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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: CONTINUOUS CUSTOM DENTAL RESTORATION MANUFACTURING PROCESS
Claim Objections
Claim 12 objected to because of the following informalities: step c is missing a period. Appropriate correction is required.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,470,853. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
The reference claims recite a plurality of dental restorations from a plurality of workpieces transferred to a multi-compartment tray while the instant claims only require forming a single restoration, with a workpiece and a tray. In order to form the plurality of dental restorations a single restoration must be formed, which anticipates the claims.
Claim 1 is anticipated by the reference patent’s claim 1.
Claim 2 is anticipated by the reference patent’s claim 6.
Claim 3 is anticipated by the reference patent’s claim 2.
Claim 4 is anticipated by the reference patent’s claim 3.
Claim 5 is anticipated by the reference patent’s claim 4.
Claim 6 is anticipated by the reference patent’s claim 5.
Claim 7 is anticipated by the reference patent’s claim 7.
Claim 8 is anticipated by the reference patent’s claim 8.
Claim 9 is anticipated by the reference patent’s claim 9.
Claim 10 is anticipated by the reference patent’s claim 10.
Claim 11 is anticipated by the reference patent’s claim 11.
Claim 12 is anticipated by the reference patent’s claim 12.
Claim 13 is anticipated by the reference patent’s claim 13.
Claim 14 is anticipated by the reference patent’s claim 14.
Claim 15 is anticipated by the reference patent’s claim 19.
Claim 16 is anticipated by the reference patent’s claim 20.
Claim 17 is anticipated by the reference patent’s claim 15.
Claim 18 is anticipated by the reference patent’s claim 16.
Claim 19 is anticipated by the reference patent’s claim 17.
Claim 20 is anticipated by the reference patent’s claim 18.
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 "a/the patient-specific dental restoration" lines 1, 2-3, 20 and “a/the dental restoration” in lines 6, 12, 15-16, 16. It is unclear if these are the same. The claim also recites “a patient-specific dental restoration” twice in line 1 and lines 2-3; “an individual, millable, material block” twice in lines 2 and line 4. It is unclear if these are the same.
Claim 7 recites “the volume of material block removed” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites “a customized, patient-specific dental restoration” in line 1, "the patient-specific dental restoration" lines 2, 25 and “a/the dental restoration” in lines 6, 12, 15, 16, 20. It is unclear if these are the same.
Claim 12 also recites "the first portion of the material block" in lines 20 and 21. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites “a millable block” in line 1, “a millable material block” in line 3. It is unclear if these are the same.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Benjamin A Schiffman whose telephone number is (571)270-7626. The examiner can normally be reached M-F 9a-530p EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571)272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN A SCHIFFMAN/Primary Examiner, Art Unit 1742
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