DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: illumination module in Claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2, 4-5, 7-13 & 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sorimoto et al. (U.S. Patent Application 2019/0293414 A1) and further in view of KYOUNG (KR 101533341 B1; enclosed prior) and Iwase et al. (JP 2008133957 A; enclosed herein and English Translation referenced).
Claim 1: Sorimoto teaches –
An intra-oral handheld [handpiece] (Figure 2, Element 80) 3D optical scanner [three-dimensional scanner (oral scanner) for obtaining a three-dimensional shape of a tooth in the mouth] (Para 0028) comprising:
Examiner’s Note: The rejection citing Figures 1-4 are referring to Embodiment 1 of Sorimoto (Para 0011-0014).
an illumination module [light source unit] (Figure 2, Element 81) configured to generate an illumination signal to illuminate a dental object [Light output form light source unit 81 irradiates object body 200] (Para 0035 and Figure 2, Element 81 & 200);
an image sensor [optical sensor] (Figure 2, element 85) configured to obtain data in response to the illumination of the dental object [The light reflected on object body 200 travels through varifocal unit 82, and is detected by optical sensor 85] (Para 0035),
the data being configured to be used to generate a 3D dental model of the dental object [Control unit 40 controls an operation of optical measurement unit 30, and processes an image taken by optical measurement unit 30 to obtain a three-dimensional shape] (Para 0032);
a lens housing [slider] (Figure 3(a), Element 82b) and [Connecting section] (Figure 1, Element 20) and a focus lens [focus lens] (Figure 2, Element 82) within the housing [a focus lens 82a is fixed to a slider] (Para 0036),
the lens housing and focus lens are configured to direct the illuminating signal towards the dental object (as shown in Figure 3a) [Connecting section 20 may include a lens system for guiding light collected by probe 10 to optical measurement unit 30, and optical components such as a cover glass, an optical filter, and a retardation plate (quarter wavelength plate)] (Para 0030);
a drive [varifocal unit] (Figure 2, Element 82) that is configured to change the position of the focus lens [mechanically moves focus lens 82a by supplying electric power to slider] (Para 0036 and See Figure 3(a), Element Arrow) to create different focal planes of illumination signal at different positions (See Figure 3(a), Element Focal Position) of the focus lens as the illumination signal impacts the dental object (See Figure 3(a), Element 200);
Sorimoto discloses no details regarding the mechanical mechanism to move the focus lens. Sorimoto discloses mechanically moving the lens along a rail but no details regarding the motor to achieve the motion. Sorimoto fails to teach the drive configured to rotate, shaft and guide as claimed. However, KYOUNG teaches –
a drive comprising a shaft [barrel cam] (Figure 4, Element 601h) [conveying unit] (Claim 12) that is configured to rotate around a rotation axis [motor shaft of the motor 601a rotates] (Bottom of Page 7) to change the position [moves in the forward and backward direction] (Bottom of Page 7);
Examiner’s Note: The shaft of the drive comprises different elements. The Examiner is interpreting the shaft is being Element 601h and 601. It is understood that 601h is a sub-element of 601.
a guide [helical groove 601i on the surface of the cylindrical body] (Bottom of Page 7) extending continuously along at least a part of a length of the shaft [barrel cam] (Figure 4, Element 601h) [conveying unit] (Claim 12) in order to accurately scan human tissue in a manner that is easy to commercialize and disseminate (Bottom of Page 2)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the mechanical mechanism of Sorimoto to the mechanical mechanism as taught by KYOUNG in order to accurately scan human tissue in a manner that is easy to commercialize and disseminate (Bottom of Page 2).
KYOUNG teaches the follower on the cam to be a guide pin (Figure 4, Element 601j). Sorimoto and KYOUNG fail to teach the spring. However, Iwase teaches –
a spring [spring] (Figure 2, Element 56), arranged intermediate between the housing [frame] (Figure 2, Element 50) and the guide [ball groove] (Figure 1, Element 14),
configured to exert a spring force towards the guide [the ball 28 and the frame 50 are fixed to the bolt 62, that is, the wheel side via the spring 56] (Top of Page 4) in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the guide pin of Sorimoto and KYOUNG with the ball and spring taught by Iwase in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4).
Sorimoto fails to teach the details of the shaft. However, KYOUNG teaches wherein the guide extends continuously to form a closed sinusoidal curve around the circumferential surface of the shaft [The slope cam 601b has a cylindrical shape and is formed with an inclined surface at its front surface so that the sliding member 601d is positioned in face or point contact with the inclined surface and is constantly inclined with the inclined surface by the aforementioned elastic member 601e] (Near Top of Page 7) in order to accurately scan human tissue in a manner that is easy to commercialize and disseminate (Bottom of Page 2).
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[AltContent: textbox (Exhibit 1)]Examiner’s Note: The claim limitation of closed sinusoidal curve is not limiting to a structural shape of the guide but in the broadest more reasonable interpretation can refer to the motion formed by the guide. A google search of closed sinusoidal curve resulted in images similar to Exhibit 1 attached herein. Over time the motion of the guide results in the same closed sinusoidal curve.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sorimoto to include the details of the shaft as taught by KYOUNG in order to accurately scan human tissue in a manner that is easy to commercialize and disseminate (Bottom of Page 2).
Claim 2/1: Sorimoto fails to teach the shaft. However, KYOUNG teaches wherein the shaft comprises an end part [barrel cam] (Figure 4, Element 601h) connected coaxially with rest of the shaft [conveying unit] (Claim 12) and the guide is arranged on the end part [helical groove 601i on the surface of the cylindrical body] (Bottom of Page 7) in order to accurately scan human tissue in a manner that is easy to commercialize and disseminate (Bottom of Page 2)
Claim 4/1: Sorimoto fails to teach the details of the shaft. However, KYOUNG teaches wherein the shaft is configured to rotate around the rotation axis for producing a linear movement of the lens housing along a translation axis, and wherein the linear movement comprises back and forth movement between a first extreme position and a second extreme position [The slope cam 601b has a cylindrical shape and is formed with an inclined surface at its front surface so that the sliding member 601d is positioned in face or point contact with the inclined surface and is constantly inclined with the inclined surface by the aforementioned elastic member 601e] (Near Top of Page 7) in order to accurately scan human tissue in a manner that is easy to commercialize and disseminate (Bottom of Page 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sorimoto to include the details of the shaft as taught by KYOUNG in order to accurately scan human tissue in a manner that is easy to commercialize and disseminate (Bottom of Page 2).
Claim 5/1: Sorimoto and KYOUNG fail to teach the attachment part. However, Iwase teaches wherein the housing comprises an attachment part [concave portion] (Figure 2, Element 52) where the spring fixedly attaches (as shown in Figure 2) with the housing [frame] (Figure 2, Element 50) in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the barrel cam of Sorimoto and KYOUNG with the ball and spring taught by Iwase in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4).
Claim 7/1: Sorimoto and KYOUNG fail to teach the coupling element connecting the guide with the spring. However, Iwase teaches further comprising a coupling element [ball] (Figure 2, Element 28) operationally connecting (as shown in Figure 2) the guide [ball groove] (Figure 1, Element 14) with the spring [spring] (Figure 2, Element 56) in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the barrel cam of Sorimoto and KYOUNG with the ball and spring taught by Iwase in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4).
Claim 8/7/1: Sorimoto and KYOUNG fail to teach wherein the spring applies a force configured to maintain a connection between the coupling element and the lens housing. However, Iwase teaches wherein the spring [spring] (Figure 2, Element 56) applies a force configured to maintain a connection (as shown in Figure 2) between the coupling element [ball] (Figure 2, Element 28) and the housing [frame] (Figure 2, Element 50) in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the barrel cam of Sorimoto and KYOUNG with the ball and spring taught by Iwase in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4).
Claim 9/7/1: Sorimoto fails to teach the details of the mechanical mechanism. However, KYOUNG teaches wherein
the shaft is configured to rotate around the rotation axis [motor shaft of the motor 601a rotates] (Bottom of Page 7); and
the lens housing (Figure 4, Element 610) is configured to linearly move between a first extreme position and a second extreme position along a translation axis [moves in the forward and backward direction] (Bottom of Page 7) in order to accurately scan human tissue in a manner that is easy to commercialize and disseminate (Bottom of Page 2)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sorimoto to include the details of the shaft as taught by KYOUNG in order to accurately scan human tissue in a manner that is easy to commercialize and disseminate (Bottom of Page 2).
Sorimoto and KYOUNG fail to teach the coupling element. However, Iwase teaches the coupling element [ball] (Figure 2, Element 28) is configured to move along the guide [ball groove] (Figure 1, Element 14) in response to the rotation [When the worm gear 10 rotates as the input shaft 12 rotates, the ball 28 moves along the ball groove 14] (Middle of Page 3) in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the guide pin of Sorimoto and KYOUNG with the ball and spring taught by Iwase in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4).
Claim 10/7/1: Sorimoto and KYOUNG fail to teach wherein the spring applies a force configured to maintain a connection between the coupling element and the lens housing. However, Iwase teaches wherein the spring [spring] (Figure 2, Element 56) applies a force configured to maintain a connection (as shown in Figure 2) between the coupling element [ball] (Figure 2, Element 28) and the guide [ball groove] (Figure 1, Element 14) in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the barrel cam of Sorimoto and KYOUNG with the ball and spring taught by Iwase in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4).
Claim 11/5/1: Sorimoto and KYOUNG fail to teach the attachment part. However, Iwase teaches wherein at least part of the coupling element [ball] (Figure 2, Element 28) is arranged in (as shown in Figure 2) the attachment part [concave portion] (Figure 2, Element 52) in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the barrel cam of Sorimoto and KYOUNG with the ball and spring taught by Iwase in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4).
Claim 12/7/1: Sorimoto and KYOUNG fail to teach the coupling element. However, Iwase teaches wherein the guide [ball groove] (Figure 1, Element 14) is one of a male part of female part and the coupling element [ball] (Figure 2, Element 28) is another of the female part or male part (as shown in Figure 1 & 2) in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the barrel cam of Sorimoto and KYOUNG with the ball and spring taught by Iwase in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4).
Claim 13/1: Sorimoto teaches wherein the lens housing [slider] (Figure 3(a), Element 82b) is configured to move along one or more rails [rail] (Figure 3(a), Element 82c).
Claim 16/1: Sorimoto wherein the image sensor [optical sensor] (Figure 2, element 85) is configured to acquire a plurality of two-dimensional images of the dental object at the respective different focal planes [Control unit 40 controls an operation of optical measurement unit 30, and processes an image taken by optical measurement unit 30 to obtain a three-dimensional shape] (Para 0032 and as shown in Figure 3(a)), and the plurality of 2D images are stitched together to obtain a 3D representation of the dental object [three-dimensional scanner (oral scanner) for obtaining a three-dimensional shape of a tooth in the mouth] (Para 0028).
Examiner’s Note: Although Siromoto does not use the term, stitched, it is understood how 2D to 3D model imaging works.
Claim 17/1: Sorimoto teaches wherein a diameter of the shaft is less than a diameter of the lens housing (See Figure 1, as the shaft fits in the lens housing)
Claim 18/1: Sorimoto and KYOUNG fail to teach the spring. However, Iwase teaches wherein the spring [spring] (Figure 2, Element 56) is configured to exert a spring force (as shown in Figure 2) toward the guide [ball groove] (Figure 1, Element 14) in order to reduce vibration during transfer of motion from the drive [the backlash against the ball 28 is reduced by the action of the spring 56] (Top of Page 4) in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the barrel cam of Sorimoto and KYOUNG with the ball and spring taught by Iwase in order to the backlash against the ball is reduced by the action of the spring (Top of Page 4).
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sorimoto et al. (U.S. Patent Application 2019/0293414 A1); KYOUNG (KR 101533341 B1; enclosed prior) and Iwase et al. (JP 2008133957 A; enclosed herein and English Translation referenced) and further in view of Terada (CN 101639561 A, enclosed prior).
Claim 14/13/1: Sorimoto, KYOUNG and Iwase fail to teach the rail is ferromagnetic. However, Terada teaches wherein the lens housing is configured to move along a plurality of rails (Figure 9, Element 8), and the rails are ferromagnetic [first ball driven piece 3a made of, for example, stainless steel is spherical] (Middle of Page 4) and are arranged adjacent to each other (Figure 9, Element 8; which discloses the rails adjacent to each other) in order to reduce noise and improve at least one of the drive speed and improve lens holding precision of the lens barrel and imaging device (Middle of Page 2)
Examiner’s Note: Stainless steel is a ferromagnetic material.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the rail of Sorimoto, KYOUNG and Iwase to be plural and ferromagnetic as taught by Terada in order to reduce noise and improve at least one of the drive speed and improve lens holding precision of the lens barrel and imaging device (Middle of Page 2).
Claim 15/13/1: Sorimoto, KYOUNG and Iwase fail to teach two rails. However, Terada teaches –
wherein the lens housing [lens holding member] (Figure 4, Element L1 & 3) is configured to slide along at least two (Figure 9, Element 8; which discloses the two rails) rails [holes] (Figure 4, Element 3d & 3e) [first ball follower] (Figure 4, Element 3a); and
the lens housing interfaces at one contact surface with at least one rail of the at least two rails (as show in Figure 4 with Element 3 being in contact with Element 3d, 3e & 3a along Element 3) and
the lens housing interfaces at another contact surface with at least another rail of the at least two rails (as show in Figure 4 with Element 3 being in contact with Element 3d, 3e & 3a along Element 3) in order to reduce noise and improve at least one of the drive speed and improve lens holding precision of the lens barrel and imaging device (Middle of Page 2)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the deflector of Thiel with the lens as taught by Terada in order to reduce noise and improve at least one of the drive speed and improve lens holding precision of the lens barrel and imaging device (Middle of Page 2).
Response to Arguments
Applicant's arguments filed 06/23/2026 have been fully considered but they are not persuasive. The Applicant contends that “Figures 2 and 4 in Kyoung are different embodiments, so it is not proper for the Examiner to use both Figures to allegedly teach the same thing”. The Examiner respectfully disagrees. The teachings of Figure 2 and Figure 4 of Kyoung were used in two different modifications of Sorimoto. The first was with respect to the mechanical mechanism to move the focus lens and the second was another modification of the shaft of Sorimoto. The two modifications of Sorimoto based on the two different embodiments of Kyoung is not improper. The Examiner acknowledges that the modifications would be improper if the rejection was based on one modification from two different embodiments. However that is not the case, the rejection is based on two modifications from two different embodiments which is not an improper combination. Additionally, the Examiner contends that the modification between the two embodiments is not improper. Figure 2 was relied upon for the teaching describing the motion that the mechanism creates. The claim interpretation applied is with respect to the shape of the motion that results and not specifically the shape of the guide itself. The Examiner contends that both Figure 2 and Figure 4 use different structures but result in the same shape of motion. The argument is unconvincing.
The Applicant provided two figures. The first figure, provided on Page 7 of the Remarks filed 06/23/2026, illustrates the claimed shape of closed curve and provides the definition of the closed curve as: “A closed curve is a curve where the beginning and end points are the same”. The Applicant notably does not point to evidence within the Specification as originally filed but rather used commonly understood terms within the art to define the claim limitation. The Examiner finds that the submitted definition fails to provide support for the interpretation of the sinusoidal part of the claim limitation and only addresses the closed curve part of the claim limitation. The term, sinusoidal, in the art refers most typically to the shape of a waveform. The Examiner provided evidence of such an interpretation above with respect to the google search of the entire claim limitation of closed sinusoidal curve. The Applicant’s evidence only addresses part of the claim limitation and is thus insufficient to changing the current claim interpretation. The argument is unconvincing.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HELENE C BOR whose telephone number is (571)272-2947. The examiner can normally be reached Mon - Fri 10:30 - 6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Koharski can be reached at (571) 272-7230. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Helene Bor/Examiner, Art Unit 3797
/JOSEPH M SANTOS RODRIGUEZ/Primary Examiner, Art Unit 3797
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