DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of Species A (Fig. 4a) in the reply filed on 9/11/26 is acknowledged.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 2-21 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Wen et al (WO 2006/096558 A2).
Regarding claim 2, Wen et al discloses a system (see Figs. 1, 2 and 9) comprising: an attachment (930/940) configured to be coupled to a tooth of a patient, wherein the attachment comprises a first surface configured to contact the tooth (e.g. surface attached thereto), a second surface opposing the first surface (opposite surface), and one or more sidewalls connecting the first surface and the second surface (sides of attachment, see Fig. 1 and 9 showing exemplary attachments), and wherein the first surface, the second surface, and the one or more sidewalls form a solid enclosed volume having a protruding shape (see Figs. 1 and 9); and an orthodontic appliance comprising: a shell (911) having a plurality of teeth-receiving cavities shaped to reposition the patient's teeth from a first arrangement toward a second arrangement (see [0019], Fig. 8), and an attachment-receiving well (935/945) formed in the shell, wherein, when the orthodontic appliance is worn on the patient's teeth, the attachment-receiving well engages the attachment to effect a movement of at least one tooth of the patient (see Fig. 9 and [0146]-[0173] and [0182]-[0188]), and wherein the attachment has a different geometry than the attachment-receiving well (e.g. larger or smaller, see [0152]).
Regarding claim 12, Wen et al discloses a system (see Figs. 1, 2 and 9) comprising: an attachment (930/940) configured to be coupled to a tooth of a patient, wherein the attachment comprises a first surface configured to contact the tooth, a second surface opposing the first surface, and one or more sidewalls connecting the first surface and the second surface, and wherein the first surface, the second surface, and the one or more sidewalls form a solid enclosed volume having a protruding shape (see explanation and citations above in regards to claim 2); and an orthodontic appliance (911) configured to reposition the patient's teeth from a first arrangement toward a second arrangement (see citations above), wherein the orthodontic appliance comprises an attachment-receiving well (935/945) formed therein, wherein the attachment receiving well has a different size than the attachment (see [0152]), and wherein the attachment-receiving well is configured to engage the attachment to apply a repositioning force to the tooth (see citations above, additionally, [0148] and [0163]).
Wen et al further discloses wherein the different geometry/size is configured to enhance the engagement between the attachment and the attachment-receiving well (see [0148], [0163] and citations above; per claims 3 and 13); wherein the different geometry/size is configured to enhance a repositioning force applied to the at least one tooth to effect the movement of the at least one tooth (see citations above; per claims 4 and 14); wherein the attachment is prefabricated before being coupled to the tooth of the patient (see [0164]; per claims 5 and 15); wherein the shell/appliance comprises a polymeric material (see [0177] and [0019]; per claims 6 and 16); wherein the attachment is more elastic than the shell/appliance (e.g. in instance when well is reinforced with metal or ceramic and attachment is formed of polymer, see [0159] and [0170]; per claim 7 and 17); wherein the attachment is larger than the attachment-receiving well, and wherein the attachment has at least one dimension that is larger than at least one corresponding dimension of the attachment- receiving well (e.g. when attachment has larger diameter; see [0152]; per claims 8, 9 and 18-19); and wherein the attachment is smaller than the attachment-receiving well, and wherein the attachment has at least one dimension that is smaller than at least one corresponding dimension of the attachment- receiving well (e.g. when attachment has smaller diameter; see [0152]; per claims 10-11 and 20-21).
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 2, 4-9, 12, and 14-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-9 and 12 of U.S. Patent No. US 12,121,412. Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of the above claims are encompassed by the patent claims.
Regarding claim 2, US 12,121,412 discloses A system comprising: an attachment configured to be coupled to a tooth of a patient, wherein the attachment comprises a first surface configured to contact the tooth, a second surface opposing the first surface, and one or more sidewalls connecting the first surface and the second surface, and wherein the first surface, the second surface, and the one or more sidewalls form a solid enclosed volume having a protruding shape; and an orthodontic appliance comprising: a shell having a plurality of teeth-receiving cavities shaped to reposition the patient's teeth from a first arrangement toward a second arrangement, and an attachment-receiving well formed in the shell, wherein, when the orthodontic appliance is worn on the patient's teeth, the attachment-receiving well engages the attachment to effect a movement of at least one tooth of the patient, and wherein the attachment has a different geometry than the attachment-receiving well (see claims 1 and 9).
Regarding claim 12, US 12,121,412 discloses a system comprising: an attachment configured to be coupled to a tooth of a patient, wherein the attachment comprises a first surface configured to contact the tooth, a second surface opposing the first surface, and one or more sidewalls connecting the first surface and the second surface, and wherein the first surface, the second surface, and the one or more sidewalls form a solid enclosed volume having a protruding shape; and an orthodontic appliance configured to reposition the patient's teeth from a first arrangement toward a second arrangement, wherein the orthodontic appliance comprises an attachment receiving well formed therein, wherein the attachment receiving well has a different size than the attachment, and wherein the attachment-receiving well is configured to engage the attachment to apply a repositioning force to the tooth (see claims 1 and 9).
Regarding claims 4 and 14, US 12,121,412 discloses wherein the different geometry/size is configured to enhance a repositioning force applied to the at least one tooth to effect the movement of the at least one tooth (see claim 8).
Regarding claims 5 and 15, US 12,121,412 discloses wherein the attachment is prefabricated before being coupled to the tooth of the patient (see claim 7).
Regarding claims 6 and 16, US 12,121,412 discloses wherein the shell/appliance comprises a polymeric material (see claim 6).
Regarding claims 7 and 17, US 12,121,412 discloses wherein the attachment is more elastic than the shell/appliance (see claims 5 and 12).
Regarding claims 8 and 18, US 12,121,412 discloses wherein the attachment is larger than the attachment-receiving well (see claims 1 and 9).
Regarding claims 9 and 19, US 12,121,412 discloses wherein the attachment has at least one dimension that is larger than at least one corresponding dimension of the attachment- receiving well (see claims 1 and 9).
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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/EDWARD MORAN/Primary Examiner, Art Unit 3772
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