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 31 and 32 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 31 recites the limitation of “a first distance from a point at one of the upper and lower occlusal surfaces to the opposite occlusal surface is proportional to a second distance from the point to a head of a mandibular condyloid process of the patient, such that the wedge-shaped space is defined” which renders the distances and proportions that would be deemed to be covered by the claim unclear as appearing to be linked to an unknown patient’s mandibular condyloid process location. Such a limitation would vary for every patient and as such in an indefinite limitation. For purposes of examination any prior art that provides for a structure of when the biting walls would contact each other and have any distance between a point between the upper and lower surface and that itself maintains a wedge shape will be deemed to provide for the claim limitations in being able to have proportion to some part of a patient’s anatomy when worn.
Claim 32 recites the limitation of “when a mandible of the patient is in a centric relation, and when the orthodontic appliance is fully installed and upper and lower biting walls contact each other, the right bulge and the left bulge are dimensioned to maintain the wedge-shaped space which is larger at premolars than at molars” which renders the claim indefinite as somehow linking the structure of the appliance to some undefined patients individual and particular anatomy. As such how the structure of the appliance is further limited in relation to such undefined anatomy is rendered unclear and indefinite. For purposes of examination any prior art that provides for an appliance with biting walls that when the appliances are fully in contact as designed would have left and right bulge dimensions to maintain the wedge with a space larger at the premolars than at the molars will be deemed to provide for the claim limitations.
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.
Claims 12-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aardse et al. (US 4,376,628).
Regarding claim 12, Aardse discloses an orthodontic appliance being one of a pair of aligners for repositioning teeth and a pair of retainers for holding the teeth in place (Fig. 4 showing two aligner shells, column 1 lines 54-62 disclosing that the aligner shells control the direction in which the teeth can move), the teeth forming an upper dental arch of a patient and a lower dental arch of the patient, the orthodontic appliance comprising:
an upper appliance member conforming to the upper dental arch (Fig. 3/4 one of element 1 or 2), the upper appliance member defining an upper biting wall conforming with a first thickness to an upper occlusal surface of upper posterior teeth of the upper dental arch (Fig. 2 either of element 1 or 2 showing a dotted line that is a first thickness of element 1 or 2); and
a lower appliance member conforming to the lower dental arch (Fig. 3/4 the other of element 1 or 2 from above), the lower appliance member defining a lower biting wall conforming with a second thickness to a lower occlusal surface of lower posterior teeth of the lower dental arch (Fig. 2 showing a dotted line that is a second thickness of the other of element 1 or 2 from above, there is no recitation that the first and second thickness are different),
the upper appliance member and the lower appliance member opposing to each other when the orthodontic appliance is installed (Fig. 4),
a biting wall comprising the upper biting wall and the lower biting wall (Fig. 4 when elements ½ are contacting they have a biting wall made from an upper biting wall of the upper appliance and a lower biting wall from the lower biting appliance),
the orthodontic appliance defining a receiving space for accommodating a crown of the teeth, the receiving space being occupied by the crown of the teeth when the orthodontic appliance is fully installed (Fig. 2 areas inside elements 1/2 where elements 11 and 12 are inside the appliance troughs),
the receiving space having a right premolar receiving space for receiving right premolars of the teeth (Fig. 1 showing a full arch to each appliance and thus having part of the receiving space for a right premolar),
the receiving space having a left premolar receiving space for receiving left premolars of the teeth (Fig. 1 showing a full arch to each appliance and thus having part of the receiving space for a left premolar),
a right bulge adjacent to the right premolar receiving space projecting outwardly from the biting wall (Fig. 2/3 one of element 9 or 10 which are bulges projecting outwardly from the biting wall near a right premolar portion of either 1 or 2),
a left bulge adjacent to the left premolar receiving space projecting outwardly from the biting wall (Fig. 2/3 one of element 9 or 10 which are bulges projecting outwardly from the biting wall near a left premolar portion of either 1 or 2),
the upper biting wall and the right and left bulges at the upper biting wall forming an upper biting section (Figs. 2/3 when element 1 would be the upper then the portion of the dotted line wall near the anterior portion of 9 would form an upper biting section),
the lower biting wall and the right and left bulges at the lower biting wall forming a lower biting section (Figs. 2/3 when element 2 would be the lower, then the portion of the dotted line wall near the anterior portion of 10 would form a lower biting section),
such that, when the orthodontic appliance is fully installed and the upper and lower biting walls contact each other adjacent to a right molar of the teeth and adjacent to a left molar of the teeth (Fig. 4 element 8, column 2 lines 35-42)
a right distal end of the right bulge at one of the upper and lower biting sections contacting the opposite biting section (Figs. 3/4 the upper elements of 9 or 10 being a right bulge having a right distal end that contacts the opposite biting section as 9 and 10 are offset such that their distal ends would contact the bottom surface of each trough and thus the opposing biting section),
a left distal end of the left bulge at one of the upper and lower biting sections contacting the opposite biting section(Figs. 3/4 the lower elements of 9 or 10 being a left bulge having a left distal end having a left distal end that contacts the opposite biting section as 9 and 10 are offset such that their distal ends would contact the bottom surface of each trough and thus the opposing biting section).
Regarding claims 13 and 14, Aardse further discloses where when the orthodontic appliance is fully installed, a bulge space filled with an occupied filling material is formed between at least one bulges of the right and left bulges and one of the upper and lower occlusal surfaces (Fig. 2 showing bulges 9 and 10 having lower surfaces spaced apart from the occlusal surface and being filled solid by the cross section hatching shown in fig. 2).
Regarding claim 15, Aardse further discloses wherein at least one bulge of the right and left bulges at the upper biting wall has a larger thickness than the first thickness (Fig. 2 showing the cross section of the upper biting wall of the dotted line of element 1 being thinner than the thickest part of element 9).
Regarding claim 16, Aardse further discloses wherein at least one bulge of the right and left bulges at the lower biting wall has a larger thickness than the second thickness (Fig. 2 showing the cross section of the lower biting wall of the dotted line of element 2 being thinner than the thickest part of element 10).
Regarding claim 17, Aardse further discloses wherein the right distal end of the right bulge and the left distal end of the left bulge at the upper biting wall contact the lower biting wall (Fig. 3/4 the distal end of the right and left bulges 9 at the upper biting wall 1 contact the lower biting wall of 2 by intermeshing between elements 10).
Regarding claim 18, Aardse further discloses wherein the right distal end of the right bulge and the left distal end of the left bulge at the lower biting wall contact the upper biting wall ((Fig. 3/4 the distal end of the right and left bulges 10 at the lower biting wall of 2 contact the upper biting wall of 1 by intermeshing between elements 9).
Regarding claim 19, Aardse further discloses wherein the right distal end of the right bulge or the left distal end of the left bulge at the upper biting wall contacts the lower biting wall (Fig. 3/4 the distal end of the right and left bulges 9 at the upper biting wall 1 contact the lower biting wall of 2 by intermeshing between elements 10).
Regarding claim 20, Aardse further discloses wherein the right distal end of the right bulge or the left distal end of the left bulge at the lower biting wall contacts the upper biting wall (Fig. 3/4 the distal end of the right and left bulges 10 at the lower biting wall of 2 contact the upper biting wall of 1 by intermeshing between elements 9).
Regarding claims 21 and 22, Aardse further discloses wherein a first right or left distal end of a first right or left bulge of the right or left bulge at the upper biting wall contacts a second left or right distal end of a second left or right bulge of the left or right bulge at the lower biting wall (Fig. 3/4 showing first left/right distal/bottom edge of the left/right bulges on the upper biting wall of 1 would contact the corresponding left/right distal/bottom edges of the corresponding left/right bulges on the lower biting wall of element 2 as the multiple elements of 9 and 10 are for centering the upper and lower bite surfaces and are disclosed as the distal/bottoms of the bulges are beveled so when the upper appliance is being pressed towards the second appliance the distal ends of the bulges would contact each other before directing the elements 9 and 10 to interlock alternatingly as disclose in colmn 1 lines 42-57).
Regarding claim 23, Aardse further discloses when the orthodontic appliance is fully installed and the upper and lower biting walls contact each other, the upper and lower biting walls contact each other at least adjacent to a right last molar of the teeth and adjacent to a left last molar of the teeth (Fig. 4 element 8 showing where the upper and lower biting wall contact at the last left and right molar teeth, column 2 lines 35-42).
Regarding claim 24, Aardse further discloses when the orthodontic appliance is fully installed, the right bulge is adjacent to first right premolars of the teeth and the left bulge is adjacent to first left premolars of the teeth (Figs. 3/4 the right and left bulges of either 9 or 10 being adjacent to the regions of the troughs for right and left premolars).
Regarding claim 25, Aardse further discloses wherein the right distal end of the right bulge at one of the upper and lower biting walls contacts the opposite biting wall (Fig. 3/4 the right distal end bulge of either 9 or 10 contact the opposite biting wall when closed), the left distal end of the left bulge at one of the upper and lower biting walls contacts the opposite biting wall (Fig. 3/4 the left distal end bulge of either 9 or 10 contact the opposite biting wall when closed).
Regarding claim 26, Aardse further discloses wherein the receiving space has a right molar receiving space for receiving one or more right molars of the teeth (Fig. 1 elements 1 and 2 having tough regions for right molar teeth) and a left molar receiving space for receiving one or more left molars of the teeth (Fig. 1 elements 1 and 2 having tough regions for left molar teeth),
a right molar-side bulge adjacent to the right molar receiving space projects outwardly from the biting wall (Fig. 2/3 the portions of elements 9/10 that are adjacent the right trough portions),
a left molar-side bulge adjacent to the left molar receiving space projects outwardly from the biting wall (Fig. 2/3 the portions of elements 9/10 that are adjacent the left trough portions),
and
wherein a right molar-side distal end of the right molar-side bulge at one of the upper and lower biting sections contacts the opposite biting section (Fig. 4 showing the right side of the appliances with right molar side distal ends of the right molar side bugles contacting the opposite biting section),
a left molar-side distal end of the left molar-side bulge at one of the upper and lower biting sections contacts the opposite biting section(Fig. 3 the left side of the either 9/10 at the molar region would contact the opposite biting section when closed similar to Fig. 4 showing the right side of the appliances with right molar side distal ends of the right molar side bugles contacting the opposite biting section).
Regarding claim 27, Aardse further discloses wherein the receiving space has an upper receiving space for receiving upper premolars and upper molars of the teeth (Fig. 1/4 element 1 being an upper appliance with upper receiving space for the full arch including premolars and molars) and
the receiving space has a lower receiving space for receiving lower premolars and lower molars of the teeth (Fig. 1/4 element 2 being an upper appliance with upper receiving space for the full arch including premolars and molars),
wherein, when the orthodontic appliance is fully installed, the right bulge projects higher than the right molar-side bulge from one of the upper and lower biting walls to reach the opposite biting wall (Fig. 4 showing the right side bulge being the right most element 10 projecting higher from the trough base than the left most element 10 as shown by the increasing wedge space from the rear molar are towards the anterior region and would contact the opposite biting wall), and
wherein the left bulge projects higher than the left molar-side bulge from one of the upper and lower biting walls to reach the opposite biting wall (Fig. 3 the left side of the either 9/10 at the most posterior of elements 9/10 would project less than the anterior projecting 9/10 and would contact the opposite biting section when closed similar to mirroring what is seen in Fig. 4 showing the right side),
such that a wedge-shaped space between the upper receiving space and the lower receiving space is maintained, the wedge-shaped space being larger at the premolars than the molars (Fig. 4 showing a wedge space between the upper and lower receiving spaces of the troughs of 1 and 2 with the wedge being small in the posterior region at the molars than at the anterior region near the pre-molars).
Regarding claim 28 Aardse further discloses wherein, when the orthodontic appliance is fully installed, at least two right bulges are arranged on a right side, an anterior right bulge of the at least two right bulges projects higher than a posterior right bulge of the at least two right bulges from one of the upper and lower biting walls to reach the opposite biting wall (Fig. 3/4 elements 10 having 3 bulges with an anterior bulge being the right most element 10 the right side of figure 4 projecting higher than the posterior bulge 10 on the left side of figure 4).
Regarding claim 29, Aardse further discloses wherein when the orthodontic appliance is fully installed, at least two left bulges are arranged on a left side, an anterior left bulge of the at least two left bulges projects higher than a posterior left bulge of the at least two left bulges from one of the upper and lower biting walls to reach the opposite biting wall (Fig. 3 showing the upper portion of 2 which would be on the left side of the jaw when worn, with elements 10 having 3 bulges with an anterior bulge being the anterior teeth located element 10 being a projection higher than the posterior element 10 similar to the right side of figure 4 projecting higher than the posterior bulge 10 on the left side of figure 4).
Regarding claim 30, Aardse further discloses wherein the receiving space having an upper receiving space for receiving upper premolars and upper molars of the teeth (Fig. 1/4 trough of element 1),
the receiving space having a lower receiving space for receiving lower premolars and lower molars of the teeth (Fig. 1/4 the trough of element 2),
when the orthodontic appliance is fully installed and upper and lower biting walls contact each other (fig. 4 element 8, column 2 lines 35-42),
the right bulge and the left bulge being dimensioned to maintain a wedge-shaped space between the upper receiving space and the lower receiving space, and the wedge-shaped space being larger at premolars of the teeth than at molars of the teeth (Fig. 3/4 showing the left and right bulges on the left and right arch sides of ether 1 or 2 being dimensioned to maintain the wedge-shape that is larger at the premolars than the molars in fig. 4).
Regarding claim 31, Aardse further discloses wherein, when the orthodontic appliance is fully installed and upper and lower biting walls contact each other (fig. 4 element 8, column 2 lines 35-42), the wedge-shaped space is formed between the upper occlusal surface and the lower occlusal surface (Fig. 4 showing wedge shaped space), a first distance from a point at one of the upper and lower occlusal surfaces to the opposite occlusal surface is proportional to a second distance from the point to a head of a mandibular condyloid process of the patient, such that the wedge-shaped space is defined (Fig. 4 showing the wedge shape being defined and any distance from point on either the upper or lower occlusal surfaces to the opposite surface would have a proportional relationship to any distance from that point to a possible mandibular condyloid process of patient as a proportional relationship is merely one of the distances divided by the other).
Regarding claim 32, Aardse further discloses wherein, when a mandible of the patient is in a centric relation, and when the orthodontic appliance is fully installed and upper and lower biting walls contact each other, the right bulge and the left bulge are dimensioned to maintain the wedge-shaped space which is larger at premolars than at molars (Fig. 3/4 showing left and right bulges of both elements 9 and 10 which being in a relational bite position in figure 4 are dimensioned to maintain the wedge larger in the premolar region than the molar region).
Regarding claim 33, Aardse further discloses wherein, when the orthodontic appliance is fully installed and the upper and lower biting walls contact each other adjacent to a right molar of the teeth and adjacent to a left molar of the teeth (Fig. 4 element 8, column 2 lines 35-42), the right bulge and the left bulge are dimensioned to maintain a wedge-shaped space between the upper biting wall and the lower biting wall, and the wedge-shaped space is larger at premolars of the teeth than at molars of the teeth(Fig. 3/4 showing left and right bulges of both elements 9 and 10 which being in a relational bite position in figure 4 are dimensioned to maintain the wedge larger in the premolar region than the molar region).
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.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,370,018. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,370,018 is narrower and thus a species to current claim 12 besides the merely different wording of the upper biting wall recited as a first thickness and the lower biting wall being recited as a second thickness where claim 1 recites them each as consistent thickens wall, there is no recitation the current claims that the first and second thicknesses are different thicknesses. Further while the current claim 12 recites the limitation of “a biting wall comprising the upper biting wall and the lower biting wall” claim 1 of U.S. Patent No. 12,370,018 does recite an upper wall and a lower wall of which the current claim 12 merely adds the label of “a biting wall” onto the combined upper and lower wall of claim 1 of U.S. Patent No. 12,370,018.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,370,018. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of U.S. Patent No. 12,370,018 is a species of pending claim 13 with only the same differences as discussed in relation to claim 12 above.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,370,018. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of U.S. Patent No. 12,370,018 is a species of pending claim 14 with only the same differences as discussed in relation to claim 12 above.
Claim 33 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,370,018. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,370,018 is a species of pending claim 33 with only the same differences as discussed in relation to claim 12 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form PTO-892.
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/M.P.S/ Examiner, Art Unit 3772 09/27/2026
/EDELMIRA BOSQUES/ Supervisory Patent Examiner, Art Unit 3772
