DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Species G in the reply filed on 05/18/2026 is acknowledged. Accordingly, claims 11, 23, 52 and 53 are withdrawn from consideration as being not readable upon the elected species.
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 1,2,6,8,9,12-14,16,17,20,24,34,35,54 and 55 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,259,899. Although the claims at issue are not identical, they are not patentably distinct from each other because the more specific patent claims encompass the broader application claims. Following the rationale of In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1,9,14, 16,20,24,35,54 and 55 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Christoff et al. (US 6,071,119).
Christoff discloses An orthodontic device comprising: a bracket (20b) having a retention cavity sized and shaped to receive and support an orthodontic wire, the retention cavity extending along a lateral axis of the orthodontic device, the orthodontic device having a transverse axis perpendicular to the lateral axis and a vertical axis perpendicular to the lateral and transverse axes (Figs. 7-8) ;a clip (34b) to be coupled to the bracket and to be positioned over the orthodontic wire in use, the clip configured to move along a first direction at a first angle relative to the transverse axis of the orthodontic device to retain the orthodontic wire in the retention cavity (col. 10, ln 7-38, Figs. 7-8 show the clip moving over the archwire); and a wedge member (54b)to be coupled to the bracket, the wedge member configured to move along a second direction at a second angle relative to the transverse axis, the second angle different from the first angle (Figs. 7,8 – 54b conforms at a direction towards the archwire when engaged with bracket); and a frictional adjustment mechanism comprising at least the wedge member (Figs. 7,8 – 34b and 54b form frictional adjustment mechanism), the frictional adjustment mechanism capable of exerting an adjustable frictional force against the orthodontic wire, including a range of sliding frictional forces in which the orthodontic wire is slidable relative to the bracket and at least one non-sliding frictional force that prevents sliding of the orthodontic wire in use when the orthodontic wire is subject to typical orthodontic forces (Figs 7-8, col. 10 ln 7-38; the contact of tab 54b with archwire 50b is considered capable of preventing sliding); wherein the frictional adjustment mechanism is capable of exerting adjustable frictional force against the orthodontic wire (col. 10, ln 7-38); wherein the wire (40b) is disposed between the bracket and the wedge member (Figs. 7 and 8); wherein the retention cavity extends along a lateral axis of the orthodontic device, the device having a transverse axis perpendicular to the lateral axis (Figs. 7-8); wherein the wedge (54b) has a surface angled relative to a vertical axis that is non-parallel relative to the lateral axis and the transverse axis (Figs. 7,8); wherein the clip and wedge member is capable of moving between a plurality of operation modes (col. 10, ln 7-38); the modes including a first sliding mode where the wire is slidable relative to the bracket (Fig. 7, col. 10,ln. 7-38) and a second locked mode in which the wire is locked to the bracket (Fig. 8, col. 10, ln. 7-38); wherein the wedge member in the sliding mode is at a position different than the wedge member at a locked mode (Figs. 7, 8); wherein the locked mode, the wedge member has a surface that contacts exerts a locking force against the wire (Fig. 8, col 10, ln 7-38);where in the frictional adjustment is capable of applying a continuously variable frictional force against the wire (col 10, ln 7-38; movement of 54b applies an increased force to the wire 40b as 54b moves to the right).
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.
Claims 2,12,13 and 17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Christoff et al. or, in the alternative, under 35 U.S.C. 103 as obvious over Christoff et al.
Christoff discloses an orthodontic device having a wedge member (54b) that appears to have a tapered surface (Figs. 7,8 shows to taper at the top thereof) and wherein the wedge member appears to have varying thickness (Figs. 7-8; the portion of 32b extending below the top half of bracket 20b is shown to have a smaller thickness than 54b). However, if the applicant disagrees with the anticipatory rejection, it would have been obvious to one having ordinary skill in the art to change the shape of the Christoff’s wedge member to include the taper and variable thickness, since it has been held that a mere change in shape involves routine skill in the art. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Christoff et al. in view of Lin et al. (US 9,492,246).
Christoff discloses the invention substantially as claimed except for wherein the wedge member includes on or a plurality of tooling apertures.
Lin teaches an orthodontic device similar to Christoff that includes a sliding clip/wedge member with a tool aperture (139) in order to allow the practitioner to move the clip/wedge member (column 5, lines 47-64). It would have been obvious to one having ordinary skill in the art to modify Christoff provide a tool aperture, as taught by Lin, to allow the user to better hand and position the clip/wedge member of the orthodontic device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 Form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNIL K SINGH whose telephone number is (571)272-3460. The examiner can normally be reached M-F 9:00AM - 5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward Lefkowitz can be reached at 571-272-2180. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722
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