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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 18, 2025 has been entered.
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 1-20 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.
In each of the independent claims, the applicant claims the jaw component comprises a socket extending therethrough and “a surface distal to the patient’s jaw”. It is unclear what the applicant is trying to claim. It is noted that the applicant has claimed generating a digital jaw component that represents at least a portion of a patient’s jaw. However, it is noted that the applicant has claimed that the socket is in the jaw component, therefore, it is unclear how the surface of the socket, which is part of the jaw component is “distal to the patient’s jaw”. It is noted that for examination purposes, the limitation is being interpreted as a surface distal to the opening of the socket. Such that it is an end surface of the socket that is located near the bottom surface of the jaw component, however, the applicant should amend the claims to clarity what is being claimed.
Further in each independent claim the applicant claims “a dental structure” and the dental structure comprises “a tooth portion”, “a shaft portion” and “a projection portion”. The applicant claims that the projection portion protrudes from a planar end of the shaft “wherein the shaft protrudes in a direction distal to the dental structure”. However, it is unclear what direction the shaft is protruding as the applicant has claimed the dental structure as including the shaft. It is noted that for examination purposes, the limitation is being interpreted as the shaft protruding in a direction distal to the claimed tooth portion, however, the applicant should amend the claims to clarify.
Claim 1 recites the limitation "the bottom face" in lines 13-14 and 17-18. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the bottom face" in lines 21 and 23. There is insufficient antecedent basis for this limitation in the claim.
Further in each independent claim, the applicant claims that the end surface of the projection is shaped and positioned such that its end surface is “flush with the bottom face of the jaw component” and further the projection portion is configured to “contact the surface of the jaw component distal to the patient’s jaw”. It is unclear if the claimed surface and the claimed bottom face are the same surface of different surfaces. It is noted that for examination purposes, the claimed “surface distal to the patient’s jaw” and the claimed “bottom face of the jaw component” are being interpreted as the same surface. Such that when the dental structure is inserted into the socket, the distal end of the projection is flush, i.e. in contact with the claimed surface distal to the patient’s jaw which is the bottom face of the jaw component. However, the applicant should amend the claim to clarify what is being claimed.
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 11-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In accordance with section 2106 of the MPEP the pending claims are analyzed as follows:
Step 1: In regard to claims 11-20, the claims are directed towards “System” that claims “a memory” and “one or more processors”. The claimed “system” 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).
22. Step 2A: In regards to claims 11-20, the claimed invention is directed to an abstract idea without reciting additional elements that amount to significantly more than the judicial exception (MPEP 2106.05). The claimed system is directed to a mental process, concepts that are capable of being performed in the human mind, including observations, evaluations and judgments. More particularly, the functions of “generate a digital model of a jaw component” and “generate a digital model of a dental structure” are all capable of being performed mentally by the dental practitioner or simply with a piece of paper or pencil. For example, the user may use their knowledge of specific tooth shapes to design a tooth to fit within a cavity of a model. It is suggested that the applicant amend claim 11 to claim a system including the computing device including processors and a fabrication machine to fabricate the jaw component and dental structure based on the digital models to overcome the rejection.
23. Step 2B: In regards to claim 11, the claimed steps are all algorithms capable of being performed mentally and represents nothing more than concepts related to performing mathematical calculations which falls within the judicial exception. Implicit in the claimed invention is the intended use of a general-purpose computer 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 claimed invention improves the manner in which the processing unit operates. There mere recitation in the claims of a generic computing device 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 claimed do not go beyond “determining” and “calculating” numerical values based on mathematical algorithms with a general-purpose computer. See above suggestions in step 2A for proposed claim language to overcome the rejection.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 4-7, 10-11, 14-17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gilles et al. (2013/0041630)
With respect to claim 1, Giles teaches a method of providing a dental model comprising generating a digital model of a jaw component, wherein the digital model of the jaw component represents at least a portion of a patient’s jaw (see figs 4a-4b, 5a claim 95, such that the physical model is made from a virtual model), and wherein the jaw component comprises a socket 407/507 extending therethrough (see abstract, pars. 286-287, claim 95, fig.4b, 5a, annotated figure below), generating a digital model of a dental structure 405/705, wherein the dental structure is shaped to be demountably attachable to the jaw component (pars. 287, 296, see claim 95), and wherein the dental structure comprises a tooth portion representative of at least a portion of a tooth of the patient (see annotated figure, pars. 286-287), a shaft shaped to be insertable into the socket along an insertion direction (see figs. 4a-4b, 7, annotated figure), and a projection portion, wherein the projection portion protrudes from a planar end of the shaft (see annotated figure), wherein the shaft protrudes in a direction distal to the tooth portion, and wherein the projection portion protrudes in a direction distal from the shaft (see figs. 4a-4b, 7, annotated figure below), fabricating the jaw component based on the digital model of the jaw component, wherein the jaw component is fabricated using additive manufacturing (pars. 32-35, 231-234, 121, 124, 126) and fabricating the dental structure based on the digital model of the dental structure, wherein the dental structure is fabricated using additive manufacturing (pars. 32-35, 231-234, 121, 124, 126, such that the physical model made by additive manufacturing includes the removable component, i.e. the dental structure). It is noted that Giles shows that the end surface of the projection seems to be substantially flush with the bottom of the jaw component when inserted (see for example fig. 12 which shows the cross section of the dental structure inserted into the socket of the jaw component. However, the embodiment used above does not teach the socket extending to a surface distal to the patient’s jaw, such as it teaches the end of the socket being open and is silent as to the relationship between an end surface of the projection and the bottom surface of the jaw component, more specifically the claimed surface distal to the patient’s jaw of the jaw component.
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It is noted that Giles shows that the end surface of the projection seems to be substantially flush with the bottom of the jaw component when inserted (see for example fig. 12 which shows the cross section of the dental structure inserted into the socket of the jaw component and figs. 15a-15b, par. 345 regarding the pin extending all the way through the model). However, the embodiment used above does not teach the socket extending to a surface distal to the patient’s jaw, such as it teaches the end of the socket being open and is silent as to the relationship between an end surface of the projection and the bottom surface of the jaw component, more specifically the claimed surface distal to the patient’s jaw of the jaw component.
However, Giles teaches another embodiment wherein the jaw component comprises a socket extending therethrough and a surface distal to the patient’s jaw (see fig. 15b, par. 345, such that the bottom of the socket is closed as illustrated by the dashed line), wherein the projection portion 1512 is shaped and positioned such that its end surface is flush with the bottom face of the jaw component, wherein the projection portion is configured to contact the surface of the jaw component distal to the patient’s jaw when the shaft is inserted into the socket along the insertion direction (the shaft is the portion received in the socket 1507 above the projection 1512), and wherein the contact of the projection portion to the surface of the jaw component distal to the patient’s jaw, and flushness of the end surface with the bottom face of the jaw component allows for verification of insertion depth and verification that the dental structure is properly positioned along the insertion direction (par. 188). Such that The embodiment of figs.4a-4b and 7, when inserted into the socket would have the end surface even with the bottom surface of the jaw component and the modification of adding a surface to the socket (i.e. the socket being closed) taught by the embodiment of figs 15a-15b of Giles would meet the claimed limitations since the end of the projection would contact the claimed surface of the socket. It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the embodiment of figs. 4a-4b and 7 of Giles to have the socket with the surface distal to the patient’s jaw such that the projection contacts the surface and is flush with the surface/bottom of the jaw component as taught by the alternative embodiment of Giles in order to ensure that the position of the removable component in the model is anatomically correct with respect to the height of the removable component.
With respect to claim 4, Giles further teaches wherein the shaft of dental structure comprises a three-lobed geometry (par. 85 regarding the base of the removable component being circular, fig. 6, par. 41, such that the supporting and positioning means are on the removeable component, par. 93 such that there can be 3 supporting elements, therefore the dental structure has a three-lobed geometry when 3 supporting elements are positioned on the removable element/dental structure).
With respect to claim 5, Giles further teaches wherein the shaft of the dental structure comprises a rectangular geometry (par. 50, fig. 8b).
With respect to claim 6, Giles further teaches wherein a friction fit secures the jaw component to the dental structure when the saft of the jaw component is inserted into the socket of the dental structure along the insertion direction (pars. 38, 76-80).
With respect to claim 7, Giles further teaches wherein the socket comprises a recess corresponding to a geometry of the projection portion (such that it accepts it, see figs. 4b, 15b ), and wherein the recess is configured to receive the projection portion and limit insertion depth of the projection portion (see detailed explanation above, par. 188).
With respect to claim 10, Giles further teaches wherein the dental structure further comprises of ribs each extending along the insertion direction (par. 41-43, such that the positioning/supporting elements are on the dental structure and extend along the insertion direction, fig. 5a showing ribs).
With respect to claim 11, Giles teaches a system for providing a dental model and fabrication a jaw component and one or more dental structures comprising a memory (par. 365), one or more processors configured to execute computer readable instructions, wherein upon execution of the computer readable instructions (see par. 365), wherein the one or more processors are configured to generate a digital model of a jaw component, wherein the digital model of the jaw component comprises a socket extending therethrough (see abstract, pars. 286-287, claim 95, fig.4b, 5a), generate a digital model of a dental structure of the one or more dental structures, wherein the dental structure is shaped to be demountably attachable to the jaw component (pars. 10-13, 287, claim 95), and wherein the dental structure comprises a tooth portion representative of at least a portion of a tooth of the patient (see annotated figures above, pars. 286-287), a shaft shaped to be insertable into the socket along an insertion direction (see figs. 4a-4b, annotated figure above), and a projection portion, wherein the projection portion protrudes from a planar end of the shaft (see annotated figure), wherein the shaft protrudes in a direction distal to the tooth portion, and wherein the projection portion protrudes in a direction distal from the shaft, generate instructions for the fabricating of the jaw component by an additive manufacturing fabrication machine, wherein the instructions are based on the digital model of the jaw component, wherein the jaw component is fabricated by the additive manufacturing fabrication machine based at least in part on the generated instructions (pars. 32-35, 231-234, 121, 124, 126) and generate instructions for the fabricating the dental structure of the one or more dental structures by the additive manufacturing fabrication machine, wherein the instructions are based on the digital model of the dental structure of the one or more dental structures, wherein the dental structure is fabricated by the additive manufacturing fabrication machine based at least in part on the generated instructions (pars. 32-35, 231-234, 121, 124, 126, such that the physical model made by additive manufacturing includes the removable component, i.e. the dental structure).
It is noted that Giles shows that the end surface of the projection seems to be substantially flush with the bottom of the jaw component when inserted (see for example fig. 12 which shows the cross section of the dental structure inserted into the socket of the jaw component and figs. 15a-15b, par. 345 regarding the pin extending all the way through the model). However, the embodiment used above does not teach the socket extending to a surface distal to the patient’s jaw, such as it teaches the end of the socket being open and is silent as to the relationship between an end surface of the projection and the bottom surface of the jaw component, more specifically the claimed surface distal to the patient’s jaw of the jaw component.
However, Giles teaches another embodiment wherein the jaw component comprises a socket extending therethrough and a surface distal to the patient’s jaw (see fig. 15b, par. 345, such that the bottom of the socket is closed as illustrated by the dashed line), wherein the projection portion 1512 is shaped and positioned such that its end surface is flush with the bottom face of the jaw component, wherein the projection portion is configured to contact the surface of the jaw component distal to the patient’s jaw when the shaft is inserted into the socket along the insertion direction (the shaft is the portion received in the socket 1507 above the projection 1512), and wherein the contact of the projection portion to the surface of the jaw component distal to the patient’s jaw, and flushness of the end surface with the bottom face of the jaw component allows for verification of insertion depth and verification that the dental structure is properly positioned along the insertion direction (par. 188). Such that The embodiment of figs.4a-4b and 7, when inserted into the socket would have the end surface even with the bottom surface of the jaw component and the modification of adding a surface to the socket (i.e. the socket being closed) taught by the embodiment of figs 15a-15b of Giles would meet the claimed limitations since the end of the projection would contact the claimed surface of the socket. It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the embodiment of figs. 4a-4b and 7 of Giles to have the socket with the surface distal to the patient’s jaw such that the projection contacts the surface and is flush with the surface/bottom of the jaw component as taught by the alternative embodiment of Giles in order to ensure that the position of the removable component in the model is anatomically correct with respect to the height of the removable component.
With respect to claim 14, Giles further teaches wherein the shaft of the dental structure comprises a three-lobed geometry (par. 85 regarding the base of the removable component being circular, fig. 6, par. 41, such that the supporting and positioning means are on the removeable component, par. 93 such that there can be 3 supporting elements, therefore the dental structure has a three-lobed geometry when 3 supporting elements are positioned on the removable element/dental structure).
With respect to claim 15, Giles further teaches wherein the shaft of the dental structure comprises a rectangular geometry (par. 50, fig. 8b).
With respect to claim 16, Giles further teaches wherein a friction fit secures the jaw component to the dental structure when the saft of the jaw component is inserted into the socket of the dental structure along the insertion direction (pars. 38, 76-80).
With respect to claim 17, Giles further wherein the socket comprises a recess corresponding to a geometry of the projection portion (such that it accepts it), and wherein the recess is configured to revie the projection portion and limit insertion depth of the projection portion (see detailed explanation above regarding the second embodiment regarding the stop surface).
With respect to claim 20, Giles further teaches wherein the dental structure further comprises of ribs each extending along the insertion direction (par. 41-43, such that the positioning/supporting elements are on the dental structure and extend along the insertion direction, fig. 5a showing ribs).
Claim(s) 2 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gilles et al. (2013/0041630) as applied to claims 1 and 11 above, and further in view of Warden et al. (2012/0291284).
Giles teaches the invention as substantially claimed and discussed above, including Giles teaching wherein the instructions for fabricating the jaw component comprises forming a geometry of the jaw component with a first plurality of layers and wherein fabricating the dental structure comprises forming a geometry of the dental structure with a second plurality of layers (such that they are both produced using stereolithography which produces the structure in layers), however, does not specifically teach the layers are polymer.
Warden teaches a method of providing a dental model wherein the model is formed of a plurality of polymeric layers (pars. 43, 61, 103). It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the material of the jaw component and dental structure as taught by Giles to be a polymer material as taught by Warden since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (see MPEP 2144.04).
Claim(s) 3 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gilles et al. (2013/0041630) in view of Warden et al. (2012/0291284) as applied to claims 2 and 12 above, and further in view of Thomas et al. (5,663,883).
Giles/Warden teaches the invention as substantially claimed and discussed above including fabricating both the jaw and dental structure from layers, however, does not specifically teach the orientation of the first plurality of polymeric layers are not perpendicular to the insertion direction.
Thomas teaches a method of making a device in layers including a socket having an insertion direction (see figs. 2a-2b, such that the insertion direction is into the socket to attach the key to something), wherein the orientation of the layers are not perpendicular to the insertion direction (see fig. 2b, x and y, col. 4, ll. 61-67, col. 5, ll. 1-6, col. 8, ll. 64-67). It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify Giles/Warden with the method of printing the layers in a desired direction as a matter of obvious design choice. Such that Thomas teaches the layers can be printed in a number of directions based on the user preference.
Claim(s) 8-9 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gilles et al. (2013/0041630) as applied to claims 1 and 11 above, and further in view of Hoe (4,767,331).
Giles teaches the invention as substantially claimed and discussed above including Giles teaching the length of the protrusions being a portion of the shaft (pars. 59) and that the control the friction between the removable element and the cavity (par. 80), however, does not specifically teach the jaw element further comprises a plurality of protrusions disposed at varying depths along a length of the socket, wherein the plurality of protrusions are configured to provide tactile feedback at the varying depths when the shaft is inserted into the socket and wherein at least one of the plurality of protrusions allows for an increased level of compression, and wherein the at least one of the plurality of protrusions is configured to compress when the shaft is inserted in the socket.
Hoe teaches a jaw component 40/50 comprising a socket, a dental structure 60 comprising a tooth portion (portion to be received on element 64) and a shaft portion 61 and further teaches with respect to claims 8-9 and 18-19, the jaw element further comprises a plurality of protrusions 56c/56d disposed at varying depths along a length of the socket, wherein the plurality of protrusions are configured to provide tactile feedback at the varying depths when the shaft is inserted into the socket and wherein at least one of the plurality of protrusions allows for an increased level of compression, and wherein the at least one of the plurality of protrusions is configured to compress when the shaft is inserted in the socket (see figs. 1-2, such that the protrusions are capable of functioning as claimed such that the user will be able to feel when the first protrusions 56c is received in the bottom recess 65d, col. 4, ll. 63-68, col. 5, ll. 1-6). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Giles with the protrusions taught by Hoe in order to assist in positioning the dental structure within the jaw structure such that the amount of friction is varied as desired.
Response to Arguments
Applicant’s arguments with respect to claim(s) November 18, 2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
It is noted that the prior art of Giles was used including the use of a different embodiment than what was used in the previous rejection to teach the claimed surface of the socket and the projection contacting the surface.
Applicant's arguments filed November 18, 2025 have been fully considered but they are not persuasive.
Regarding the 101 rejection of claims 11-20, the applicant agues that claim 11 as amended is not directed to an abstract idea because it cannot be practically performed in the human mind. The applicant argues that the instructions generated as recited in claim 11 are not directed towards merely “determining” and “calculating” numerical values based on mathematical algorithms with a general-purpose computer. However, the claimed limitation of “generating instructions” do not overcome the 101 rejection as the limitations are not contributing to the operation of the general-purpose computer or causing a transformation. It is noted that the claimed system does not require an additive manufacturing machine. As mentions in the previous rejection and again above, it is suggested that the applicant amend the claims to require the system include the additive manufacturing machine such that then the system would require more than a general-purpose computer.
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.
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/HEIDI M EIDE/Primary Examiner, Art Unit 3772 5/15/2025