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 .
Election/Restrictions
Claims 12-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/01/2026.
Applicant’s election without traverse of group I, claims 1-11, in the reply filed on 4/02/2026 is acknowledged.
Drawings
The drawings are objected to because the standards set forth in 1.84:
Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications.
Solid black shading areas are not permitted, except when used to represent bar graphs or color.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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.
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 1-11 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 claims 1 and 11, it is unclear what is meant by “net radially inward force”. The term “net” implies a total effect, but it is unclear what other forces are meant to be taken into consideration. While the tooth may have a net force applied from a plurality of parts of the orthodontic device, a single projection is understood to apply one force. Furthermore Paragraph 0011 of the specification recites that “the net radially inward force may be a gripping (e.g., constricting) force”. This is understood to be an instance where opposite direction forces are acting on the tooth resulting in a possible net zero force on the tooth. It is unclear if the net radially inward force is a force from a single projection or a total (net) force applied to the tooth. The scope of the claim itself is unclear and the specification fails to provide clarity that would allow one of ordinary skill in the art to determine the scope of the claim.
Regarding claims 1, 7 and 11, it is unclear what is meant by “extends between 30% and 80% of the inner surface” and “extends between 20% and 90% of an inner surface”. It is unclear if this is referring to a percent of a circumference of the inner surface or a percent of an area of the inner surface.
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.
Claim(s) 1, 4-7, 9 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Andrews (US 4591341).
Regarding claims 1 and 7, Andrews discloses an orthodontic device 10 comprising:
a body comprising a plurality of tooth-receiving cavities 12a/b/c having a first shape corresponding to a target dental arch position (figure 1; Col, lines 5-10; Col. 2, lines 10-12: “accelerating the rate of movement”),
wherein the body applies a first orthodontic force against one or more target teeth of a dental arch of a patient ((figure 1; Col, lines 5-10; Col. 2, lines 10-12: “accelerating the rate of movement”),
wherein said first orthodontic force generates movement of said one or more target teeth toward a target tooth position corresponding to the target dental arch position ((figure 1; Col, lines 5-10; Col. 2, lines 10-12: “accelerating the rate of movement”);
wherein a tooth-receiving cavity of the plurality of tooth receiving cavities includes a radial grip 14/16 comprising one or more projections 18 (figures 1-3) arranged around a radius of an interior of the tooth-receiving cavity (figures 1-3) configured to apply a net radially inward force on a tooth held within the tooth-receiving cavity (each projection and/or combination of projections creates a force in a radial direction; also note that the forces applied are dependent on the tooth present such that this amounts to an intended use of the device),
further wherein the radial grip extends between 30% and 80% of an inner surface of the interior of the tooth-receiving cavity (figures 1 and 3; also note that “an inner surface” may be interpreted as being any inner surface; for example, a lingual surface, a buccal surface, a portion of the lingual surface, etc).
Regarding claim 4, wherein the radial grip comprises a band extending around the interior of the tooth-receiving cavity (figures 1 and 2).
Regarding claim 5, wherein the radial grip comprises a plurality of projections arranged symmetrically around the interior of the tooth-receiving cavity (figure 3).
Regarding claim 6, wherein the one or more projections arranged around the radius of the interior of the tooth-receiving cavity are on a buccal side and a lingual side of the interior of the tooth-receiving cavity (figures 1 and 3).
Regarding claim 9, the radial grip comprises a textured surface (the surface of suction cups 18 forms a texture along the strip; see figures 1 and 2).
Regarding claim 10, wherein the first orthodontic force (force applied to a first tooth in a first cavity) is applied in addition to the net radially inward force (force applied to a second tooth in a second cavity).
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boronkay (US 20170007368 A1).
Regarding claims 1-3, 7 and 11, Boronkay discloses an orthodontic device 570 comprising:
a body 504 comprising a plurality of tooth-receiving cavities having a first shape corresponding to a target dental arch position (abstract),
wherein the body applies a first orthodontic force against one or more target teeth of a dental arch of a patient (abstract; may be any of the forces applied by any of the cavities on any of the teeth),
wherein said first orthodontic force generates movement of said one or more target teeth toward a target tooth position corresponding to the target dental arch position (abstract);
wherein at least one tooth receiving cavity of the plurality of tooth receiving cavities includes a radial grip comprising one or more projections (paragraph 0119: pads, plugs, balloons, bands, springs, scaffolds, meshes, or combinations thereof) arranged around a radius of an interior of the at least one tooth-receiving cavity (such as 572 in figure 5E or 589 in figure 5G) to apply a net radially inward force on a tooth held within the at least one tooth-receiving cavity (each projection and/or combination of projections creates a force in a radial direction; also note that the forces applied are dependent on the tooth present such that this amounts to an intended use of the device), further wherein the radial grip extends between 30% and 80% of an inner surface of the interior of the at least one tooth-receiving cavity (figure 5E and 5F).
Boronkay does not specifically disclose that the embodiments of figures 5E and 5F have the projections with a prominence relative to the inner surface of between about 0.1 mm and 0.7 mm. However, Boronkay discloses that the compliant portion can have a thickness withing the claimed range (paragraph 0095) and that the compliant inner structure can include the discrete structures (paragraph 0119). Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing to modify the embodiments of figures 5E and 5F to have the one or more projections have a prominence relative to the inner surface of between about 0.1 mm and 0.7 mm, as taught by the disclosure of Boronkay, for the purpose of the projections effectively performing the functions of the compliant layer as set forth in Boronkay.
Regarding claim 4, wherein the radial grip comprises a band extending around the interior of the tooth-receiving cavity (paragraph 0119: “bands”; the band when applied to an inner surface of the cavity would extend at least partially around the interior of the cavity).
Regarding claim 5, wherein the radial grip comprises a plurality of projections arranged symmetrically around the interior of the tooth-receiving cavity (figures 5E and 5F).
Regarding claim 6, wherein the one or more projections arranged around the radius of the interior of the tooth-receiving cavity are on a buccal side and a lingual side of the interior of the tooth-receiving cavity (figures 5E and 5F; paragraph 0120)
Regarding claim 8, wherein the radial grip has a rounded edge (figures 5E and 5F).
Regarding claim 9, wherein the radial grip comprises a textured surface (figure 5F – the projections form a texture as shown in the figure).
Regarding claim 10, wherein the first orthodontic force (abstract; force applied to a first tooth in a first cavity) is applied in addition to the net radially inward force (force applied to a second tooth in a second cavity).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC J ROSEN whose telephone number is (571)270-7855. The examiner can normally be reached Monday-Friday 930am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward Lefkowitz can be reached at (571) 272-2180. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC J ROSEN/Supervisory Patent Examiner, Art Unit 3772
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