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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/24/25 has been entered.
All previous claim interpretation under 35 USC 112, F is maintained herein.
Response to Arguments
Applicant's arguments filed 9/24/25 have been fully considered but they are not persuasive and additionally do not address the new grounds of rejection and/or interpretation below necessitated by Applicant’s amendments.
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 1-4, 7, 19, and 22-34 are 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.
Regarding claim 1, the claim recites that the rod is configured to be anchored directly to the palate bone, which is on the lingual side of the teeth. However, the claim later states that the force can be applied on the palatal face of the vestibular face of the tooth. It is unclear how the device could be arranged such that the rod is anchored to the palate/palatal side but the force from the rotation device is applied on the vestibular side of the tooth. As best understood by the Examiner, the force and rod location would be on the same side. Clarification is required.
All other claims not specifically addressed above are rejected based on their dependency on a previously rejected claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 22-24 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Regarding claims 22 and 24, the claims should be amended to state that the anchor is “configured to anchor” the first end directly to the palate bone so as to not improperly attempt to claim the palate bone. Claim 23 is rejected based on its dependency on claim 22. Correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 7, 19 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Angle (US 1014029) in view of Hilgers (US 2010/0129766 A1).
Regarding claim 1, Angle discloses a device for displacement of an upper molar (capable of being used on an upper molar if so desired, see Figs. 1-3, and 8) comprising a mesiopalatal cusp (molar implicitly including mesiopalatal cusp), comprising: a support (16) configured to be fixed to the upper molar (configured to be used as such; see explanation above), a rod (1 and 11) comprising a first end (e.g. distal most end where connected with anchor teeth 3) arranged such that when the device is in place, the rod has a given position relative to the upper molar (see Figs), a rotational hinge (18) between the support (16) and the rod (1 and 11), said rotational hinge comprising an axis of rotation (axis of 11 and 18) intended to be fixed relative to said rod (via band) and to be perpendicular to the occlusal plane (see Fig. 8), said axis of rotation being intended to be arranged close to the mesiopalatal cusp of the upper molar (device is capable of being placed on a molar if so desired, and thereby close to the cusp), and a rotation device (2, see Fig. 3) configured to apply a force able to rotate said upper molar about the axis of rotation (see page 2, lines 5-30 and page 1 lines 95-110), so that said upper molar has a distal rotation (capable of applying distal rotation force dependent on location placed), said force being applied either to the palatal face of the molar or to a vestibular face of the molar (see Figs).
Angle further discloses wherein the rod (1) comprises a pin (11) intended to form the axis of rotation (see Figs.) and the support (16) comprises a housing (18) for said pin or the support comprises a pin intended to form the axis of rotation and the rod carries a housing for said pin, the pin and the housing forming the rotational hinge (see Fig. 8; per claim 2); wherein the rotation device is configured to apply force to the palatal face of the molar (configured to apply palatal force if placed on palatal side with lingual archwire placement; configured to be placed as such if desired) and wherein said rotation device comprises at least one torsion spring (2) comprising coils (8) and two radially extending strands (9 and 10), said coils being mounted on the pin (see Fig. 8), one strand (10) being fixed to the support and the other strand (9) being fixed to the rod (1), the attachment of the other strand to the rod causing the spring to be loaded (at least in part; per claim 3); wherein the support is a ring intended to be mounted about the first upper molar (see ring 16; configured to be placed about an appropriately sized and shaped first molar if so desired; per claim 19); and wherein the rod (1) comprises a pin (11) intended to form the axis of rotation and arranged close to the mesiopalatal cusp of the upper molar (see explanation above), wherein the rotation device is configured to apply the force to the palatal face of the molar (see explanation above) and wherein said rotation device comprises at least one torsion spring (2) comprising coils (8) and two strands (9 and 10), said coils (8) being mounted on the pin (see Fig. 8), said device being configured to be connected to the support by means of one strand (10) of the torsion spring (see citations above; per claim 7).
Angle, however, does not teach wherein the rod comprises a first end intended to be anchored directly to a palate bone, the device further comprising a bone anchor anchoring the first end directly to the palate bone (per claim 22), wherein the first end comprises a loop adapted to receive the bone anchor (per claim 23), or wherein the first end of the rod is configured to cooperate with the bone anchor for directly anchoring the first end to the palate bone (per claim 24) as required.
Hilgers, however, teaches a similar orthodontic device comprising a rod in the form of an archwire and a bone anchor (see Fig. 1-2), the archwire/rod comprising a first end (distal most ends) comprising a loop adapted to receive the bone anchor (see Fig. 2), the first end of the rod with loop and bone anchor intended to be anchored/anchor the first end directly to the palate bone (adapted to be used on the lingual sides of teeth and thereby anchored to the palate bone if so desired). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the first end of the rod of Angle to include Hilgers’ first end with loops and bone anchor, as such modification would allow the device to apply both distalizing and intrusive force vectors (see Hilgers [0005]), while providing anchorage for the archwire and connection means to the anchor, thereby allowing for more efficient tooth repositioning when necessary. The Examiner notes that the device of Angle/Hilgers, as combined above would be adapted to be placed on the labial or palatal side of the teeth as desired, the device thereby being capable of anchoring directly to the palate bone (e.g. when placed and anchored on the palate/lingual side of the teeth).
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Angle in view of Hilgers, as combined above, further in view of Paus (US 2580042 A, previously cited).
Regarding claim 4, Angle/Hilgers, as combined above, discloses wherein the housing comprises a transverse slot (19) for the passage of the strand (10) attached to the support (see Fig. 8, Angle), and the housing allowing the coils to be positioned by transverse displacement of the spring (e.g. inserted transversely into slot form palatal or buccal side), but does not teach a lateral opening over the height of the housing as required.
Paus, however, teaches a similar displacement device (see Fig. 4) having a support (3) with a housing (15/14/5) for a pin (17), wherein the housing has a lateral opening over its height (e.g. gap between 15 and 15, which is closed by 14, extending across a part of its height). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the device of Angle/Hilgers, as combined above, to include Paus’ teaching of providing a lateral opening, as such modification would allow easier insertion and removal of the pin, allowing angled insertion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD MORAN whose telephone number is (571)270-5349. The examiner can normally be reached Monday-Friday 7 AM-4 PM EST.
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/EDWARD MORAN/Primary Examiner, Art Unit 3772