including the step of combining a dental adhesive with the pigment to form the colored dental adhesive.
With respect to claim 28, claim 39 of application 18/307348 teaches combining the dental adhesive with the pigment is performed by a dentist, a user, or a third party.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed May 28, 2026 have been fully considered but they are not persuasive. The applicant argues that the prior art of Doudney does not teach the method in which the claimed colored adhesive is the first applied layer of dental adhesive to the tooth. The applicant references pg. 6, ll. 10-13 in which an embodiment for long term bond is taught in which a bonding resin is applied and cured to the tooth and then the colored adhesive is applied to the tooth. However, it is noted that on page 7, ll. 10-11, Doudney teaches an embodiment in which a temporary bond in wanted, such that the colored adhesive (i.e. the binder) is applied to the tooth “without using a resin bond”. In other words, in the embodiment of a temporary bond, the colored adhesive is applied to the tooth as a first applied layer of dental adhesive. Such that the only difference in the long-term bond and temporary bond is the use of the resin bond. Therefore, the applicant’s arguments are not persuasive and the rejection is maintained.
The applicant further argues that the prior of Kunstadter does not teach the method of applying the colored adhesive to the tooth as first layer as claimed, however, it noted that the prior rat of Kunstadter is NOT being used to teach the claimed limitation, therefore, the applicant’s argument is moot and the rejection is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The prior art of Kunstadter has been cited to teach clear dental decays applied to teeth.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEIDI MARIE EIDE whose telephone number is (571)270-3081. The examiner can normally be reached Mon-Fri 9:00-4:00.
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/HEIDI M EIDE/Primary Examiner, Art Unit 3772 3/12/2026
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