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
Response to Arguments
Applicant's arguments filed 06/16/2026 have been fully considered and have overcome the previous rejection under 103 over Fallah et al. (US 2012/0225398 A1) in view of Benarouch et al. (US 2018/0021107 A1). The claims are still rejected under nonstatutory Double Patenting over U.S. Patent No. 12,193,906.
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.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 is a species of current claim 2.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 is a species of current claim 2.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 is a species of current claim 3.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 recites powder bed fusion which occurs in layers, also sheet lamination with occurs layer by layer and is a species of current claim 4.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 recites powder bed fusion which uses a laser and is a species of current claim 5.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 is a species of current claim 7.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 is a species of current claim 8.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 is a species of current claim 9.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 is a species of current claim 10.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 17 is a species of current claim 11.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 18 is a species of current claim 12.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 19 is a species of current claim 13.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 20 is a species of current claim 14.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 is a species of current claim 15.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 recites the elongated connector would be made of a photopolymerized material which would have made an elastic spring type structure by its material properties.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 recites the elongated connector would be made of a powder bed fusion material which would use a metal with is a type of rigid material.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 is a species of current claim 18.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because It would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the second end of the second elongated connector a separated end, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,193,906. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 is a species of current claim 20.
Claim 21 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,193,906 in view of Benarouch et al. (US 2018/0021107 A1).
Regarding claim 21, Claim 11 of 12,193,906 discloses structure substantially identical to the instant application claim fails to explicitly disclose where shell is of a different material than the shafts/arms.
However, Benarouch further discloses a system of additively manufacturing an archwire as discussed above and further discloses where the archwire can be made of polymer (paragraph [0018] all) and the bracket is made of a different material such as metal or ceramic (paragraph [0119] all).
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 device that is attached to teeth to be made of a different material than another interconnecting device as taught by Benarouch into the shell of 12,193,906 for the purpose of providing a for material selections would be allow one device to not damaging the other when they interacted as taught by Benarouch (paragraph [0118] all).
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 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, Edelmira Bosques can be reached at (571) 270-5614. 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 08/17/2026
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772
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