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 .
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 1-19 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 claim 1, the term “the facing surface” is indefinite as it is unclear whether it intends to refer to the “tooth facing surface” or another surface. The term “the appliance” is indefinite as it is unclear whether it intends to refer to the “orthodontic appliance” or another appliance. Clarification is required.
Regarding claim 2, the term “a plurality of shells” is indefinite as it contradicts claim 1, which requires “a shell”. Claim 1 should be amended to recite defining “at least one shell” or the like. The term “the body” is indefinite as it is unclear whether it intends to refer to the “transfer body” or another body. Still further, the term “a respective recess” is indefinite as it is unclear whether the term intends to refer to one of the previously recited recesses or another. Clarification is required.
Regarding claim 8, the term “the facing surface” is indefinite for the same reasons as described above.
Regarding claim 9, the term “and father including a channel” is indefinite as it is unclear what structure further includes the channel. Further the term “the appliance” is indefinite as it is unclear if it intends to refer to the recited “orthodontic appliance” or another appliance. Clarification is required.
Regarding claim 10, the terms “the facing surface” is indefinite for the same reasons as described above.
Regarding claim 11, the term “the facing surface” and “the appliance” are indefinite for the same reasons as explained above.
Regarding claim 12, the terms “the appliance body” is indefinite for the same reasons as explained above. Additionally, the term “the body” is indefinite as it is unclear whether the term intends to refer to the transfer body, crane body or appliance body. Clarification is required.
Regarding claims 13, 14 and 15, the term “the appliance” and “appliance” are indefinite for the same reasons as explained above.
Regarding claims 18 and 19, the term “the facing surface” is indefinite for the same reasons as explained above.
All other claims not specifically addressed above are rejected based on their dependency on a previously rejected claim.
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.
Claim(s) 1-11, 13, 15-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cinader et al (WO 2021/130624 A1, cited by Applicant).
Regarding the above claims, Cinader et al discloses a system (including transfer tray 204 and 506/508A) for indirect bonding of orthodontic appliances (see page 9*, lines 12-28), the system comprising: a transfer body (204) defining a shell (210) configured to receive an outer surface of a tooth of a dental arch and including an interior surface substantially conforming to the contour of at least one tooth of the dental arch (see page 7, lines 14-27), wherein the transfer body defines at least one recess within the shell (212); and an orthodontic appliance carrier (508A) arranged relative to the occlusal surface of the tooth (e.g. placed relative thereto via tray), the carrier comprising: a crane (A, below) including a crane body (B) having a tooth-facing surface (C), the facing surface configured to not contact an occlusal surface of the tooth when the transfer body is installed on the dental arch configured to not contact the occlusal surface when placed on labial or lingual surfaces of teeth), the orthodontic appliance (506), the appliance including a base (D) for bonding the appliance to the tooth and a body (E) including a perimeter (e.g. outer surfaces); and one or more coupling arms (512b) configured to connect the crane body to the appliance, wherein the coupling arms are frangible between the crane and the appliance (see citations above).
Cinader et al further discloses wherein the transfer body defines a plurality of shells (see Figs. 2), each respective shell of the plurality of shells configured to receive a respective tooth of a plurality of teeth, wherein the body defines a respective recess within at least two respective shells (see Fig. 2; per claim 2); wherein each recess includes at least the crane body (e.g. in embodiment of Fig. 5 one crane body would be provided for each attachment and each recess; per claim 3); wherein the crane body has a polygonal cross-sectional shape (e.g. end portions of body where 512b extend adjacent to are rectangular in cross section; per claim 4); wherein the crane body further includes opposing side surfaces (F) and at least one canted surface (G; arranged at an angle; where body is bent) opposed to the tooth facing surface (see below; per claim 5); wherein the interior surface of the recess is in contact with at least the canted surface of the crane body (e.g. canted portion is inserted into recess; see citations above; per claim 6); wherein the interior surface of the recess is in contact with the canted surface (see above) and at least one of the side surfaces (side surfaces contact recess, at least to some degree, as the tray is formed over the tooth model with recesses corresponding to the coupling portion; see page 16, lines 28-38; per claim 7); wherein the facing surface includes a coupling region (end portions where 512b extend adjacent from) from which the coupling arms project, and wherein the coupling region is located in a labial or lingual direction from the tooth when the transfer body is seated on the dental arch (e.g. labial or lingual dependent on if placed on labial or lingual sides of teeth; per claim 8); further including a channel encompassing the one or more coupling arms and at least a portion of the appliance (e.g. portion of depth of recess which correspond/overlap with location of arms and appliance when inserted in recess; per claim 9); wherein the one or more coupling arms project from the facing surface (H) in a direction back towards the tooth surface when the transfer body is seated on the dental arch (e.g. arms project towards tooth/bonding surface, either via width thereof or dependent on particular location attachment is placed (e.g. on an occlusal/labial or lingual corner, see Fig. 5; per claim 10); wherein each coupling arm of the one or more coupling arms includes at least one stress concentration region between the facing surface and the appliance (e.g. area of reduced size of 512b; page 5, lines 33-34; per claim 11); wherein the appliance body has a shape of an orthodontic attachment configured to transfer a force from a clear tray aligner to the tooth (configured to be used as such, see Fig. 5; per claim 13); wherein the crane, one or more coupling arms, and appliance are integrally formed through additive manufacturing (product by process limitation; not limited by the particular method (additive manufacturing, see MPEP 2113; nevertheless, see abstract and throughout; per claim 15); wherein the transfer body includes a thermoformed material (see page 17, line 8; per claim 16); wherein the transfer body includes an impression material (e.g. silicone; see page 17, lines 9-16; per claim 17); wherein the facing surface includes a coupling region (H) from which the coupling arms project (see above), wherein the coupling region projects outward in a labial direction, and wherein the appliance is configured to be bonded to a labial surface of the tooth (e.g. coupling region projects outward from tray/appliance body in a labial direction when placed on labial surface; per claim 18); and wherein the facing surface includes a coupling region (H) from which the coupling arms project (see above), wherein the coupling region projects outward in a generally lingual direction, and wherein the appliance is configured to be bonded to a lingual surface of the tooth (e.g. coupling region projects outward from tray/appliance body in a lingual direction when placed on a lingual surface; per claim 19).
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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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Cinader et al in view of Kim (KR 10-2362613).
Regarding claim 12, Cinader et al discloses wherein the appliance body includes three or more edges (e.g. perimeter edges, see above), but does not explicitly teach wherein each coupling arm is connected to the body along the same edge as required.
Kim, however, teaches a similar orthodontic bonding device comprising a plurality of coupling arms (40) connected to the same edge (top edge) of an orthodontic device (30; see Fig. 2). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the device of Cinader et al to include Kim’s teaching of connecting the arms on one side of the device, as such modification would merely involve a rearrangement of known parts of the device, which has been held to be within the skill of the ordinary artisan (see MPEP 2144.04(VI)(C)).
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Cinader et al in view of Tong et al (CN 113710191 A1).
Regarding claim 14, Cinader does not teach wherein the appliance is an orthodontic bracket.
Tong et al, however, teaches a similar orthodontic bonding tray system which can be used to place both brackets and attachments as needed (see abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the device of Cinader to include Tong’s teaching of using a bonding tray to place brackets as such modification would allow for similarly accurate and repeatable placement of components in use in a wire retained system; allowing for improved control of force application.
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 1-3, 5-10, 13-14, and 16-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,672,940. Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of the instant claims are encompassed by the patent claims.
Regarding claim 1, US 12672940 discloses a system for indirect bonding of orthodontic appliances, the system comprising: a transfer body defining a shell configured to receive an outer surface of a tooth of a dental arch and including an interior surface substantially conforming to the contour of at least one tooth of the dental arch, wherein the transfer body defines at least one recess within the shell; and an orthodontic appliance carrier arranged relative to the occlusal surface of the tooth, the carrier comprising: a crane including a crane body having a tooth-facing surface, the facing surface configured to not contact an occlusal surface of the tooth when the transfer body is installed on the dental arch, the orthodontic appliance, the appliance including a base for bonding the appliance to the tooth and a body including a perimeter; and one or more coupling arms configured to connect the crane body to the appliance, wherein the coupling arms are frangible between the crane and the appliance (see claim 1).
Regarding claim 2, US 12672940 discloses wherein the transfer body defines a plurality of shells, each respective shell of the plurality of shells configured to receive a respective tooth of a plurality of teeth, wherein the body defines a respective recess within at least two respective shells (see claim 2).
Regarding claim 3, US 12672940 discloses wherein each recess includes at least the crane body (see claim 3).
Regarding claim 5, US 12672940 discloses wherein the crane body further includes opposing side surfaces and at least one canted surface opposed to the tooth facing surface (see claim 4).
Regarding claim 6, US 12672940 discloses wherein the interior surface of the recess is in contact with at least the canted surface of the crane body (see claim 5).
Regarding claim 7, US 12672940 discloses wherein the interior surface of the recess is in contact with the canted surface and at least one of the side surfaces (see claim 6).
Regarding claim 8, US 12672940 discloses wherein the facing surface includes a coupling region from which the coupling arms project, and wherein the coupling region is located in a labial or lingual direction from the tooth when the transfer body is seated on the dental arch (see claim 7).
Regarding claim 9, US 12672940 discloses further including a channel encompassing the one or more coupling arms and at least a portion of the appliance (see claim 8).
Regarding claim 10, US 12672940 discloses wherein the one or more coupling arms project from the facing surface in a direction back towards the tooth surface when the transfer body is seated on the dental arch (see claim 9).
Regarding claim 13, US 12672940 discloses wherein the appliance body has a shape of an orthodontic attachment configured to transfer a force from a clear tray aligner to the tooth (see claim 10).
Regarding claim 14, US 12672940 discloses wherein the appliance is an orthodontic bracket (see claim 11).
Regarding claim 16, US 12672940 discloses wherein the transfer body includes a thermoformed material (see claim 12).
Regarding claim 17, US 12672940 discloses wherein the transfer body includes an impression material (see claim 12).
Regarding claim 18, US 12672940 discloses wherein the facing surface includes a coupling region from which the coupling arms project, wherein the coupling region projects outward in a labial direction, and wherein the appliance is configured to be bonded to a labial surface of the tooth (see claim 13).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached PTO892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD MORAN whose telephone number is (571)270-5349. The examiner can normally be reached Monday-Friday 7 AM-4 PM EST.
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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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/EDWARD MORAN/Primary Examiner, Art Unit 3772
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