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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/12/2025 has been entered.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. Note that the listing of the claims filed 09/12/2025 is missing claims 4-5.
Claim 5 was previously canceled. Claim 3 has been cancelled, thereby claim 4 is considered to be cancelled since claim 4 previously depended on claim 3.
Correction of a complete listing of numbering of claims is required in response to this office action.
Claim Rejections - 35 USC § 101
4. 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.
5. Claims 1, 6-7, 10-13, and 15-27 are rejected under 35 U.S.C. 101 because the claimed invention is not directed to patent eligible subject matter. Based upon consideration of all of the relevant factors with respect to the claim as a whole, the claims are determined to be directed to a judicial exception, i.e. an abstract idea.
Independent claim 1 is drawn to a method for digital treatment planning comprising the steps “receiving current case information…”, “comparing pre-existing case information…”, “comparing the current case … comprises determining a degree of matching…”, “providing a ranked selected subset….”, and “generating instructions transmitting data…”. All such steps are pertaining to collecting and analyzing information which are purely mental steps, i.e. can be done mentally without being tangibly tied to a product or machine. Therefore, these steps are merely abstract ideas.
Note that the recitation “generating instructions transmitting data set information to a fabrication machine for fabricating an orthodontic appliance…” merely indicates that the fabrication system can fabricate the orthodontic appliance but does not positively recite the step of actually fabricating the orthodontic appliance. The claims therefore are not patent eligible.
The dependent claims rejected herein fail to cure the statutory requirement of the respective independent claims.
Claim Rejections - 35 USC § 112(b)
6. 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.
7. Claims 1, 6-7, 10-13, and 15-27, 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.
Claim 1 recites “generating instructions transmitting…” (line 29) which is incoherent and indefinite.
Claim 1 recites “data set information” (line 29) and “an initial position of the data set information” (lines 31-32). It is unclear what is the “data set information”; whether such data set information is the same as or different from the provided ranked selected subset of the plurality of pre-existing cases. Furthermore, it is unclear what is the “initial position of the data set information”; it is unclear whether such initial position refers to the initial topographical information of the patient teeth or of the pre-existing patient’s teeth.
Claim 10 recites “further comprising ranking the selected pre-existing cases based on the degree of pre-existing case factor matching” appears to be repetitive of claim 1 (line 26-28) “wherein the subset of the pre-existing cases is ranked and selected base on an average of the degree of matching with the current case information”.
Claims 11-12 and 23 each recites the limitation “the selection of pre-existing cases”, which lacks sufficient antecedent basis in the claim. Note that claim 1 previously defines “providing a ranked selected subset of the plurality of pre-existing cases” (lines 29-30, underlining added). It is unclear whether “the selection of pre-existing cases” (claims 11-12 and 23) is the same, different from, or part of “a ranked selected subset of the plurality of pre-existing cases”.
Claims 17-18 and 21 each recites “the target position” (singular) which lacks antecedent basis in the claim(s). Note that claim 1 has been amended to define “a digital model of target positions of the patient’s teeth” (line 9), and “one or more digital models of target positions of the pre-existing patient’s teeth” (lines 22-23). Both instances of “target positions” are in plural form. It is unclear whether the recitation “the target position” in singular form is the same, different from, or part of the previously defined plural form. Furthermore, it is unclear whether “the target position” in claims 17-18 is of the patient’s teeth or of the pre-existing patient’s teeth.
All dependent claims are rejected herein based on their dependency on the base claim(s) rejected herein.
Double Patenting
8. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
9. Claims 1, 6-7, 10-13, and 15-27, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,071,608 in view of Jinkyun (2016/0120617). Although the claims at issue are not identical, they are not patentably distinct from each other because: The difference between the application claims and the patent claims lies in the fact that the patent claims include more element(s) and are thus much more specific. For example, the patent claim 1 recites the steps “ranking, base on the comparison, the past case information against the current case information to provide ranked past case information ranked by relevance…”, “generating a treatment plant…”, etc., which are excluded from the application corresponding claim 1. Thus the patent claims are in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
Furthermore, another difference between the application claims and the patent claims is that the patent claims do not recite the digital models being “initial topographical information” (application claim 1) and “generating instruction for fabricating an orthodontic appliance…” (application claim 1).
Jinkyun discloses digital models including initial topographical information and initial root positions of the patient teeth (Figs. 5-7, 9-12; abstract; paragraph [0068] “3D data on the state of the teeth of the patient… include a crown, a dental root…”). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the initial digital models of initial position as recited in the patent claims to include topographical information and root positions of the teeth as taught by Jinkyum in order to have a most comprehensive data of the teeth including both topographical surface information and tooth root information for optimum treatment planning as taught by Jinkyun.
Jinkyun further discloses fabricating an orthodontic appliance according to a selected treatment plan through 3D printing and/or sintering PET powder (paragraph [0012] “manufacturing the aligner using a 3D printer”; [0039] “aligner may be manufactured using any one of a method of sintering PET powder using a laser…”), which are well known additive manufacturing methods. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the patent claims by including the step(s) of fabricating the orthodontic appliance through additive manufacturing process as taught by Jinkyun to be well known suitable methods of manufacturing such orthodontic appliance yielding the same and/or predicable results.
Response to Arguments
10. Applicant’s arguments regarding the amendments made to the claims have been fully considered and are persuasive. Sachdeva, Jinkyun, and Kuo, fail to disclose a ranked selected subset of the plurality of pre-existing cases, wherein such subset is ranked and selected based on degree of matching with the current case information. Instead, Sachdeva teaches of ranking by applying value judgement criteria and patient values aesthetic considerations. The ground(s) of rejection under Sachdeva, Jinkyun, and Kuo have been withdrawn.
However, note new ground(s) of rejection under 35 U.S.C. 101 and 112(b) as detailed above.
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAO D MAI whose telephone number is (571)270-3002. The examiner can normally be reached Mon-Fri 8:00-4:30. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached on (571) 270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hao D Mai/Examiner, Art Unit 3772