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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119 (e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 15/856,087; 17/173,216; 17/646/681 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Prior applications fail to provide support or disclose “an expandable portion at least proximate to the second end including an outwardly extending expandable tab including oppositely disposed flanges separated by an intermediate fold, the tab movable between a retracted position and an expanded position, such that the diameter of the second end at least proximate to the opening increases when the tab moves from the retracted position to the expanded position”. As such claims 1-8 are given the priority date of 4/14/2022.
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.
Claim 4 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 4 recites “the first end is of a first diameter and the second end extends from a second diameter when the tab is in the retracted position, to a diameter of approximately the first diameter when the tab has moved to the expanded position”, it is unclear how the diameter relates to the first diameter. For the purpose of examination, the limitation is interpreted as the second diameter in the retracted position is moved to be closer to the first diameter.
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.
Claims 1-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kvitrud et al (US 2005/0042577) in view of Curry (US 2,749,616).
Regarding claim 1, Kvitrud discloses a dental matrix (“dental crown form 10”, see par 26) comprising:
a body (12) configured to correspond to the shape of a tooth (par 26 discloses the body 12 defining a tooth shaped volume with an interior that is generally in the shape of the tooth to be restored) including a first end oppositely disposed from a second end (see figures 1-3), the body comprising:
an inner cavity extending from the first end (16) to the second end (base 14, see figures 1-3), the first end being closed and the second end comprising an opening for fitting over a predefined dental area (see figures 1-3 and par 27 discloses the base 14 being correlated to the cervical/gingival region of an actual tooth),
and an aperture (vent opening 21) in the body open to the inner cavity (see figure 2).
Kvitrud fails to disclose an expandable portion at least proximate to the second end including an outwardly extending expandable tab including oppositely disposed flanges separated by an intermediate fold, the tab movable between a retracted position and an expanded position, such that the diameter of the second end at least proximate to the opening increases when the tab moves from the retracted position to the expanded position;
Curry teaches a dental matrix with an expandable portion (collapsible retaining element 22) at least proximate to an open second end (adjacent edges 18/20) including an outwardly extending expandable tab (defined by end portions 30,32) including oppositely disposed flanges (first and second legs 24/26) separated by an intermediate fold (apex 28), the tab movable between a retracted position and an expanded position, such that the diameter of the second end at least proximate to the opening increases when the tab moves from the retracted position to the expanded position (col 3, lines 60-65 discloses the expansion and collapse of the retaining element 22 based on the desired positioning, as seen in figures 1-3) for the purpose of enabling the matrix is adjustable to fit the tooth (col 3, lines 66-70).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing sate of the claimed invention to modify Kvitrud to have disclose an expandable portion at least proximate to the second end including an outwardly extending expandable tab including oppositely disposed flanges separated by an intermediate fold, the tab movable between a retracted position and an expanded position, such that the diameter of the second end at least proximate to the opening increases when the tab moves from the retracted position to the expanded position as taught by Curry for the purpose of conforming the dental matrix to the desired tooth.
Regarding claim 2, Curry further teaches wherein the intermediate fold (28) is central with respect to the oppositely disposed flanges (24/26, see figure 4) for the reasons set forth above (see figures 1 and 4) for the reasons set forth above.
Regarding claim 3, Curry further teaches wherein the tab (30/32) opens about the intermediate fold (28) when the body moves from the retracted position to the expanded position (see figures 1-6) for the reasons set forth above.
Regarding claim 4, Kvitrud/Curry disclose the claimed invention as set forth above in claim 1. Kvitrud discloses a first end (16) having a first diameter (see figure 1) and a second end (14) having a second diameter (see figure 1-3), each corresponding to the shape of a tooth to be restored (par 26 discloses the general shape of the body 12 of the dental crown form be shaped as a desired tooth to be restored). Curry teaches the first end is of a first diameter (edge 18) and the second end extends from a second diameter (edge 20) when the tab is in the retracted position (see figure 1), to a diameter of approximately the first diameter (18) when the tab has moved to the expanded position (see figure 4, when expanded the diameter of the edges appear to be equivalent) for the reasons set forth above.
Regarding claim 5, Kvitrud further discloses the aperture (21) is at the first end of the body see figure 2).
Regarding claim 6, Kvitrud further discloses additionally comprising: a cylinder (handle 20) extending from the body in communication with the aperture (see figures 1-3).
Regarding claim 8, Kvitrud discloses wherein the shape of the tooth includes a shape of a crown of the tooth (see figures 1-3 and “crown form” as discussed in par 3-4) .
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kvitrud et al in view of Curry as applied to claim 6 above, and further in view of Abere (US 5,695,339).
Regarding claim 7, Kvitrud/Curry disclose the claimed invention as set forth above in claim 6.
Kvitrud further discloses wherein the cylinder (20) includes a bore extending therethrough (par 34 discloses the handle being hollow or tubular shaped) and the bore configured to hold a curable material (hardenable material 30, see figure 3 and oar 29 , Kvitrud/Curry fail to explicitly disclose the bore configured to receive a portion of a syringe for filling the internal cavity of the body with curable material.
However, Abere teaches a bore (vent hole 70) which is configured to receive a portion of a syringe (see figures 5-6) for filling an internal cavity (26) with a curable material (74) for the purpose of sealing any gaps (col 6, lines 10-14).
Therefore, it would be obvious to one of ordinary skill in the art, before the effective filing skills of the claimed invention, to modify further Kvitrud/Curry to have the bore be configured to receive a portion of a syringe for filling the internal cavity of the body with curable material as taught by Abere for the purpose of precisely and evenly applying the curable material to the internal volume of the dental matrix.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,402,982. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reason:
Regarding claim 1, the patent discloses a dental matrix (claim 1)comprising:
a body configured to correspond to the shape of a tooth including a first end oppositely disposed from a second end (claim 1, col 20, lines 14-16), the body comprising:
an inner cavity extending from the first end to the second end, the first end being closed and the second end comprising an opening for fitting over a predefined dental area (claim 1, col 20, lines 16-20),
an expandable portion at least proximate to the second end including an outwardly extending expandable tab including oppositely disposed flanges separated by an intermediate fold, the tab movable between a retracted position and an expanded position, such that the diameter of the second end at least proximate to the opening increases when the tab moves from the retracted position to the expanded position (claim 1, col 20, lines 21-31); and an aperture in the body open to the inner cavity (claim 1, col 20, lines 31-32.
Regarding claim 2, the patent discloses wherein the intermediate fold is central with respect to the oppositely disposed flanges (claims 2-3).
Regarding claim 3, the patent discloses wherein the tab opens about the intermediate fold when the body moves from the retracted position to the expanded position (claims 2, 4).
Regarding claim 4, the patent discloses wherein the first end is of a first diameter and the second end extends from a second diameter when the tab is in the retracted position, to a diameter of approximately the first diameter when the tab has moved to the expanded position (claim 5).
Regarding claim 5, the patent discloses wherein the aperture is at the first end of the body (claim 6).
Regarding claim 6, the patent discloses additionally comprising: a cylinder extending from the body in communication with the aperture (claim 7).
Regarding claim 7, the patent discloses wherein the cylinder includes a bore extending therethrough, the bore configured to receive a portion of a syringe for filling the internal cavity of the body with curable material (claim 8).
Regarding claim 8, the patent discloses wherein the shape of the tooth includes a shape of a crown of the tooth (claim 9).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Manne (US 4,015,332) discloses a dental matrix with a first open end and closed second end (figure 1). ROOD (US 3,046,657) discloses a dental matrix (22) with a tab (26). See 892 for additional references considered.
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/S.N.B./Examiner, Art Unit 3772
/HEIDI M EIDE/Primary Examiner, Art Unit 3772 6/29/2026
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