Appl. No.: 16/043,065
`Reply to Office Action of October 6, 2021
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`Attorney Docket No.: 22773-826.303
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`REMARKS
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`Claims 30-31, 36-37, 39-40, 48-49, 58, 62-63, 69 and 71-88 remain pendingin the instant
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`application. No amendments are submitted herein. Applicant respectfully requests
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`reconsideration and continued examination in view of the remarksherein.
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`35 USC § 103 Rejections
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`Claims 30-31, 36, 40, 48-49, 58, 62-63, 74, 78-84 and 88 were rejected under 35 U.S.C. §
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`103 as allegedly unpatentable over Kalili (U.S. Publication No. 2011/0020761), DeSimoneetal.
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`(U.S. Publication No. 2008/0248438), Stewart (U.S. Publication No. 2015/0374464), and
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`Wheeleret al. (U.S. Patent No. 5,335,675), as evidenced by TEXIN 990R.Claims 37 and 86-87
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`were rejected under 35 U.S.C. § 103 as allegedly unpatentable over Kalili, DeSimone, Stewart,
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`Wheeler, TEXIN 990R,and further in view of Tadroset al. (U.S. Publication No.
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`2005/0100853). Claims 39, 69, 71-73, 75-77 and 85 were rejected under 35 U.S.C. § 103 as
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`allegedly unpatentable over Kalili, DeSimone, Stewart, Wheeler, TEXIN 990R,and further in
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`view of Schwartz (U.S. Publication No. 2009/0298006). Applicant respectfully disagrees.
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`Independent claim 30 recites in part, “A multilayer dental appliance comprising ... a soft
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`polymerlayer comprising ... a flexural modulus of greater than about 35,000 psi.” Independent
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`claims 49 and 58 recite similar subject matter. The Office Action concedes that Kalili and
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`DeSimonedo not teach or suggestthe recited flexural modulus. Office Action, 3. Instead, the
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`Office Action relies on Stewart for, among other alleged features, “a range of flexural modulus
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`depending on the use of the shell, such as for an orthodontic procedure.” Office Action, 4. Each
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`of the pending rejections rely on Stewart for allegedly teaching such feature.
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`Applicant respectfully disagrees with the Office Action’s characterization of the cited
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`references, including their individual teachings and their alleged combinability. Nonetheless,
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`solely in the interest of advancing prosecution, Applicant respectfully submits that each of the
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`pending rejectionsfail at least because Stewart is not eligible priorart.
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`The instant application claims priority to U.S. Application No. 13/470,681, filed on May
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`14, 2012. Stewart is a patent publication, published on December31, 2015, that claims priority to
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`a provisional application dated February 27, 2012. The Office Action indicated that the February
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`27, 2012 date wasrelied upon for Stewart’s eligibility as prior art. Office Action, 41.
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`Page 7 of 9
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`Appl. No.: 16/043,065
`Reply to Office Action of October 6, 2021
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`Attorney Docket No.: 22773-826.303
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`This response is being filed concurrently with a declaration by named inventor, Yan
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`Chen, under 37 CFR § 1.131 (hereinafter “Chen Declaration”). As demonstrated by the Chen
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`Declaration, the presently claimed subject matter was conceived of and diligently reduced to
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`practice prior to February 27, 2012. Exhibits A-D are submitted as corroborating evidenceto the
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`Chen Declaration. Exhibits A-C are correspondences from Yan Chenreflecting conception and
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`diligence in reduction to practice prior to Feburary27, 2012. Exhibit D is slides from a
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`PowerPoint presentation prepared prior to February 27, 2012 related to the claimed subject
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`matter. Exhibit D also demonstrates that the claimed subject matter was conceived of and
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`continued to be diligently reduced to practice prior to February 27, 2012. As demonstrated by the
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`Chen Declaration and corroborated by Exhibits A-D, the instant application is entitled to a
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`priority date earlier than February 27, 2012. Accordingly, Stewart is not eligible as priorart.
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`Asindicated above, each of the pending rejections rely on Stewart as allegedly teaching
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`particular features. At least because of Stewart’s ineligibility as prior art, each of the pending
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`rejections fail. Accordingly, Applicant respectfully requests withdrawalofthe rejections under
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`35 U.S.C. § 103.
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`Double Patenting Rejections
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`Claims 30-31, 36, 37, 39-40, 48, 49, 58, 62-63, 69 and 71-88 were rejected on the ground
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`of nonstatutory double patenting as allegedly unpatentable over claims 1-2, 4-8, 11-13, 17, 19
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`and 22-25 of U.S. Patent No. 9,655,691. Claims 30-31, 36, 37, 39-40, 48, 49, 58, 62-63, 69, 71-
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`86 and 88 were rejected on the ground of nonstatutory double patenting as allegedly unpatentable
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`over claims 1-2, 5, 7, 10-15 and 23-25 of U.S. Patent No. 10,052,176. Claims 30-31, 36, 37, 39-
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`40, 48, 49, 58, 62-63, 69, 71-86 and 88 were rejected on the ground of nonstatutory double
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`patenting as allegedly unpatentable over claims 1, 5-6, 8-11, 15-16 and 20 of U.S. Patent No.
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`9,655,693. Claims 30-31, 36-37, 39-40, 48-49, 58, 62-63, 69 and 71-88 were provisionally
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`rejected on the ground of nonstatutory double patenting as allegedly unpatentable over claims 1-
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`2, 4-7, 9, 11-13, 15-17 of co-pending Application No. 16/264,420.
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`The rejections are acknowledged. Applicant respectfully requests that the rejections be
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`held in abeyance and submits that the rejections will be addressed upon final resolution of the
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`claims by,e.g., filing a terminal disclaimer, if necessary
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`Page 8 of 9
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`Appl. No.: 16/043,065
`Reply to Office Action of October 6, 2021
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`Attorney Docket No.: 22773-826.303
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`CONCLUSION
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`In view of the foregoing, Applicant believesall claims now pending in this Application
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`are in condition for allowance. The issuance of a formal Notice of Allowanceat an early date is
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`respectfully requested.
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`Further, the Commissioneris hereby authorized to charge any additional fees or credit
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`any overpayment in connection with this paper to Deposit Account No. 23-2415.
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`If the Examinerbelieves a telephone conference would expedite prosecution ofthis
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`application, please telephone the undersigned at 206-573-2274.
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`Dated: March 31, 2022
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`Respectfully submitted,
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`/Yahn Lin CHU/
`Yahn Lin CHU
`Registration No. 75,946
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`WILSO SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Tel: 650-493-9300
`Fax 650-493-6811
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