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 .
Election/Restrictions
Applicant's election with traverse of Group I directed to claims 1-7 in the reply filed on 06/19/2024 is acknowledged. The traversal is on the ground(s) that there is no search burden as the amount of prior art difference between the classifications is argued to be “15%”. This is not found persuasive because the amount of difference between classifications does not show a difference in burden for examination and there would be different search queries and different 112 issues.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/19/2024.
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. 119(e) 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. 63/138,897, 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 limitations of referencing a database as recite in claim 1. As such the instant claims will only receive a priority date of 01/18/2022.
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, 3-4 and 6 rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception 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, 3-4, and 6 which are directed to a process of correcting body posture by correcting tooth position with the steps of and outputting instructions which amounts to data generation and manipulation which would be intended to operate on a generic computing device. The various dependent claims all fail to add any additional steps beyond further defining the determining of the appliance geometry or composition or further defining the instructions to be generated . 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, 3-4, and 6, 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 or with by using a computer as a tool to perform the mental process— including observations, evaluations, calculations, and judgements. More particularly the steps of receiving data, comparing positions of elements in the data, determining shapes of appliance to provide the force to the teeth, and the generation of instructions for creation of an appliance are capable of being done mentally (a dentist views a patient’s dentition envisioning treatment to move teeth by a force and can determine a force needed to move the teeth based on their experience and envisions the shape of a device to produce the force and generates instructions within their mind or by use of pencil and paper or the use of a computer as a tool to perform the mental processes and the outputting could be done via paper and pencil, or by writing out a descriptive arrangement).
It is further noted that orthodontists have long practiced their trade/art of mentally determining the movement paths, forces for treatment, and geometries of appliances to move teeth on the paths and instructions, 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 movement paths, force systems, appliance geometries, appliance compositions, and instructions.
Step 2B — In regard to claims 1, 3-4, and 6, 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 receiving scan data, comparing posture and teeth positions, determining an appliance shape profile, or the generation of instructions for creating the appliance improves the manner in which the processing unit operates. The mere recitation in the claims of the intention to operate a generic conventional processing unit that is used in a conventional manner to perform conventional computer 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 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 § 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 1-7 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.
The term “ideal” in claim 1 is a relative term which renders the claim indefinite. The term “ideal” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The teeth positions and posture are each rendered unclear and indefinite by the use of relative term ideal. For purposes of examination any prior art that provides for a comparison of teeth or posture for reasons of affecting the teeth and posture will be deemed to provide for the claim limitations.
Regarding claims 2-7, any claim depending upon an indefinite claim is itself indefinite.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ay et al. (US 2020/0129237 A1).
Regarding claim 1, Ay discloses a method of correcting body posture of a patient by correcting tooth position comprising the steps of:
obtaining a scan of a human body using a 3D scanner (paragraph [0088] all disclosing scanning by 3D scanners, x-ray devices, PET scans, CT systems etc., paragraph [0089] all disclosing the scan is of the entire body), the human body having an actual posture and actual teeth positions (paragraph [0089] disclosing the scan of the entire body and thus the posture and also disclosing explicitly all of the teeth positions are included in the scan);
comparing the actual teeth positions from the scan of the human body against ideal teeth positions (paragraph [0290] disclosing the method includes comparing the measure physical parameters of the subject to a library of diagnosis thresholds and thus some “ideal” position, fig. 6a2 disclosing teeth malalignment, crooked, etc.) ;
referencing a database to determine whether differences between the actual teeth positions and the ideal teeth positions indicate malocclusions (paragraph [0290] disclosing the method includes comparing the measure physical parameters of the subject to a library of diagnosis thresholds/different from some ideal and thus indicates a malocclusion, fig. 6a2 disclosing teeth malalignment, crooked, etc. are malocclusions);
comparing the actual posture against an ideal posture (paragraph 0114] all, diagnosis the body condition, such as scoliosis and requirement of posture correction and disclosing the diagnosis is based on some idea that is “within normal limits” and thus a comparison);
referencing a database to determine whether differences between the actual posture and the ideal posture indicate posture problems (paragraph 0114] all, diagnosis the body condition, such as scoliosis and requirement of posture correction and disclosing the diagnosis is based on some idea that is “within normal limits” and thus a comparison, Fig. 6A2 disclosing a threshold condition of “poor posture” and thus determining some different from a ideal of not poor posture to a posture problem of “poor”) ;
calculating tooth movement required to move actual teeth positions toward the ideal teeth positions (paragraph [0007] all the determining of the design of the desired change in the body part and parameters, paragraph [0072] the calculations are to guide movement and induce movement of the body part and thus the tooth movement needed to be induced to correct the malocclusion of misalignment of teeth) ;
calculating shapes of one or more dental appliances that when worn by the patient will cause movement of the actual teeth positions toward the ideal teeth positions (paragraph [0077]-[0082] all disclosing the calculation/determining of the shape of one or more dental appliances that when worn will move the actual tooth positions towards the ideal positions); and
outputting files for creation of the one or more dental appliances to be worn by the patient (paragraphs [0091]-[0092] the 3D printing is done out output files for the processor of the manufacturing unit to receive and then fabricate).
Regarding claim 2, Ay further comprising the step of: printing the one or more dental appliances using a 3D printer(paragraphs [0091]-[0092] the 3D printing is done out output files for the processor of the manufacturing unit to receive and then fabricate).
Regarding claim 3, Ay further discloses the steps of: preparing a graphical representation of suggested tooth position changes to allow a user to prioritize and adjust an order in which malocclusions will be corrected (Fig. 1a element 116, paragraph [0099] all disclosing the display of modeling results).
Regarding claim 4, Ay further discloses the steps of: comparing the malocclusions against a treatment database, the treatment database including an order in which malocclusions should be addressed; and prioritizing malocclusion treatment based on the treatment database (paragraph [0290] disclosing the method includes comparing the measure physical parameters of the subject to a library of diagnosis thresholds/different from some ideal and thus indicates a malocclusion, fig. 6a2 disclosing teeth malalignment, crooked, etc. are malocclusions, paragraph [0130] disclosing the treatment determination includes multiple recommendations with a ranked order of for treatment and thus a prioritizing the malocclusion treatment base on the database).
Regarding claim 6, Ay further discloses the steps of: preparing 3D models of body orthotics to position a user to move the actual posture and toward the ideal posture (Fig. 12A1,A2 showing body orthotics, Fig. 1a element 116, paragraph [0099] all disclosing the display of modeling results, paragraph [0137]-[0138]the model is of the body condition and treatment device).
Regarding claim 7, Ay further discloses the steps of: printing one or more body orthotics, represented by the 3D models of body orthotics, using a 3D printer (paragraph [0254] the body orthotic of a scoliosis brace is manufacture by 3D printing).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ay et al. (US 2020/0129237 A1) in view of Patel et al. (US 9,498,302 B1).
Regarding claim 5, Ay discloses structure substantially identical to the instant application as discussed above but fails to explicitly disclose where the one or more dental appliances include integrated permanent magnets; the integrated permanent magnets helping to move actual teeth positions toward ideal teeth positions.
However, Patel discloses orthodontic appliances for moving selected teeth of patient using appliances with magnets (title and abstract) with the permanent magnets are integrated into the appliance and help to move the actual teeth positions towards desired ideal positions (column 12 lines 29-37 disclosing permanent magnets, column 13 lines 26-33 the magnets embedded within the aligner shells themselves to provide force for moving the teeth).
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 where the one or more dental appliances include integrated permanent magnets; the integrated permanent magnets helping to move actual teeth positions toward ideal teeth positions as taught by Patel into the dental appliances as taught by Ay for the purpose of providing for an improved system for aligning and reposition teeth with minimal attachment to the patient and minimizes patient discomfort and which would be more easily installed in the patient as taught by Patel (column 2 lines 58-67).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form PTO-892.
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 09/27/2024
/EDWARD MORAN/ Primary Examiner, Art Unit 3772