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.
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Claim 2 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1, of US Patent No 12,251,287. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
As per claim 2 in the instant invention, the following is a claim analysis chart comparison:
Instant Invention, Claim 2
12,251,287 Claim 1
2. A computer-implemented method for generating one or more orthodontic appliances for treating a patient's teeth, the method comprising:
1. A method for fabricating one or more orthodontic appliances for treating a patient's teeth, the method comprising:
modeling a movement path to move a tooth of the patient from an initial arrangement towards a target arrangement;
determining a movement path to move a tooth from an initial arrangement towards a target arrangement;
mapping a location on the tooth of a center of rotation of a variable gable bend of the one or more orthodontic appliances configured to generate at least a portion of the movement path of the tooth when the one or more orthodontic appliances having the variable gable bend are in contact
with the tooth;
determining a variable gable bend of the one or more orthodontic appliances to produce at least a portion of the movement path of the tooth when the variable gable bend is in contact with the tooth, wherein the variable gable bend includes a variable rotation about a center of rotation along an axis extending along the length of the tooth, wherein an amount of the variable rotation increases linearly as a function of radial distance from the center of rotation;
designing a geometry for a tooth receiving cavity of the one or more orthodontic appliances based at least in part on the mapped location of the center of rotation on the tooth and the variable gable bend;
determining a geometry for a tooth receiving cavity of the one or more orthodontic appliances based on the geometry of the variable gable bend;
generating instructions for fabricating the one or more orthodontic appliances having a tooth receiving cavity formed according to the geometry for the tooth receiving cavity; and
generating instructions for fabricating the one or more orthodontic appliances having a tooth receiving cavity formed according to the geometry for the tooth receiving cavity; and
transmitting the instructions for fabricating the one or more orthodontic appliances to an orthodontic appliance fabrication machine.
fabricating the one or more orthodontic appliances using a fabrication machine
As per claim 2 in the instant invention, the steps as laid out by this claim generally follow those in claim 1 of US Patent 12,251,287 (as shown in the table above). While the claims are not word-for-word identical repeats, the claims do appear to be obvious variations of one another in terms of the functionality being performed.
One difference between the instant application and claim 1 of US Patent 12,251,287 is that the instant application claim 2 includes modeling a movement path in the 1st step while claim 1 of US Patent 12,251,287 recites determining a movement path. This appear to be obvious variations of each other.
Another difference between the instant application and claim 1 of US Patent 12,251,287 is that the instant application claim 2 includes, in the 3rd step, further recites: designing a geometry for a tooth based at least in part on “the mapped location of the center of rotation on the tooth”. This also appears to be an obvious difference because in claim 1 of US Patent 12,251,287 in the 2nd step the variable gable bend is already based on a center of rotation on the tooth as well. In addition, as recited in the 3rd step in both documents, the designing a geometry for a tooth is also based at least in part on the variable gable bend as well.
Another difference between the instant application and claim 1 of US Patent 12,251,287 is that the instant application claim 2 includes transmitting the instructions to the fabrication machine in the last step while claim 1 of US Patent 12,251,287 only recites fabrication using the fabrication machine. Again, this is an obvious difference because in order to fabricate the design on a fabrication machine, the instructions of what to fabricate would have to have been transmitted or communicated to the fabrication machine in some manner. Thus, it would have been obvious to one of ordinary skill in the art to have performed these differences between the two documents.
Claims 3-6 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1, of US Patent No 12,251,287 in view of Gao et al. (US Pub 2017/0325909).
As per claims 3-5, claim 1 of US Patent No 12,251,287 alone does not teach the additional recited features. However, Gao teaches of digital models in paragraph [0090]. The claimed features of claims 4 and 5 are taught when the center of rotation from claim 1 of US Patent No 12,251,287 is applied to the digital tooth model as taught by Gao. It would have been obvious to one of ordinary skill in the art to use the claimed digital tooth model of Gao with claim 1 of US Patent No 12,251,287 in order to allow the model to be viewed, stored, and interacted with using a graphical user interface on a computer-based system. This may help the dentistry professional and/or patient view and inspect the teeth model of the patient and the orthodontic appliance prior to the orthodontic appliance being fabricated by the fabrication machine.
As per claim 6, claim 1 of US Patent No 12,251,287 alone does not teach the additional recited features. However, Gao teaches of the claimed forces in paragraph [0044] and [0092]-[0095]. The claimed features of claim 4 are taught when the center of rotation from claim 1 of US Patent No 12,251,287 is applied to the digital tooth model as taught by Gao. It would have been obvious to one of ordinary skill in the art to use the claimed forces of Gao with claim 1 of US Patent No 12,251,287 in order to better understand the teeth movements required for the orthodontic procedure. This may also help with the fabrication process to ensure that the orthodontic application is strong enough for the applied movements over time.
Allowable Subject Matter
Claims 11-21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 2-6 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hong (Pub No. AU 2015304112 B2).
As per claim 2, Hong teaches the claimed:
A computer-implemented method for generating one or more orthodontic appliances for treating a patient's teeth, the method comprising (Hong [0025] “Here, generating the 3D dental alignment model data may include”):
modeling a movement path to move a tooth of the patient from an initial arrangement towards a target arrangement (Hong [0029] “determining a rotational correction model for the rotational correction by protruding the contour portion towards a tooth surface and towards a direction of rotation at the two points”);
mapping a location on the tooth of a center of rotation of a variable gable bend of the one or more orthodontic appliances configured to generate at least a portion of the movement path of the tooth when the one or more orthodontic appliances having the variable gable bend are in contact with the tooth (Hong [00105] “Referring to FIG. 2, it can be seen that a misaligned tooth 202 requiring rotational correction can be rotated by choosing two points which are symmetrical with respect to the rotational center of the tooth and applying a force couple in the direction in which rotation is desired.”
Hong [0010] teaches that “although the existing transparent aligner may be great for pulling or pushing teeth, it cannot apply a strong rotating force on the teeth, so that it is ineffective for rotating correction”. However, Hong [0000] further teaches “a
Hong [00123-00124] “A rotational correction model 500 may be determined for providing rotational correction by protruding the contour at the two points towards the inward side of the tooth and in the direction of rotation (s608). The rotational correction model 500 may be applied to the 3D teeth alignment model data (s610)”
In this passage, Hong further discloses that the “support part extending from the insertion aligner part to the gums, where at least one of the tooth pockets is a first tooth pocket corresponding to a tooth that requires rotational correction” in Hong [0039] corresponds to the rotational correction model 500. The variable gable bend is the addition to the traditional transparent alignment that enforces the rotational correction of the misaligned tooth. );
designing a geometry for a tooth receiving cavity of the one or more orthodontic appliances based at least in part on the mapped location of the center of rotation on the tooth and the variable gable bend (Hong [0087] “The axis of rotation may be determined in consideration of the geometrical shape of the tooth” and Hong in figure 8 further teaches that the tooth rotational model is applied to the 3D dental alignment model data.);
generating instructions for fabricating the one or more orthodontic appliances having a tooth receiving cavity formed according to the geometry for the tooth receiving cavity (Hong [00102] “The generated 3D dental alignment model data may be used in generating design information for the patient's dental aligner. Here, the design information for the dental aligner may be design information modeled with 3D CAD and may be provided to and processed by a 3D printer to manufacture a dental aligner of a corresponding form”); and
transmitting the instructions for fabricating the one or more orthodontic appliances to an orthodontic appliance fabrication machine (In order to fabricate the design on a fabrication machine, the instructions of what to fabricate would have to have been transmitted or communicated to the fabrication machine in some manner. This is shown in figure 1 where the instructions from steps S104 and S106 are transmitted to step S110 for fabrication of the transparent aligner (one or more orthodontic appliances). Also, please see [[0142] as well).
As per claim 3, Hong teaches the claimed:
The computer-implemented method of claim 2, further comprising generating one or more digital models of at least a portion of the tooth (Hong [00102] “The generated 3D dental alignment model data may be used in generating design information for the patient's dental aligner. Here, the design information for the dental aligner may be design information modeled with 3D CAD and may be provided to and processed by a 3D printer to manufacture a dental aligner of a corresponding form”
In this passage, modeling with a 3D CAD is a digital model that is required in order for a 3D printer to manufacture the exact model.
As per claim 4, Hong teaches the claimed:
The computer-implemented method of claim 3, wherein mapping the location on the tooth of the center of rotation comprises mapping one or more digital locations of the center of rotation on the one or more digital models of the at least portion of the tooth (Hong claim 1: “determining a rotational correction model for the rotational correction by protruding the contour portion towards a tooth surface and towards a direction of rotation to apply forces at the two points in opposite directions about the center axis of the rotation”)
As per claim 5, Hong teaches the claimed:
The computer-implemented method of claim 4, wherein mapping the location on the tooth of the center of rotation further comprises selecting a digital location of the one or more digital locations of the center of rotation (Please refer to the explanation in claim 4).
As per claim 6, Hong teaches the claimed:
The computer-implemented method of claim 5, wherein modeling the movement path comprises determining a force system to move the tooth from the initial arrangement towards the target arrangement (Hong [00105] “Referring to FIG. 2, it can be seen that a misaligned tooth 202 requiring rotational correction can be rotated by choosing two points which are symmetrical with respect to the rotational center of the tooth and applying a force couple in the direction in which rotation is desired”).
Claim Rejections - 35 USC § 103
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.
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hong in view of Cao (Pub No. US 20090191502 A1).
As per claim 7, Hong alone does not explicitly teach the claimed limitations.
However, Hong in combination with Cao teaches the claimed:
The computer-implemented method of claim 6, wherein the force system comprises one or more forces and one or more torques (Cao [0117] “Accordingly, in one aspect, the n+1 or subsequent/target tooth position is first determined. Thereafter, the direction of movement to reach the target tooth position from the initial tooth position is determined. After determining the direction of movement, the amount or magnitude and direction of force and torque to reposition the tooth from the initial position to the target position is determined”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use force system comprising one or more torques as taught by Cao with the system of Hong in order to have sufficient magnitude to move the tooth into the target position.
As per claim 8, Hong alone does not explicitly teach the claimed limitations.
However, Hong in combination with Cao teaches the claimed:
The computer-implemented method of claim 7, further comprising generating one or more digital models of the one or more orthodontic appliances ( Hong [00102] “The generated 3D dental alignment model data may be used in generating design information for the patient's dental aligner. Here, the design information for the dental aligner may be design information modeled with 3D CAD and may be provided to and processed by a 3D printer to manufacture a dental aligner of a corresponding form”
In this passage, modeling with a 3D CAD is a digital model that is required in order for a 3D printer to manufacture the exact model).
As per claim 9, Hong alone does not explicitly teach the claimed limitations.
However, Hong in combination with Cao teaches the claimed:
The computer-implemented method of claim 8, wherein the one or more digital models of the one or more orthodontic appliances comprise one or more digital models of the tooth receiving cavity of the one or more orthodontic appliances (Hong [00102] “The generated 3D dental alignment model data may be used in generating design information for the patient's dental aligner. Here, the design information for the dental aligner may be design information modeled with 3D CAD and may be provided to and processed by a 3D printer to manufacture a dental aligner of a corresponding form”
In this passage, modeling with a 3D CAD is a digital model that is needed in order for a 3D printer to manufacture the exact model.
Hong [00101] “To be more specific, the progress between the current state of the teeth and the future target state of the teeth may be divided into several dozens of stages, with the 3D dental alignment model data generated for the teeth arrangement of each stage.”
In this passage, Hong further teaches that there are multiple stages as the patient works towards the future target state. It requires continuous redesign of the alignment model based on the digital model of the tooth and the digital model of the future state or next planned position. Thus, the new digital models will comprise of data from one or more digital models as each stage will be dependent on the previous and future stage).
As per claim 10, Hong alone does not explicitly teach the claimed limitations.
However, Hong in combination with Cao teaches the claimed:
The computer-implemented method of claim 9, wherein designing the geometry for the tooth receiving cavity of the one or more orthodontic appliances comprises designing the geometry of the one or more digital models of the tooth receiving cavity (Cao [0073] “With a specification of the desired final positions of the teeth and a digital representation of the teeth themselves, the final position and surface geometry of each tooth can be specified (step 140) to form a complete model of the teeth at the desired end of treatment. Generally, in this step, the position of every tooth is specified. The result of this step is a set of digital data structures that represents an orthodontically correct repositioning of the modeled teeth relative to presumed-stable tissue. The teeth and tissue are both represented as digital data”) to generate the one or more forces or the one or more torques, or both, when the one or more orthodontic appliances having the variable gable bend are in contact with the tooth (Cao [0117] “After determining the direction of movement, the amount or magnitude and direction of force and torque to reposition the tooth from the initial position to the target position is determined. Thereafter, profile of the appliance cavity and features/protrusions disposed therein, such as the geometry that would provide the most suitable load vector in the direction of the planned tooth movement is determined, as well as the optimal position of the shaped feature relative to the tooth surface. In this manner, the force/torque generated by the dental appliance is accurately directed in the desired direction, and also is configured with sufficient magnitude to move the tooth into the next planned position”
In this passage, Cao teaches a “dental appliance” that generates the calculated amount of force/torque required to rotate/move the tooth to the desired position. The orthodontic appliance that has a variable gable bend in the claimed invention corresponds to this dental appliance. Both are also only affective once in contact with the tooth).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to calculate the direction of force and torque to reposition the tooth as taught by Cao with the system of Hong in order to apply sufficient magnitude to effectively rotate the protruding tooth into the desired location.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH Y. LEE whose telephone number is (571)272-8374. The examiner can normally be reached 8am-5pm.
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SARAH Y. LEE
Examiner
Art Unit 2616
/DANIEL F HAJNIK/Supervisory Patent Examiner, Art Unit 2616
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