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 .
Applicant’s Response
Applicant’s response, filed 10/03/2025, has been fully considered. Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claims Status
Claims 1-20 are pending.
Claims 1-20 are examined.
Withdrawn Objections/Rejections
The rejection of claims 15 and 18-20 under 35 USC 112(b) is withdrawn in view of the amendments submitted
The rejection of the claims under 35 USC 103 is withdrawn because the prior art of record does not teach or fairly suggest the limitation of “presentation of a difference between the future dental situation for the future time point and a prediction of an anticipated dental situation for said future time point, the anticipated dental situation being anticipated at a time prior to the current time
Terminal Disclaimer
The Terminal Disclaimer filed 10/03/2025 is accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. This is a new grounds of rejection as necessitated by claim amendment.
With respect to claim 1, in step 2) the claim recites the limitation of “statistical analysis […] of said historical data”. The claim is indefinite because there is no antecedent basis for “said historical data” due to the amendments removing the step of acquisition of historical data. Thus, it is not unclear what data the analysis is being performed on.
With further respect to claim 1, in step 3) the claim recites the limitation of “analysis […] of the results obtained at step 3)”. The claim is indefinite because due to amendments changing the number of the steps, the claim now recites in step 3) a limitation referring to analyzing results obtained in step 3). Thus, it is unclear what results the analysis is being performed on.
With respect to claim 4, the claim recites the limitation of “at step 3), several future situations are determined”. The claim is indefinite because it is unclear what step this is limiting, as step 3) in claim 1 does not determine future dental situations. Instead, it is step 2) in which future situations are determined.
With respect to claim 5, the claim recites the limitation of “at step 3), the following is determined, for at least one said future dental situation…”. The claim is indefinite because it is unclear what step this is limiting, as step 3) in clam 1 is a step of evaluating the benefit of an orthodontic treatment, and instead step 2) is directed to statistical analysis of future dental situations.
With respect to claim 6, the claim recites the limitation of “at step 3), several said statistical analyses are carried out”. The claim is indefinite because it is unclear which step this is limiting, as step 3) of claim 1 is directed to a step of analyzing results for evaluation of the benefit of an orthodontic treatment and step 2) is directed to a statistical analysis.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed inventions are directed to an abstract idea of mental steps, mathematic concepts, or a natural law without significantly more. Any newly recited portion is necessitated by claim amendment.
The MPEP at MPEP 2106.03 sets forth steps for identifying eligible subject matter:
(1) Are the claims directed to a process, machine, manufacture or composition of
matter?
(2A)(1) Are the claims directed to a judicially recognized exception, i.e. a law of nature,
a natural phenomenon, or an abstract idea?
(2A)(2) If the claims are directed to a judicial exception under Prong One, then is the
judicial exception integrated into a practical application?
(2B) If the claims are directed to a judicial exception and do not integrate the judicial
exception, do the claims provide an inventive concept?
With respect to step (1): Yes, the claims recite a method and a non-transitory computer medium.
With respect to step (2A)(1): The claims recite an abstract idea of mathematical concepts and mental processes. “Claims directed to nothing more than abstract ideas (such as a mathematical formula or equation), natural phenomena, and laws of nature are not eligible for patent protection” (MPEP 2106.04). Abstract ideas include mathematical concepts (mathematical formulas or equations, mathematical relationships and mathematical calculations), certain methods of organizing human activity, and mental processes (procedures for observing, evaluating, analyzing/judging and organizing information (MPEP 2106.04(a)(2)). Laws of nature or natural phenomena include naturally occurring principles/relations that are naturally occurring or that do not have markedly different characteristics compared to what occurs in nature (MPEP 2106(b)).
Mathematic concepts recited in claim 1:
statistical analysis of said historical data and said current data so as to determine for at least one future time point and for at least one future dental situation for the current patient,
the historical data being relative to more than 1000 past dental situations, called “previous dental situations”, each experienced, at a time point called “previous time point”, by a patient called “previous patient”, all the historical data relative to a previous dental situation including at least: …
presentation of a difference between the future dental situation for the future time point and a prediction of an anticipated dental situation for said future time point, the anticipated dental situation being anticipated at a time prior to the current time
wherein from the result of the statistical analysis of step 2), a graphical representation is established showing a prediction of the evolution over time of at least one context parameter selected from…
Mental processes recited in claim 1:
analysis of the results obtained at step 3) and, depending on said future dental situation, evaluation of the benefit of an orthodontic treatment or, if the current patient has an orthodontic appliance, called “current orthodontic appliance”, reevaluation of the orthodontic treatment of said current patient and, depending on said reevaluation, determination of possible modification of the orthodontic treatment of the current patient
Mathematic concepts recited in claim 15:
statistical analysis of said historical data and said current data so as to determine for at least one future time point and for at least one future dental situation for the current patient, presentation of a difference between the future dental situation for the future time point and a prediction of an anticipated dental situation for said future time point, the anticipated dental situation being anticipated at a time prior to the current time
Mental processes recited in claim 15:
analysis of the results obtained at step 3) and, depending on said future dental situation, evaluation of the benefit of an orthodontic treatment or, if the current patient has an orthodontic appliance, called “current orthodontic appliance”, reevaluation of the orthodontic treatment of said current patient and, depending on said reevaluation, determination of possible modification of the orthodontic treatment of the current patient
Dependent claims 4-14, and 18-20 recite additional steps that either are directed to abstract ideas or further limit the judicial exceptions in independent claims 1 and 15 and as such, are further directed to abstract ideas. The relevant recitations in each claim are:
Claims 4 and 18: “several future situations are determined…”
Claims 5 and 19: “wherein, at step 3), the following is determined…”
Claims 6 and 20: “several said statistical analyses are carried out…”
Claim 7: “several potential orthodontic treatments are determined…”
Claim 8: “wherein first and second potential orthodontic treatments are determined…”
Claim 9: “the evolution over time of the value of said positioning parameter for the first and second potential orthodontic treatments is represented in a single graph”
Claim 10: “the initial time point of the potential orthodontic treatment or treatments is the current time point…”
Claim 11: “operation of optimizing constraints…”
Claim 12: “the optimization criterion is chosen from…”
Claim 13: “acquiring at least one two-dimensional image…”, “analysing each updated image…”, “determining, for each updated image, virtual acquisition conditions…”, “searching, for each updated image, by deformation of the initial reference…”
Claim 14: “defining a reference model to test…”, “following the next steps…”, “determining virtual acquisition conditions to test”, “creating a two-dimensional reference image…”, “processing the reference image…”, “comparing the updated and reference maps so as to determine a value…”, “if said value for the first evaluation function corresponds to a decision to continue said search, modifying the virtual acquisition conditions…”, “determining a value for a second evaluation function… modifying the reference model to test by moving one or more tooth models, then resuming at step e2)”
The abstract ideas in the claims are evaluated under Broadest Reasonable Interpretation (BRI) and determined herein to each cover mathematic concepts because the claims do not involve anything beyond steps of analyzing and predicting tooth position.
Because in Step (2A)(1) the claims have been interpreted as reciting judicial exceptions, then analysis under (2A)(2) provides that the claims must be examined further to determine whether they integrate the abstract ideas into a practical application (MPEP 2106.04(d). A claim can be said to integrate a judicial exception into a practical application when it applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception. This is performed by analyzing the additional elements of the claim to determine if the abstract idea is integrated into a practical application (MPEP 2106.04(d).I; MPEP 2106.05(a-h)). If the claim contains no additional elements beyond the abstract idea, the claim is said to fail to integrate the abstract idea into a practical application (MPEP 2106.04(d).III).
The instant claims recite the following additional elements:
Claim 1:
acquisition of “current data” at a “current time point”
Claim 15:
a non-transitory computer medium storing computer-program instructions
acquisition of data at a “previous time point” by a “previous patient”
acquisition of “current data” at a “current time point”
The elements of acquisition of data is considered to be a data gathering element as it gathers the data on which the judicial exceptions are performed. Data gathering does not impose any meaningful limitation on the abstract idea, or how the abstract idea is performed. Data gathering steps are not sufficient to integrate an abstract idea into a practical application (MPEP 2106.05(g)). The claims state nothing more than a generic computer, hence, these are mere instructions to apply the abstract idea using a computer, and therefore the claim does not integrate that abstract idea into a practical application. The courts have weighed in and consistently maintained that when, for example, a memory, display, processor, machine, etc. … are recited so generically (i.e., no details are provided) that they represent no more than mere instructions to apply the judicial exception on a computer, and these limitations may be viewed as nothing more than generally linked the use of the judicial exception to the technological environment of a computer (see MPEP 2106.05(f)).
Dependent claims 2, 3,13, 16, and 17 are directed to data gathering steps as they describe the data used by the judicial exceptions.
None of these dependent claims recite additional elements, alone or in combination, which would integrate a judicial exception into a practical application.
With respect to step (2B), because the claims recite an abstract idea and do no integrate that abstract idea into a practical application, then the claims lack a specific inventive concept. The judicial exception alone cannot provide that inventive concept or practical application (MPEP 2106.05). Identifying whether the additional elements beyond the abstract idea amount to such an inventive concept requires considering the additional elements individually and in combination to determine if they provide significantly more than the judicial exception (MPEP 2106.05.A i-vi).
With respect to the instant claims, the additional elements above do not rise to the level of significantly more than the judicial exception. As set forth in the MPEP 2106.05(d)(I), determinations of whether or not additional elements (or a combination of additional elements) may provide significantly more and/or an inventive concept rests in whether or not the additional elements (or combination of elements) represents well-understood, routine, conventional activity. Said assessment is made by a factual determination stemming from a conclusion that an element (or combination of elements) is widely prevalent or in common use in the relevant industry, which is determined by either a citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates a well-understood, routine or conventional nature of the additional element(s); a citation to one or more of the court decisions as discussed in MPEP 2106(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s); a citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s); and/or a statement that the examiner is taking official notice with respect to the well-understood, routine, conventional nature of the additional element(s).
With respect to claim 1: The additional elements of acquisition of data at a previous time point by a previous patient and acquisition of current data at a current time point do not rise to the level of significantly more than the judicial exception. The prior art Sherwood et al. (US 2007/0238065 A1, published October 2007, cited in prior Office Action) discloses that in the prior art, the diagnosis and treatment of a patient is based on doctors assembling various parameters in an assessment of each patient’s condition (paragraph [0005]). As such, it is recognized that these additional limitations are routine, well understood, and conventional in the art. These limitations do not improve the functioning of a computer, or comprise an improvement to any other technical field, they do not require or set forth a particular machine, they do not affect a transformation of matter, nor do they provide a non-conventional or unconventional step. As such, these limitations fail to rise to the level of significantly more.
With respect to claim 2: The additional elements of context parameters including functional or anatomical parameters or age or sex of the previous patient, etc. does not rise to the level of significantly more than the judicial exception. The prior art Sherwood et al. discloses that in the prior art, the diagnosis and treatment of a patient is based on doctors assembling various parameters in an assessment of each patient’s condition (paragraph [0005]). As such, it is recognized that these additional limitations are routine, well understood, and conventional in the art. These limitations do not improve the functioning of a computer, or comprise an improvement to any other technical field, they do not require or set forth a particular machine, they do not affect a transformation of matter, nor do they provide a non-conventional or unconventional step. As such, these limitations fail to rise to the level of significantly more.
With respect to claim 3: The additional elements of context parameters at said current time point including functional or anatomical parameters or age or sex of the current patient, etc. does not rise to the level of significantly more than the judicial exception. The prior art Sherwood et al. discloses that in the prior art, the diagnosis and treatment of a patient is based on doctors assembling various parameters in an assessment of each patient’s condition (paragraph [0005]). As such, it is recognized that these additional limitations are routine, well understood, and conventional in the art. These limitations do not improve the functioning of a computer, or comprise an improvement to any other technical field, they do not require or set forth a particular machine, they do not affect a transformation of matter, nor do they provide a non-conventional or unconventional step. As such, these limitations fail to rise to the level of significantly more.
With respect to claim 13: The additional elements of creating a three-dimensional digital reference model and collecting data do not rise to the level of significantly more than the judicial exception. The prior art Wu et al. (US 2010/0151404 A1, published June 2010, IDS reference) discloses recently publicly available treatments including designing and planning a customized treatment for a patient making used of computer-based 3-dimensional planning/design tools, wherein the design of the aligners relies on computer modeling of a series of planned successive tooth arrangements (paragraph [0004]). As such, it is recognized that these additional limitations are routine, well understood, and conventional in the art. These limitations do not improve the functioning of a computer, or comprise an improvement to any other technical field, they do not require or set forth a particular machine, they do not affect a transformation of matter, nor do they provide a non-conventional or unconventional step. As such, these limitations fail to rise to the level of significantly more.
With respect to claim 15: The additional elements of a non-transitory computer medium storing computer-program instructions, acquisition of data at a “previous time point” by a “previous patient”, and acquisition of “current data” at a “current time point” do not rise to the level of significantly more than the judicial exception. As exemplified in the MPEP at 2106.05(f) with reference to Alice Corp. 573 US at 223, 110 USPQ2d at 1983 “claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible”. Therefore, the computer components constitute no more than a general link to a technological environment, which is insufficient to constitute an inventive concept that would render the claims significantly more than the abstract idea (see MPEP 2105(b)I-III). The prior art Sherwood et al. discloses that in the prior art, the diagnosis and treatment of a patient is based on doctors assembling various parameters in an assessment of each patient’s condition (paragraph [0005]). As such, it is recognized that these additional limitations are routine, well understood, and conventional in the art. These limitations do not improve the functioning of a computer, or comprise an improvement to any other technical field, they do not require or set forth a particular machine, they do not affect a transformation of matter, nor do they provide a non-conventional or unconventional step. As such, these limitations fail to rise to the level of significantly more.
With respect to claim 16: The additional elements of context parameters including functional or anatomical parameters or age or sex of the previous patient, etc. does not rise to the level of significantly more than the judicial exception. The prior art Sherwood et al. discloses that in the prior art, the diagnosis and treatment of a patient is based on doctors assembling various parameters in an assessment of each patient’s condition (paragraph [0005]). As such, it is recognized that these additional limitations are routine, well understood, and conventional in the art. These limitations do not improve the functioning of a computer, or comprise an improvement to any other technical field, they do not require or set forth a particular machine, they do not affect a transformation of matter, nor do they provide a non-conventional or unconventional step. As such, these limitations fail to rise to the level of significantly more.
With respect to claim 17: The additional elements of context parameters at said current time point including functional or anatomical parameters or age or sex of the current patient, etc. does not rise to the level of significantly more than the judicial exception. The prior art Sherwood et al. discloses that in the prior art, the diagnosis and treatment of a patient is based on doctors assembling various parameters in an assessment of each patient’s condition (paragraph [0005]). As such, it is recognized that these additional limitations are routine, well understood, and conventional in the art. These limitations do not improve the functioning of a computer, or comprise an improvement to any other technical field, they do not require or set forth a particular machine, they do not affect a transformation of matter, nor do they provide a non-conventional or unconventional step. As such, these limitations fail to rise to the level of significantly more.
In combination, the computer elements that perform the judicial exception fail to rise to the level of significantly more. No non-routine step or element has clearly been identified.
101 analysis summary: The claims have all been examined to identify the presence of one or more judicial exceptions. Each additional limitation in the claims has been addressed, alone and in combination, to determine whether the additional limitations integrate the judicial exception into a practical application. Each additional limitation in the claims has been addressed, alone and in combination, to determine whether those additional limitations provide an inventive concept which provides significantly more than those exceptions. Individually, the limitations of the claims and the claims as a whole have been found to not meet the eligibility requirements.
Response to Arguments
Applicant states that “the statistical analysis of step 2) is used to provide a graphic representation which is then used for the analysis of step 3). These steps can therefore not be carried out by mental processes alone and therefore do not constitute an abstract idea or purely mental process or mathematic concepts but are integrated into a practical application. Thus, the claims meet the eligibility requirements.”
It is respectfully submitted that this is not persuasive. Firstly, it is noted that the amendments pertaining to providing a graphic representation are only recited in claim 1, and not in independent claim 15, and thus these arguments do not pertain to the non-transitory computer medium. Furthermore, the Specification in Figures 2a to 2e demonstrate examples of the graphic representations. These graphs comprise plots that are not computer dependent. These plots are interpreted as mathematical concepts, as they are a mathematical representation of data. Furthermore, providing the graphic representations can also be interpreted as a mental process as an individual can use a pencil and paper to create the plot (see MPEP 2106.04(a)(2).III.B). Thus, the rejection under 35 USC 101 is maintained.
Conclusion
No claims are allowed.
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 Emilie A Smith whose telephone number is (571)272-7543. The examiner can normally be reached 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Larry D Riggs can be reached at (571)270-3062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.A.S./Examiner, Art Unit 1686
/LARRY D RIGGS II/Supervisory Patent Examiner, Art Unit 1686
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