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 .i s
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. 16/340,578, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior filed application fails to provide support for segmenting separate intermediate denture models for each tooth as recited in independent claims 1 and 7, nor designing a coupling with a protrusion as recited in claim 7. As such these claims will only receive the priority date of 09/27/2019.
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive.
Applicant has argued that Morales fails to provide for the limitation of the existing denture to be based on an initial oral anatomy, however this is not persuasive as the claim limitations only require an existing denture is scanned, which Morales discloses the library of denture are created by scanning existing dentures and that would be fit to different premade anatomies and further that those existing denture that where scanned are based on actual patient anatomy and thus would have been some point an initial anatomy, and that the obtaining of those digital models is “based on” an initial oral anatomy by Morales disclosing that the selection from the library of the scan existing dentures is based on the initial oral anatomy from a scan of the patient’s existing dentures. The claims do not require the existing denture scan to be a denture of the patient with the modified anatomy but only the obtaining of a denture model of some existing denture being based on the initial oral anatomy of the patient in some way.
Applicant has argued that the claims integrate a judicial exception into a practical application by asserting that the claimed matter cannot practically be performed in the human mind by asserting that the human mind is not equipped to scan an existing denture with a scanner nor receive a digital model, however this limitation only requires that the model that is obtained is formed by a scanning device or that a digital model is receive in anyway. A human mind would be capable of visually scanning an existing denture and further would be capable of visualizing digital data from a scanner image of an existing denture through a display. The scanner is recited as a generic device that would be the source of the data but is not part of the method. Further there is no persuasive argument that a dental professional would not be able to mentally segment the teeth from the denture nor mentally with use of paper and pencil as such concepts while being slower that a computerized digital tool are mentally capable of being performed. The recitation of the steps being carried out digitally are merely substitutes for performing the steps mentally or with the use of pencil and paper, with transmitting files being a mere substitute for a dentist telling someone how to manufacture a denture. The recitation of abstract mental processes that are just overlaid on a generic computer are still abstract ideas. Further the step of modifying data is merely the idea of changing an image in a dentists mental image.
Applicant has further argued that the claimed limitations improve the functioning of a computer or other technology however the recited computer and scanner are merely generic devices which themselves are not improved in their function as a computer or scanner, no improvement in computing function and no improvement in scanning function, and thus would not be improvements in computer or scanning technology. Further the asserted improvement of a technology the claims would need to show the generic devices would improve the technology beyond merely performing their generic functions and in the current case the computer and scanner do nothing beyond generic functions(MPEP 2106.05(a)(II) and it should be noted that “It is important to note, the judicial exception alone cannot provide the improvement”(MPEP 2106.05(a)).
Applicant has further argued that an improvement is the segmenting of the teeth from the denture base, however this is an abstract idea that is capable of being performed in the mind or by paper and pencil by a dental professional as laid out in the following 101 rejection section.
Applicant has argued that there is a transformation of an article into a different state or thing, however the digital designation of one set of data, the intermediate model data, to be a different set of data, the final denture base data, is not transforming any article but is the manipulation and generation of data as laid out in the 101 rejection section below.
As such the arguments that the claims as a whole either improve the functioning of a computer or other technology or field, or effect a transformation or reduction of a particular article to a different state of thing are not persuasive as there is no change to any object, no manufacturing in the rejected claims, and only the manipulation of data, such as mental data, without an improvement to the generically recited computer system the method is carried out on.
The new claims of 23 and 24 are not rejected under section 101.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-7, 11, 12, 25 and 26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In accordance with the “2019 Revised Patent Subject Matter Eligibility Guidance,” issued January 7, 2019 the pending claims are analyzed as follows —
Step 1 - In regard to claims 1, 3-7, 11, 12, 25, and 26 which are directed to a process of using a computer system with program instructions to generate a digital data file of a final denture base model with the steps of: obtaining data, steps of manipulating the data (segmenting and modifying), designing data (independent claim 7 only), and outputting a data of a model of a denture base and a digital final denture teeth model based on the manipulated data and transmitting data, which are all steps intended to operate on a generic computing device. The various dependent claims all add only additional data manipulation or generation steps. The method is within the 35 U.S.C. 101 statutory category of a “process” (MPEP 2106.03), but falls into the judicial exception (MPEP 2106.04).
Step 2A —In regard to claims 1, 3-7, 11, 12, 25 and 26 , the claimed invention is directed to an abstract idea(MPEP 2106.04(a)) without reciting additional elements that amount to significantly more than the judicial exception (MPEP 2106.05). The claimed inventions are directed to a mental process — concepts that are capable of being performed in the human mind or with paper and pencil— including observations, evaluations and judgements. More particularly the receiving data of a model of denture generate by a scanning device, segmenting/modifying the data, and generating and transmitting a digital data of a model of a final denture base and denture teeth as in claim 1 and additionally designing a coupling as in claim 7, are capable of being done mentally (a dentist views a scanned patient’s dentition and envisions the manipulation and planning of denture models of base and teeth within their mind or by use of pencil and paper and the generating could be done via paper and pencil, or by writing out a descriptive arrangement and transmitted via writing or verbal communication).
It is further noted that orthodontists have long practiced their trade/art of mentally determining the models of teeth and geometries of dentures, the mental trade of information with a patient by talking and drawing—well before the advent of computers — and are most certainly capable of envisioning and mentally generating models, denture bases, denture teeth and their coupling arrangements and transmitting these models verbally or in writing or by moving themselves to a manufacturing device.
Step 2B — In regard to claims 1, 3-7, 11, 12, 25, and 26, the claimed method steps are capable of being performed mentally and represent nothing more than concepts related to performing mental modeling steps which fall within the judicial exception. Implicit in the claimed invention is the intended use of a computing or data processing device, however, there is no disclosure in the written description that the processing unit is anything more than a generic component, nor is there any disclosure that the method of modeling the denture parts with elements placed on it, improves the manner in which the processing unit operates. Further the recitation that the obtained data is data generated by a scanning device fails to require the actual scanning device and further the recitation of a “scanning device” is a mere generic element that was well known and routine manner of generating visual data that a dental professional would use and then visualize and there is no improvement recited to the generic scanning device itself. The mere recitation in the claims of the intention to operate a generic conventional processing unit or generic scanner that is used in a conventional manner to perform conventional computer functions and scanning functions that are well understood and routine does not amount to "significantly more" than the judicial exception. The claims do not go beyond general data manipulation based on mathematical algorithms with mental image generation and comparisons.
The analysis of data in a particular field and the stating those functions in general terms, without limiting them to technical means for performing the functions is an abstract idea and does not meet the requirements of 35 U.S.C. 101. The claims do not require that the method be implemented by a particular machine and they do not require that the method particularly transform a particular article. The claims set forth instructions of analyzing information of a specific content and are not directed to any particularly asserted inventive technology for performing those functions. Nothing in the claims or specification requires anything more than a conventional prior art scanner or computer for analyzing numbers according to a mathematical algorithm which a person would use in a digital manner of paper and pencil. The claimed method thus falls with the judicial exception to patent eligible subject matter of an abstract idea without significantly more. See Elec. Power Grp., LLC v. Alstom S.A., 119 USPQ2d 1739 (Fed. Cir. 2016) for further guidance.
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.
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.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-7, 11, and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Morales et al. (US 2016/0135931 A1) in view of Jesenko et al. (US 2020/0167994 A1-effectively filed date of 11/27/2018).
Regarding claims 1 and 7, Morales discloses a method (title and abstract disclosing automated computer methods, paragraph [0020] disclosing CAN/CAM) for generating a digital model of a denture comprising a digital model of a denture base and at least one digital model of denture teeth (paragraph [0077] all disclosing a digital data file of the denture being generated, paragraph [0080] disclosing an automated system for forming teeth and gingiva base from a virtual denture model of each), wherein the method comprises the steps of:
obtaining a digital model of an fitted existing denture, based on an initial oral anatomy of a patient, by scanning the existing denture with a scanning device (paragraph [0059] lines 1-11 disclosing the virtual/digital modes of teeth are fitted premade existing dentures from actual patients, paragraph [0062] lines 1-12, the premade existing denture arrangement where scanned, and paragraph [0074] lines 1-12 scanning current patient’s existing dentures which provides the current patients oral anatomy that are used as a base for the selecting and obtaining from the library, Fig. 5 element 501 is a scanning device that are used as the basis to obtained the scanned digital model of the corresponding existing denture);
and providing a computer device comprising a computer readable medium (Fig. 5 element 500) and a processor (Fig. 5 element 503) wherein the computer device is configured to perform the method steps including (abstract disclosing automated computer methods, paragraph [0020] disclosing CAN/CAM):
receive the digital model from the scanning device (Fig. 5 element 500 receive digital scan data from scanner 501),
segment the digital model of the existing denture:
wherein segmenting comprises:
generating a gum-tooth border spline for each tooth of the digital model, thereby separating the digital model in to an intermediate denture base model and intermediate denture tooth models formed from at least a portion of the teeth which is less than multiple teeth and less than all teeth (paragraph [0060] lines 4-16 removing teeth from base gingiva, paragraph [0062] lines 13-15 segmenting by removing the gingiva base from the digital denture, paragraph [0068] lines1-29 forming a border spline between teeth and gums, paragraph [0068] lines 31-33 disclosing only a portion of the teeth as distinguished from all teeth paragraph [0068] lines 29-31 and further distinguished as multiple teeth but not all teeth paragraph [0068] lines 33-39 disclosing multiple teeth but less than all teeth)
and modifying the anatomy of the at least one fitted denture base model to improve the fit between the fitted existing denture and a modified oral anatomy of a patient’s gums (paragraph [0062] lines 13-15, paragraph [0076] lines 10-12 modifying the outer gingival surfaces which are based on the anatomy of the patient as it currently is which is a modified anatomy from when they had originally been fitted for the previous dentures , paragraph [0015] lines 3-7 disclosing modifying the topography of the digital model of the existing denture to enhance the fit to the gingiva and soft palate characteristics, paragraph [0076] lines 8-17 disclosing modifying the anatomy of the intermediate base to better make the patient’s anatomy or to add root eminence),
design a coupling arrangement between the modified intermediate denture base model and the at least one intermediate denture teeth model, wherein the coupling comprises at least one recess formed in the modified intermediate denture base model (Fig. 3 showing the virtual teeth with protrusions beyond the gingival line 34 and that are each received within a corresponding digital region of a recess in the digital gingiva, paragraph [0130] lines 18-26 disclosing the planned final denture was to have protrusion portions of the denture teeth embedded in a material thus requiring recesses for each tooth protrusion, Fig. 2 protrusion 26 is imbedded in a surrounded recess in material 24),
convert the modified intermediate denture base model into a final denture base model based on the designed coupling arrangement and generate a digital data file of at least one final denture teeth model based on the at least one intermediate denture teeth model (paragraph [0076] all disclosing the generation thus conversion of the intermediate to a final virtual denture teeth and virtual gingiva base),
and transmit the digital file of the final denture base model and the digital file of the final denture tooth models to a computer aided manufacturing device (paragraph [0080] all computer aided automatic manufacturing device, paragraph [0085] disclosing transmitting data, paragraph [0150] lines 4-8 transmitting the virtual denture files to a 3d printing system).
Morales discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose where the at least a portion of teeth includes the denture tooth models are separate intermediate tooth models formed for each tooth.
However, Jesenko discloses a computer implemented method for detecting 3d geometries of real intraoral structures (title and abstract) including where the real intraoral structures include existing dentures (paragraph [0026] and [0029] disclosing the real structures include dentures) and segmenting individual teeth as separate intermediate denture tooth models formed from each individual tooth (Fig. 1 elements S1.1, S1.2, S1.3, S1.4 etc. being individual separately segmented intermediate tooth models form for each individual tooth, paragraph [0063] lines 1-14 “not only are the teeth as a whole considered as a separate segment S1, but also each tooth is considered as a separate segment S1.1, S1.2, S1.3, S1.4.”).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate each tooth being segmented as a separate intermediate denture model formed from each tooth as taught by Jesenko into the segmenting of the at least a portion of teeth models as taught by Morales for the purpose of providing for allowing enhanced modelling by masking out individual teeth or allowing for individual virtual teeth to be moved as part of the simulation as taught by Jesenko (paragraph [0065] lines 1-5).
Regarding claim 3, Morales further discloses where the intermediate denture teeth model includes at least two or three models (fig. 3 elements 36 and two elements 37 being at least three intermediate teeth models).
Regarding claim 4, Morales further discloses where the denture teeth in the final denture tooth models are interproximally connected ( paragraph [0075] lines 22-35 disclosing the final denture tooth digital models move as single units without independent movement or rotation of the individual virtual teeth and thus are virtually interproximally connected).
Regarding claims 5 and 6, Morales further discloses where a continuous recess is provided in the final denture model base for receiving one of the at least one final denture teeth model and the model includes a plurality of teeth with the continuous recess is one of a plurality of continuous recesses each configured to receive a corresponding one of the plurality of final denture teeth models (Fig. 3 showing the virtual teeth with protrusions beyond the gingival line 34 and that are each received within a corresponding digital region of a recess in the digital gingiva, paragraph [0130] lines 18-26 disclosing the planned final denture was to have protrusion portions of the denture teeth embedded in a material thus requiring recesses for each tooth protrusion, Fig. 2 protrusion 26 is imbedded in a surrounded recess in material 24).
Regarding claim 11, Morales further discloses where the modifying comprises sculpting a virtual papilla (paragraph [0068] lines 8-18 disclosing the forming a virtual papilla).
Regarding claims 23 and 24, Morale further discloses manufacturing a denture based on the digital file of the final denture base model and the digital file of the final denture tooth models (Fig. 25 element 262, Fig. 26 element 272 disclosing the manufacturing of final denture).
Regarding claim 25, Morale further discloses where the segmenting comprises automatically generating a gum-tooth border spline for each tooth of the digital model (paragraph [0068] lines 5-29 disclosing gum-tooth boundary line is automatically generated by the programming)
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Morales et al. (US 2016/0135931 A1) in view of Jesenko et al. (US 2020/0167994 A1-effectively filed date of 11/27/2018) as applied above and further in view of Clausen et al. (US 2013/0060532 A1).
Regarding claim 12, Morales/Jesenko discloses methods substantially identical to the instant application as discussed above but fails to explicitly disclose where the step of designing a coupling arrangement comprises providing a cement gap between the at least one recess and the corresponding protrusion in the shape of an offset between a digital model of the at least one recess and a digital model of the at least one protrusion.
However, Clausen discloses a method of designing a set of digital teeth (title and abstract) for coupling with a denture base (paragraph [0112] lines 5-8 a denture with teeth inserted in a gingival part) where the denture has a coupling arrangement with the denture teeth having protrusions that are inserted into a recess in a denture base (paragraph [0115] lines 1-9 disclosing the artificial teeth are design with a part that protrudes to be arranged inside the gingival part), and the anatomy of the base part is modified to have a cement gap of an offset between the inside of the denture base and the protrusion part of the artificial teeth (paragraph [0111] lines 5-9).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the modifying of anatomy for a offset-spaced cement gap after the segmenting and provision of a protrusion on the dental teeth models that matches the modified anatomy as taught by Clausen into the method steps as taught by Morales/Jesenko for the purpose of providing for a known bonding or joining method and to provide for a better quality design of teeth for a denture as taught by Clausen (paragraph [0013] lines 4-5 ).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Morales et al. (US 2016/0135931 A1) in view of Jesenko et al. (US 2020/0167994 A1-effectively filed date of 11/27/2018) as applied above and further in view of Keustermans et al. (US 2019/0147666 A1, effectively filed 06/21/2016)
Regarding claim 26, Morales/Jesenko discloses methods substantially identical to the instant application as discussed above but fails to explicitly disclose where the step of segmenting comprises identifying and segmenting each tooth by one or neural networks, machine learning, and deep learning.
However, Keustermans discloses a method of obtaining digital scan of teeth and gums (paragraph [0150] lines 1-4, Fig. 12 showing digital data of teeth and gums) and using machine learning to segment each tooth (paragraph [0188] lines 1-5 disclosing the use of machine learning and training the machine learning for the method, paragraph [0017] lines 17-19 disclosing each tooth is individual identified and segmented)
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the use of machine learning for the method of segmenting the teeth as taught by Keustermans into the method of Morales/Jesenko for the purpose of allowing virtual manipulation of the position and orientation of the individual teeth and to provide a more accurate assessment by the algorithm for segmenting as taught by Clausen (paragraph [0017] lines 1-23).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 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 event a 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 MATTHEW P SAUNDERS whose telephone number is (571)270-3250. The examiner can normally be reached M-F 9am-5pm.
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/M.P.S/Examiner, Art Unit 3772 02/27/2026
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772