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 .
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 1-15 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.
Claim 1 and 7 recite “a bubble-like form”, however it is unclear exactly what this language encompasses. Figure 2 shows the bubble-like forms wherein 280 and 210 show convex and concave features that mimic those of a patients teeth. These are not purely round or typical of a bubble. Additionally, paragraph 0041 goes on to state that x-ray image data of the tooth that has not fully erupted can be used to make the bubble shape more precise, leading away from a bubble/spherical form. Due to this, the “bubble-like” shape of the present invention would seem to be equivalent to the reference below. While the statement about “represents the maximum extent to which a tooth should extend outward from a reference point in three dimensions” provides some information about the applicant’s invention, there is presently not a special definition that defines the term for analysis of the claim scope. When providing a special definition, it must be done in a manner that is clear and unmistakable.
Claim Rejections - 35 USC § 102
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 1-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kitching (US 2008/0294405).
Kitching shows an apparatus comprising an appliance designed to implement at least a portion of a treatment plan (Fig. 7), comprising a shell having a plurality of cavities therein designed to receive teeth of a jaw (shell teeth of 710) with at least one of the plurality of cavities being a cavity for accommodating an unerupted or erupting tooth therein (at 768; [0106]-[0107]), the cavity having a bubble-like form (see 112 above) to accommodate the unerupted or erupting tooth wherein the cavity is configured to avoid contact with the erupting tooth (the shell 710 having a space 768 for accommodating the erupting tooth 741; see particularly annotated Fig. 1D below showing an erupting tooth that would avoid any contact with the appliance).
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With respect to claim 2, wherein the cavities for accommodating an unerupted or erupting tooth include a gingival edge (at bottom portion of 710 that will run along gingiva) and wherein the gingival edge is oriented and shaped based upon a prediction of at least one of the orientation and shape of the gingiva that will be adjacent to the gingival edge (this is again considered product-by-process, however Kitching discusses this in [0106]). With respect to claim 3, wherein the cavities for accommodating an unerupted or erupting tooth each differ in at least one of: size, shape, location, or orientation (aside from each cavity for a different tooth needing to be in a different location, [0091] discusses generation based on different factors). With respect to claim 4, wherein the cavities for accommodating an unerupted or erupting tooth have at least one characteristic of: size, shape, location, or orientation based on data representing the unerupted or erupting teeth in multiple states of eruption that is based upon one or more tooth eruption prediction factors of at least one fully erupted tooth of a patient (this is considered product-by-process where only the resulting structure of an appliance with cavities for the teeth and unerupted teeth are provided as detailed above). With respect to claim 5, wherein the cavities for accommodating an unerupted or erupting tooth have at least one characteristic of: size, shape, location, or orientation based on data including at least one of: a size, shape, location, and orientation of a tooth adjacent, opposing or of a same type of tooth to the unerupted or erupting tooth (this is considered product-by-process where only the resulting structure of an appliance with cavities for the teeth and unerupted teeth are provided as detailed above). With respect to claim 6, further wherein the cavity configured to accommodate the unerupted or erupting tooth is sized in part based on a scaling factor for a first projected dimension of a cavity for accommodating the unerupted or erupting tooth as the tooth erupts (this is considered product-by-process where only the resulting structure of an appliance with cavities for the teeth and unerupted teeth are provided as detailed above).
Apparatus claims 7-15 are rejected similarly to the above as they have the same limitations. Additionally, with respect to claim 8, wherein the scaled first projected dimension is scaled using a scaling factor based on a calculation of available space in a corresponding dimension around the unerupted or erupting tooth and sized such that the unerupted or erupting tooth will not contact a surface of the cavity as the tooth erupts during a period of treatment (this is considered product-by-process where only the resulting structure of an appliance with cavities for the teeth and unerupted teeth are provided as detailed above). With respect to claim 9, wherein the cavity configured to accommodate the unerupted or erupting tooth is positioned to accommodate the unerupted or erupting tooth as the tooth erupts during the period of treatment (this is considered product-by-process where only the resulting structure of an appliance with cavities for the teeth and unerupted teeth are provided as detailed above; [106]). With respect to claim 10, wherein the dental appliance is based on a virtual dental appliance (this is considered product-by-process where only the resulting structure of an appliance with cavities for the teeth and unerupted teeth are provided as detailed above; “virtual model”, 741).
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive. Upon further examination, the language of “bubble-like form” is unclear in exactly what it entails, for reasons detailed in the 112 rejection above.
Additionally, Kitching shows particularly in annotated Fig. 1D above that a tooth at the lower eruption stage would avoid any contact with the apparatus, and is approximately bubble-like when comparing the present invention’s drawings and specification regarding bubble-like to the prior art.
Conclusion
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 MATTHEW NELSON whose telephone number is (571)270-5898. The examiner can normally be reached on Monday-Friday 7:30am-5:00pm EDT.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eric Rosen, at (571) 270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW M NELSON/Primary Examiner, Art Unit 3772
