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
Drawings
Figure 5 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it is longer than 150 words and contains legal phrases like “comprising”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1, and 9 are objected to because of the following informalities: Claims 1 and 9 similarly recite “ the maxilla of a patient” and “the maxillary arch”, and “the right and left molars”, but should recite “a maxilla of a patient” and “a maxillary arch” and “a right and left molars”. Appropriate correction is required.
Claim 1 recites the limitation "the distal element" in line 17, which should read “a distal element.
Claim 1 recites the
Claims 4 and 12 recite the limitation of “wherein the left and/or right posterior (5) and anterior retention arms are connected by a palatal reinforcement wire” which should read “wherein a first left and/or right posterior (5) and anterior arm”.
Claim 6 recites the limitation "the support" in line 1. Which should read “a support”.
Claim 7 recites the limitation "the retention" in line 4-5, which should read “a retention”.
Claim 8 recites the limitation "the rear head" in line 2, which should read “a read head”.
Claim 9 recites the limitation "the distalization" in line 3, which should read “a distalization”.
Claim 9 recites the limitation "the distal element" in line 20, which should read “a distal element”.
Claim 14 recites the limitation "the support" in line 1, which should read “a support”.
Claim 15 recites the limitation "the retention" in line 4-5, which should read “a retention”.
Claim 16 recites the limitation "the rear head" in line 2, which should read “a read head”.
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.
Claims 1-16 are rejected under 35 U.S.C. 101 because 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 1-16 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).
Claims 1 and 9 recites in lines 9-11 and 12-14 respectively“ which rest one the palatal surface of the teeth in front of the right and left molars to which the first pair of right and left bands are fixed”, in lines 18-19 and 21-22 respectively “from a molar to which this band is attached” which actively recites the palatal and molars of a human organism. The claims should be amended to make clear the arms and bands are only intended/adapted “to rest against” or “adapted to be attached”
Claim 7 recites in line 2 “ a band fixed to the molar” and “a mesial element fixed by its base to canine” in line 3 which actively recites a band attached to the molar.
Claims 8 recites in line 3 “ a band fixed to the molar” and “an adaptation plate on a canine” in line 6 which actively recites a band attached to the molar.
Claims 15 recites in line 2 “ a band fixed to the molar” and “a mesial element fixed by its base to canine” in line 3 which actively recites a band attached to the molar.
Claims 16 recites in line 3 “ a band fixed to the molar” and “an adaptation plate on a canine” in line 6 which actively recites a band attached to the molar.
Any claim depending upon a claim that actively recites a portion of human organism itself also recites the limitation of the human organism.
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 1-13 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.
Claim 1 recites the limitation "each retention arm" in line 13, however this renders the claim indefinite as being unclear if the “each retention arm” is referring to the “first symmetrical pair of posterior retention arms”, the “ on symmetrical pair of anterior retention arms”, the “second symmetrical pair of posterior arms”, or all of such retention arms. As such any prior art which provides for any of the retention arms being formed of two distinct segments will be deemed to provide for the claim limitation.
Regarding claim 2, the phrase "preferably a spherical ball-and-socket joint" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 4 and 12 recite the limitation of “wherein the left and/or right posterior (5) and anterior retention arms are connected by a palatal reinforcement wire” however it is unclear if this is further defining the first or second posterior arms or both. For purposes of examination any prior art that provide for any scenario will be deemed to provide for the claim limitations.
Claim 7 recites the limitation of “a distal element including a band (3) fixed to the molar”, however claim 7 depends from claim 1 which recites “a first pair or bands (3)” in line 6, and as such it is unclear if the “a band(3)” is meant to be one of the bands of claim 1 or a new band. The claim will be considered provided for by either reading. Should applicant desire the band of claim 7 to be one of the pair of bands of claim 1 it would be written as “including a band of the pair of bands”.
Claim 9 recites the limitation "each retention arm" in line 13, however this renders the claim indefinite as being unclear if the “each retention arm” is referring to the “first symmetrical pair of posterior retention arms”, the “ on symmetrical pair of anterior retention arms”, the “second symmetrical pair of posterior arms”, or all of such retention arms. As such any prior art which provides for any of the retention arms being formed of two distinct segments will be deemed to provide for the claim limitation.
Regarding claim 10, the phrase "preferably a spherical ball-and-socket joint" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Any claim depending upon an indefinite claim is itself indefinite as also including the indefinite limitation from which it depends.
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, 3-6, 9, and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liou et al. (US 6,334,771 B1).
Regarding claims 1 and 9, Liou discloses a kit comprising at least one orthodontic device adapted to fit on the maxilla of a patient (Fig. 7), at least one holding element able to be attached to a mandibular tooth (Fig. 8 element 84/41), and at least one return member (Fig. 8 element 8) able to couple a distalization set (Fig. 8 element 32/3) and the holding element to allow distalization (Fig. 8 could be used for distalization depending upon patient’s anatomy a needs, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex Parte Masham, 2 USPQ F.2d 1647 (1987)) ,
wherein the orthodontic device comprises:
A) at least one central expander (Fig. 5 element 741/7) incorporating an expansion screw (Fig. 5 element 74) allowing its expansion and, consequently, that of the patient’s maxillary arch, said central expander (2) being attached to:
A1) A first symmetrical pair of posterior retention arms (Se annotate image below), each retention arm being coupled to a band (Fig. 5 element 11) of a first pair of bands (Fig. 5 elements 11 on molar teeth) allowing the device to be fixed on the right and left permanent molars of the patient’s maxillary arch (Fig. 5 element 11/1, column 3 lines 23-24 disclosing element 1 is a molar tooth),
A2) At least one symmetrical pair of anterior retention arms which rest on the palatal surface of the teeth in front of the right and left molars to which the first pair of right and left bands are fixed (See annotate image below);
wherein the said at least one central expander is also attached to:
A3) a second symmetrical pair of posterior retention arms with each retention arm being formed of two distinct segments (see annotate image below), with a first segment coupled to a band of the first pair of bands (see annotate image below) and a second segment coupled to the central expander (see annotate image below),
the first and second segments being connected by a joint (Fig. 5 element 76);
and at least one of the bands of the first pair of bands also constitutes the distal element of a set (Fig. 5 elements 32) which could be used for the distalization of a series of multiple teeth from the molar to which this band is attached, said distalization set comprising at least two elements (fig. 5 element 3, 31, and 32).
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Regarding claim 4, 6, 12, and 14, Liou further discloses where a left and/or right posterior and anterior arms are connected by a palatal reinforcement wire that has a support in the form of an extension that in front of the anterior retention arm (see annotate image above).
Regarding claims 3, 5, 11, and 13, Liou discloses each first retention arm having a length and the palatal reinforcement wire having a length and each length thus including points all along each length that can be determined to be broken at any point (see image above, a breakpoint does not require any structure beyond a point that can be broken and a review of the disclosure fails to provide for any additional structure beyond a point that can be broken. Further regarding the limitation of “predetermined” as best understood in light of the specification this is a determination made by the orthodontist during use as the specification does not disclose the predetermined breakpoint as requiring and structure beyond being part of the length of the arm or wire and as such it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex Parte Masham, 2 USPQ F.2d 1647 (1987). As Liou has the recited arms and wire that have lengths with are a length of points then the portions are able to be predetermined to be broken at any point based on an users predetermining).
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.
Claims 2 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Liou et al. (US 6,334,771 B1) in view of Testa et al. (US 6,358,255 B1).
Regarding claims 2 and 10, Liou discloses structure substantially identical to the instant application as discussed above, including where the joint takes the form of a hinge/fulcrum (Fig. 5 element 76, column 3 lines 11-13) but fails to explicitly disclose where fulcrum is a spherical ball and socket joint.
However, Testa discloses a distraction device (title and abstract) having a central expander (Fig. 3 element 1) for palatal distraction (Fig. 3) with a set of symmetrical anterior arms (Fig. 3 elements 1a) and first and second set of posterior arms (Fig. 3 elements 11) where one of the posterior arms includes a first and second segment connected by a joint that is a spherical ball and socket joint (Fig. 3/2 first segment 211 and second segment extends from 111 with 111 being a spherical ball and socket joint).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the spherical ball and socket joint as taught by Testa into the hinge/fulcrum joint as taught by Liou for the purpose of providing a hinge that can be connected and able to orient along different axes and a connection permitting relative angular positioning around the joint as taught by Testa (column 2 lines 49-59).
Claims 7, 8, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Liou et al. (US 6,334,771 B1) in view of Droy et al. (FR 2979225, translation cited).
Regarding claims 7 and 15, Liou discloses structure substantially identical to the instant application as discussed above, including a distalization set (Fig. 8 element 32/3) with a band fixed to the molar (Fig. 5 element 3 fixed to 11) and with a coupling box fixed to its buccal surface (Fig. 5/8 element 3) but fails to explicitly recite where the distalization set further has a mesial element fixed by its base to a canine in front of the molar, said mesial element comprising an anterior projection with an outer part allowing for the retention of a return member, and a posterior curved projection ending in a spherical joint at its tip, where the spherical joint of the mesial element is inserted into the coupling box of the distal element.
However Droy discloses a distalization set (Fig. 4 element 101) with a band fixed to the molar (Fig. 4 element 110) with a coupling box fixed to its buccal surface (Figs. 4/5 element 140) and a mesial element fixed by its base to a canine in front of the molar (Fig. 2 element 10), said mesial element comprising an anterior projection with an outer part (Fig. 1/2 element 14/15) allowing for the retention of a return member (Fig. 1 retention element 30 can be hooked on 14 or 15 based on need), and a posterior curved projection (Fig. 4 element 120) ending in a spherical joint at its tip (Fig. 3 element 22/27), where the spherical joint of the mesial element is inserted into the coupling box of the distal element (Fig. 5 element 127 inserted in element 140 via 141).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate a mesial element fixed by its base to a canine in front of the molar, said mesial element comprising an anterior projection with an outer part allowing for the retention of a return member, and a posterior curved projection ending in a spherical joint at its tip, where the spherical joint of the mesial element is inserted into the coupling box of the distal element as taught by Droy into the distalization set as taught by Liou for the purpose of for correction of teething defects according to the needs of a patient’s teeth as taught by Droy (page 1 description lines 7-8).
Regarding claims 8 and 16 Liou discloses structure substantially identical to the instant application as discussed above, including where a distalization set comprises:
1) a distal element, corresponding to the rear head including a band ( Fig. 5 element 11) fixed to the molar and provided, on its buccal surface, with a mounting accessory that includes a sleeve (Fig. 5 element 3 being a sleeve passing 31); but fails to explicitly disclose where the distal element includes: a front fixing head that includes an adaptation plate on a canine and a bent rod that holds this plate; and an intermediate element comprising an anteroposterior arm and two joints located opposite each other on the anteroposterior arm, one joint connecting the anteroposterior arm to the front fixing head, and the other joint connecting the anteroposterior arm to the mounting accessory attached to the buccal surface of the band.
Droy discloses a distalization set (Fig. 4 element 101) with a band fixed to the molar (Fig. 4 element 110) with a coupling box fixed to its buccal surface (Figs. 4/5 element 140) and a front fixing head that includes an adaptation plate on a canine (Figs. 2/4 element 10), a bent rod (Fig. 4 element 103)that holds this plate; and an intermediate element comprising an anteroposterior arm (Fig. 4 element 120) and two joints located opposite each other on the anteroposterior arm (Fig. 4 elements 122 and 121), one joint connecting the anteroposterior arm to the front fixing head (Fig. 4 element 122), and the other joint connecting the anteroposterior arm to the mounting accessory (Fig. 4 element 121 connected to 140) attached to the buccal surface of the band (Fig. 4 element 140 on buccal surface of 110).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate a front fixing head that includes an adaptation plate on a canine and a bent rod that holds this plate; and an intermediate element comprising an anteroposterior arm and two joints located opposite each other on the anteroposterior arm, one joint connecting the anteroposterior arm to the front fixing head, and the other joint connecting the anteroposterior arm to the mounting accessory attached to the buccal surface of the band as taught by Droy into the distalization set as taught by Liou for the purpose of for correction of teething defects according to the needs of a patient’s teeth as taught by Droy (page 1 description lines 7-8).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P SAUNDERS whose telephone number is (571)270-3250. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached 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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/M.P.S/ Examiner, Art Unit 3772 03/06/2026
/EDELMIRA BOSQUES/ Supervisory Patent Examiner, Art Unit 3772