FINAL OFFICE ACTION
Claims 22-38 were pending in this broadening divisional reissue of parent reissue application 15/496,666, which is a reissue of U.S. Patent No. 9,358,083 (hereinafter “the '083 patent” issued from application no. 13/579,462 (hereinafter “the '462 application”). Claims 1-21 and new claims 39-41 were previously cancelled. Upon entry of amendment filed 11/11/2025, claims 37 and 38 are cancelled and new claims 22 and 23 are amended. Accordingly, claims 22-36 are currently pending.
Non-Compliance with 37 C.F.R. 1.173
The amendment to the claims fails to comply with 37 C.F.R. 1.173(c) since the status of claims 37-41 is not provided. Claims 37-41 appear to be cancelled, but no indication of status has been provided in the claim listing.
Response to Arguments
112
Applicant contends:
Claim 38 stands rejected under 35 U.S.C. § 112(b) as allegedly being indefinite. New claim 38 omits the feature the PTO is alleging to be indefinite, and therefore the § 112 rejection is rendered moot.
While Applicant’s remarks indicate that claim 38 has been amended, the claim appears to be cancelled since no claim 38 is shown in claims filed 11/11/2025. Accordingly, the rejection of claim 38 under 112(b) is withdrawn based on claim 38 being cancelled. Applicant is reminded to clarify the claim status as noted above to comply with 37 C.F.R. 1.173(c).
251 Recapture
Applicant contends:
Currently submitted claim 22 recites "modifying one or more parameters of one or more of the teeth of a portion of the composed set of teeth to modify at least two interrelated teeth of the portion collectively, wherein the collective modification involves rotation of the at least two interrelated teeth." Claim 3 of U.S. 9,358,083 requires modifying the entire initial set of teeth collectively and the collective modification involves rotation of the teeth. Claim 22 therefore requires the limitation that claim 3 of U.S. 9,358,083 does.
The Examiner disagrees that this amendment overcomes the recapture rejection. See updated 251 rejection below.
Double Patenting
Applicant contends:
Not only does claim 22 recite features that differ from those of claim 3 of US RE49,008, claim 22 does not broadly encompass the features of claim 3 of RE49,008 - e.g., the differing features of the claim 3 of RE49,008 are outside of the scope of the instant claims. At least these features (identified above) of claim 22 materially alter the claims as compared to claim 3 of US RE49,008 so as to render claim 22 patentably distinct from claim 3.
The Examiner disagrees. The features identified (remarks 9-10) by applicant are sections of the RE 49,008 patent claim that have been modified with respect to claim 22. However, the amendments highlight that the claims herein are merely broader and Applicant fails to point to any features that are patentably distinct. Accordingly, the double patenting rejection of claims 22-36 is maintained.
Art Rejections
Applicant contends:
Independent claim 22 recites "modifying one or more parameters of one or more of the teeth of a portion of the composed set of teeth to modify at least two interrelated teeth of the portion collectively, wherein the collective modification involves rotation of the at least two interrelated teeth " The PTO alleges that Malfiet discloses "the ability to further manipulate the image manually or automatically, including rotation (Col. 4: 12 - col. 5: 62)." Office Action, p. 5. This section of Malfiet discusses rotating the "representation". Assuming Malfiet discloses forming a representation of a composed set of teeth (which is not admitted), a rotation of the representation would be a rotation of the composed set of teeth. In contrast, Applicant's claim requires a rotation of at least two interrelated teeth of the composed set, those interrelated teeth being a portion of the composed set.
The Examiner disagrees. See updated rejection below addressing the amended claims.
Claim Rejections - 35 USC § 112
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 22-36 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 22 has been amended to recite: "modifying one or more parameters of one or more of the teeth of a portion of the composed set of teeth to modify at least two interrelated teeth of the portion collectively, wherein the collective modification involves rotation of the at least two interrelated teeth to obtain a finalized set of teeth"
Applicant’s explanation of support points to the following sections of the ‘083 patent for support: “col. 1, lines 51-63; col. 2, lines 34-36; col. 4, lines 57-61; col. 5, lines 24-28” (remarks 5). However, the specification of the ‘083 patent is silent with respect to the newly claimed terminology of modifying parameters of one or more teeth of a portion of the composed set of teeth.
Additionally, it is unclear how modifying a parameter of one or more of the teeth would result in modifying at least two interrelated teeth as claimed, when only a parameter of one tooth is modified. The specification does not support this.
Rejection under 35 U.S.C. 251 - RECAPTURE
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. §251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 22-36 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
A reissue will not be granted to "recapture" claimed subject matter which was surrendered in an application to obtain the original patent. See MPEP §1412.20. A three step process is used to apply the recapture rule:
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.”
(See MPEP §1412.02(I))
In this case, new claim 22 recites a broader version of claim 3 of the '083 patent. New independent claim 22 additionally omits/broadens claim limitations related to subject matter surrendered in the original prosecution. During prosecution of the '462 application, Applicant made the following claim amendment, which led to allowance:
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(See ‘462 Application, amendment filed 12/7/2015)
The allowable feature “…modifying the entire initial set of teeth collectively and the collective modification involves rotation of the teeth” was omitted from new independent claim 22. Thus, the broader aspects of the instant reissue claims relate to the subject matter surrendered in the original prosecution. Furthermore, since Applicant fails to materially narrow the instant reissue claims in other respects. Accordingly, the recapture rule has not been avoided.
Independent claim 22 has been amended to now recite "modifying one or more parameters of one or more of the teeth of a portion of the composed set of teeth to modify at least two interrelated teeth of the portion collectively, wherein the collective modification involves rotation of the at least two interrelated teeth "
This amendment is not fully persuasive since claim 22 is still broadened to recite “modifying one or more parameters of one or more of the teeth” … “to modify at least two interrelated teeth”. Thus, the broadest reasonable interpretation of claim 22 only requires modification of one tooth whereas the allowable feature recited in claim 3 of the '083 patent requires “modifying the entire initial set of teeth collectively”. As noted in the 112 section above, it is unclear how modifying the parameter of one tooth would result in modification of at least two interrelated teeth as claimed.
Double Patenting
Claims 22-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. RE49,008 in view of Malfliet et al. (US 8,706,672; hereinafter Malfliet) Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant reissue are broader.
The subject matter claimed in the instant application is merely broader and is fully disclosed in the more specific claims of RE49,008. Since the more specific patented claims anticipate the broad claims of this instant application, the claims are not patentably distinct. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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(s) 22-28, 33, and 35-36 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Malfliet et al. (US 8,706,672; hereinafter Malfliet).
Regarding claim 22, Malfliet discloses: A computer-implemented method of designing one or more dental restorations for a patient, wherein the method comprises:
selecting a composed set of teeth comprising a number of teeth, where the teeth are arranged spatially relative to each other;
applying the composed set of teeth to a virtual three dimensional representation of the patient’s present oral situation to obtain an initial set of teeth including the composed set of teeth and present teeth of the patient;
modifying one or more parameters of one or more teeth of a portion of the composed set of teeth to modify at least two interrelated teeth of the portion collectively, wherein the collective modification involves rotation of the at least two interrelated teeth to obtain a finalized set of teeth.
(See Malfliet, Col. 1: 51 – Col. 2: 4; Col. 3: 44 – Col. 4: 7; Col. 12: 62 – Col. 13: 50).
Malfliet specifically discloses selection and modification of a tooth or a group of teeth:
The virtual modeling may be performed by user interaction in the digital environment. Software 25 executed by the workstation creates a graphical user interface on display 10 which allows a user to make select, introduce, position, reposition or modify individual teeth or groups of teeth in an automatic or semi-automatic manner. The software can include routines which automatically position teeth along a predefined arch, or routines for automatically positioning teeth in function of occlusion relative to the antagonist dentition. Alternatives for orthodontic cases are tooth extraction, widening of the jaw and stripping (i.e. reducing the width) of teeth. The occlusal surface of already positioned teeth may also be modified using the software tools.
(Malfliet, Col. 12: 62 – Col. 13, line 7)
This section of Malfliet does not specifically mention that the modification to the teeth includes rotation. However, in another embodiment Malfliet teaches acquiring 3D image data of groups of teeth, including 3D geometric measurements and dimensions for scaling, and the ability to further manipulate the image manually or automatically, including rotation:
Photographs (2D or 3D) can be scaled to a required dimension using one of several techniques: a calibration piece, i.e. a piece with exactly known geometric dimensions, can be added in the field of view of the camera while taking photographic images of the patient. This allows exact scaling of the photographs afterwards. measurements can be performed on photographs and 3D models by using anatomical reference distances (e.g. interpupillary distance ...) to determine the scale factor for the photographs. The scaling can be done automatically by automatically detecting reference points or features in the images and scaling these to match each other. For mapping of the 2D or 3D photographs onto the digital model one of several techniques may be used when photographs and digital models contain identical surfaces (e.g. teeth visible in photograph, facial skin . . . ): Manual registration: The photograph is aligned with the digitized treatment area. The photograph can be scaled and translated. The 3D representation of the treatment area can be rotated. The user rotates the representation to adapt its orientation to match the angle under which the photograph was made. The size of the photograph is adjusted and the image is translated until it is aligned with the view on the 3D representation. The steps are repeated to tune the registration. Semi-automatic registration: The user rotates the representation to adapt its orientation to match the angle under which the photograph was taken. Photograph and 3D representation are shown side-by-side. Reference points are indicated on both to mark corresponding features.
(Malfliet, Col. 5: 25-55)
To the extent that it may be argued that the rotation of a plurality of teeth is not explicitly taught in a single embodiment, it would have been an obvious modification. Based on these teachings as a whole, it would have been obvious to one of ordinary skill in the art to modify the selection and collective modification of teeth (as taught in Malfliet) to include rotation (as taught in another section of Malfliet), in order to map a 3D photograph of the teeth and allow for alignment with the digital model. (See Malfliet, Col. 5: 25-55).
Regarding claims 23, Malfliet discloses: wherein the collective modification involves: rotation and one or more of a change of position, direction, or height of the at least two interrelated teeth; or change in rotation, position, direction, and height of the at least two interrelated teeth. Malfliet teaches at least collective modification that involves rotation and position. See (Malfliet, Col. 12: 62 – Col. 13, line 7 and Col. 5: 25-55).
Regarding claim 24, Malfliet discloses that the one or more parameters comprise: the geometric shape of teeth in a center of the patient’s teeth, the geometric shape of the premolars and/or molar, the size of the gap between teeth, the curve of the teeth defined by the relative position of teeth, or the rotation of teeth about a median line of the patient’s face. (See Malfliet, Aesthetical analysis and rules described in tables shown in Col. 8-11).
Regarding claim 25, Malfliet discloses parameters that comprise: the length of teeth, or the size of specific teeth relative to other specific teeth. (See aesthetical rules in Col 8 and 9 describing height of teeth).
Regarding claims 26-28, Malfliet discloses the feature of mirroring teeth, cloning teeth, and collision mapping relative to an antagonist. (See Col. 4-9).
Regarding claim 33, Malfliet discloses virtually cutting the finalized set of teeth to gingiva of the virtual model.
Regarding claim 35 Malfliet discloses a method for designing dental restorations in the lower and/or upper arch and fitting the lower and upper arch together. (Col. 11: 17-52; Col. 10 table describing analysis of dental arch for upper and lower jaw; Col. 6: 4-29).
Regarding claim 36, Malfliet discloses: a composed set of teeth that includes a set of composed anterior teeth and a composed set of molar teeth where each of the sets are selected separately. (See Col. 10, table describing molar relationship; Col. 12: 62 – col. 12: 7 describing selecting and modifying individual teeth or groups of teeth).
Claims 29-32, and 34, are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Malfliet in view of Nilsson (US 8,425,229).
Malfliet does not explicitly disclose virtually fitting the set of teeth to a virtual retention means. However, Nilsson teaches a similar system and method for designing dental restorations for a patient where virtual teeth are fit to a bridge framework 20 (See Fig. 18). Thus, Nilsson teaches that fitting virtual prosthetic teeth to a virtual retainer is well known in the art. Accordingly, it would have been obvious to one of ordinary skill in the art to modify Malfliet by allowing a virtual fitting of teeth to a virtual retention means, in order to design prosthetic teeth for a patient.
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 Cameron Saadat whose telephone number is (571)272-4443. The examiner can normally be reached M-F 7:30-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hetul Patel can be reached at (571) 272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Cameron Saadat/Reexamination Specialist, Art Unit 3992
Conferees:
/RACHNA S DESAI/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992