www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/417,847
`
`06/24/2021
`
`Richard E. Raby
`
`80628US004
`
`5454
`
`3M INNOVATIVE PROPERTIES COMPANY
`PO BOX 33427
`ST. PAUL, MN 55133-3427
`
`GASPAR, KYLIE MARIE
`
`ART UNIT
`
`3772
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/26/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`LegalUSDocketing @ mmm.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-19 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-19 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* 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) filed on 24 June 2021 is/are: a)() 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)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Q) All
`1.2) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4.) 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230605
`
`Application No.
`Applicant(s)
`17/417 847
`Rabyetal.
`
`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 STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of 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 2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 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)\0) 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.
`
`

`

`Application/Control Number: 17/417,847
`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.
`
`Drawings
`
`Photographs, including photocopies of photographs, are not ordinarily
`
`permitted in utility and design patent applications, unless photographs are the only
`
`practicable medium for illustrating the claimed invention. If the subject matter of
`
`the application admits ofillustration by a drawing, the examiner may require a
`
`drawing in place of the photograph.
`
`The current application requires a drawing for figures 1-26 or that
`
`the photographs must beof sufficient quality so that all details in the
`
`photographs are reproducible in the printed patent. See 37 CFR 1.84(b)(1).
`
`The drawings are objected to because:
`
`e The reference numerals on Figs. 3-6 are blurry and hard to see.
`Reference characters (numerals are preferred), sheet numbers, and
`view numbers mustbe plain and legible. All drawings must be made
`by a process which will give them satisfactory reproduction
`characteristics. Every line, number, and letter must be durable, clean,
`black (except for color drawings), sufficiently dense and dark, and
`uniformly thick and well-defined. The weight ofall lines and letters
`must be heavy enough to permit adequate reproduction. This
`requirement applies to all lines however fine, to shading, and to lines
`representing cut surfaces in sectional views. Lines and strokes of
`different thicknesses may be used in the same drawing wheredifferent
`thicknesses have a different meaning.
`
`e The details in Figs. 1-26 are blurry and hard to see.
`
`

`

`Application/Control Number: 17/417,847
`Art Unit: 3772
`
`Page 3
`
`e Numbers, letters, and reference characters must measure at least .32
`cm. (1/8 inch) in height. They should not be placed in the drawing so
`as to interfere with its comprehension. Therefore, they should not
`cross or mingle with the lines. They should not be placed upon hatched
`or shaded surfaces. When necessary, such as indicating a surface or
`cross section, a reference character may be underlined and a blank
`space may be left in the hatching or shading where the character
`occurs so that it appears distinct.
`
`The drawings are objected to under 37 CFR 1.83(a). The drawings must
`
`show every feature of the invention specified in the claims. Therefore, the cell of
`
`claim 6 must be shown or the feature(s) canceled from the claim(s). No new
`
`matter should be entered.
`
`The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5)
`
`because they do notinclude the following reference sign(s) mentioned in the
`
`description:
`
`e
`
`e
`
`"212" [pg. 11 line 8, pg. 12 line 10].
`
`"112" (Figs. 20, 23, and 24).
`
`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in
`reply to the Office action to avoid abandonment of the application. Any amended
`replacement drawing sheet should include all of the figures appearing on the
`immediate prior version of the sheet, even if only one figure is being amended. The
`figure or figure number of an amended drawing should not be labeled as
`“amended.” If a drawing figure is to be canceled, the appropriate figure must be
`removed from the replacement sheet, and where necessary, the remaining figures
`must be renumbered and appropriate changes made to the brief description of the
`several views of the drawings for consistency. Additional replacement sheets may
`be necessary to show the renumbering of the remaining figures. Each drawing
`sheet submitted after the filing date of an application must be labeled in the top
`margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR
`1.121(d). If the changes are not accepted by the examiner, the applicant will be
`notified and informed of any required corrective action in the next Office action. The
`objection to the drawings will not be held in abeyance.
`
`

`

`Application/Control Number: 17/417,847
`Art Unit: 3772
`
`Page 4
`
`Specification
`
`The use of the terms beginning on page 8 lines 21-33, which include trade
`
`names or marks used in commerce, have been noted in this application. The terms
`
`should be accompanied by the generic terminology; furthermore the terms should
`
`be capitalized wherever it appears or, where appropriate, include a proper symbol
`
`indicating use in commerce such as ™, *, or ® following the terms.
`
`Although the use of trade names and marks used in commerce(i.é.,
`
`trademarks, service marks, certification marks, and collective marks) are
`
`permissible in patent applications, the proprietary nature of the marks should be
`
`respected and every effort made to prevent their use in any manner which might
`
`adversely affect their validity as commercial marks.
`
`The disclosure is objected to because of the following informalities: Terms
`
`found on page 8 lines 21-33 should be followed by a proper symbol used in
`
`commerce. For example TRANSBOND™, 3M™.,
`
`Appropriate correction is required.
`
`Claim Objections
`
`Claim 19 is objected to because of the following informalities: Line 2 reads
`
`"first bracket pad first perimeter". However, the second frame surrounds the
`
`"second bracket pad second perimeter" as set forth in claim 8, the claim should be
`
`adjusted to read all "first" or all "second" features. Appropriate correction is
`
`required.
`
`

`

`Application/Control Number: 17/417,847
`Art Unit: 3772
`
`Page 5
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 U.S.C. 112(d):
`
`(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in
`dependent form shall contain a reference to a claim previously set forth and then
`specify a further limitation of the subject matter claimed. A claim in dependent
`form shall be construed to incorporate by reference all the limitations of the claim
`to which it refers.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
`
`Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C.
`112], a claim in dependent form shall contain a reference to a claim previously set
`forth and then specify a further limitation of the subject matter claimed. A claim
`in dependent form shall be construed to incorporate by reference all the
`limitations of the claim to which it refers.
`
`Claims 14 and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35
`
`U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to
`
`further limit the subject matter of the claim upon which it depends, or for failing to
`
`include all the limitations of the claim upon which it depends. Claims 14 and 15 do
`
`not include a reference to a claim previously set forth, but do not appear to be
`
`independent claims. Applicant may cancel the claim(s), amend the claim(s) to
`
`place the claim(s) in proper dependent form, rewrite the claim(s) in independent
`
`form, or present a sufficient showing that the dependent claim(s) complies with the
`
`statutory requirements.
`
`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
`
`

`

`Application/Control Number: 17/417,847
`Art Unit: 3772
`
`Page 6
`
`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)(2) the claimed invention was described in a patent issued under section 151,
`or in an application for patent published or deemed published under section
`122(b), in which the patent or application, as the case may be, names another
`inventor and was effectively filed before the effective filing date of the claimed
`invention.
`
`Claims 1, 3-8, 10-15, 17 and 19 are rejected under 35 U.S.C.
`
`102(a)(2) as being clearly anticipated by Webber (US 2019/0298494A1).
`
`Claim 1, Webber discloses an apparatus for indirect bonding of orthodontic
`
`appliances (Figs. 8A-C)[ abstract], the apparatus comprising:
`
`a first receptacle (the portion of 800 in which 806, 808, 810 areillustrated),
`
`the first receptacle has the claimed structure and is capable to receiveafirst tooth
`
`[0181, 0197 second sentence, 0207], the first tooth having an outer surface [0185
`
`lines 6-8] and gingival margins [0183 (note line 18), 0185 line 8]; and
`
`a first bracket bonding pad (806)[0065 lines 17-22], the first bracket
`
`bonding pad including a first bonding surface [0201] and a first perimeter (Figs. 8A-
`
`B), the first bonding surface has the claimed structure and is capable to
`
`complement contours of a portion of the first outer surface of the first tooth [0182
`
`lines 1-6],
`
`wherein the first receptacle comprises a first frame (801), the first frame at
`
`least partially surrounding the first bracket pad first perimeter (Figs. 8A-B), wherein
`
`the first receptacle is joined to the first bracket bonding pad (806) with a sprue
`
`

`

`Application/Control Number: 17/417,847
`Art Unit: 3772
`
`Page 7
`
`(808), the sprue (808) including a first end and a second end (Figs. 8A-C)[0189],
`
`wherein the first end of the sprue is attached to the first frame [0185 final
`
`sentence, 0186 first sentence] and the second end of the sprue is attached to the
`
`first bracket bonding pad first perimeter (Figs. 8A-B)[0185 final sentence], and
`
`wherein the first bracket bonding pad (806) is formed integrally with the first
`
`receptacle [the device as described 0185 is a singular device, understood to be
`
`integrally formed].
`
`Claim 3, Webber discloses wherein the first receptacle further comprises a
`
`boundary feature (Figs. 8A-B)[0183 final sentence (the curved bottom of the device
`
`between portions 808 and 809 which follows any of the contours listed)].
`
`Claim 4, Webber discloses wherein the boundary feature has the claimed
`
`structure and is capable to follow the gingival margins of the first tooth [0183 line
`
`18].
`
`Claim 5, Webber discloses wherein the first receptacle includes an open
`
`framework [0200 lines 1-2].
`
`Claim 6, Webber discloses wherein the open framework comprises a lattice
`
`structure including a cell [0256](wherein the lattice structure described can be
`
`incorporated into any component seen in Figs. 8A-C), the cell having a shape
`
`selected from the group consisting of a regular polygon, an irregular polygon, an
`
`ellipse, and combinations thereof (Fig. 18).
`
`Regarding claims 7 and 17, Webber discloses the device substantially as
`
`claimed and further wherein the first frame surrounds at least 75%of the first
`
`bracket pad first perimeter (the frame 801 of Webber surrounds 100%ofthe first
`
`bracket pad first perimeter, overlapping the ranges of claims 7 and 17).
`
`

`

`Application/Control Number: 17/417,847
`Art Unit: 3772
`
`Page 8
`
`Claim 8, Webber discloses wherein the apparatus further comprises a second
`
`receptacle [0080,0219], the second receptacle has the claimed structure and is
`
`capable to receive a second tooth [0181, 0197 second sentence, 0207], the second
`
`tooth having an outer surface [0185 lines 6-8] and gingival margins [0183 (note
`
`line 18), 0185 line 8]; and a second bracket bonding pad (806)[0065 lines 17-22],
`
`the second bracket bonding pad including a second bonding surface [0201] anda
`
`second perimeter (Figs. 8A-B), the second bonding surface has the claimed
`
`structure and is capable to complement contours of a portion of the second outer
`
`surface of the second tooth [0182 lines 1-6], wherein the second receptacle
`
`comprises a second frame (801), the second frame at least partially surrounding
`
`the second bracket pad second perimeter (Figs. 8A-B), wherein the second
`
`receptacle is joined to the second bracket bonding pad (806) with a second sprue
`
`(808), the second sprue (808) including a first end and a second end (Figs. 8A-
`
`C)[0189], wherein the first end of the second sprue is attached to the second frame
`
`[0185 final sentence, 0186 first sentence] and the second end of the second sprue
`
`is attached to the second bracket bonding pad second perimeter (Figs. 8A-B)[0185
`
`final sentence], wherein the second bracket bonding pad (806) is formed integrally
`
`with the second receptacle [the device as described 0185 is a singular device,
`
`understood to be integrally formed], and wherein the first receptacle is joined to
`
`the second receptacle (Figs. 8A-B)[0219-220].
`
`Claim 10, Webber discloses wherein the second receptacle further comprises
`
`a boundary feature (Figs. 8A-B)[0183 final sentence (the curved bottom of the
`
`device between portions 808 and 809 which follows any of the contours listed)].
`
`

`

`Application/Control Number: 17/417,847
`Art Unit: 3772
`
`Page 9
`
`Claim 11, Webber discloses wherein the boundary feature has the claimed
`
`structure and is capable to follow the gingival margins of the second tooth [0183
`
`line 18] and wherein the boundary feature of the second receptacle is joined to the
`
`boundary feature of the first receptacle (Figs. 8A-B show that the boundary
`
`features are connected to each other, though only one receptacle with bracket
`
`bonding feature is shown. It can be easily understood from [0219-0220] that the
`
`second receptacle with identical features would be next to each other, represented
`
`in space 809.).
`
`Claim 12, Webber discloses wherein the second receptacle includes an open
`
`framework [0200 lines 1-2].
`
`Regarding claims 13 and 19, Webber discloses wherein the second frame
`
`surrounds at least 75%of the first bracket pad first perimeter (The frame 801 of
`
`Webber surrounds 100%of the bracket pad perimeter, overlapping the ranges of
`
`claims 13 and 19).
`
`Claim 14, Webber discloses wherein the apparatus comprises a
`
`biocompatible [0272 lists biocompatible materials], resin [0116] (which may be 3D
`
`printed).
`
`Please note that claim 15 is considered product-by-process,
`
`therefore the end result of a device as disclosed by claim 1 (note the 112d
`
`rejection above) will be given patentable weight, regardless of the process
`
`by which it was made.
`
`Claim 15, Webber discloses the apparatus according to claim 1 (the device
`
`of Webber is capable to be made using 3D printing, computer numerical control
`
`machining, and combinations thereof [0115-0116]).
`
`

`

`Application/Control Number: 17/417,847
`Art Unit: 3772
`
`Page 10
`
`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
`
`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.
`
`Claims 2, 9, 16, and 18 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Webber (US 2019/0298494 Al1).
`
`Regarding claims 2, 9, 16, and 18, Webber discloses the device
`
`substantially as claimed but is silent wherein the first receptacle is configured to
`
`cover at least 20%of the first tooth outer surface (claim 2), at least 60% of the
`
`first tooth outer surface (claim 16), and wherein the second receptacle is configured
`
`to cover at least 20% of the second tooth outer surface (claim 9), at least 60%of
`
`the second tooth outer surface (claim 18).
`
`The instant disclosure describes the amount of the tooth covered by the
`
`receptacle as merely preferable, and does not describe these amounts as
`
`contributing to any unexpected result to the receptacle. As such, this parameter is
`
`

`

`Application/Control Number: 17/417,847
`Art Unit: 3772
`
`Page 11
`
`deemed a matter of design choice, well within the skill of the ordinary artisan,
`
`obtained through routine experimentation in determining optimum results, and it
`
`would have been a prima facie case of obviousness to one having ordinary skill in
`
`the art before the effective filing date of the claimed invention to make the covering
`
`of the first receptacle of Webber cover at least 60%of the tooth outer surface.
`
`Conclusion
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure. See PTOL-892.
`
`Any inquiry concerning this communication or earlier communications from
`
`the examiner should be directed to Kylie M. Gaspar whose telephone number is
`
`(571)272-0570. The examiner can normally be reached Monday-Friday 7:30-4:30.
`
`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, Cris Rodriguez can be reached on 571-272-4964. The fax
`
`phone number for the organization where this 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
`
`Center is available to registered users. To file and manage patent submissions in
`
`Patent Center, visit: https://patentcenter.uspto.gov. Visit
`
`

`

`Application/Control Number: 17/417,847
`Art Unit: 3772
`
`Page 12
`
`https ://www.uspto.gov/patents/apply/patent-center for more information about
`
`Patent Center and https://www.uspto.gov/patents/docx for information about filing
`
`in DOCX format. For additional questions, contact the Electronic Business Center
`
`(EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO
`
`Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-
`
`272-1000.
`
`/K.M.G./
`Examiner, Art Unit 3772
`
`/Cris L. Rodriguez/
`Supervisory Patent Examiner, Art Unit 3772
`
`