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 .
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 2-12, 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims as detailed in table below of U.S. Patent No. 10,537,405; 11,596,499; and 12,171,634. Although the claims at issue are not identical, they are not patentably distinct from each other because including a step of fabrication would be obvious in order to apply the treatment, designing virtually is a well known means, and dimensional data/size refer to the same characteristics.
Present Invention
10,537,405
11,596,499
12,171,634
2
1
1
12
3 dim data
1
1
12
4 mv
12
5 virt geometry
12
6 dim + sf
1
1
7 avail space
2, 3
10
8 other teeth
6
5
12
9 sf + treat
3
10
10 virt model
4
6
12
11 i/o/d/d/c + sf
1
12 mv
12
13
14
15
16
12
17
12
18
16
19 sf + dim
1
1
20 ging
8
2
21 m states
10
4
22 other teeth
6
5
12
Claim Objections
Claim 9 is objected to because of the following informalities: Claim 9 recites “c2onfigured” which appears to mean “configured”. Appropriate correction is required.
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 19-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite receiving data. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because storing and retrieving information in memory is well-understood, routine, conventional computer function MPEP 2106.05(d).
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 2-22 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 2 recites the limitation "the dental appliance" in line 4. Claim 11 recites “wherein generating…”, however there is no generating step to which the appears to refer. Claim 20 recites “the gingiva” in line 3. There is insufficient antecedent basis for these limitations in the claim.
Claim 2 recites “an unerupted or erupting tooth” in line 6, claim 3 recites “a virtual dental model” in line 2, claim 6 recites “a virtual dental model” in line 2, claim 7 recites “an unerupted or erupting tooth” in line 4, claim 9 recites “an unerupted or erupting tooth” in line 2, claim 10 recites “a series of dental appliances”, claim 11 recites “an unerupted or erupting tooth” in line 2 and “a scaling factor” in line 8, claim 12 recites “a dental appliance” in line 3 and “a cavity” in line 14, claim 15 recites “a patient” in the last line, claim 17 recites “a plurality of cavities” in line 2, claim 19 recites “a cavity” in the second to last line, and claim 21 recites “a patient” in the last line. These making it unclear if they are referring to the previously recited or an additional.
Claim 14 recites “further comprising a plurality of cavities for accommodating…wherein the plurality of cavities…includes the cavity”, however the claim from which it depends has already established these as separate entities and it is therefore unclear if this is referring to additional cavities for unerupted teeth or the same.
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 2-3, 10, 19-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bergsen (US 2003/0224314).
Bergsen shows a method of manufacturing a dental appliance for a patient configured to accommodate an unerupted or erupting tooth ([0156]), the method comprising receiving a virtual dental model for one or more dental appliances of a series of dental appliances ([0156] discusses creation and therefore receiving of the models), wherein the dental appliance comprises a shell body having a plurality of cavities therein designed to receive teeth of a jaw (Fig. 2A) with at least one of the plurality of cavities configured to accommodate an unerupted or erupting tooth therein (erupting tooth 20 received therein), wherein at least one of a size, shape, location, and orientation of at least one of the plurality of cavities for accommodating the unerupted or erupting tooth are based upon a prediction of at least one of a size, shape, location, or orientation of the unerupted or erupting tooth ([172] for instance); and fabricating the one or more dental appliances from the virtual dental model ([156]). With respect to claim 3, wherein receiving the virtual dental model comprises receiving a virtual dental model ([156]) wherein the prediction of the at least one of the size, shape, location, or orientation of the unerupted or erupting tooth is based on dimensional tooth data for at least one dimension of at least one of the patient's teeth based on one or more tooth eruption prediction factors ([156]-[157] discusses predicted size/shape). With respect to claim 10, further comprising generating the virtual dental model for one or more dental appliances of a series of dental appliances ([156], [194] for instance).
Method claim 19 is rejected similarly to the above without the fabrication step. With respect to claim 20, wherein the cavity for accommodating the unerupted or erupting tooth includes a gingival edge 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 ([197] for instance discusses designing based on the gingival undercuts/edge. With respect to claim 21, wherein the cavity for accommodating the unerupted or erupting tooth has 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 ([181] for instance discusses utilization of multiple appliances to adjust for the stages of eruption). With respect to claim 22, wherein the cavity for accommodating the unerupted or erupting tooth has 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 to the unerupted or erupting tooth ([157]-[158] discusses utilizing all the other teeth in the mouth, which would include those adjacent, for prediction means).
Conclusion
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
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