DETAILED ACTION
This action is in response to the claims filed on Nov. 7th, 2022 A summary of this action:
Claims 1-20 have been presented for examination.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of a mental process without significantly more.
Claim(s) 1-4, 6-16, and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paehl et al., US 2016/0310239, either alone with an obvious rationale, or in view of Van Der Meer, Wicher J., et al. "3D Computer aided treatment planning in endodontics." Journal of dentistry 45 (2016): 67-72
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paehl et al., US 2016/0310239, either alone with an obvious rationale, or in view of Van Der Meer, Wicher J., et al. "3D Computer aided treatment planning in endodontics." Journal of dentistry 45 (2016): 67-72 in further view of Herrman, DE-4116190-A1 (using the machine translation from the FIT database).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paehl et al., US 2016/0310239, either alone with an obvious rationale, or in view of Van Der Meer, Wicher J., et al. "3D Computer aided treatment planning in endodontics." Journal of dentistry 45 (2016): 67-72 in further view of Kim et al., US 2011/0091832
This action is non-final
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 .
Duplicate claim warning
Applicant is advised that should claim 12 be found allowable, claims 16, 18-20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Similar warning of dependent claims 9 in view of 6, the Examiner noting that “one or more” already includes a plurality in its scope because claim 10 does require it is only for multiple holes (the “or more”)
Recognition of prior restriction that was finalized
The present application is a result of an election made in the parent application (note the DIV status), therefore the Examiner will consider the present claims as the election by original presentation for the instant application. MPEP § 804.02(II): “A nonstatutory double patenting rejection may also be avoided if consonance between the originally restricted inventions is maintained in a divisional application. "Section 121 shields claims against a double patenting challenge if consonance exists between the divided groups of claims and an earlier restriction requirement." Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1871 (Fed. Cir. 2003). "Consonance requires that the line of demarcation between the ‘independent and distinct inventions’ that prompted the restriction requirement be maintained ... Where that line is crossed the prohibition of the third sentence of Section 121 does not apply." Symbol Techs, Inc. v. Opticon, Inc., 935 F.2d 1569, 1579, 19 USPQ2d 1241, 1249 (Fed. Cir. 1991) (quoting Gerber Garment Technology Inc. v. Lectra Systems Inc., 916 F.2d 683, 688, 16 USPQ2d 1436, 1440 (Fed. Cir. 1990))."”
Claim Rejections - 35 USC § 112(b)
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.
Claim 3 is 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 3 recites the term “about” - see MPEP § 2173.05(b)(III)(A): “However, in another case, the court held that claims reciting "at least about" were invalid for indefiniteness where there was close prior art and there was nothing in the specification, prosecution history, or the prior art to provide any indication as to what range of specific activity is covered by the term "about." Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991)”
See ¶ 166: “The phrase "about" or "approximately" may be used when describing magnitude and/or position to indicate that the value and/or position described is within a reasonable expected range of values and/or positions. For example, a numeric value may have a value that is +/- 0.1 % of the stated value (or range of values), +/- 1% of the stated value (or range of values),+/- 2% of the stated value (or range of values),+/- 5% of the stated value (or range of values),+/- 10% of the stated value (or range of values), etc.” - this is a non-limiting list for “about”, clarifying it is indefinite, for this list has no end to what values the term is limited to, e.g. it may readily continue to +/-20%, +/- 50%, +/-100 %, +/-200 %, etc. by simply continuing the sequence in this list ad infimum.
For purposes of examination, the Examiner adopts “10%” as the BRI of “about”, however the Examiner suggests cancelling this term.
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 invention is directed to an abstract idea of a mental process without significantly more.
Step 1
The claims are directed towards the statutory category of a process.
Claims 15 and 20, and the dependents thereof, are rejected under a similar rationale as representative claim 1, and the dependents thereof.
Step 2A – Prong 1
The claims recite an abstract idea of a mental process. See MPEP § 2106.04(a)(2).
The focus of the presently claimed advance is merely a generic design method, but do it on a computer, for a particular product. While the product itself is likely be eligible if separately claimed as an apparatus, this is not what the claim is directed to (see the restriction in the parent application), and simply invoking a computer as a tool to perform a manual activity (the design process of the product, and merely specifying the product geometry in the design process but with no particular details about how the computer does these steps), without any improvement to the technology used in the software arts themselves, is not eligible subject matter. See ¶¶ 92-107.
To clarify in this, but for the mere instructions to do it in a computer environment, and a token post-solution activity of essentially just “manufacture it” but with merely calling out a generic machine (the 3D printer), with no inventive concept in the machine itself, this is simply the mental process of mentally determining how, by a series of mental observations, opinions, evaluations, and judgements, an endodontist would design braces and a tray for the braces to be placed in for positioning in the mouth of a patient (i.e. see Pamukçu, Hande, and Ömür Polat Özsoy. "Indirect bonding revisited." Turkish journal of orthodontics 29.3 (2016): 80. – specifically, see fig. 1-6 which show the long-standing steps of the manual process (note, the endodontist or a similar such POSITA would be mentally performing evaluations/judgements/observations/opinions in the mental process that corresponded to the manual process), wherein physical aids such as a stone model from an impression (fig. 1; # 1 on page 5) are used to perform this mental process.
To further clarify, and to describe this abstract idea at a higher level of abstraction, this is merely the abstract idea of the mental process of a person making a series of mental observations/evaluations/judgments/opinions to design a product, but for generally linking it to a particular technological environment of a particular product at prong 2 and 2B, and but for a token-post solution activity.
E.g. Suppose a person wants to design an impression tray for taking teeth impressions. First they examine the state of the art, and understand that people commonly fill an impression tray with the impression compound for the teeth before a dentist, or similar such profession, applies the tray to the teeth of a patient to take an impression (thus, placing the tray onto the surfaces of teeth). But, having observed dentists perform this act before (e.g. observing their own act of doing it, because they were a dentist), they observe that there is a problem that the amount of impression compound material placed into the tray prior to the placement act is commonly too little, or too much (and overflows when placed on the teeth). Thus, the person mentally evaluates how to solve this problem, and the first solution they arrive at is to have a means to fill the tray after it is sitting over the teeth, thus solving the too little problem, as one can now readily add the compound after placement over the teeth. A simple choice for this would be a hole drilled into the tray itself, or otherwise formed in the tray as part of its manufacturing, but the judgment to add a hole for this is purely a mental judgement while mentally visualizing the geometry of the product, or using pen and paper as an aid.
But, they have yet to solve the overfilling problem, and during routine trial and error with the new hole they already added (e.g. by drilling into a tray they had in their office), they realize a new problem – the impression tray and compound make an air-tight seal around much of the teeth, so when they add more compound in the air in the tray to be displaced by the compound has no where to go. Thus, they mentally judge to solve this with another hole so as to vent the air when adding in new compound to the tray.
Now, they simply drill the second hole to prototype it (or, if a 3D printer is handy in the dental office, which the WURC evidence indicates they are at least starting to be more commonplace at dentists and orthodontists, 3D print a new prototype), trial it on a patient, observe the success of the solution, and race to submit an application to the German patent office on their newly designed geometry of an impression tray. Such a mental process needs no computer to be performed, but rather may simply be mental determinations in the mind of a POSITA.
E.g. Herrmann Josef in DE-4116190-A1, Nov. 1992, describes such an invention of such an impression tray, and makes no mention of computers used in its design, and even the drawings appear to be those of a person drafting by hand, e.g. note the numbering in the figures have characteristics more common to handwriting, as do the figure numbers (in contrast, see the numbering in the German textual description).
Or as another example, where two holes are a common solution to this problem, one simply can look into the history of submarines, as most engineers know submarines have ballast tanks to raise/lower the elevation of the sub by either filling the tank with water (and thus displacing air); or filling the tank with air (and thus displacing water), e.g. in the movie the Hunt for Red October, or countless other movies over the years discussing this in popular culture.
Well, a person, e.g. an engineer, would readily know that if the tank is underwater, and filled with water, that to place air into the tank requires 1) an inlet of air, and 2) an outlet for the water, and thus needs two holes in its design, as mental judgments made in the mental design process of a ballast tank. A similar such mental process would also be presumably performed for underground oil tanks, and various other objects/products.
This claim, at a high level of abstraction, is nothing more then a mental process of mentally designing the geometry of a product, but use a computer as a tool to do it/do it in a computer environment, and the mental judgements/opinions such as based on mental evaluations/observations made along the way.
Further clarification about what this claim is directed to, under the BRI (MPEP § 2111.01(I and III); note claim construction to POSITA in the office training examples is typically performed prior to the § 101 analysis, just as it was in this application.
The mental process recited in claim 1 is:
placing an attachment on a crown surface of a tooth of a digital dental model;
creating a digital attachment template from the digital dental model including the attachment on the crown surface of the tooth of the digital dental model, wherein the attachment forms a cavity on an inner side of the digital attachment template;
creating one or more holes in the digital attachment template that are configured to provide access for a flowable attachment material into the cavity;
A mental process for designing a tray for braces, wherein such trays have long been in used in the field of orthodontics.
To clarify, in orthodontics, it is well-known to POSITAs what this claim is to (MPEP § 2111.01(I and III) for while neither the claim nor the specification recites the terms of art commonly used to describe what this is directed to, POSITA would have recognized it from their own common knowledge (evidenced below) for the BRI of this claim.
Kim et al., US 2011/0091832, ¶ 10: “Indirect bonding trays are normally custom-made for each patient because the size and orientation of teeth can vary widely from one patient to the next. One method of making indirect bonding trays includes the steps of taking an impression of each of the patient's dental arches and then making a replica plaster or "stone" model from each impression. If desired, the teeth of the model can be marked with a pencil to assist in placing the brackets in ideal positions. Next, the brackets are temporarily bonded to the stone models using a suitable adhesive. An indirect bonding tray is then made by placing matrix material over the model as well as over the brackets on the model. For example, in a thermoforming method, a plastic sheet matrix material may be placed over the model and brackets and then heated in an oven under vacuum. As the plastic sheet material softens and as air in the oven is evacuated, the plastic sheet material assumes a configuration that precisely matches the shape of the replica teeth of the stone model and adjacent brackets. The plastic material is then allowed to cool and harden to form a tray. As an alternative to thermoforming, it is possible to cast a suitable resin, such as silicone, around the teeth of the model and then harden the resin to produce the tray. In this case, a casting vessel is sometimes used to contain the resin prior to hardening.”
Paehl et al., US 2016/0310239 ¶ 5: “In general, indirect bonding techniques have involved the use of a transfer tray having a shape that matches the configuration of at least part of a patient's dental arch. A set of appliances such as brackets are releasably connected to the tray at certain, predetermined locations…”
With a long history to this process, well before computers were used as tools to perform it.
Pamukçu, Hande, and Ömür Polat Özsoy. "Indirect bonding revisited." Turkish journal of orthodontics 29.3 (2016): 80. Introduction: “Indirect bonding was developed by Silverman and Cohen (1) in 1972 to reduce clinical time and to enhance patient comfort. In this method, they used cement for attaching brackets to the stone model, a sealant as a clinical adhesive, and thermoplastic trays for the transfer of the brackets. In 1979, Thomas (2) invented “custom composite base technique,” which is still the most widely accepted technique currently used for indirect bonding. In this technique, Thomas used a chemically-cured resin for attaching the brackets in a laboratory and a universal and a catalyst resin as the clinical adhesive….”
Wherein computers are now routinely used as a tool to automate the design of such trays. Pamukçu, Hande, and Ömür Polat Özsoy. "Indirect bonding revisited." Turkish journal of orthodontics 29.3 (2016): 80. ¶ 4: “With the advancement of technology, computers entered the practice of orthodontics, thereby enhancing the indirect bonding technique. Several companies offer three-dimensional computer-aided design and computer-aided manufacturing (3D CAD-CAM)-generated methods for the fabrication of indirect bonding trays. In one of these, Suresmile (Orametrix Inc.; Dallas, USA) system (9), teeth are scanned using an intraoral scanner, and computer generated 3D images are produced. These 3D images are used for digital set-up, and the brackets are placed in appropriate regions of the teeth. The customized transfer trays for indirect bonding and a customized archwire are prepared. Another popular 3D indirect bonding system is Insignia (Ormco Corp.; Orange, CA, USA). (10). In this system, the 3D images of the patients are used for the digital set-up, the CAD-CAM technique is used for design, and customized brackets are produced…” – see figures 1-3, which visually show how a stone model of the patients’ teeth (step 1: “Impressions can be taken with alginate or two-phase silicone impression materials. Hard stone models are obtained and dried for at least a night” on page 2 under “Laboratory stages”) is obtained from “Impressions”, followed by the placement of the brackets (fig. 1-2), thus leading to a manual “fabrication of the transparent transfer tray” (fig. 3, # 5-6; # 5 noting: “Before the fabrication of the transfer tray, a block-out is required for the undercuts”), the later figures showing how such trays are used in a clinical practice (in contrast, note that the software previously discussed uses “scan[s]”/”images” of the teeth, not the stone model formed from an impression of the patient’s teeth).
Additional evidence is set forth below in the 2B consideration that was also taken into consideration for the BRI in view of the state of the art prior to conducting the § 101 analysis (i.e. see the training examples for its claim construction section, one must establish the BRI first, and MPEP § 2111.01(I and III) including: “In some cases it is also appropriate to look to how the claim term is used in the prior art, which includes prior art patents, published applications, trade publications, and dictionaries. Phillips v. AWH Corp., 415 F.3d 1303, 1317, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) ("Although we have emphasized the importance of intrinsic evidence in claim construction, we have also authorized district courts to rely on extrinsic evidence, which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises."))
Thus, when this claim is given to BRI to POSITA (a person with ordinary skill in at least in the field of orthodontics and digital applications in dentistry/adjacent fields such as orthodontics) the claim is directed to the mental process itself, such as an orthodontist would perform using physical aids, so as create an indirect bonding tray [the attachment template] for attaching brackets for braces to a patients teeth [the attachment that forms a cavity], such as by a series of mental observations, evaluations, and judgements using physical aids, followed by a mental judgement to add a hole into the tray in the design of the tray (to clarify, the Examiner position is that this is directed to the mental visualization that an orthodontist would rely upon in their mental process to form the tray).
E.g. the mental judgements/evaluations for the below manual step performed after the mental (e.g. mentally judging how thick the layer should of resin, what resin is used per Pamukçu # 4 on page 2 col. 2, mental observations and/or judgements to achieve step # 7 and mentally judging/observing how much to trim to obtain the desired result), wherein they could readily mentally judge to further add a hole into it, and then manually add the hole (e.g. before the resin cures, insert a small cylinder to create a hole, or drill it out after the resin cures and hardens, or any other technique to achieve this desired result).
Fig. 3 below of Pamukçu to show the manual process that POSITA would have already known from their own knowledge in the field of orthodontics/dentistry:
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This claim adds nothing to the software technology used as a tool to perform this mental process and automate it, and it is directed to the design method itself, not the particular product resultant from the design (contrasted with MPEP § 2106.04(a)(1)), with nothing more than a token post-solution activity after first determining the geometry of the product to be manufacturing (akin to “i. Cutting hair after first determining the hair style, In re Brown, 645 Fed. App'x 1014, 1016-1017 (Fed. Cir. 2016) (non-precedential);” in MPEP § 2106.05(g and f); also in MPEP 2106.04(a)(2)(III)(A): “A claim to identifying head shape and applying hair designs, which is a process that can be practically performed in the human mind, In re Brown, 645 Fed. App'x 1014, 1016-17 (Fed. Cir. 2016) (non-precedential).”).
To further clarify, instant ¶ 5: “Attachments can be fastened to one or more teeth, for example, via adhesive, direct or indirect bonding, and/or or other techniques, and can be used in conjunction with the shape of an appliance to impart repositioning and/or anchor forces to a patient's teeth.”
Direct bonding (¶ 5) is the term of art used to refer to when the orthodontist themselves do not use a tray, but rather directly position (with their own hands) the brackets themselves onto the teeth.
Raffaeli, Roberto, Michele Germani, and Ferruccio Mandorli. "Innovative technologies to support positioning of corrective appliances in orthodontic treatments." Proceedings of the; IV IASTFD International Conference on Applied Simulation and 0odelling. 2005. § 2 second to last paragraph, then see § 3 ¶ 2: “As cited above, brackets can be positioned by a direct technique, with the help of callipers, altimeters, etc., or by indirect bonding. In this last case brackets are bonded on a plaster cast and a thermoformed tray, which is successively used to bond them in the mouth, to fix the positions. Direct bonding is simple and widely used in vestibular cases, while indirect bonding is necessary for lingual treatments.”
Dixon, Gary D. Comparison of two orthodontic indirect bonding methods. University of Louisville, 2011. Page 1, ¶ 1: “When bonding fixed orthodontic appliances to teeth orthodontists have the choice of bonding indirectly or directly. Indirect bonding involves positioning the brackets on models of the teeth and then transferring the brackets to the patient's mouth to be bonded… Once the bracket position is satisfactory a transfer tray is fabricated and the brackets can then be transferred to the patient's mouth with all of the brackets maintaining the chosen position. Conversely direct bonding involves positioning the brackets in the mouth and then bonding the bracket in place. This allows more time for the adhesive system used to bond the bracket to become contaminated.” – see the Literature review starting on page 4 for more clarification, including the history of these two techniques, e.g. pages 4-5. Also, see page 12 ¶ 1: “Orthodontic brackets adhere to teeth with dental composite resins. This can be done directly in the mouth or indirectly in a lab and then transferred to the mouth…” then 13, ¶ 1.
Under the broadest reasonable interpretation, these limitations are process steps that cover mental processes including an observation, evaluation, judgment or opinion that could be performed in the human mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the "Mental Process" grouping of abstract ideas. A person would readily be able to perform this process either mentally or with the assistance of pen and paper. See MPEP § 2106.04(a)(2).
To clarify, see the USPTO 101 training examples, available at https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility. In particular, with respect to the physical aids, see example # 45, analysis of claim 1 under step 2A prong 1, including: “Note that even if most humans would use a physical aid (e.g., pen and paper, a slide rule, or a calculator) to help them complete the recited calculation, the use of such physical aid does not negate the mental nature of this limitation.”; also see example # 49, analysis of claim 1, under step 2A prong 1: “Moreover, the recited mathematical calculation is simple enough that it can be practically performed in the human mind. Even if most humans would use a physical aid, like a pen and paper or a calculator, to make such calculations, the use of a physical aid would not negate the mental nature of this limitation.”.
As such, the claims recite a mental process.
Step 2A, prong 2
The claimed invention does not recite any additional elements that integrate the judicial exception into a practical application. Refer to MPEP §2106.04(d).
The “digital” in the claim is merely instructions to do this abstract idea on a computer/in a computer environment (MPEP § 2106.05(f and h). Also, its additionally considered as an insignificant computer implementation (footnote 17 of Aug. 2025 memorandum; MPEP §2106.05(g)).
The recitation of “and three-dimensional printing the attachment template based on the digital attachment template” is considered as both a token post-solution activity, and mere instructions to “apply it” given the generality recited herein, akin to the act of cutting hair with scissors after first determining a hair style in In re Brown (MPEP § 2106.05(f and g).
The Examiner further notes that the abstract idea discussed above is readily described at a higher level of abstraction, for it is the mental process an orthodontist or lab technician would use when creating a tray for indirect bonding of brackets for braces. As this level of abstraction claim merely links the abstract idea itself to a specific product, one with the “holes”, with no particular recitation in how these are to be created in a technological manner that improves the technology of creating the model. This is akin to “iii. Limiting the use of the formula C = 2 (pi) r to determining the circumference of a wheel as opposed to other circular objects, because this limitation represents a mere token acquiescence to limiting the reach of the claim, Flook, 437 U.S. at 595, 198 USPQ at 199;” in MPEP § 2106.05(h), as this abstract idea is readily usable with other such trays, and merely generally linking to one object instead of others (e.g. trays in the prior art) does not make it eligible. To clarify, in MPEP § 2106.05(h): “Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016). In Affinity Labs, the claim recited a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content. 838 F.3d at 1255-56, 120 USPQ2d at 1202. The court identified the claimed concept of providing out-of-region access to regional broadcast content as an abstract idea, and noted that the additional elements limited the wireless delivery of regional broadcast content to cellular telephones (as opposed to any and all electronic devices such as televisions, cable boxes, computers, or the like). 838 F.3d at 1258-59, 120 USPQ2d at 1204. Although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment (cellular telephones) and thus fails to add an inventive concept to the claims. 838 F.3d at 1259, 120 USPQ2d at 1204.”- with the creating of holes as akin to MPEP § 2106.05(f): “Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words "apply it". 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims "so result focused, so functional, as to effectively cover any solution to an identified problem")).”
A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. See MPEP § 2106.04(d).
MPEP 2106.04(II)(A)(2) “…Instead, under Prong Two, a claim that recites a judicial exception is not directed to that judicial exception, if the claim as a whole integrates the recited judicial exception into a practical application of that exception. Prong Two thus distinguishes claims that are "directed to" the recited judicial exception from claims that are not "directed to" the recited judicial exception…Because a judicial exception is not eligible subject matter, Bilski, 561 U.S. at 601, 95 USPQ2d at 1005-06 (quoting Chakrabarty, 447 U.S. at 309, 206 USPQ at 197 (1980)), if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself."). For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B” and MPEP § 2106(I): “Mayo, 566 U.S. at 80, 84, 101 USPQ2dat 1969, 1971 (noting that the Court in Diamond v. Diehr found “the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole,”” – and see MPEP § 2106.05(e).
To further clarify, MPEP § 2106.04(II)(A)(1): “Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980 (citing Mayo, 566 US at 71, 101 USPQ2d at 1965). Yet, the Court has explained that ‘‘[a]t some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas,’’ and has cautioned ‘‘to tread carefully in construing this exclusionary principle lest it swallow all of patent law” See also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 118 USPQ2d 1684, 1688 (Fed. Cir. 2016) ("The ‘directed to’ inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon").”
As a point of clarity, RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." discussed in MPEP § 2106.04(II)(A)(2) as well as MPEP § 2106.04(I): “Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a new abstract idea is still an abstract idea") (emphasis in original).
The claimed invention does not recite any additional elements that integrate the judicial exception into a practical application. Refer to MPEP §2106.04(d).
Step 2B
The claimed invention does not recite any additional elements/limitations that amount to significantly more.
The “digital” in the claim is merely instructions to do this abstract idea on a computer/in a computer environment (MPEP § 2106.05(f and h). Also, its additionally considered as an insignificant computer implementation (footnote 17 of Aug. 2025 memorandum; MPEP §2106.05(g)).
The recitation of “and three-dimensional printing the attachment template based on the digital attachment template” is considered as both a token post-solution activity, and mere instructions to “apply it” given the generality recited herein, akin to the act of cutting hair with scissors after first determining a hair style in In re Brown (MPEP § 2106.05(f and g).
The Examiner further notes that the abstract idea discussed above is readily described at a higher level of abstraction, for it is the mental process an orthodontist or lab technician would use when creating a tray for indirect bonding of brackets for braces. As this level of abstraction claim merely links the abstract idea itself to a specific product, one with the “holes”, with no particular recitation in how these are to be created in a technological manner that improves the technology of creating the model. This is akin to “iii. Limiting the use of the formula C = 2 (pi) r to determining the circumference of a wheel as opposed to other circular objects, because this limitation represents a mere token acquiescence to limiting the reach of the claim, Flook, 437 U.S. at 595, 198 USPQ at 199;” in MPEP § 2106.05(h), as this abstract idea is readily usable with other such trays, and merely generally linking to one object instead of others (e.g. trays in the prior art) does not make it eligible. To clarify, in MPEP § 2106.05(h): “Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016). In Affinity Labs, the claim recited a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content. 838 F.3d at 1255-56, 120 USPQ2d at 1202. The court identified the claimed concept of providing out-of-region access to regional broadcast content as an abstract idea, and noted that the additional elements limited the wireless delivery of regional broadcast content to cellular telephones (as opposed to any and all electronic devices such as televisions, cable boxes, computers, or the like). 838 F.3d at 1258-59, 120 USPQ2d at 1204. Although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment (cellular telephones) and thus fails to add an inventive concept to the claims. 838 F.3d at 1259, 120 USPQ2d at 1204.”- with the creating of holes as akin to MPEP § 2106.05(f): “Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words "apply it". 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims "so result focused, so functional, as to effectively cover any solution to an identified problem")).”
In addition, the above insignificant extra-solution activities are also considered as well-understood, routine, and conventional activities, as discussed in MPEP § 2106.05(d):
…digital… and three-dimensional printing the attachment template based on the digital attachment template – see:
Pamukçu, Hande, and Ömür Polat Özsoy. "Indirect bonding revisited." Turkish journal of orthodontics 29.3 (2016): 80. As cited above, incl. ¶ 4: “With the advancement of technology, computers entered the practice of orthodontics, thereby enhancing the indirect bonding technique. Several companies offer three-dimensional computer-aided design and computer-aided manufacturing (3D CAD-CAM)-generated methods for the fabrication of indirect bonding trays. In one of these, Suresmile (Orametrix Inc.; Dallas, USA) system (9), teeth are scanned using an intraoral scanner, and computer generated 3D images are produced. These 3D images are used for digital set-up, and the brackets are placed in appropriate regions of the teeth. The customized transfer trays for indirect bonding and a customized archwire are prepared. Another popular 3D indirect bonding system is Insignia (Ormco Corp.; Orange, CA, USA). (10). In this system, the 3D images of the patients are used for the digital set-up, the CAD-CAM technique is used for design, and customized brackets are produced…”
Kothari, Jignesh. "Digital and customized lingual orthodontics: The next step." Journal of Indian Orthodontic Society 50.4_suppl1 (2016): 33-43. Introduction ¶¶ 2-3: “With the addition of computer‑aided technology (CAD), it is the opinion of the author that these systems will further evolve into a superior, streamlined, and efficient system for both labial and lingual orthodontics.[3] Unfortunately, all these systems are limited in what they can offer and deliver in terms of precision, affordability, and speed. These systems rely heavily on the skill and consistency of the technician.” – then page S34, col. 1: “…Globally, there has been a substantial drive toward technology‑driven orthodontic dentistry: from digital archiving, to treatment planning, to custom‑manufactured appliances, both removable and fixed… To acquire the digital data, a new array of imaging modalities have been developed, including cone‑beam computerized tomography (CT), scanning work models with laser or light, using CT to scan an alginate or a rubber base impression, as well as options to scan directly in the mouth… Digitally, the orthodontist can view and assess multiple scenarios, such as the extractions of certain teeth, the option of the surgery, a combination of both, or nonextraction. To do this with multiple wax diagnostic setups is obviously a much more laborious and expensive procedure, requiring duplication of the models to run the various options… Customized appliances generated by CAD/computer‑aided manufacturing (CAM) are the future of lingual orthodontics which involves individualization of the bracket base where each tooth has its own customized bracket, made with the state‑of‑the‑art (CAD/CAM) software and manufactured by highly evolved rapid prototyping techniques” – e.g. see col. 2: “Incognito™ is one of the first, time‑tested, and highly accurate systems. The most important part of the system is the ability to begin with the end in mind. The orthodontist has the ability to communicate with Incognito™ laboratory team as to how the teeth may be moved” followed by: “As of early 2012, 3M Unitek™ had created a digital workflow through its Unitek/3M/eatment Management Portal (TMP) which allows for full three‑dimensional (3D) control over the setup. It gives the orthodontist more control over the entire treatment… The entire appliance is made using the state‑of‑the‑art CAD/CAM technology. The setup model is scanned using a 3D scanner which eliminates the need for physical models. Each individual bracket is custom made through CAD/CAM technology. An indirect bonding tray is fabricated from the CAD/CAM system…” then, last paragraph: “Harmony appliance[7] by American orthodontics© is a complete digitally customized self‑ligating (SL) lingual system” – then, page S35: “Lingual Matrix[8] is another CAD/CAM‑customized straight wire system invented jointly by Dr. Pravin Shetty and Dr. Manjul Jain. The system works on horizontal insertion brackets designed with preformed lingual straight wires. It is based on the 3D scanning of upper and lower models using 5‑axis optical white light scanner, moving each tooth to its ideal position either virtually/manually. Subsequently, the LINGUALMATRIX (Lingual Matrix, Mumbai, India) software produces a CAD model of lingual bracket with a customized base manufactured by an Avante‑Garde laser sintering machine to manufacture a customized single‑piece 3D lingual bracket that adapts seamlessly to the shape and contour of the teeth” as well as : “The first prototype of iLingual braces was developed by the author in the year 2007 and thereafter several prototypes were produced to modify the design and make it more user‑friendly and at the same time making it more efficient for treatment… In 2011, the bracket design was integrated with a digital workflow to create India’s first CAD/CAM lingual appliance, the iLingual 3D… While the process is similar for most customized digital systems, this article outlines the various steps with the iLingual 3D system.” – then, see the section “The Process” and its subsections, as visually summarized in fig. 4
Ciuffolo, Fabio, et al. "Rapid prototyping: a new method of preparing trays for indirect bonding." American Journal of Orthodontics and Dentofacial Orthopedics 129.1 (2006): 75-77. Abstract: “This article describes a new method of preparing trays for indirect bracket bonding. Computer-aided technology is used to design the individualized trays, which are then produced with a rapid prototyping procedure.” then step “The manufacturing process”: “Noncontact scanning of the initial model is performed with a high-resolution optical 3-dimensional (3D) scanner (Structura s.r.l., Ancona, Italy). The 3D scanner examines the model from various perspectives to create a complete 3D representation, with a resolution of at least 0.02 mm. The result is a surface consisting of many thousands of minute triangles (standard triangulation language surface; Fig 1, A) that can be turned, observed, and processed on a computer with dedicated software (CADental, Structura s.r.l.).” followed by: “Next, using the dedicated software, the operator virtually positions the desired commercial bracket (previously incorporated in the software database) onto each tooth at the desired height. Measurements are accurate to 0.1 mm (Fig 1, B). When brackets have been properly positioned, the fabrication of the rapid prototyping trays (RPT) can begin. A special command fills the bracket inlets with virtual clattering material, producing a cubic-like figure that has the same maximal bracket dimensions. A positive of the RPT, in which the real bracket will be placed, has been made. To create the negative of the site, the cubic figure is covered with a virtual acrylic-like material, which represents the tray in a raw state… A software utility trims off the virtual excess material, leaving single, grouped, or unique RPTs, according to arch anatomy and user preference (Fig 1, D)… A high-end rapid prototyping machine is used to convert the virtual trays into the final real product, made of a rigid-elastic plastic material (Fig 2, A and B).” – and see figures 1-2, i.e. even as early as at least 2006, commercially available, off-the-shelf, software was readily able to be used as a tool to perform this abstract idea, with a commercially available, off-the-shelf scanner for inputting the tooth model.
Paehl et al., US 2016/0310239, ¶ 55: “Common CAD programs have capabilities (for example boolean operations) to connect existing shapes to each other.”, ¶ 49 for the use of scanning with conventional scanners, ¶ 46 for use of commercially available 3D printers for use in fabricating the tray, ¶ 51 for CAD for designing/placing virtual brackets WITH CAD, ¶ 53 as well, ¶ 69 as well for another additive manufacturing machine commercially available, then ¶ 71: “As another alternative (not depicted in the Figures), a virtual transfer tray may be directly derived from the virtual mockup, using methods described in US Publication No. 2011/0091832.”
Son, Kyoung-Hui, et al. "New virtual orthodontic treatment system for indirect bonding using the stereolithographic technique." Korean Journal of Orthodontics 41.2 (2011): 138-146. Page 139, ¶ 2, followed by section “TREATMENT PROGRESS” and see fig. 2 including the GUI for displaying the data including “the virtual transfer jig” (caption).
Nguyen, Tung, and Tate Jackson. "3D technologies for precision in orthodontics." Seminars in Orthodontics. Vol. 24. No. 4. WB Saunders, 2018. Section “Customized Brackets”, including page 389, col. 1, ¶ 1
Xing, Rui, et al. "A modeling method of customized brackets and individualized trays for orthodontic treatment." 2016 9th International Congress on Image and Signal Processing, BioMedical Engineering and Informatics (CISP-BMEI). IEEE, 2016. § I ¶ 2, then § II¶¶ 1-2, note § III(C)(2): “In the tray modeling process, Boolean operation is a common technique used to create the functional surface of tray, and the symmetrical mesh is conducive to implementation of subsequent Boolean operation, so initial tray will be created by isometric extrude operation which can control the quality of mesh effectively (Fig. 6).” Followed by fig. 7 as discussed: “The tray modeling process above by Boolean operation can be expressed as:” – wherein eq. 6 provides the use of Boolean subtraction (subtract from the model with the tray, bracket, tooth, and slot for the bracket, all of those things so one only has the resulting tray model).
Kale, P. J., R. M. Metkar, and S. D. Hiwase. "Development and optimization of dental crown using rapid prototyping integrated with CAD." Advances in 3D Printing & Additive Manufacturing Technologies. Singapore: Springer Singapore, 2016. 169-182. In particular, § 4 ¶ 2: “Molar 3D model is imported to 3-matic software. Different thickness crowns are developed with Wrapping command and some Boolean operations. Figure shows the sequential procedure for the crown model development. The molar tooth model of .stl file is imported in 3-matic. Tooth is wrapped with required thickness. The section plane had drowned with required height. Molar tooth is cut through the section line. Boolean operation subtraction is used for the crown model development. The crown model are developed with 1, 1.5, 1.75, 2, 2.25, 2.5 mm” – and see figure 3.
Laverty, Dominic P., et al. "The use of 3D metal printing (direct metal laser sintering) in removable prosthodontics." Dental Update 43.9 (2016): 826-835. Page 826-827 introduction section and the overview on page 326 then see section “CAD Software” on page 831: “There is a variety of RPD design software packages which include, 3Shape, Dental Wings, Exocad and Freeform plus™. These software packages vary in complexity. The simpler software packages can be used on a standard computer without the need for any additional equipment. However, more complex software packages may require the use of specialist equipment such as the use of a haptic arm which often requires further training and experience. These software packages create an stl file which is then used to produce the framework. The majority of 3D printers are capable of producing a framework from an stl file, but it's best to check with the manufacturer to ensure compatibility of the software and the printer.” Along with the section “Digital impressions” for the scanning techniques, and then section “Production of the prosthesis using 3D printing/DMLS” for various 3D printing machines, then see the section “Clinical and manufacturing Technique”, e.g. fig. 5-9, including especially fig. 6.
Van Der Meer, Wicher J., et al. "3D Computer aided treatment planning in endodontics." Journal of dentistry 45 (2016): 67-72. § 2, including the use of Boolean operations such as subtraction in “3ds Max software” on page 69.
Kim et al., US 2011/0091832, ¶ 82: “An exemplary transfer tray was prepared using a scanned 3D virtual model of a patient as well as the 3D solid models of an upper 5x5 set of VICTORY SERIES brand orthodontic brackets (3M Unitek, Monrovia, Calif.) provided in STL format. A virtual model of the patient's arch was obtained using a digital scan of an orthodontic stone impression of a patient's upper dental arch. THREE-MATIC software (Materialise Group in Leuven, Belgium) was then used to construct a virtual model of the transfer tray. The 5x5 set of upper orthodontic brackets was virtually bonded to the model. A three-section integral stop member was derived to matingly engage the occlusal contours of the left first molar, right first molar and the left and right central teeth. A single guidance line was manually traced along the facial surfaces of the virtual brackets by an operator, and this guidance line was subsequently used to derive a smoothed outer surface that was offset by 3 .5 millimeters in the labial direction from the model teeth and appliances. The virtual outer surface was filled using an extrusion process to form the tray body, and the tray precursor was formed by performing a Boolean subtraction between the model with appliances and the tray body. The integral stop member was then merged with the tray precursor, and a cutting surface used to define a gingival edge of the tray intersecting the bracket receptacles. [0083] A physical transfer tray was then formed from the virtual transfer tray model using an ED EN 500V brand 3-Dimensional Printing System (Objet Geometries, Ltd., Rehovot, ISRAEL). A soft, pliable "Tango Plus" FULLCURE brand printing resin was used for the tray body, while a relatively hard "Fullcure 720" resin (also from Objet Geometries, Ltd.) was used for the occlusal stop member. After fabrication, the transfer tray was rinsed in water to dissolve the support material and then loaded with the physical orthodontic brackets. The finished transfer tray was observed to complementally engage over the stone replica model with no difficulties.
Hart, Tim. “3D Printing for Pre-Surgical Fabrication of Implant Components & Temporary Restorations (Updated 6/3/2016: New Clinical Photos)”, Jun 3rd, 2016, Linkedin Article, URL: linkedin(dot)com/pulse/3d-printing-pre-surgical-fabrication-implant-components-tim-hart – see his use of “Dental Wings coDiagnostiX surgical planning software” including: “Progressing from the image on the left to that on the right, you will notice that the software first closes the scanned "skin" to a solid body, then performs a boolean subtraction of the implant replica, along with its coronal projection, from this newly created virtual solid model.”
Grant, Gerald T., et al. "Glossary of Digital Dental Terms." Journal of Prosthodontics 25 (2016). ¶¶ 1-2, then see Definitions of “3D file formats”, “3D modeling”, “3D printing”, “3D scanner”, “3D surface scanner”, “additive manufacturing”, “addivie manufacturing file”, “Boolean object: In computer graphics, a Boolean is a compound object that combines two objects, called operands. It is used in modeling to join objects seamlessly and to cut holes. There are three operations: union, intersection, and subtraction. Union merges the two objects into one continuous surface. Intersection creates an object from the overlapping volumes of the two operands. Subtraction, or difference, is the most common operation: one operand is a tool to cut a hole in the other operand”, “CAD/CAM dentistry”, “CAD”, “CADD”, “CAM”, “digital denture: A complete denture created by or through automation using CAD, CAM, and CAE in lieu of traditional processes. A digital denture is achieved when the final shape of the denture is manufactured through automation to ensure there are no conventional errors from pouring, investment casting, or injecting the material as done in traditional denture fabrication.”, “digital imaging”, “digital print/prining”, “guided surgery The capability of performing virtual surgery based on the use of medical/dental imaging files (DICOM, STL, vrml, obj, etc.) using computer software. The results are used to develop digitally manufactured surgical guides or navigation directions for robotic guidance for surgery.”, “model scanning: The process of acquiring the 3D image of a dental model for translation into a digital file format, such as STL. The digital file can be stored for future reference or used in a CAD software program for the design and fabrication of a dental prosthesis”
Miner, Mathew, DDS, “3D Imaging, Brackets, Direct Bonding, Indirect Bonding, Treatment Planning, Wires”, Oct 1, 2007, Article on Orthodontic Products, URL: orthodonticproductsonline(dot)com/treatment-products/brackets-wires/brackets/advanced-placement-2007-10-11/ - ¶¶ 1-4, then see the description f the use of Cadent OrthoCAD for indirect bonding, including: “OrthoCAD bracket placement technology has been available since 2003. Cadent OrthoCAD has now delivered almost 30,000 bracket-placement cases to orthodontists across the world. The majority of adult and adolescent cases can be accurately and predictably set up using this method.” – and see the figures 1-6, in particular note fig. 6: “: Light curing brackets using iQ trays from the custom setup.” As described in part for step 5: “Trust the computer-guided bracket placement and tray fabrication. When you approve the case, the OrthoCAD iQ technicians will transfer the virtual brackets to the actual model. The physical brackets are placed on the model in the same position you approved, using image recognition and computer-guided targeting technology. When the ideal position is achieved, the technician activates the tacking light that prevents the bracket from drifting. After the composite bases are completely cured, transfer trays are created with a soft inner liner and a hard outer shell. These are trimmed once the brackets are separated from the model.”
Shah, Pratik, and B. S. Chong. "3D imaging, 3D printing and 3D virtual planning in endodontics." Clinical oral investigations 22.2 (2018): 641-654. Section “3D printed guides” and see fig. 8 and 10.
As a point of clarity, ¶ 141 describes the creation of the model by Boolean operations; hence the above WURC evidence also demonstrates that Boolean operations are commonly used in their ordinary capacity to achieve similar results as what is described, i.e. there is no inventive concept to be found in how the data is manipulated in a particular manner, but rather merely the use of ordinary, conventional Boolean modeling operations as routinely used in this manner to achieve this desired result. Nor does the specification even disclose any alleged improvement to the Boolean modeling operation itself, i.e. it simply conveys to POSITA the use of WURC software in its ordinary capacity with its ordinary operations to be used as a tool to automate the mental process of designing a tray (the “attachment template”).
As a final point of clarity, the core inventive concept of this disclosure is not what this is directed to. To clarify, the core inventive concept is the particular tray with the holes (fig. 1-2 and their accompanying description), but that is not what these claims are directed to. See the restriction made on Aug. 6th, 2021, in the parent application 16/409,724, followed by an election without traverse of claims 1-12, and withdrawing claim 13 and its dependents, wherein the instant application is a divisional resultant of that election, i.e. its elected by original presentation for the instant application.
Rather, this claim is directed to mere automation of a mental process, using nothing more than generic, WURC computer software in its ordinary capacity to achieve its intended result, in combination with the WURC insignificant extra-solution activity of mere data gathering via scanning (¶ 142 and elsewhere in the disclosure; WURC evidence in the above citations) and in combination with the WURC (again, see above evidence) insignificant post-solution activity of fabricating it with a 3D printer, wherein the combination of additional elements is WURC as well in view of BASCOM (MPEP § 2106.05(I)(B); noting BASCOM is discussed as a 2B in 2106.06(b) analysis).
As such, the claims are directed towards a mental process without significantly more.
Regarding the dependent claims
Claim 2-5 are considered as further limiting the abstract idea itself by limiting the geometry to be created in a mental visualization, or should it be found not to be part of the abstract idea merely generally linking this claimed invention to a tray with a certain geometry, and desired features resultant from that geometry
Claim 6 is merely reciting an insignificant computer implementation as well as mere data gathering of the abstract idea, i.e. this is simply putting a cylinder or similar such shape into the geometry to represent the holes (¶ 150), and then mentally judging/evaluating to remove it/subtract it, such as, in the field of CAD modeling, applying the WURC Boolean subtraction operation (evidence cited above for independents) to achieve the desired geometry.
Physicals aids, e.g. drawings, e.g. fig. 12-13 in the specification in 2D, are readily usable as physical aids in this mental process
Claim 7 is merely further limiting the geometry in the mental visualization such as part of a mental evaluation
Claim 8 – similar as claims 6-7 (¶ 12; ¶ 149; fig. 12-13)
Claims 9-10 rejected under similar rationales as 6-10
Claim 11 is mere data gathering that is WURC (evidence above)
Claims 12-14 are rejected under a similar rationale as claims 2-5
Claims 16, 18-19 are rejected under a similar rationale as the similar recitation in claim 1
Claim 17 is merely specifying a desired property of the structure in the geometry, without even specifying how this is to be achieved, i.e. further limiting the abstract idea, or if not then just generally linking it to a particular geometry of a particular product (see claims 2-5 above for a similar rationale)
As such, the claims are directed towards a mental process without significantly more.
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.
Claim(s) 1-4, 6-16, and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paehl et al., US 2016/0310239, either alone with an obvious rationale, or in view of Van Der Meer, Wicher J., et al. "3D Computer aided treatment planning in endodontics." Journal of dentistry 45 (2016): 67-72 (MPEP § 2120: “…In the interest of compact prosecution, such rejections should be backed up by the best other art rejections available.”)
To clarify, the below § 103 solely in view of Paehl is made premised upon there being no criticality in when the creation of the holes step is performed (MPEP § 2144.04: “If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on case law as the rationale to support an obviousness rejection”; see rejection to clarify); thus should it be demonstrated otherwise, a backup rejection is made.
Regarding Claim 1
Paehl teaches: A method of forming an attachment template, comprising: placing an attachment on a crown surface of a tooth of a digital dental model; creating a digital attachment template from the digital dental model including the attachment on the crown surface of the tooth of the digital dental model, wherein the attachment forms a cavity on an inner side of the digital attachment template; creating one or more holes in the digital attachment template that are configured to provide access for a flowable attachment material into the cavity; and three-dimensional printing the attachment template based on the digital attachment template. (Paehl teaches this:
Paehl, abstract, teaches: “A method of making a transfer tray includes providing a physical mockup having a shape that corresponds to a positive shape of a patient's dental arch and a positive shape of one or more bracket analogs. A transfer tray may be formed over the physical mockup, with the transfer tray representing a negative replica of at least a portion of the mockup. One or more receptacles are accordingly formed in the ray, each receptacle approximating a least a portion of the shape of a bracket analog. A bracket associated with a bracket analog is placed into a receptacle of the one or more receptacles and a filler material is introduced into at least one receptacle.”
To clarify, see ¶¶ 10, 17, 19, fig. 13 and ¶ 39, then ¶ 83: “In presently preferred circumstances, the filler is at least initially flowable and is introduced into a receptacle viaa channel or other passage. The filler can be injected through the channel and allowed to flow into the cavities and voids, where it is then cured or otherwise hardened in place. In other implementations, the filler may be coated or coupled to the tray prior to introduction of the bracket into the receptacle.” [claims 1 and a few dependent claims noted below] And ¶ 85: “The channel 50 is typically, substantially cylindrical and typically features a diameter of at least 1.0 mm and no greater than 1.5 mm to provide adequate flow of the filler into the receptacle.” [e.g. claim 3] And ¶ 88: “Once the bracket is seated in the receptacle, the filler may be introduced through the channel and allowed to flow into the voids, where it is then cured or otherwise hardened in place…The filler material 60 as illustrated enters the voids 39 now defined in the receptacle 38 and is subsequently allowed to harden. Hardening may be effectuated through use of, for example, ultraviolet light, heat, or time” – as visibly depicted in fig. 13, and other figures, there is a “tray” [attachment template] for attaching “bracket[s]” (abstract) onto teeth, wherein as visibly depicted these form a cavity on an inner side of the tray with a “channel” [hole, fig. 13] for allowing a “filler material” into the cavity for bonding the bracket to the tooth (to clarify, these form braces, see ¶¶ 1 and 44 as commonly referred to) – see fig. 2 to further clarify
Wherein this was based on a 3D model from 3D printing – ¶ 47: “The manufacturing of the physical mockup in this example is based on a virtual mockup prepared in a computer system. Such a virtual mockup preferably corresponds to a mathematical representation of a three-dimensional shape which can be processed by a computer, for example by a CAD (Computer Aided Design) system. Further the virtual mockup is preferably available in the form of computer data which can be used to control an additive manufacturing machine for manufacturing the physical mockup as defined by the virtual mockup. The virtual mockup may be designed or generated from superimposing or merging a virtual dental arch of a patient with a set of virtual analogs as further described in FIG. 5.” – e.g. fig. 5, ¶ 48, wherein this was based on scan data from a scanner - ¶ 49: “The shape of a patient's dental arch may be captured by intra-orally scanning at least part of the patient's dentition including the teeth, or by scanning a physical model, for example a plaster model, of the patient's teeth. Scanning devices which allow for providing a virtual dental arch in digital data form are for example available under the designations Lava™ Scan ST and Lava™ Chairside Oral Scanner C.O.S, both from 3M Deutschland GmbH...”, note the use of STL files (¶ 50), wherein ¶ 51: “In one embodiment the method further comprises the step of positioning the virtual brackets relative to the virtual dental arch. There are a variety of treatment planning systems which allow for designing and/or placing virtual brackets relative to a virtual dental arch by computer aid. Such systems are, for example, described in U.S. Pat. Nos. 7,210,929, 7,811,087, and 7,993,133. The virtual brackets may be at least partially designed and/or retrieved from a database. Each bracket may be automatically and/or manually positioned relative to a virtual tooth comprised in the virtual dental arch.” – also see ¶ 53: “Another exemplary possibility for providing a virtual bracket with a customized pad is disclosed in U.S. Pat. No. 7,811,087” – then see ¶ 59: “A virtual mockup may be provided by combining the virtual dental arch and the set of virtual analogs, for example being merged or superimposed by computer aid”, then see ¶¶ 77-78: “As another alternative (not depicted in the Figures), a virtual transfer tray may be directly derived from the virtual mockup, using methods described in US Publication No. 2011/0091832… When virtually aligned with the virtual mockup, the virtual tray body surrounds both the teeth and analogs. The mocknp (including analogs) may then be virtually subtracted from the virtual transfer tray body to produce a virtual tray precursor. Virtual tray precursor includes a tray body which will typically have a shell-like configuration and further includes one or more receptacles [channels/holes] formed by the negative virtual imprints of the analogs. The virtual tray precursor, which is preferably present in the form of a computer processable three-dimensional data file may be transmitted to an additive manufacturing machine which manufactures the physical transfer tray based on the virtual tray precursor according to techniques discussed above.” And ¶ 84: “Alternatively, the channel 50 may be made by causing a post-like structure to protrude from the bracket body before taking the steps described above to create the transfer tray.”
To clarify on this including 3D printing see ¶ 46: “Examples of suitable additive manufacturing processes include solid freeform fabrication such as 3D printing processes, stereolithography methods, fused deposition modeling, laminated object manufacturing, laser engineered net shaping, selective laser sintering, shape deposition manufacturing, selective laser melting, and solid ground curing. An example of a suitable 3D printing machine is the Eden brand 500V printer from Objet Geometries Ltd., using FullCure 720 acrylic-based photopolymer printing material (also available from Objet Geometries Ltd.).”
There is a single distinction, for when the holes/channels are created in Paehl are before the tray creation, see ¶¶ 77-78 which describes the tray creation: “In one exemplar of such a method, the derivation can proceed by defining a guidance line that extends across at least a portion of the arch and is spaced away from the arch and mounted analogs. For example, the guidance line follows a curved path that is generally parallel to the facial surfaces of the virtual analogs and generally lies in an occlusal plane. In one computer-assisted embodiment, the guidance lines are defined by tracing a line segment that connects the facial-most edges of analogs as viewed from the occlusal direction, offsetting the line segment outwardly towards the facial direction by a certain distance and then applying a smoothing operation to the line segment. If desired, the certain distance can be used to define a desired tray thickness. The process may continue by defining a series of fitted arcs, each of which extends over the lingual, occlusal, and facial surfaces of the virtual arch model and intersects each guidance line in a generally perpendicular relationship such that each fitted arc passes over, without contacting, the virtual model and virtual analogs. An exterior surface of the virtual transfer tray may be formed by fitting a surface to the set of fitted arcs. In some embodiments, the exterior surface is an open-ended shell that completely covers the occlusal, lingual, and facial sides of the virtual mockup that includes the model and analogs. Optionally, a surface smoothing operation is subsequently executed on the exterior surface. Then the remainder of a virtual tray body is derived using the exterior surface. The solid virtual tray body may be formed by defining a composite surface that includes the exterior surface and a planar surface that extends across the cavity formed by the exterior surface. When virtually aligned with the virtual mockup, the virtual tray body surrounds both the teeth and analogs. The mockup (including analogs) may then be virtually subtracted from the virtual transfer tray body to produce a virtual tray precursor. Virtual tray precursor includes a tray body which will typically have a shell-like configuration and further includes one or more receptacles formed by the negative virtual imprints of the analogs.” – note that there is no channel yet in ¶¶ 77-78 and ¶ 84: “Alternatively, the channel 50 may be made by causing a post-like structure to protrude from the bracket body before taking the steps described above to create the transfer tray.”
In summary, ¶ 84 discloses that the channel/holes for the filler material are to protrude from the bracket body before the tray is created, i.e. the creation of the holes step is performed with the creation of the digital attachment template, instead of after it is created.
However, is would have been prima facie obvious, because, per MPEP § 2144.04(IV)(c): “See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.)” – to clarify, POSITA would have found it as a simple re-arrangement of the process steps, i.e. a “Simple substitution of one known element for another to obtain predictable results” per MPEP § 2143(I), as the only distinction is when the holes were created, and POSITA would have found it a simple substitution to create the holes (#50) after creating the virtual tray, e.g. by the user simply deciding to add the holes after seeing the tray on the display of a computer and judging to add them, and thus to add the “post-like structure” (¶ 84) representing the holes after the creation of the model. To remove the post-like structure from the tray, one would simply repeat the same operation Paehl used to remove the mockup (the mockup of the teeth with the brackets) from the virtual tray body in ¶ 78, i.e.: “The mockup (including analogs) may then be virtually subtracted from the virtual transfer tray body to produce a virtual tray precursor. Virtual tray precursor includes a tray body which will typically have a shell-like configuration and further includes one or more receptacles formed by the negative virtual imprints of the analogs”. This would simply be applying the commutative property of subtraction, e.g. 5-(4+9) = (5-4)-9, and arrive at the same predictable result because it’s a mathematical equivalent calculation (by the commutative property of addition).
Should it be found that this would not have been prima facie obvious in view of Paehl for the reasons stated above, then the Examiner notes it would have been obvious to have created the holes/channels of Paehl after creating the template, when Paehl was taken in view of Meer:
As an initial matter, Paehl already describes having the ability to do Boolean operations – Paehl, ¶ 55: “Common CAD programs have capabilities (for example boolean operations) to connect existing shapes to each other” and ¶¶77-78
Then see Meer, see § 2, in particular ¶ 3: “Based on the planning, a surgical guide is digitally designed in the 3ds Max software. The guide will use the dentition for stable anatomical fixation and extends from the left first premolar to the right first premolar. The surgical guide is made to fit the dentition by first expanding the digital dentition by 0.1 mm using a “shell”- command and then digitally subtracting the dentition [arrangement of the teeth] from the guide design using a Boolean operation. Expansion of the dentition is performed to compensate for the polymerization shrinkage that occurs in almost all 3D printing technologies, thus ensuring a proper fit. Similarly, a hole is modelled with an outside diameter of 3.0 mm in the surgical guide in which a metal tube with an inside diameter of 2.40 mm could be placed” – in particular, note the modeling operations to fit the dentition (the arrangement of teeth) is to first shell/offset the dentition (i.e. expand outward), then subtract the teeth themselves with a Boolean operation, to arrive at the desired result of “Expansion of the dentition is performed to compensate for the polymerization shrinkage that occurs in almost all 3D printing technologies, thus ensuring a proper fit”, wherein any other modeling operation would follow from this one.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings from Paehl on a system which designed a similar such guide [the tray] for aiding the work of dentists and similar professions with the teachings from Meer on creating the tray of Meer by “by first expanding the digital dentition by 0.1 mm using a “shell”- command and then digitally subtracting the dentition from the guide design using a Boolean operation” The motivation to combine would have been that “Expansion of the dentition is performed to compensate for the polymerization shrinkage that occurs in almost all 3D printing technologies, thus ensuring a proper fit” (Meer, as cited above).
Meer is considered as an analogous art as being in the same field of endeavor of methods of modeling and 3D printing personalized dental apparatuses to aid dentists, and similar such professions (endodontist and orthodontist) in performing medical procedures on patients.
Regarding Claim 2
Paehl teaches:
The method of claim 1, wherein creating the one or more holes comprises forming a window that is shaped to define an area of light cast onto the flowable attachment material. (Paehl, as cited above, for the channels, wherein “The channel 50 is typically, substantially cylindrical and typically features a diameter of at least 1.0 mm and no greater than 1.5 mm to provide adequate flow of the filler into the receptacle.” (¶ 85) and ¶ 88: “Once the bracket is seated in the receptacle, the filler may be introduced through the channel and allowed to flow into the voids, where it is then cured or otherwise hardened in place… Hardening may be effectuated through use of, for example, ultraviolet light, heat, or time.” And note in the instant disclosure ¶ 52: “In some embodiments, the opening(s) have a cross-sectional area ranging from about 1 square millimeters (mm2 ) to about 4 mm2”
Using A = pi*r^2 for the cross-sectional area, the holes of Paehl are range from 3.14 mm to 50.24mm in area, thus the lower-end of Paehl’s range falls into the range of ¶ 52. MPEP § 2144.04(I): “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”
Then, with those fact findings, see MPEP § 2112(IV): “In In re Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997), the court affirmed a finding that a prior patent to a conical spout used primarily to dispense oil from an oil can inherently performed the functions recited in applicant’s claim to a conical container top for dispensing popped popcorn. The examiner had asserted inherency based on the structural similarity between the patented spout and applicant’s disclosed top, i.e., both structures had the same general shape. The court stated: [N]othing in Schreiber’s [applicant’s] claim suggests that Schreiber’s container is 'of a different shape’ than Harz’s [patent]. In fact, [ ] an embodiment according to Harz (Fig. 5) and the embodiment depicted in figure 1 of Schreiber’s application have the same general shape. For that reason, the examiner was justified in concluding that the opening of a conically shaped top as disclosed by Harz is inherently of a size sufficient to ‘allow [ ] several kernels of popped popcorn to pass through at the same time’ and that the taper of Harz’s conically shaped top is inherently of such a shape ‘as to by itself jam up the popped popcorn before the end of the cone and permit the dispensing of only a few kernels at a shake of a package when the top is mounted to the container.’ The examiner therefore correctly found that Harz established a prima facie case of anticipation. Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432” – and thus, Paehl teaches this limitation, for given the similar shapes (same general shape and similar dimensionalities), the holes of Paehl would have defined areas of light during the UV curing of Paehl for hardening the material
Regarding Claim 3
Paehl teaches:
The method of claim 1, wherein a cross-sectional area of the one or more holes ranges from about 1 square millimeters (mm2) to about 4 mm2. (Paehl, ¶ 85 as cited above, in view of MPEP § 2144.04(I) as discussed above and A=pi*r^2 for the area of a circle)
Regarding Claim 4
Paehl teaches:
The method of claim 1, wherein creating the one or more holes comprises forming an injection hole for the flowable attachment material to be injected into the cavity. (Paehl, as was cited above for # 50, e.g. ¶¶ 84-85 and the like)
Regarding Claim 6
Paehl, or Paehl in view of Meer teaches:
The method of claim 1, wherein creating the one or more holes in the digital attachment template includes placing a cut shape on the digital attachment template and subtracting the cut shape from the digital attachment template. (Paehl, as was cited above, or in view of Meer teaches this
To clarify, Paehl, ¶¶ 77-78 and 84 disclose the use of “subtraction” modeling operations to form the virtual tray, and ¶ 84 describes “causing a post-like structure to protrude from the bracket body [the attachment] before taking the steps described above to create the transfer tray” – in further view of Paehl, ¶ 55 which discusses that: “Once the slot position of the bracket bodies have been determined the bracket bodies and the respective bracket pads may be combined, for example virtually merged to form the set of virtual brackets. Common CAD programs have capabilities (for example boolean operations) to connect existing shapes to each other. Optionally the design of the virtual brackets, or parts of the brackets, may be adapted to account for a good articulation, hygiene requirements or other aspects as needed.”
In view of the above obviousness rationale of the simple substitution/changing the order of steps, wherein in doing so POSITA would have desired to have the same result with the channel (the “post-like structure to protrude from the bracket body” so it was through the tray (fig. 13 # 50), wherein to have done so in the above rationale would simply be performing a subtraction operation of the “post-like structure” in the tray model to remove the channel from tray
Or (for the should it be found above), when taken in view of Meer § 2 ¶ 3 using a digital subtraction which is “a Boolean operation” in commercially available CAD software (§ 2 ¶¶ 2-3, “3ds Max software”) - in summary POSITA would have found it obvious to arrive at this order for the rationale stated above, and the only thing needed to be done is change the order in which the modeling operations (which are in “Common CAD programs”; Paehl, ¶ 55; e.g. “3ds Max”, Meer § 2 ¶¶ 2-3) are to be performed to produce the same result.
Regarding Claim 7
Paehl, or Paehl in view of Meer teaches:
The method of claim 6, wherein the cut shape contacts the attachment to create the one or more holes when the cut shape is subtracted from the digital attachment template. (Same rationale as claim 6 above; not fig. 13 # 50 and # 40 of Paehl to clarify)
Regarding Claim 8
Paehl, or Paehl in view of Meer teaches:
The method of claim 6, wherein the cut shape overlaps with the digital attachment template. (Same rationale as claim 6 above, i.e. overlap the post-like structure of Paehl on top of the template, and perform a subtraction operation to form the channel)
Regarding Claim 9
Paehl, or Paehl in view of Meer teaches:
The method of claim 1, wherein creating the one or more holes includes placing cut shapes on the digital attachment template and subtracting the cut shapes from the digital attachment template. (Same rationale as claims 7-8 above)
Regarding Claim 10.
Paehl, or Paehl in view of Meer teaches:
The method of claim 1, wherein creating the one or more holes comprising creating multiple holes by: placing one or more cut shapes on the digital attachment template; and subtracting the one or more cut shapes from the digital attachment template to form the multiple holes. (Same rationale as claims 6-9 above, note Paehl has a “channel” per bracket (¶¶ 83-84; fig. 13) and multiple brackets/attachments (fig. 3-4) hence the “tray” of Paehl, i.e. ¶ 78: “When virtually aligned with the virtual mockup, the virtual tray body surrounds both the teeth and analogs.”)
Should it be found that this requires a plurality of holes per attachment, then the Examiner submits that this still would have been obvious when Paehl, or Paehl in view of Meer, were taken in further combination of Herrmann, as cited below for claim 5 and its accompanying rationale, wherein Herrmmann teaches having two holes, one being a vent (see the citation and rationale to combine below), wherein POSITA would have readily found it obvious that in combination of these references to have added the vent of Herrmann into the digital model of Paehl, or Paehl in view of Meer, by repeating the same operations as were performed for the first hole (MPEP § 2143 for “(A) Combining prior art elements according to known methods to yield predictable results;”, as the vent was known in combination with a hole for a material to flow through in Herrmann as cited below, and the manner of making holes in the digital was known in view of Paehl, or Paehl in view of Meer, wherein this would have been predictable as it would be merely doing a duplication of operations for a second hole (MPEP § 2144.04(VI)(B)), with POSITA motivated to add the vent in view of the rationale below for Herrmann.
Regarding Claim 11.
Paehl teaches:
The method of claim 1, wherein the digital dental model is based on a scan of a patient's dentition. (Paehl, ¶¶ 49-50 as cited above)
Regarding Claim 12.
Paehl teaches:
The method of claim 1, wherein the attachment includes an undercut region. (Paehl, ¶ 56: “Next, the virtual brackets are used to generate the set of analogs based thereon. Each analog of the set of analogs is associated with a virtual bracket of the virtual set of brackets, and in certain cases represents a modification thereof…” then ¶¶ 57-58: “In particular the second areas 22b of the virtual analog 22 comprise reduced undercuts relative to undercuts present in the second areas 23b of the virtual bracket 23… The computer may have capabilities to determine a virtual retention strength depending on the undercuts present in one more or all of the analogs. For example, substantial and/or a high number of undercuts present in a set of analogs may lead to a relatively high virtual retention strength, whereas less substantial and/or a lower number of undercuts may lead to a lower virtual retention strength. Accordingly, the computer may be adapted to display a virtual retention strength and optionally upper and lower limits for a desired virtual retention strength to a user. The user may adjust the undercuts of the analogs accordingly by reference to the displayed or calculated virtual retention strength limits”
Regarding Claim 13.
Paehl teaches:
The method of claim 1, wherein the attachment has a symmetric shape. (Paehl, fig. 2 shows it is axi-symmetric, thus it has a symmetric shape along the center axis along the length of the bracket, i.e. fig. 5 provides a cross-section)
Regarding Claim 14.
Paehl teaches:
The method of claim 1, wherein the attachment has a non-symmetric shape. (Paehl, fig. 2, shows it does not have symmetry across the other center axis, i.e. fig. 5 for the cross-sectional which shows the non-symmetry in this plane; also see ¶¶ 56-58 for modifications a user may do it the attachment)
Regarding Claim 15.
Rejected under a similar rationale as claim 1 above. For the undercut region, see the discussion of Paehl ¶¶ 56-58 as discussed above for claim 12.
Regarding Claim 16.
Rejected under a similar rationale as claim 1 above.
Regarding Claim 18.
Rejected under a similar rationale as claim 1 above.
Regarding Claim 19.
Rejected under a similar rationale as claim 1 above.
Regarding Claim 20.
Rejected under a similar rationale as claim 1 above.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paehl et al., US 2016/0310239, either alone with an obvious rationale, or in view of Van Der Meer, Wicher J., et al. "3D Computer aided treatment planning in endodontics." Journal of dentistry 45 (2016): 67-72 in further view of Herrman, DE-4116190-A1 (using the machine translation from the FIT database).
Regarding Claim 5
While Paehl, either alone or in view of Meer, does not explicitly teach the following feature, this is taught when taken in further view of Herrmann:
The method of claim 4, further comprising forming a vent hole that allows excess uncured attachment material or air to flow out of the cavity during the injecting. (Paehl, as was cited above for the transfer tray (note Paehl, ¶ 83: “In other implementations, the filler may be coated or coupled to the tray prior to introduction of the bracket into the receptacle. In yet other implementations, the bracket body may be coated with a filler material prior to being seated in the receptacle.”, or in the relied upon embodiment of Paehl ¶ 84: “If the filler is to be introduced after the bracket has been coupled to the tray, a channel 50 may be formed through the tray (including position layer 36 and sheeting 35) to provide access to the receptacle 38.”
In view of Hermann, description ¶¶ 1-2 discussing impression trays for taking impressions of “human teeth”, then see: “For an impression process is first known impression material in the interior of the Spoon filled, then the spoon in the mouth of the Patients placed over the jaw part to be molded and usually with your fingers until the Impression compound held. Then the impression tray is removed the mouth and now stands with the so created Imprint available for further processing.” And ¶ 3: “This known method has a number of serious ones Disadvantage. So the inclusion of air Impression can be falsified. As a result of an insufficient Sealing at the edge of the spoon is due to the lack Backflow a desired increase in compression in the Impression material prevented. As a further consequence of the inadequate sealing often leads to uncontrolled outflow of excess Impression material in the oral cavity, in the respiratory system as well as in the saliva tube. In addition, this Method by the individually different pressure of the impression tray during curing is optimal Impression difficult. Have corresponding investigations result in impressions made in this way often imprecise and therefore for the technician are unusable. - Here the invention seeks to remedy the situation create.” - thus, Hermann is describing a similar process with a tray for teeth, wherein problems exist if the compound in the tray is pre-filled with the compound
As to Hermman’s solution, see the next few paragraphs and accompanying figures: “The invention solves this issue on the basis of one known impression tray in that at the edge of the tray a circumferential one on the inside facing the jaw elastic seal is attached that in the spoon bottom in the front area an opening with an outside connected filling hose is provided and that in the spoon bottom also in the rear area Vents are included, one of which at least one leading to the front Vent hose runs out… To generate final pressure. Through relief openings in the rear area is an optimal filling under Avoidance of air pockets guaranteed.” And “To further improve the initiation of Impression material, it is advantageous for the mouth opening the filling hose on the inside of the spoon train oval and arrange so that they are up to the bulge that extends the free ends of the Teeth is adjacent”
See the figures and descriptions of # 10, 11, 6, 12, and 13: “A suitable filling hose ( 10 ) is attached to the outside of the impression tray for the introduction of a flowable impression material. Its mouth opening ( 11 ) in the bottom of the impression tray ( 1 ) is an elongated, approximately oval opening, which extends to the ring gear bulge of the tray recess. So that the air in the cavity ( 6 ) can escape unhindered when the impression material is poured in, a vent groove ( 12 ) is formed in the bottom of the tray at its rear edge, from which a vent hose ( 13 ) extends outwards to the front end of the impression tray ( 1 ) is performed.”
In particular, fig. 1, note it’s the filler hose is a second tubular shape (# 10) from the vent (# 13)
Hermman is in the analogous art of impression trays for teeth in the same field of endeavor of trays for teeth in dentistry. Thus, Hermann is 1) in the same field of endeavor and 2) reasonably pertinent to the problem faced by the instant inventor of gases caused by the compound in the tray (¶ 68 of the instant disclosure).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings from Paehl on a transfer tray which includes a channel for adding in the filler material/adhesive for bonding the bracket with the tooth with the teachings from Hermman on impression trays wherein vent cylinders were added. The motivation to combine would have been that “This known method has a number of serious ones Disadvantage. So the inclusion of air Impression can be falsified. As a result of an insufficient Sealing at the edge of the spoon is due to the lack Backflow a desired increase in compression in the Impression material prevented. As a further consequence of the inadequate sealing often leads to uncontrolled outflow of excess Impression material in the oral cavity, in the respiratory system as well as in the saliva tube. In addition, this Method by the individually different pressure of the impression tray during curing is optimal Impression difficult. Have corresponding investigations result in impressions made in this way often imprecise and therefore for the technician are unusable. - Here the invention seeks to remedy the situation create” followed by: “The invention solves this issue on the basis of one known impression tray in that at the edge of the tray a circumferential one on the inside facing the jaw elastic seal is attached that in the spoon bottom in the front area an opening with an outside connected filling hose is provided and that in the spoon bottom also in the rear area Vents are included, one of which at least one leading to the front Vent hose runs out”
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paehl et al., US 2016/0310239, either alone with an obvious rationale, or in view of Van Der Meer, Wicher J., et al. "3D Computer aided treatment planning in endodontics." Journal of dentistry 45 (2016): 67-72 in further view of Kim et al., US 2011/0091832.
Regarding Claim 17.
While Paehl, either alone or in view of Meer, does not explicitly teach the following feature, this is taught when taken in further view of Kim:
The method of claim 15, wherein creating the digital attachment template includes forming a frangible structure that is arranged to break away a portion of the attachment template. (Kim, abstract: “Other aspects of the tray and associated methods of bonding are directed to a frangible web that extends over the gingival portion of the receptacle and fractures to facilitate tray removal after bonding.” And ¶ 16: “The transfer tray may also include a thin frangible web of material that partially extends across gingival portions of the appliance, such that the appliance is securely retained in the tray prior to bonding. Once the appliance has been bonded to the patient's dental structure, the frangible web can then be fractured and the tray removed from the patient's mouth by urging the transfer tray in the occlusal direction. The presence of a frangible web is particularly advantageous since it provides both convenient loading and retention of the appliance into the tray, as well as easy detachment of the tray from the patient's dental structure. Detachment of the tray in the occlusal direction is convenient and comfortable for the patient since it does not involve pulling the tray outward against the cheeks or lips. Occlusal tray removal is also helps minimize the risk of accidentally debonding the newly bonded appliances, since it avoids the need to pull the appliances away from the tooth surface in the labial direction ( or lingual direction in the case of lingual appliances).” – see ¶¶ 75-76 to clarify, incl.: “The lines of weakness 83' indicate locations along which the web 81' is likely to fracture when the appliance 16' is urged towards the gingival direction with a sufficient amount of force.” As shown in fig. 13 (web is # 81’ in fig. 12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings from Paehl on the tray of Paehl with the teachings from Kim on having a frangible tray structure. The motivation to combine would have been that “The presence of a frangible web is particularly advantageous since it provides both convenient loading and retention of the appliance into the tray, as well as easy detachment of the tray from the patient's dental structure. Detachment of the tray in the occlusal direction is convenient and comfortable for the patient since it does not involve pulling the tray outward against the cheeks or lips. Occlusal tray removal is also helps minimize the risk of accidentally debonding the newly bonded appliances, since it avoids the need to pull the appliances away from the tooth surface in the labial direction ( or lingual direction in the case of lingual appliances” (Kim, ¶ 16)
Also, Paehl already contemplates a combination with Kim. Paehl, ¶ 77, as relied upon above: “As another alternative (not depicted in the Figures), a virtual transfer tray may be directly derived from the virtual mockup, using methods described in US Publication No. 2011/0091832.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Griffin, US 10,241,499, abstract, fig. 1 and accompanying description, col. 3 including lines 40-65.
Ruppert et al., US 2002/0010568. Abstract, fig. 14-30, ¶ 9, ¶¶ 146-155, 158
Marshall, US 2008/0227050, abstract, fig. 14-16, 18-20, 22-25, 27-27 as discussed in ¶ 78 and ¶¶ 93-102 (note # 410 in particular and its accompanying description)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID A. HOPKINS whose telephone number is (571)272-0537. The examiner can normally be reached Monday to Friday, 10AM to 7 PM EST.
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/David A Hopkins/Primary Examiner, Art Unit 2188