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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/251,873
`
`12/14/2020
`
`Bhaskar V. Velamakanni
`
`80764US004
`
`1553
`
`Solventum Intellectual Properties Company
`2510 Conway Ave E
`3M Center, 275-6E-21
`St Paul, MN 5514
`
`GASPAR, KYLIE MARIE
`
`3772
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/22/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`IPDocketing @ Solventum.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/251,873
`Velamakanni etal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`Kylie M Gaspar
`3772
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 24 June 2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
` 1-4,7,10,14,17,19,26,29,33,36,42,45-46,50,68 and 72-73 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 17,19,26,29,33,36,42 and 45-46 is/are withdrawn from consideration.
`[] Claim(s)__ is/are allowed.
`Claim(s) 1-4,7,10,14,50,68 and 72-73 is/are rejected.
`[) Claim(s)__ is/are objectedto.
`C] Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)() The drawing(s) filedon__ is/are: a)C) accepted or b){) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12).) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`—_c)LJ None ofthe:
`b)LJ Some**
`a)D) All
`1.) Certified copies of the priority documents have been received.
`2.1 Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20241009
`
`

`

`Application/Control Number: 17/251,873
`Art Unit: 3772
`
`Page 2
`
`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.
`
`Response to Arguments
`
`1.
`
`Applicant's argumentsfiled 06/24/2024 have been fully considered
`
`but they are not persuasive.
`
`It is noted that Applicant has not explicitly traversed Examiner’s fact finding
`
`and reasons for modification of the prior art. Thatis, although Applicant disagrees
`
`with the combination, articulated arguments to the Examiner’s position and
`
`rationale have not been provided.
`
`Regarding applicant’s arguments on page 8 that Zaltsman does not
`
`teach or suggest a layer of metal oxide on a shell as Zaltsman teaches that
`
`the metal oxide serves as a core, and the core can no longer be deemed a
`
`metal oxide post-functionalization. Functionalization is the addition of functional
`
`groups to a unit. The functionalization of metal oxides does not change the binary
`
`compound of oxygen and a metal chemical element (Liu et al. NPL) at the core of
`
`the unit of Zaltsman. As taught by Shabatina et al. (see NPL), metal oxide
`
`nanoparticles ordinarily include functionalized groups that can interact with the
`
`surface active centers of the metal oxide (pg. 2 “Introduction”). Note that the
`
`existence of metal oxides in the larger compound does not change becauseit is part
`
`of a larger compound (Shabatina et al. pg. 2; Zaltsman 0150, 0157 final three
`
`lines). Further, Zaltsman teaches that the (metal oxide) core may be attached to an
`
`

`

`Application/Control Number: 17/251,873
`Art Unit: 3772
`
`Page 3
`
`additional unit directly [Zaltsman 0157 final three lines]. It is noted that applicant
`
`has not claimed that a layer of metal oxide and nothing else is on the first major
`
`surface. Therefore, as Zaltsman teaches a layer of the coating including a metal
`
`oxide can be included on a dental appliance [Zaltsman 0221 lines 1-7], DeSimone
`
`as modified by Zaltsman above discloses the device as claimed.
`
`Claim Rejections - 35 USC § 103
`
`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 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections 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, ifthe
`differences between the claimed invention and the prior art are such that the
`claimed invention as a whole would have been obvious before the effectivefiling
`date of the claimed invention to a person having ordinaryskill 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.
`
`

`

`Application/Control Number: 17/251,873
`Art Unit: 3772
`
`Page 4
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`4. Considering objective evidence present in the application indicating
`
`obviousness or nonobviousness.,
`
`2.
`
`Claims 1-4, 10, 50, 68, and 72-73 are rejected under 35 U.S.C. 103 as
`
`being unpatentable over DeSimoneetal. (US 7,641,828 B2) in view of
`
`Zaltsman et al. (US 2019/0062528 A1) as reference by Dumé (NPL cited
`
`and mailed 10/02/2023).
`
`Claim 1, DeSimone discloses a dental appliance (Fig. 1) comprising:
`
`a polymeric shell (10)[col. 4 lines 18-19] with a first major surface
`
`(the surface on the inside of the device adjacent to the teeth and the outside
`
`of the device away from the teeth have a surface) comprising a plurality of
`
`cavities for receiving one or more teeth (Fig. 1)[col. 4 lines 18-20]; and
`
`a second transparent barrier layer on the first major surface (Fig. 4,
`
`310)[col. 10 lines 25-27].
`
`DeSimone is silent regarding the second transparent barrier layer is
`
`metal oxide.
`
`Zaltsman discloses antimicrobial coatings for dental applications
`
`[0221 lines 1-7] including wherein a layer of metal oxide can be applied ona
`
`surface of a dental article [0221 lines 4-6 wherein the composition is that of
`
`0154].
`
`It would have been obvious to one having ordinary skill in the art
`
`before the effective filing date of the claimed invention to cause the second
`
`layer of DeSimone to be a metal oxide as taught by Zaltsman as doing so
`
`would improve the device of DeSimone according to known methods.
`
`

`

`Application/Control Number: 17/251,873
`Art Unit: 3772
`
`Page5S
`
`DeSimone discloses utilizing an outer layer to protect from harmful
`
`substances [DeSimone col. 10 lines 25-27]. Zaltsman further teaches a
`
`coating which protects from harmful microbes [Zaltsman abstract, 0195]
`
`including a metal oxide. Therefore one of ordinary artisan would be
`
`motivated to modify the device of DeSimone with the material of Zaltsman
`
`for the purpose of protecting a user from harmful microbes and bacteria.
`
`Claim 2, DeSimone as modified by Zaltsman disclose the device as claimed,
`
`Zaltsman further discloses wherein the layer of metal oxide comprises ZnOx
`
`[Zaltsman 0154 line 4].
`
`Claim 3, DeSimoneas modified by Zaltsman disclose the device as claimed,
`
`Zaltsman further discloses wherein the layer of metal oxide comprises a metal
`
`oxide selected from TiOx [Zaltsman 0154 line 3].
`
`Claim 4, DeSimone as modified by Zaltsman disclose the device as claimed,
`
`wherein the dental appliance transmits at least 60%of incident light with a
`
`wavelength of about 400-750 nm (Transparencyis an inherent property of metal
`
`oxides, as referenced by NPL document, Dumé. Further, DeSimone discloses a
`
`transparent device [DeSimone abstract]).
`
`Claim 10, DeSimone as modified by Zaltsman disclose the device as
`
`claimed, wherein the layer of metal oxide is substantially transparent to visible light
`
`with a wavelength of 400-750 nm (Transparencyis an inherent property of metal
`
`oxides, as referenced by NPL document, Dumé. Further, DeSimone discloses a
`
`transparent device [DeSimone abstract]).
`
`Claim 50, DeSimone as modified by Zaltsman disclose the device as
`
`claimed, Zaltsman further discloses wherein the layer of metal oxide penetrates
`
`

`

`Application/Control Number: 17/251,873
`Art Unit: 3772
`
`Page 6
`
`below the first major surface [0185 lines 8-10] (the composition of the metal oxide
`
`of Zaltsman can be in the surface and coat the surface of the polymeric shell 10 of
`
`DeSimone).
`
`Claim 68, DeSimoneas modified by Zaltsman discloses a method of
`
`orthodontic treatment, comprising: positioning a dental appliance of claim 1 (see
`
`claim 1 rejection above) around one or more teeth (DeSimone Fig. 1)[ DeSimone
`
`col. 4 lines 19-21].
`
`Claim 72, DeSimoneas modified by Zaltsman disclose the device as
`
`claimed, Zaltsman further discloses wherein the layer of metal oxide comprises zinc
`
`oxide [Zaltsman 0154 line 4].
`
`Claim 73, DeSimoneas modified discloses wherein the polymeric shell
`
`(DeSimone 10) comprises polyethylene terephthalate [DeSimone col. 6 line 9].
`
`3.
`
`Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over
`
`DeSimone etal. (US 7,641,828 B2) and Zaltsman et al. (US 2019/0062528
`
`A1) as applied to claim 1 above, and further in view of Burrell et al. (US
`
`5,681,575).
`
`Claim 7, DeSimone as modified by Zaltsman disclose the device as claimed,
`
`they are silent regarding wherein the thickness of the metal oxide is about 1nm to
`
`200 nm.
`
`Burrell et al. discloses anti-microbial coatings for medical devices [abstract ]
`
`such as dental devices [col. 7 line 36] wherein the thickness of the metal oxide is
`
`about inm to 200 nm [col. 15 lines 24-29](100 Angstroms to 3300 Angstroms is
`
`equivalent to 10nm to 330 nm).
`
`

`

`Application/Control Number: 17/251,873
`Art Unit: 3772
`
`Page 7
`
`It would have been obvious to one having ordinaryskill in the art before the
`
`effective filing date of the claimed invention to modify thickness of the metal oxide
`
`of DeSimone/Zaltsman to be between 1nmto 200nm as Burrell teaches a similar
`
`device which contains the thickness as claimed. Further it has been held that “[i]n
`
`the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the
`
`prior art’ a prima facie case of obviousness exists”. MPEP 2144.05 (1).
`
`4.
`
`Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over
`
`DeSimone etal. (US 7,641,828 B2) and Zaltsman et al. (US 2019/0062528
`
`A1) as applied to claim 1 above, and further in view of Reynaud et al. (US
`
`2007/0208102 A1).
`
`Claim 14, DeSimoneas modified by Zaltsman disclose the device as
`
`claimed. DeSimone/Zaltsman does not explicitly discloses wherein the layer of
`
`metal oxide has exhibits at least a 1-log microbial reduction against S. aureus and
`
`S. mutans following 24 hour contact (howeverit is noted that the anti-microbial
`
`effects of the metal oxide are inherent properties of the material).
`
`Further, Reynaud discloses an anti-microbial dental device [abstract] wherein
`
`the device has a layer of metal oxide [0032] which exhibits at least a 1-log
`
`microbial reduction against S. aureus [0066] and S. mutans [0067, table above
`
`0072] following 24 hour contact.
`
`Therefore it would have been obvious to one of ordinary skill in the art before
`
`the effective filing date of the claimed invention to include wherein the device of
`
`DeSimoneas modified by Zaltsman exhibits at least a 1-lof microbial reduction as
`
`doing so is necessary to the anti-bacterial properties of the coating as taught by
`
`

`

`Application/Control Number: 17/251,873
`Art Unit: 3772
`
`Page 8
`
`Zaltsman [0010]. As Raynaud discloses the disclosed reduction, one of ordinary
`
`artisan would have been motivated to include the metal oxides to the device of
`
`DeSimone/Zaltsman.
`
`Conclusion
`
`5.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of
`
`time policy as set forthin 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire
`
`THREE MONTHS from the mailing date of this action.
`
`In the eventa first reply is
`
`filed within TWO MONTHS of the mailing date of this final action and the advisory
`
`action is not mailed until after the end of the THREE-MONTH shortened statutory
`
`period, then the shortened statutory period will expire on the date the advisory
`
`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be
`
`calculated from the mailing date of the advisory action.
`
`In no event, however, will
`
`the statutory period for reply expire later than SIX MONTHS from the mailing date
`
`of this final action.
`
`Any inquiry concerning this communication or earlier communications from
`
`the examiner should be directed to Kylie M. Gaspar whose telephone numberis
`
`(571)272-0570. The examiner can normally be reached Monday-Friday 7:30-4:30.
`
`Examinerinterviews 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, Cris Rodriguez can be reached on 571-272-4964. The fax
`
`

`

`Application/Control Number: 17/251,873
`Art Unit: 3772
`
`Page 9
`
`phone number for the organization wherethis application or proceeding is assigned
`
`is 571-273-8300.
`
`Information regarding the status of published or unpublished applications
`
`may be obtained from Patent Center. Unpublished application information in Patent
`
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`
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`
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`
`272-1000.
`
`/KYLIE M. GASPAR/
`Examiner, Art Unit 3772
`/EDWARD MORAN/
`Primary Examiner, Art Unit 3772
`
`