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Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.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, other than mica, are being given the filling date of the current application (6/28/2024).
Information Disclosure Statement
The information disclosure statements (IDS) submitted on December 31, 2024 and March 2, 2026 are noted. 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 Objections
Claim 1 is objected to because of the following informalities: In the preamble the applicant claims the method of applying “an esthetic alteration” on a tooth and in the body of the claim, “a decal” is applied to the tooth. It is noted that in the preamble “an esthetic alteration” is believed to be in error for -a decal- Appropriate correction is required.
Claim 3 is objected to because of the following informalities: On line 2 of the claim “the esthetic alteration” is believed to be in error for -the decal-. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: On line 1 of the claim “the esthetic alteration” is believed to be in error for -the decal-. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: On line 1 of the claim “the dental adhesive” is believed to be in error for -the colored dental adhesive-. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: On line 2 of the claim “the esthetic alteration” is believed to be in error for -the decal-. Appropriate correction is required.
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.
Claim 7 is 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.
It is unclear how the limitation of claim 7 including the pigment is phosphorescent is further limiting the claimed pigments of claim 1. It is noted that for exanimation purposes, the limitation is being interpreted as the listed pigments include some pigments that are phosphorescent and some that are not phosphorescent and claim 7 requires the pigment to be one of the claimed pigments that is a phosphorescent, as it is further limiting the pigment as being required to be phosphorescent, however, the applicant should amend the claim to clarify.
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, and 26-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doudney (WO 2017/091087) in view of Loveridge (2006/0194172).
Doudney teaches a method of applying an esthetic alteration on a tooth surface comprising the steps of applying a layer of colored dental adhesive to the tooth surface (see pg. 2, ll. 3-9, pg. 5, ll. 22-31, such that the colored adhesive is the binder which is white), placing a decal on the layer of dental adhesive (see pg. 2, ll. 3-7, pg. 5, ll. 15-17, pg. 7, ll. 3-4). Doudney further teaches the user of a pigment including strontium aluminate (see pg. 5, ll. 8-9) as a cosmetic enhancer and that a cosmetic enhancer, while not specifically the pigment, can be combined with the colored dental adhesive (see pg. 2, ll. 15, pg. 6, ll. 14-17) 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). Such that the method taught by Doudney teaches the colored adhesive including a pigment in the embodiment in which the cosmetic enhancer are mixed together and also teaches applying the decal and that more than one cosmetic enhancer can be applied to the tooth, however, does not specifically teach the colored dental adhesive comprises a pigment and the pigment comprises one of mica, tin dioxide, fluorphlogopite, strontium aluminate, luminescent zinc sulphide, silica, polyurethane 11, chromium oxide green, chromium hydroxide green, ultramarines, manganese violet, bismuth oxychloride, bronze powder, caramel, carmine, p-carotene, copper powder, or guanine.
Loveridge teaches a method comprising the steps of applying a layer of colored dental adhesive to a tooth surface, wherein the layer of colored dental adhesive comprises a pigment and the pigment comprises strontium aluminate (see abstract, see pars. 3, 38-39, 45). It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify Doudney with the colored dental adhesive including the pigment in order to achieve the desired esthetic alteration of the tooth. Such that by the addition of the pigment the esthetic alteration would allow for a phosphorescent look in addition to the decal.
With respect to claim 2, Doudney/Loveridge teaches the invention as substantially claimed and discussed above including Doudney further teaching 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/Loveridge teaches the invention as substantially claimed and discussed above including Doudney teaching 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.
With respect to claim 3, Doudney/Loveridge teaches the invention as substantially claimed and discussed above including Doudney teaching the decal is removably 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.
With respect to claim 7, Doudney/Loveridge teaches the invention as substantially claimed and discussed above including Doudney teaching the pigment is a phosphorescent (pg. 2, ll. 24, pg. 3, ll. 10, pg. 5, ll. 8-9) and Loveridge further teaching the pigment is a phosphorescent (see pars. 3, 38-39, 45).
With respect to claim 8, Doudney/Loveridge 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/Loveridge 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/Loveridge 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/Loveridge 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 29, Doudney/Loveridge 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).
With respect to claim 27, Doudney/Loveridge teaches the invention as substantially claimed and discussed above including 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). Further Loveridge teaches the step of combining a dental adhesive with a pigment to form the colored dental adhesive (pars. 39, 51, 55, 74).
With respect to claim 28, Doudney/Loveridge teaches the invention as substantially claimed and discussed above including Doudney teaching 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).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doudney (WO 2017/091087) in view of Loveridge (2006/0194172) as applied to claim 1 above, and further in view of Nikutowski et al. (6,528,555).
Doudney/Loveridge teaches the invention as substantially claimed and discussed above including Doudney teaching the colored dental adhesive comprising a color additive (see pg. 5, ll. 29-31), however, does not specifically teach the color additive is a Food, Drugs and Cosmetics (FD&C) and/or Drugs & Cosmetics (D&C) color additive.
Nikutowski teaches a colored dental adhesive comprising color additives and further teaches with respect to claim 5, wherein the color additives are Food, Drugs and Cosmetics (FD&C) and/or Drugs & Cosmetics (D&C) color additives (see abstract, col. 4, ll. 66-67, col. 5, ll. 1-9). It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the colorant taught by Doudney/Loveridge to be a Food, Drugs and Cosmetics (FD&C) colorant as taught by Nikutowski to ensure that the colorant is safe for use in the oral environment.
Claim(s) 6 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doudney (WO 2017/091087) in view of Loveridge (2006/0194172) as applied to claim 1 above, and further in view of Collodoro (2007/0298381).
Doudney/Loveridge 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/Loveridge 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/Loveridge 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/Loveridge to include an applicator as taught by Collodoro in order to easily control the application of the dental adhesive.
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 Loveridge (2006/0194172) as applied to claim 1 above, and further in view of Kunstadter et al. (5,759,039).
Doudney/Loveridge 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/Loveridge 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/Loveridge/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), 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/Loveridge/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/Loveridge/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 Loveridge (2006/0194172) in view of Kunstadter et al. (5,759,039) as applied to claim 22 above, and further in view of Yamada (2014/0293307).
Doudney/Loveridge/Kunstadter teaches the invention as substantially claimed and discussed above, however, does not specifically teach the paper is rice paper or tissue paper.
Yamada teaches printing of rice paper or tissue paper (see pars. 39-40). It would have been obvious to one having ordinary skill in the art modify the paper that the printed design is on to be tissue paper or rice paper as taught by Yamada as a matter of obvious design choice. Such as it is well known that both tissue paper and rice paper are very thin and when placed in the mouth, the thickness of the decal would not bother the user. Further it is noted that Yamada teaches a laundry list of paper and paper products that are known equivalents.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4 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 3-4 of ‘348 teaches the limitations of claim 1 of the current application including a method of applying an esthetic alteration on a tooth surface comprising the steps of: applying a layer of colored dental adhesive to the tooth surface (see lines 1-3 of claim 1 and claims 3-4 of application 18/307348); and placing a decal on the layer of dental adhesive (see line 4 of claim 1 of 18/307348) , wherein the layer of colored dental adhesive comprises a pigment (see claim 3 of application 18/307348), and wherein the pigment comprises at least one of mica, tin dioxide, fluorphlogopite, strontium aluminate, luminescent zinc sulphide, 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 claim 4 of application 18/307348, such that the pigment is mica, such that the claimed pearlescent or matte mica of claim 4 would read on the claimed mica in the current application).
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/HEIDI M EIDE/Primary Examiner, Art Unit 3772 3/12/2026