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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, Species B in the reply filed on 3/12/26 is acknowledged. Claims 3 and 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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, 2 and 4-13 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.
In claim 1, the limitation “the outer perimeters of the orthodontic placement device” lacks proper antecedent basis.
Claim 4 recites “the second one of the first plurality of layers to form the upper surface, wherein the first of the first plurality of layers and the second of the plurality of layers”. This limitation is indefinite for two reasons. First, It is not clear how the second one of the first plurality of layer can form the upper surface of the body (as recited in claim 1). The body comprises both the first plurality of layer AND the second plurality of layers. In such context, the uppermost layer of the second plurality of layers would form the upper surface of the body. Second, it’s not clear to which previously recited layer and plurality of layers “the second of the plurality of layers” refers.
In claim 8, the limitation “the plurality of platforms” lacks proper antecedent basis.
The terms “high” and “lower” in claim 11 are relative terms which render the claim indefinite. The term terms “high” and “lower” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brodkin et al. (US 6322728) with support from US 5340656 (incorporated by reference), in view of John et al. US (2011/0101570), and further in view of Wen (US 2006/0093987)
As to claim 1, Brodkin discloses a method of manufacturing an orthodontic placement device, comprising: directly fabricating an orthodontic placement device (C3, L25-27) comprising a first (at least two lowermost layers and a second (at least two uppermost layer) plurality of layers of resin to form a body (C2, L40-45; C3, L60 – C4, 12) comprising a lower substantially planar (fig 2d, 8 of US Patent No. 5340656, hereby incorporated by reference (C3, L17-24)) surface and an upper surface by: forming a first (lowermost layer deposited) layer of the first plurality of layers of resin on a build plate (support for powder/resin – C3, L63 – C4, 12), the first layer of the of first plurality of layers forming the lower substantially planar surface, and wherein at least the first layer of the first plurality of layers is cured (C4, L40-41) to a first strength (C2, L40-45; C3, L60 – C4, 41), wherein at least a second one of the first plurality of layers is formed, and forming the plurality of layers (C2, L40-45; C3, L60 – C4, 41).
Brodkin does not disclose that the curing of the first layer of the of first plurality of layers comprises: applying a first cure dose via a first mask including outer perimeters for forming the orthodontic placement device and a first area of infill having an infill pattern; determining a second cure dose and second mask for the first of the first plurality of layers of resin to compensate for warpage, the second mask including a second area of infill; and curing the first of the first plurality of layers with a second cure dose with the second mask, wherein the first and second cure doses cure at least the first of the first plurality of layers, and wherein at least the second one of the first plurality of layers is cured to a second strength to inhibit warpage of the body.
John discloses a method of curing a first photopolymer layer of a plurality of layers (para 53, 27), with a first cure dose with a first mask (bitmap 1) including perimeters and a first area of infill pattern (fig 3, 4, para 63); determining a second cure dose and second mask (bitmap 2) for the first of the plurality of layers of resin on the build plate to compensate for warpage (para 29-31, 41-44, 63-65, the second mask including a second area of infill curing (fig 3-4, para 63); and curing the first of the plurality of layers on the build plate with the second cure dose with the second mask, wherein the first and second cure doses cure at least the first of the plurality of layers to a first strength (figs 3A-3B, 4; para 39-44, 56-63). Additionally, John discloses at least the second one of the plurality of layers is cured to a second strength to inhibit warpage of the body (para 40-48 – use of “Additional” bitmaps will yield controlled hardening beyond first layer).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Brodkin such that the curing of the first layer of the of first plurality of layers comprises: applying a first cure dose via a first mask including outer perimeters for forming the orthodontic placement device and a first area of infill having an infill pattern; determining a second cure dose and second mask for the first of the first plurality of layers of resin to compensate for warpage, the second mask including a second area of infill; and curing the first of the first plurality of layers with a second cure dose with the second mask, wherein the first and second cure doses cure at least the first of the first plurality of layers, and wherein at least the second one of the first plurality of layers is cured to a second strength to inhibit warpage of the body as taught by John as doing such increases the quality, hardness, tolerance and accuracy of the device (para 44).
Brodkin and John do not disclose a plurality of registration structures shaped to engage a surface of a patient's detention extending between the lower substantially planar surface and the upper surface.
Wen teaches a plurality of registration structures shaped to engage a surface of a patient's detention extending between the lower substantially planar surface and the upper surface (fig 1, 120; para 38, 55, fig 4, 10a-d)
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Brodkin and James such that a plurality of registration structures shaped to engage a surface of a patient's detention are formed extending between the lower substantially planar surface and the upper surface as taught by Wen above as such enables proper alignment upon attaching (para 38, 55).
As to claim 2, Brodkin, discloses that the shape of the device can be a shape disclosed by US Patent No. 5340656, hereby incorporated by reference (C3, L17-24). ‘656 discloses at least one orthodontic attachment and at least one support extending between the attachment and the body, coupling the orthodontic attachment to the body (figs 2d, 8). Furthermore, Brodkin discloses that the shape of the placement device is designed based on the shape of the patient’s tooth in order to ensure proper function and fit (C3, L34-45). Therefore, one of ordinary skill in the art would have understood to shape the orthodontic attachment complimentary to the surface of the tooth to which it is to be bonded as suggested by C3, L34-45 of Brodkin.
Since Brodkin discloses forming all the layers of the device by directly fabricating a plurality of layers, Brodkin with support from ‘656 discloses the attachment and support and directly fabricating the layers to form the support and a plurality of attachment layers to form the orthodontic attachment.
As to claim 4, Brodkin discloses directly fabricating the second one of the first plurality of layers at the upper surface (upper layer of product), but stops short of disclosing the first of the first plurality of layers and the second of the plurality of layers are fabricated with a greater amount of polymer cross-linking than an amount of polymer cross-linking of an inner plurality of layers between the first of the first plurality of layers and the second one of the first plurality of layers.
However, John discloses that the amount of cross-linking (cure) in each layer is a design choice that can be varied, as it effects hardness, surface quality and accuracy. John further states that the difference in cure between layers is to be optimized (para 44). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to fabricate the first of the first plurality of layers and the second of the plurality of layers with a greater amount of polymer cross-linking than an amount of polymer cross-linking of an inner plurality of layers between the first of the first plurality of layers and the second one of the first plurality of layers.
As to claims 5-6, one of ordinary skill would have achieved the same cross-linking in the first and second layers, and the same cross-linking among the inner layers by performing routine experimentation to achieve the optimal results.
As to claim 7, changes in dimensions are obvious absent criticality presented by the applicant. MPEP 2144.04.
Claim(s) 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Brodkin, John and Wen, as applied to claim 1 above, and further in view of Manners (US 5965079)
As to claims 8-10, both John (para 44, 67, 68) and Brodkin (C3, L15-24) disclose varying the shape to any desired shape based on the specific requirements of the device’s purpose. However, John, Wen and Brodkin do not expressly disclose that the first layer forms a pattern of platforms extending from the build plate, wherein the pattern comprises one or more of a checkerboard pattern, a tile pattern, or a stripe pattern, and wherein the platforms to have an area between twenty-five percent and seventy-five percent of an area bounded by a perimeter of the plurality platforms.
Manners discloses a pattern of platforms at the lower surface of the object (fig 2a-2b, 7-12, discussion of said figures), wherein the pattern comprises one or more of a checkerboard pattern, a tile pattern, or a stripe pattern, and wherein the platforms to have an area between twenty-five percent and seventy-five percent of an area bounded by a perimeter of the plurality platforms (fig 18a-18b).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, for the first layer of the first plurality of layers to form a pattern of platforms extending from the build plate, wherein the pattern comprises one or more of a checkerboard pattern, a tile pattern, or a stripe pattern, and wherein the platforms to have an area between twenty-five percent and seventy-five percent of an area bounded by a perimeter of the plurality platforms as taught by Manners above as changes in the shape are obvious absent criticality demonstrated by the applicant. MPEP 2144.04.
As to claim 11, Manners discloses directly fabricating the plurality of layers of the platforms to form a taper that widens from a face of a platform towards the upper surface (fig 9a-9b).
As to claims 12-13, Manners discloses the lower surface having a checkerboard pattern, a tile pattern, or a stripe pattern comprising areas of resin having a high amount of polymer cross-linking and areas of resin having a lower amount of polymer cross-linking (col 35, l 24- col 36, l 61, figs 17a-19c, 24).
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 and 4-13 re rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,115,719. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations recited in claims 1-13 of ‘719 encompass all the limitations of the instant claims 1, 2 and 4-13. .
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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