The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
DETAILED ACTION
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “wireless interface unit” in claims 1 and 12 defined as establishing electrical and communication contact in Page 14 Lines 17-21 of the Specification.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Response to Arguments
Examiner acknowledges the receipt of the Applicant’s Amendment dated September 25, 2025. Applicant amended claims 1 and 12. Claims 1-22 are pending.
Applicant’s arguments as to a wireless interface unit is not found to be persuasive. However in order to expedite prosecution, upon further search and consideration, the claims are rejected under 35 U.S.C. 103 as discussed below in view of the new grounds of rejection over Ritchey et al. (U.S. Patent 9,101,279) as necessitated by the amendment.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claims 1 and 12 recite "the wireless interface unit offloads data processing to the external computer." It is not clear to a skilled artisan how to construct without undue experimentation the wireless interface unit so as to accomplish the function attributed to the recited offloading of data processing. A “wireless interface unit” is merely defined as establishing electrical and communication contact in Page 14 Lines 17-21 of the Specification as an alternative to a cable-connection, and the specific data processing being offloaded is not further defined by the Specification.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hollenbeck et al. (International Publication WO 2013/132091, hereinafter “Hollenbeck”) and in further view of Ernst et al. (U.S. Publication 2011/0123098, hereinafter “Ernst”), Chilek et al. (U.S. Publication 2015/0055297, hereinafter “Chilek”), Gilhuly et al. (U.S. Publication 2005/0234526, hereinafter “Gilhuly), Yakovlev et al. (U.S. Publication 2020/0101291, hereinafter “Yakovlev”), and Ritchey et al. (U.S. Patent 9,101,279).
As to Claim 1, Hollenbeck discloses a handheld scanner “intraoral scanner” in 32/27 and Figs. 1-2 for intraoral scanning, comprising:
a main body (201) in 32/29 comprising a mounting part (202) in 33/9 and Fig. 1, wherein the mounting part is configured to mount a tip (100) in 32/29 and Figs. 1-3 and 5a-6b for the scanner;
an image sensor “image sensor” in 33/19 and a light source “light source” in 33/23 arranged in the main body “other parts of the main body” in 33/18; electronic components “processing electronics” in 33/19 for operating the scanner.
However, Hollenbeck does not specifically disclose a cooling system configured to cool the electronic components via convection by circulating air around electronic components comprising a battery. Ernst and Chilek are applied as secondary references to evidence the level of skill of one of ordinary skill in the art at the time of invention. Ernst teaches in the related field of intraoral scanners that an intraoral scanner “wand” in [0066] and Fig. 2 has a cooling system (35, 36, 37, 38) in [0066] comprising an air circulation system (36, 37) in [0066], where the air circulation system comprises an inlet at (36) and an outlet (38) in [0066]. Chilek teaches in the related field of endoscopy in [0028] wherein a scope (10) in [0030] and Figs. 1 and 4-8 with heatsink (70, 90) in [0036] comprises an air circulation system (80) in [0041] for circulating air around electronic components “electronic components” in [0038] resulting in cooling via convection in [0047] including for a battery “battery” in [0031]. It would have been obvious to one of ordinary skill in the art at the time of invention to provide the scanner of Hollenbeck with cooling means as taught by Ernst which also cool electronic components as taught by Chilek to fulfill the same function with predictable results.
In order to expedite prosecution, Gilhuly teaches in the analogous field of oral scopes wherein a fan (272) in [0125] and heat sink (270) in [0125] are provided in direct proximity to a battery (274) in [0125] as shown in Fig. 45. It would have been obvious to one of ordinary skill in the art at the time of invention to provide the cooling system of Hollenbeck, Ernst, and Chilek with additional fans at various locations including direct proximity to the battery as taught by Gilhuly such that the air circulation system circulated air directly over the battery in order to fulfill the same cooling function via air flow with predictable results.
However Hollenbeck does not specifically disclose wireless connection to an external computer. Yakovlev teaches in the analogous field of endoscopy wherein external device (2030) in [0236] and Figs. 20-22 powered by either batteries or a wall outlet interface wirelessly with external computers via wireless interface unit (2220) in [0236]. It would have been obvious to one of ordinary skill in the art to provide the scanner and electronic components of Hollenbeck with the wireless interface unit of Yakovlev to interface with a computer in order to for high-speed communication for diagnostics or real-time feedback to inform the doctor or patient (Yakovlev, [0236], [0286], and [0296]). The transmission of data from the processing components via the wireless interface to an external computer wherein the computer does further processing necessarily means that data processing is effectively offloaded, since the computer is performing data processing functions. In order to expedite prosecution, it is additionally noted that Ritchey explicitly teaches that information is offloaded over a wired or wireless network to a remote computer system for computer data and information storage and processing in order to reduce demand in 99/18-22.
As to Claim 2, Hollenbeck discloses the handheld scanner according to claim 1, wherein the inlet and outlet are separated by at least 5mm (106) in 35/14 and Fig. 5A having a thickness of 0.4 mm - 2 mm as described in 22/22-24 that is a small proportion of the length of the tip as a frame of reference for a magnitude of dimensions appropriate the handheld scanner and therefore necessarily the placement of the inlet and outlet thereupon. It would have been obvious to one of ordinary skill in the art to provide the inlet and outlet at varying lengths relative to the length of the tip in order to fulfill the same function of providing an inlet and outlet for air to circulate with predictable results of varying cooling efficiencies as the distance between the inlet and outlet are varied. It would have been additionally obvious to one of ordinary skill in the art at the time of invention to provide the inlet and outlet at varying distances depending on desired cooling characteristics (Chilek, [0040]).
As to Claim 3, Hollenbeck discloses the handheld scanner according to claim 1, wherein the inlet and outlet are separated by 20 mm or more (106) in 35/14 and Fig. 5A having a thickness of 0.4 mm - 2 mm as described in 22/22-24 that is a small proportion of the length of the tip as a frame of reference for a magnitude of dimensions appropriate the handheld scanner and therefore necessarily the placement of the inlet and outlet thereupon. It would have been obvious to one of ordinary skill in the art to provide the inlet and outlet at varying lengths relative to the length of the tip in order to fulfill the same function of providing an inlet and outlet for air to circulate with predictable results of varying cooling efficiencies as the distance between the inlet and outlet are varied. It would have been additionally obvious to one of ordinary skill in the art at the time of invention to provide the inlet and outlet at varying distances depending on desired cooling characteristics (Chilek, [0040]).
As to Claim 4, Hollenbeck discloses a removable tip (100) in 32/29 and Figs. 1-3 and 5a-6b configured to be mounted to the scanner according to claim 1.
As to Claim 5, Hollenbeck discloses the removable tip according to claim 4, wherein the tip comprises:
a framework (104) in 34/6 and (106) in 35/14 and Fig. 3; and
an optical element “optical element (103)” and “mirror” in 34/4-5, wherein the optical element comprises a mirror “mirror” in [0200].
As to Claim 6, Hollenbeck discloses the removable tip according to claim 5, wherein the mirror is arranged such that light from the light source is guided towards an object “towards the set of teeth” in 29/2 located outside the tip and light returning from the object is guided towards the image sensor “light returning from the set of teeth is transmitted towards a camera” in 29/3-4.
As to Claim 7, Hollenbeck discloses the removable tip according to claim 6, wherein the tip comprises an opening (203) in 34/19 and Fig. 4 at the distal end for mounting the tip to the scanner as shown in Fig. 5a, and an opening of ring (206) in 35/6 and Fig. 4 at the proximal end that such that the light from the light source and the returning light from the object is via the opening at the proximal end.
As to Claim 8, Hollenbeck discloses a system comprising the handheld scanner of claim 1, and a removable tip (100) in 32/29 and Figs. 1-3 and 5a-6b configured to be mounted to the scanner.
As to Claim 9, Hollenbeck discloses the system of claim 8, wherein the removable tip comprises: a framework (104) in 34/6 and (106) in 35/14 and Fig. 3; and an optical element “optical element (103)” and “mirror” in 34/4-5, wherein the optical element comprises a mirror.
As to Claim 10, Hollenbeck discloses the system of claim 9, wherein the mirror is arranged such that light from the light source is guided towards an object “towards the set of teeth” in 29/2 located outside the tip and light returning from the object is guided towards the image sensor “light returning from the set of teeth is transmitted towards a camera” in 29/3-4.
As to Claim 11, Hollenbeck discloses the system of claim 10, wherein the tip comprises an opening (203) in 34/19 and Fig. 4 at the distal end for mounting the tip to the scanner as shown in Fig. 5a, and an opening of ring (206) in 35/6 and Fig. 4 at the proximal end that such that the light from the light source and the returning light from the object is via the opening at the proximal end.
As to Claim 12, Hollenbeck discloses a handheld scanner “intraoral scanner” in 32/27 and Figs. 1-2 for intraoral scanning, comprising:
a main body (201) in 32/29 comprising a mounting part (201) in 33/9 and Fig. 1, wherein the mounting part is configured to mount a tip (100) in 32/29 and Figs. 1-3 and 5a-6b for the scanner;
an image sensor “image sensor” in 33/19 and a light source “light source” in 33/23 arranged in the main body “other parts of the main body” in 33/18;
electronic components “processing electronics” in 33/19 for operating the scanner.
However, Hollenbeck does not specifically disclose a cooling system configured to cool the electronic components via convection by circulating air around electronic components comprising a battery. Ernst and Chilek are applied as secondary references to evidence the level of skill of one of ordinary skill in the art at the time of invention. Ernst teaches in the related field of intraoral scanners that an intraoral scanner “wand” in [0066] and Fig. 2 has a cooling system (35, 36, 37, 38) in [0066] comprising an air circulation system (36, 37) in [0066], where the air circulation system comprises an inlet at (36) and an outlet (38) in [0066]. Chilek teaches in the related field of endoscopy in [0028] wherein a scope (10) in [0030] and Figs. 1 and 4-8 with heatsink (70, 90) in [0036] comprises an air circulation system (80) in [0041] for circulating air around electronic components “electronic components” in [0038] resulting in cooling via convection in [0047] including for a battery “battery” in [0031], such that air sucked into an inlet (78) in [0042] and Fig. 6 is not heated by air exiting an outlet “outlet” in [0042]. It would have been obvious to one of ordinary skill in the art at the time of invention to provide the scanner of Hollenbeck with cooling means as taught by Ernst which also cool electronic components as taught by Chilek to fulfill the same function with predictable results.
Hollenbeck provides for a frame of reference for a magnitude of dimensions appropriate the handheld scanner and therefore necessarily the placement of the inlet and outlet thereupon. It would have been additionally obvious to one of ordinary skill in the art at the time of invention to provide the inlet and outlet at varying distances depending on desired cooling characteristics (Chilek, [0040]).
In order to expedite prosecution, Gilhuly teaches in the analogous field of oral scopes wherein a fan (272) in [0125] and heat sink (270) in [0125] are provided in direct proximity to a battery (274) in [0125] as shown in Fig. 45. It would have been obvious to one of ordinary skill in the art at the time of invention to provide the cooling system of Hollenbeck, Ernst, and Chilek with additional fans at various locations including direct proximity to the battery as taught by Gilhuly such that the air circulation system circulated air directly over the battery in order to fulfill the same cooling function via air flow with predictable results.
However Hollenbeck does not specifically disclose wireless connection to an external computer. Yakovlev teaches in the analogous field of endoscopy wherein external device (2030) in [0236] and Figs. 20-22 powered by either batteries or a wall outlet interface wirelessly with external computers via wireless interface unit (2220) in [0236]. It would have been obvious to one of ordinary skill in the art to provide the scanner of Hollenbeck with the wireless interface unit of Yakovlev to interface with a computer in order to for high-speed communication for diagnostics or real-time feedback to inform the doctor or patient (Yakovlev, [0236], [0286], and [0296]). The transmission of data from the processing components via the wireless interface to an external computer wherein the computer does further processing necessarily means that data processing is effectively offloaded, since the computer is performing data processing functions. In order to expedite prosecution, it is additionally noted that Ritchey explicitly teaches that information is offloaded over a wired or wireless network to a remote computer system for computer data and information storage and processing in order to reduce demand in 99/18-22.
As to Claim 13, Hollenbeck discloses the handheld scanner according to claim 12, wherein the inlet and outlet are separated by 20 mm or more (106) in 35/14 and Fig. 5A having a thickness of 0.4 mm - 2 mm as described in 22/22-24 that is a small proportion of the length of the tip. It would have been obvious to one of ordinary skill in the art to provide the inlet and outlet at varying lengths relative to the length of the tip in order to fulfill the same function of providing an inlet and outlet for air to circulate with predictable results of varying cooling efficiencies as the distance between the inlet and outlet are varied.
As to Claim 14, Hollenbeck discloses a system comprising the handheld scanner of claim 12, and a removable tip (100) in 32/29 and Figs. 1-3 and 5a-6b configured to be mounted to the scanner.
As to Claim 15, Hollenbeck discloses the system of claim 14, wherein the removable tip comprises:
a framework (104) in 34/6 and (106) in 35/14 and Fig. 3; and
an optical element “optical element (103)” and “mirror” in 34/4-5, wherein the optical element comprises a mirror.
As to Claim 16, Hollenbeck discloses the system of claim 15, wherein the mirror is arranged such that light from the light source is guided towards an object “towards the set of teeth” in 29/2 located outside the tip and light returning from the object is guided towards the image sensor “light returning from the set of teeth is transmitted towards a camera” in 29/3-4.
As to Claim 17, Hollenbeck discloses the system of claim 16, wherein the tip comprises an opening (203) in 34/19 and Fig. 4 at the distal end for mounting the tip to the scanner as shown in Fig. 5a, and an opening of ring (206) in 35/6 and Fig. 4 at the proximal end that such that the light from the light source and the returning light from the object is via the opening at the proximal end.
As to Claim 18, Hollenbeck in views of Ernst and Chilek discloses the handheld scanner according to claim 1, wherein the inlet is configured to draw air in from outside the main body (Chilek, [0042]).
As to Claim 19, Hollenbeck in views of Ernst and Chilek discloses the handheld scanner according to claim 1, wherein the outlet and inlet are arranged such that the air exiting the outlet is not mixed with the air sucked into the inlet (Chilek, [0042]).
As to Claim 20, Hollenbeck in views of Ernst and Chilek discloses the handheld scanner according to claim 1, wherein the outlet and inlet are arranged such that the air sucked into the inlet is not heated by air exiting the outlet (Chilek, [0042]).
Claims 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Hollenbeck, Ernst, Chilek, and Gilhuly and in further view of Kaji (U.S. Publication 2003/0163025).
As to Claims 21 and 22, Hollenbeck in views of Ernst and Chilek discloses the handheld scanner according to claims 1 and 12 respectively. Kaji teaches in the analogous field of endoscopy wherein generated heat is transferred to air supply and vented to the atmosphere in [0072] and Figs. 4A-4B. It would have been obvious to one of ordinary skill in the art to provide the cooling system of Hollenbeck in views of Ernst, Chilek, and Gilhuly such that no component of the handheld scanner intervenes air circulating from the outlet to the battery to facilitate venting of the air supply to the atmosphere as taught by Kaji in order to fulfill the same cooling function via air flow with predictable results.
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM B CHOU whose telephone number is (571) 270-3367. The examiner can normally be reached on M-F 9 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Carey can be reached on (571) 270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM CHOU/
Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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