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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: central frame 702. 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. 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 Objections
Claims 2-20 objected to because of the following informalities: change “Claim” to “claim”. Appropriate correction is required.
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 1-20 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 1 recites “the body portion is configured to hold an appliance during installation of the appliance on the patient's teeth, and wherein the body portion includes a plurality of connection sections for temporarily connecting with the orthodontic appliance during installation, the plurality of connection sections being configured to release the appliance from the body portion, after the appliance is installed on the patient”, it is unclear if the appliance is the same as the orthodontic appliance mentioned in the preamble or an additional appliance. For the purpose of examination, the orthodontic appliance and the appliance are considered the same structure.
Claims 2-8 are rejected based on claim dependency on claim 1.
Claim 9 recites “the body portion is configured to hold an appliance during installation of the appliance on the patient's teeth; and providing a plurality of connection sections on the body for temporarily connecting with the orthodontic appliance during installation, the plurality of connection sections being configured to release the appliance from the body portion, after the appliance is installed on the patient” it is unclear if the appliance is the same as the orthodontic appliance mentioned in the preamble or an additional appliance. For the purpose of examination, the orthodontic appliance and the appliance are considered the same structure.
Claims 10-13 are rejected based on claim dependency on claim 9.
Claim 14, line 4 recites “an appliance” it is unclear if this is the same appliance as recited in line 1. For the purpose of examination, the appliances are considered the same appliance.
Claims 15-20 are rejected based on claim dependency on claim 14.
Claims 17 and 19 recites “an appliance” it is unclear if this is the same appliance as recited in the previous claim 14. For the purpose of examination, the appliances are considered the same appliance.
Claim 18 is rejected based on claim dependency on claim 17.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7-8 and 12-13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 recites “the central frame portion is configured to hold the platform during installation of the platform” and claim 12 “the method further comprises forming a central frame portion that extends within the arch shape of the body portion to hold the platform during installation of the platform on the patient”, however, claim 1 recites “an installation unit for installing an orthodontic appliance or a platform” then further discloses “the body portion is configured to hold an appliance during installation” and claim 12 recites “method of making an installation unit for installing an orthodontic appliance or a platform on a patient” and further discloses “the body portion is configured to hold an appliance during installation of the appliance on the patient's teeth”. Claim 1 and 12 discloses the installation of the orthodontic appliance and platform in alternative, but then further limits the claim to just the installation of the appliance. Claims 7 and 12 fail to further limit the precedent claim by switching to the installation of the platform. Claim 8 and 13 are rejected based on claim dependency on claim 7 and 12.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1, 3-9 and 11-13 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Curiel et al (US 2021/0251730).
Regarding claim 1, Curiel discloses an installation unit (jig 22) for installing an orthodontic appliance or a platform on a patient (par. 106 discloses the use of the jig to attach the pearls 15 or orthodontic appliance 10 including pearls and the wire), the installation unit (22) comprising:
a body portion (master jig 26) having a shape (cap 24) that corresponds to one or more teeth in one of the patient's jaws (par 93), wherein the body portion (26) is configured to hold an appliance during installation of the appliance on the patient's teeth (see figure 1-6), and
wherein the body portion (26) includes a plurality of connection sections (connector 27) for temporarily connecting with the orthodontic appliance during installation (par, 91 discloses the attachment of the connector to the pearl 15 of the appliance 10 including the pearls and wire), the plurality of connection sections being configured to release the appliance from the body portion, after the appliance is installed on the patient (par 122 discloses the connectors being releasably connected to the pearls 15 of the applaince).
Regarding claim 3, Curiel further discloses at least one slot or receptacle in or between the plurality of connection sections, for receiving and temporarily holding one or more sections of the orthodontic appliance (see figure 5).
Regarding claim 4, Curiel further discloses the body portion (26) having a shape corresponding to a plurality of teeth in the patient's jaw (see figure 5).
Regarding claim 5, Curiel discloses the body portion (26) has an arch shape corresponding to a dental impression of the patient's jaw (see figure 6A).
Regarding claim 6, Curiel discloses each connection section comprises a hook, tab or finger extension on the body portion (see figure 5, where the connector 27 is a finger or tab that extends).
Regarding claim 7, Curiel discloses the body portion (26) has an arch shape (see figures 1-6) and the installation unit further comprises a central frame portion (connectors 27B/27’B) extending within the arch shape of the body portion (see figure 5), the central frame portion is configured to hold the platform during installation of the platform on the patient (see figure 5 and par 113, where the platform is interpreted as the pearl 15b).
Regarding claim 8, Curiel further discloses the central frame portion (27 A/B) includes one or more connection sections for temporarily connecting with the platform during installation (see figure 5), the plurality of connection sections being configured to release the platform from the central frame portion after the platform is installed on the patient (par 122, the connection sections being the ends of the frame connected to the platform).
Regarding claim 9, Curiel discloses a method of making an installation unit for installing an orthodontic appliance or a platform on a patient (par 106 discloses the use of the jig to attach the pearls 15 or orthodontic appliance 10), the method comprising:
forming a body portion (jig 26) having a shape that corresponds to one or more teeth in one of the patient's jaws (via caps 24, see figure 1-8B and par 93), wherein the body portion is configured to hold an appliance during installation of the appliance on the patient's teeth (see figures 1-5); and
providing a plurality of connection sections (connector 27) the body for temporarily connecting with the orthodontic appliance during installation (par 91 discloses the attachment of the connector to the pearl 15 and figure 1-5), the plurality of connection sections being configured to release the appliance from the body portion, after the appliance is installed on the patient (par 122 discloses the connectors being releasably connected to the pearls 15).
Regarding claim 11, Curiel further discloses at least one slot or receptacle in or between the plurality of connection sections, for receiving and temporarily holding one or more sections of the orthodontic appliance (see figure 5).
Regarding claim 12, Curiel discloses the body portion (26) has an arch shape (see figures 1-8) and the method further comprises forming a central frame portion (connectors 27B/27’B) that extends within the arch shape of the body portion to hold the platform during installation of the platform on the patient (see figure 5 and par 113, where the platform is interpreted as the pearl 15b).
Regarding claim 13, Curiel discloses forming the central frame portion comprises configuring one or more connection sections (27A/B) for temporarily connecting with the platform during installation (see figure 5), and to release the platform from the central frame portion after the platform is installed on the patient (par 122, such that the connection sections are the ends of the elements 27B/27’B that are directly connected to the platform).
Claims 1-2, 6, and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Machata et al (US 2016/0074139).
Regarding claim 1, Machata discloses an installation unit (indirect bonding tray 42) for installing an orthodontic appliance or a platform on a patient (see par 42), the installation unit comprising:
a body portion (tray 46) having a shape that corresponds to one or more teeth in one of the patient's jaws (see figure 2 and par 5 discloses the tray being conformed to the occlusal surface of associated teeth of a patient’s dentition), wherein the body portion is configured to hold an appliance during installation of the appliance on the patient's teeth (see figures 2, 10C, the appliance being brackets 18), and wherein the body portion (46) includes a plurality of connection sections for temporarily connecting with the orthodontic appliance during installation (guide 48, arm 44 and pins 58, see par 42-43), the plurality of connection sections being configured to release the appliance from the body portion, after the appliance is installed on the patient (par 42-43).
Regarding claim 2, Machata discloses at least one wire or tie member elastic band 30, which acts as a tie wing, see par 43) for temporarily connecting the orthodontic appliance to the plurality of connection sections (see figure 2).
Regarding claim 6, Machata discloses each connection section (guide 48, arm 44 and pins 58) comprises a hook, tab or finger extension on the body portion (sliding portion 50).
Regarding claim 9, Machata discloses a method of making an installation unit for installing an orthodontic appliance or a platform on a patient (par 42), the method comprising:
forming a body portion having a shape that corresponds to one or more teeth in one of the patient's jaws (tray 46, par 5 discloses the tray being shaped to the occlusal surface of a tooth/teeth), wherein the body portion is configured to hold an appliance during installation of the appliance on the patient's teeth (par 42); and
providing a plurality of connection sections on the body for temporarily connecting with the orthodontic appliance during installation (guide 48, arm 44 and pins 58, see par 42-43), the plurality of connection sections (48, 44 and 58) being configured to release the appliance from the body portion, after the appliance is installed on the patient (par 42).
Regarding claim 10, Machata discloses at least one wire or tie member elastic band 30, which acts as a tie wing, see par 43) for temporarily connecting the orthodontic appliance to the plurality of connection sections (see figure 2).
Claims 14-16 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR20120120609.
.Regarding claim 14, KR20120120609 discloses a method of installing an appliance (wire 211/traction wire 212, see figure 9) comprising:
providing an installation unit (jigs120/220) having a body (jig 220) configured in a shape that corresponds to one or more teeth in one of the patient's jaws (via reference engaging portion 221, see figures 3 and par 80);
connecting an appliance (211/212) to the installation unit (see figures 7-8);
placing the installation unit, having the appliance connected thereto, onto the one or more teeth in the patient's jaw (see figure 9, see par 70);
securing the appliance to the one or more teeth in the patient's jaw (see figure 9, see par 70-71, 81),
while the appliance is connected to the installation unit and while the installation unit is on the one or more teeth (par 80);
disconnecting the appliance from the installation unit, while the appliance is secured to the one or more teeth in the patient's jaw (par 80-81), and
removing the installation unit from the one or more teeth in the patient's jaw, while the appliance remains secured to the one or more teeth (par 81 and figure 9).
Regarding claim 15, KR20120120609 discloses connecting one or more brackets (fixing member 213) to the appliance (211) before securing the appliance to the one or more teeth (see figure 9 and par 80), wherein securing the appliance comprises connecting the one or more brackets to the one or more teeth in the patient's jaw while the appliance is connected to the installation unit (see figure 9 and par 80-81).
Regarding claim 16, KR20120120609 discloses connecting the one or more brackets (fixing member 213)to the one or more teeth in the patient's jaw comprises bonding the one or more brackets to the one or more teeth in the patient's jaw (par 80-81).
Regarding claim 19, KR20120120609 discloses connecting an appliance to the installation unit comprises extending one or more arms of the appliance (lingual wire 210) through one or more slots or gaps in the installation unit (gaps defined as spaces holding the fixing members 213 in the jig), and wherein disconnecting the appliance from the installation unit comprises removing the one or more arms of the appliance from the slots or gaps in the installation unit (par 81 discloses the separation of the jig from the wire 210 and removal from the mouth).
Regarding claim 20, KR20120120609 discloses providing the installation unit (120/220) comprises forming or selecting the installation unit body having a shape that corresponds to the one or more teeth in the patient's jaw (via reference engaging portion 221, see figures 9 and par 80, and wherein placing the installation unit onto the one or more teeth comprises fitting the installation unit body over the one or more teeth (see figure 9).
Claims 14 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (US 2010/0190125).
Regarding claim 14, Lee discloses a method of installing an appliance (par 1 discloses a jig being used to attach a bracket or tube to a patient) comprising:
providing an installation unit (transfer jig 100) having a body (fixing unit 110) configured in a shape that corresponds to one or more teeth in one of the patient's jaws (par 92-93 discloses the fixing unit being created to attach the teeth and is easily attached to a patient’s teeth/tooth);
connecting an appliance to the installation unit (see figure 4/5 and par 94 which discloses the attachment of the fixing unit 110 to the bracket 50 by moving unit 130) ;
placing the installation unit, having the appliance connected thereto, onto the one or more teeth in the patient's jaw (see figures 5-7, par 93-94 discloses attaching the fixing unit, bracket and moving unit to the teeth simultaneously);
securing the appliance to the one or more teeth in the patient's jaw, while the appliance is connected to the installation unit and while the installation unit is on the one or more teeth (see figures 5-7 and par 95-96);
disconnecting the appliance from the installation unit, while the appliance is secured to the one or more teeth in the patient's jaw(see figure 8 and par 100); and
removing the installation unit from the one or more teeth in the patient's jaw, while the appliance remains secured to the one or more teeth (see figures 8-9 and par 100-102).
Regarding claim 17, Lee discloses connecting an appliance to the installation unit comprises providing one or more temporary connectors, and connecting the appliance to the installation unit with the one or more temporary connectors (par 85-83 discloses attachment of the moving unit 130 to the bracket uses a coupling tie 170).
Regarding claim 18, Lee discloses the one or more temporary connector elements comprise one or more wire ties (coupling tie 170).
Regarding claim 19, Lee discloses connecting an appliance to the installation unit comprises extending one or more arms of the appliance (tie wings 57 of bracket 50) through one or more slots or gaps in the installation unit (space between the occlusal surface of the fixing unit and the insert bar 137 of the moving unit 130, see figure 7), and wherein disconnecting the appliance from the installation unit comprises removing the one or more arms of the appliance from the slots or gaps in the installation unit (see figure 8).
Regarding claim 20, Lee discloses providing an installation unit comprises forming or selecting the installation unit body having a shape that corresponds to the one or more teeth in the patient's jaw (par 92-93), and wherein placing the installation unit onto the one or more teeth comprises fitting the installation unit body over the one or more teeth (see figure 7).
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 and 4-5 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 11,058,518. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, the patent discloses an installation unit for installing an orthodontic appliance or a platform on a patient (claim 1, col 76, lines 46-48 wherein the orthodontic appliance is equivalent to the orthodontic treatment device of the patent), the installation unit comprising:
a body portion having a shape that corresponds to one or more teeth in one of the patient’s jaws, wherein the body portion is configured to hold an appliance during installation of the appliance on the patient’s teeth and
wherein the body portion includes a plurality of connection sections for temporarily connecting with the orthodontic appliance during installation on the patient (claim 1, col 76, lines 49-53).
Regarding claim 4, the patent discloses the body portion having a shape corresponding to a plurality of teeth in the patient’s jaw (claim 1, col 76, lines 49-50).
Regarding claim 5, the patent discloses the body portion has an arch shape corresponding to a dental impression of the patient’s jaw (claim 8).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached references cited.
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/S.N.B./Examiner, Art Unit 3772
/HEIDI M EIDE/Primary Examiner, Art Unit 3772
8/25/2026
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