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
`
`17/553,590
`
`12/16/2021
`
`ChunhuaLI
`
`22773-826.309
`
`3538
`
`Align Technology, Inc. / WSGR
`650 Page Mill Road
`Palo Alto, CA 94304
`
`CHEN,VIVIAN
`
`PAPER NUMBER
`
`ART UNIT
`
`1787
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/20/2023
`
`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):
`
`patentdocket @ wsgr.com
`
`PTOL-90A (Rev. 04/07)
`
`
`
`Applicant-InitiatedInterview Summary —————st—«<—
`
`Application No.
`17/553,590
`Examiner
`VIVIAN CHEN
`
`Applicant(s)
`LI et al.
`Art
`Unit
`1787
`
`AIA (First Inventor
`to File) Status
`|No
`
`Mr. Richard Shin
`
`|Attorney
`
`Date of Interview: 15 November 2023
`
`Issues Discussed:
`
`35 U.S.C. 103
`
`Mr. Shin discussed the rejections under 35 USCin the Office Action mailed 08/17/2023.
`
`Other
`
`Mr. Shin argued that the prior art of record relied uponin the rejections under 35 USCin the Office
`Action mailed 08/17/2023 fail to teach or suggest a multilayer aligner wherein the first and second
`polymers/layers have different elongation at break values, and further argued that WEN-WO '558 does
`not specifically discuss elongation at break as a significant physical property in dental aligners.
`
`However, the Examiner noted that the present claims do NOT require that the first and second polymers/
`layers have different elongation at break values, since the claims only recite minimum elongation values,
`but not maximum values for each polymer/layer, and therefore, the elongation at break forthefirst
`polymer (i.¢., "greater than 70%") can be the sameas the elongation at break for the second polymer(
`i.e., "greater than 200%").
`
`Therefore, in order to pursue this argument, Applicant needs to amend the claims(if supported by the
`disclosure as originally filed) to explicitly require DIFFERENT elongation at break valuesforthe first and
`second polymers.
`
`The Examinerdeclined to make any definitive statements regarding patentability because such
`amendments would require a new and/or updated prior art search.
`
`In response to Mr. Shin's arguments that one of ordinary skill in the art would have no motivation to use
`polymers with elongation at break values of 200% or more because oneofordinary skill in the art would
`utilize only rigid and/or non-elastic materials in dental aligners in order to provide the desired
`teeth-aligning pressure, the Examiner noted that DESIMONE ET AL '841 only preferentially suggests the
`use of polymers with elongation at break values of "greater than 80%" (which overlaps the recited
`open-ended range of "greater than 200%"for the second polymer) and furthermore does NOT impose or
`even suggest an upperlimit on the elongation at break. Additionally, KALILI '761 explicitly mentions the
`use of polymers such as TEXIN 990R (which is known to have an elongation at break exceeding 200%)
`in dental aligner applications.
`
`Furthermore, the Examiner noted that PETG copolyesters are known to have elongation at break values
`which can exceed 200% (see the previously cited "OVERVIEW OF MATERIALS FOR PETG
`COPOLYESTERS’).
`
`The Examineradditionally indicated that while WEN-WO '558 generally discusses the use ofrelatively "
`
`U.S. Patent and Trademark Office
`PTOL-413/413b (Rev. Oct. 2019)
`
`Interview Summary
`
`Paper No. 20231115
`
`
`
`Applicant-InitiatedInterview Summary
`
`Application No.
`17/553,590
`Examiner
`VIVIAN CHEN
`
`Applicant(s)
`LI et al.
`Art
`Unit
`1787
`
`AIA (First Inventor
`to File) Status
`|No
`
`hard" andrelatively "soft" materials in different layers of multilayer aligner materials, there is a
`reasonably good correlation between "hardness"or "softness" of a polymeric material andits elasticity (
`as represented by elongation at break) -- i.e., a relatively "hard" or rigid material generally tends to be
`relatively non-elastic and therefore would be reasonably expected to have a relatively low elongation at
`break, while a relatively "soft" or flexible material (e.g., an elastomer, etc.) tends to be relatively elastic (
`e.g., rubbery or stretchy) and therefore would be reasonably expected to havea relatively high
`elongation at break.
`
`In response to a possible presentation of a declaration directedto: (i) the lack of motivation for one of
`ordinary skill in the art to use materials with high elongation at break materials in dental aligners; and/or(
`i) statements asserting criticality and/or unexpected results from a dental aligner materials with layers
`having different elongation at break values, the Examiner cautioned that a mere "opinion" declaration
`should be avoided, particularly in view of evidence and teachingsin the prior art which would appearto
`contradict such statements.
`
`The Examinerindicated that in order to be persuasive, such a declaration would need to be
`accompanied by objective evidence (e.g., experimental data)ofcriticality and/or unexpected results
`which is COMMENSURATE IN SCOPE WITH THE PRESENT CLAIMS.
`
`No definite agreement on patentability was reached.
`
`ATTACHMENT: 17553590-Interview-Agenda-14-NOV-2023-email.pdf
`
`Attachment
`
`NIVIAN CHEN/
`Primary Examiner, Art Unit 1787
`
`37 CFR§ 1.2 Businessto be transacted in writing
`
`Applicant is reminded that a complete written statement as to the substanceof the interview must be made of record in
`the application file. It is the applicants responsibility to provide the written statement, unless the interview wasinitiated
`by the Examiner and the Examiner hasindicated that a written summarywill be provided. See MPEP 713.04
`Pleasefurther see:
`MPEP 713.04
`Title 37 Code of Federal Regulations (CFR) § 1.133 Interviews, paragraph (b)
`
`Applicant recordation instructions: The formal written reply to the last Office action must include the substance of the
`interview. (See MPEP section 713.04). If a reply to the last Office action has already been filed, applicant is given a
`non-extendable period of the longer of one monthor thirty days from this interview date, or the mailing date of this
`interview summary form, whichever is later, to file a statement of the substanceofthe interview.
`
`Examiner recordation instructions: Examiners must summarize the substanceof any interview of record. A complete
`and proper recordation of the substance of an interview should include the itemslisted in MPEP 713.04 for complete
`and proper recordation including the identification of the general thrust of each argumentor issue discussed, a general
`
`U.S. Patent and Trademark Office
`PTOL-413/413b (Rev. Oct. 2019)
`
`Interview Summary
`
`Paper No. 20231115
`
`
`
`:
`vge
`.
`Applicant-InitiatedInterview Summary
`
`Application No.
`17/553,590
`i
`\Paminer
`VIVIAN CHEN
`
`|No
`
`Applicant(s)
`LI et al.
`Art
`Unit
`1787
`
`AIA (First |
`t
`eee
`to File) Status
`
`indication of any other pertinent matters discussed regarding patentability and the general results or outcome of the
`interview, to include an indication as to whether or not agreement was reached on the issuesraised.
`
`U.S. Patent and Trademark Office
`PTOL-413/413b (Rev. Oct. 2019)
`
`Interview Summary
`
`Paper No. 20231115
`
`
